Bad faith and abuse of rights irrelevant if public interest is involved

In ultra air GmbH v Office for Harmonisation in the Internal Market (OHIM) (Case T-396/11), the General Court has annulled a decision of the Fourth Board of Appeal of OHIM in which the latter had rejected an application for a declaration of invalidity of the mark ULTRAFILTER INTERNATIONAL.

In 2005 the word mark ULTRAFILTER INTERNATIONAL was registered as a Community trademark (CTM) in Classes 7, 11, 37, 41 and 42 of the Nice Classification with respect to filters and installations for drying, cleaning and cooling air, gases and liquids, and related technical, engineering and repair services. This followed a decision of the Second Board of Appeal of OHIM of December 16 2003 (case R375/2001-2) finding that the mark had become distinctive within the meaning of Article 7(3) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009), in the German and English-speaking member states of the European Union.

On May 5 2008 ultra air GmbH brought an application under Article 52 (1)(a) of Regulation 207/2009 seeking that the mark ULTRAFILTER INTERNATIONAL, registered by Donalds Filtration Deutschland GmbH (formerly Ultrafilter GmbH), be declared invalid on the grounds that it was registered contrary to Article 7(1)(b) and (c) and Article 7(3) of the regulation.

The Cancellation Division of OHIM declared that the mark was invalid, but the Fourth Board of Appeal annulled the Cancellation Division’s decision. It held that ultra air was not pursuing the public interest objectives laid down in Articles 7(1)(b) and (c), but was in reality seeking to use the designation ‘ultrafilter’ itself as a trademark. In addition, the fact that, back in 2003, the former manager of the proprietor of the contested mark personally defended the distinctive character of the mark ULTRAFILTER INTERNATIONAL, but now contested its validity as manager of the company seeking a declaration of invalidity, amounted to an abuse of rights. According to the Board of Appeal, abusive actions are not legitimate and therefore not admissible. This decision was appealed to the General Court.

The General Court first reiterated the principle that, while the relative grounds for refusal protect the interests of proprietors of earlier rights, the absolute grounds for refusal aim to protect the public interest underlying them, which explains why Article 56 (1)(a) of Regulation 207/2009 does not require the applicant to show an interest in bringing proceedings (Lancôme v OHIM (Case C-408/08 P, Paragraph 40).

The fact that the manager of the applicant for a declaration of invalidity was the manager of the proprietor of the mark at the time when the application for registration of the mark was lodged in no way affected the rights of that applicant to bring an action before OHIM. Given the nature and purpose of the procedure in question, namely the safeguarding of the public interest underlying Article 7(1)(b) and (c), it was found that the proprietor of a mark which is descriptive or which is devoid of distinctive character does not obtain any rights to retain the registration of its mark on the sole basis that the applicant for a declaration of invalidity is managed by a natural person who, in the past, sought to register the sign in question.

In addition, the fact that the applicant for a declaration of invalidity may file an application with a view to subsequently affixing the sign in question to its own products is perfectly in line with the public interest safeguarded by Article 7(1)(c) of keeping signs freely available. The court added that the admissibility of an application for invalidity is not subject to good faith on the part of the applicant for such a declaration, referring to Irania Tobacco v OHIM (TIR 20 FILTER CIGARETTES) (Case T-245/08).

Following the General Court’s decision, the case has now been remitted to the Board of Appeal, which is bound by the ratio decidendi adopted by the court. This means that the board will have to examine the merits of the case.

At the outset of that examination, and assuming that the contested CTM falls foul of the absolute grounds of refusal, it also remains to be seen whether the board will accept that any familiarisation has occurred. After all, the board has already issued a decision in 2003 affirming that the contested CTM had become distinctive within the meaning of Article 7(3) in the German and English-speaking member states.

However, recent decisions have clearly held that distinctiveness acquired through use must be demonstrated in all the member states in which the existence of the ground for refusal has been established (see Earle Beauty v OHIM (NATURALLY ACTIVE) (Case T-307/09), Paragraph 49, and the case law cited), even if it could be considered unreasonable to require proof of distinctiveness acquired through use for each individual member state (see, to that effect, Chocoladefabriken Lindt & Sprüngli v OHIM (Case C-98/11 P), paragraph 62). It may be that familiarisation in the German and English-speaking member states may not, or may no longer, prove to be sufficient, given that ‘ultrafilter’ is equally descriptive of the goods and services at issue in the Dutch and French languages.

Paul Maeyaert, ALTIUS, Brussels