Board cannot be criticised for failing to examine issue not raised before it

European Union

In Industria de Diseño Textil (Inditex) SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-292/08, September 13 2010), the General Court has ruled against Spanish textile giant Industria de Diseño Textil (Inditex) SA, best known for being the owner of the Zara brand. The court refused to allow Inditex’s appeal against a decision of the Second Board of Appeal of OHIM in which the latter had found that there was a likelihood of confusion between the marks OLTEN and OFTEN.

Inditex applied to register the mark OFTEN as a Community trademark for goods in Class 14 of the Nice Classification. The owner of the earlier Spanish marks OLTEN opposed the application. The Opposition Division of OHIM upheld the opposition in part and the Second Board of Appeal of OHIM dismissed Inditex's appeal. Inditex appealed to the General Court.

While the General Court’s findings in connection with the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of the Community Trademark Regulation (40/94) do not raise any controversial issues, its analysis of the alleged infringement of Articles 61 and 62 of Regulation 40/94 (now Articles 63 and 64 of Regulation 207/2009) leaves more room for debate.

Inditex alleged that the Board of Appeal had failed to examine the following issues:

  • the proof of genuine use of the earlier marks; and
  • the similarity of the goods covered by the marks.

Inditex recognised that these issues had not been specifically raised before the board. However, it argued that, by omitting to examine them, the board had failed to conduct a full examination of the opposition.

The court acknowledged that, by virtue of the principle of continuity of functions between the various departments of OHIM, the Board of Appeal was required to base its decision on all matters contained in the decision contested before it, examining the appeal in light of all the relevant matters of fact and law. However, the court clarified that the issue of genuine use was not one of those matters, as such issue was specific and preliminary in character and, therefore, did not fall within the context of the examination of the opposition.

The General Court thus dismissed Inditex's argument that the Board of Appeal had failed to examine the proof of genuine use submitted by the opponent, arguing that such issue was not specifically raised before the Board of Appeal, and did not constitute a relevant matter for the purposes of the examination of the appeal, which was limited to the examination of the opposition proper (ie, the Opposition Division’s assessment of the existence of a likelihood of confusion).

Further, as concerns the issue of the similarity of goods, the court found that, by adopting the decision of the Opposition Division in its entirety, the Board of Appeal had conducted the required examination and had stated the reasons for its decision.

The action was thus dismissed.

Celia Sueiras, Garrigues Abogados, Madrid

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