All prior rights need not be considered in opposition actions, CFI rules

European Union

In Metro-Goldwyn-Mayer Lion Corp v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has upheld the OHIM's decision to refuse to consider some prior national trademark rights submitted as evidence in Metro-Goldwyn-Mayer Lion Corp's (MGM) successful opposition action. The CFI found that MGM had not been adversely affected and held that (i) the OHIM is under no obligation to consider all the rights that form the basis of an opposition if other rights are sufficient to uphold the action, and (ii) the purpose of opposition actions is not to settle pre-emptively potential conflict at national level.

On November 7 1996, Mosur Grupo Media SL of Spain applied to register the figurative mark MOSUR GRUPO MEDIA SL in Classes 9, 16, 38, 39 and 41 of the Nice Classification covering, among other things:

  • films;

  • compact discs (audio/video);

  • magazines;

  • television and broadcasting services;

  • media distribution services; and

  • film production services.

MGM opposed the application on the basis of its earlier registration of the mark MGM in 14 EU countries and a Community trademark application, which has since proceeded to registration. The opposition was based on likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation.

The OHIM upheld the opposition in respect of all the goods and services concerned. However, it refused to consider earlier national trademark rights claimed in Austria, Greece and the United Kingdom, or the Community trademark application. The national registrations were not considered due to procedural and evidentiary insufficiencies. MGM appealed.

The Third Board of Appeal held that the appeal was inadmissible on the grounds that (i) MGM had not been adversely affected by the decision, and (ii) the OHIM was under no obligation to examine the opposition beyond the issue of registrability. MGM appealed to the CFI.

MGM contended that it had been adversely affected by the OHIM decision since refusal to consider the three national marks and the Community trademark application deprived it of its right to a detailed examination of the case. It also argued that the OHIM should have considered the possibility that Mosur would still be able to convert its failed Community trademark application into national applications, forcing MGM to oppose future attempts to register the mark in several national forums.

The OHIM's response was that MGM had not made a request, either expressly or by implication, for a decision that would preclude Moser from converting its application into a national application. Furthermore, the main purpose of the Opposition Division is to provide mark owners with a vehicle by which they can prevent registration of marks that would interfere with their earlier rights, not to resolve conflicts at national level. The OHIM also contested the validity of the evidence offered at the opposition stage with respect to the three national marks and the Community trademark application.

The CFI found the OHIM's arguments persuasive, stating that the aim of opposition proceedings is to give an opportunity to challenge, by means of one procedural system, applications for Community trademarks that may give rise to a likelihood of confusion with earlier marks or rights. The purpose is not to settle pre-emptively potential conflict at national level. The CFI stated that an action brought by a party must be vested and present as assessed on the day the action is brought. If the interest concerns a future legal situation, then the party must show that the prejudice to that situation is imminent. Finding that MGM's interest was purely speculative, the CFI held that the decision of the Opposition Division did not adversely affect it.

Regarding the refusal to consider the Community application, the CFI held that the opposition was properly upheld on the basis of several earlier national marks. This was a sufficient independent basis for the opposition and it was thus unnecessary to suspend the proceedings in order to wait until the Community trademark was registered.

Finally, the CFI avoided ruling on the scope that should be given to the opposition and the evidentiary questions, declaring that the OHIM was under no obligation to examine all the earlier marks or rights for two reasons. Firstly, there was a sufficient independent legal basis on which to decide the case. Secondly, it was in the interest of judicial economy to proceed with the case on the evidence before the OHIM at the time.

Brian J Philpott, Hammonds, London

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