Board of Appeal must respect principle of fairness

The European Court of First Instance has ruled that the Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) may not base a decision on facts that were not considered by the Opposition Division without informing the plaintiff. This, ruled the court, would rob the plaintiff of a chance to respond and therefore breach the principle of fairness.

The issue was raised when Jean M Goulbourn applied to register 'silk cocoon' as a Community trademark for clothing. Redcats, a French mail order company formerly known as La Redoute, lodged an opposition based on its French and international registrations for COCOON for identical goods. As evidence of use, Redcats produced two catalogues displaying articles of clothing bearing the COCOON mark. Goulbourn questioned the validity of the evidence as there was no indication as to the place, time or extent of the use of the mark. Months later, and therefore outside the deadline set by the Opposition Division to respond, Redcats claimed that:

• it is well known that it is one of the leading European mail order companies;
  
  
• it distributed a million copies of the catalogue in various European countries; and
  
  
• sales of the trademarked articles amounted to several billion French francs.

The Opposition Division advised Redcats that it would not take this additional information into account and proceeded to reject the opposition. The decision was then reversed by the Board of Appeal, which based its decision in part on the said information.

The Court of First Instance affirmed the Board of Appeal's ruling that Redcats' trademark use was genuine. However, it found that the fact that the Board of Appeal did not inform Goulbourn that it was considering elements that had not been considered by the Opposition Division breached the principle of fairness as it robbed Goulbourn of a chance to respond. Therefore, the court remitted the case to the Board of Appeal for a new ruling.

The court left two questions unanswered: (i) whether the Opposition Division or the Board of Appeal are allowed to take into account facts that were submitted after expiry of a deadline, and (ii) whether they may base their decisions in part on their own knowledge that Redcats and its catalogues are well known, even though this was not supported by evidence.

Carsten Albrecht, Lovells, Hamburg