Board of Appeal decision overturned

In Calavo Growers Inc v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has annulled an OHIM Board of Appeal ruling and has reinstated the Opposition Division's decision to allow, in part, an opposition against the registration of a figurative Community trademark.

Luis Calvo Sanz SA applied to register a figurative sign as a Community trademark for various foodstuffs in Classes 29 to 31 of the Nice Classification. Calavo Growers Inc opposed, arguing that there was a likelihood of confusion between that sign and its own earlier Community word mark CALAVO for goods in Classes 29 and 31. The language of the proceedings was Spanish, but an explanation in English was submitted in relation to the grounds of opposition. While allowing the opposition in part, the Opposition Division refused to consider the English grounds, since they were not in the language of the proceedings and the deadline had passed for their submission in Spanish.

Luis Calvo Sanz appealed to the Board of Appeal, which allowed the appeal and dismissed the opposition in its entirety. The board considered that it was for an opponent to submit and prove the grounds on which an opposition is based. If an opponent fails to satisfy that requirement, OHIM cannot compensate for any procedural deficiency since it:

• is not competent to undertake an examination of its own motion;
  
  
• has to be impartial; and
  
  
• can act at the same time as judge and party.

Calavo Growers has now appealed successfully to the CFI, which annulled the board's decision. The board was correct to say that the explanation of grounds, written in English, could not be taken into account by the Opposition Division. The question was, however, whether the Opposition Division could, in those circumstances, legitimately examine the substance of the opposition. It could, ruled the CFI, and could reach the conclusion that there was, in part, a likelihood of confusion even on the evidence before it.

It is interesting to note how carefully the CFI phrased its reasoning, distinguishing its own earlier case law in Les Éditions Albert René v OHIM and Koffiebranderij en Theehandel 'Drie Mollen sinds 1818' BV v OHIM.

Jeremy Phillips, IP Consultant to Slaughter and May, London