CFI chastises OHIM Board of Appeal in GABEL Case

European Union
In Gabel Industria Tessile SpA v Office for Harmonization in the Internal Market (OHIM) (Case T-85/07, June 10 2008), the Court of First Instance (CFI) has examined a case in which the applicant restricted the list of goods covered by the application for registration in one class, but failed to mention the other class of goods. 
Gabel Industria Tessile SpA (Italy) applied for the registration of GABEL as a Community trademark for goods in Classes 24 and 25 of the Nice Classification. Creaciones Garel SA (Spain) lodged an opposition based on earlier registrations for the trademark GAREL, including:
  • national registrations that were more than five years old; and
  • a Community trademark registration that was less than five years old for goods in Classes 24, 25 and 26. 
Gabel demanded proof of use of the national registrations, which Creaciones Garel provided. The Opposition Division of OHIM upheld the opposition and rejected the application in its entirety based only on the likelihood of confusion with the earlier Community trademark GAREL.
Gabel notified OHIM of its decision to limit the list of goods falling within Class 25 to "bath gowns". The restriction did not mention goods in Class 24. Gabel subsequently filed a notice of appeal. The Second Board of Appeal set aside the decision of the Opposition Division and ordered that the mark GABEL be registered for bath gowns in Class 25.
Gabel appealed to the CFI, claiming that:
  • the board had erred in not taking into consideration goods in Class 24; and
  • Creaciones Garel had provided no proof of use of the GAREL mark for goods in Class 24. 
The CFI held that the issue in this case was whether the board's decision could be interpreted as containing an implicit refusal to register the trademark GABEL for goods in Class 24. The CFI concluded that the action brought by Gabel before the board was directed against the whole decision of the Opposition Division, including the refusal to register the trademark for goods in Class 24. Accordingly, the CFI held that the board had failed to rule on the action - that is, it should have ruled on the refusal of the Opposition Division to register the mark for goods in Class 24.
The decision leaves the substance of Gabel’s claim open. OHIM and the boards of appeals of OHIM should beware of the risk of ambiguity when reaching decisions.

Peter Gustav Olson, MAQS Law Firm, Copenhagen

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