CFI clarifies proof of use of international registration

European Union

In Rajani v Office for Harmonization in the Internal Market (OHIM) (Case T-100/06 November 26 2008), the Court of First Instance (CFI) has dismissed an appeal against a decision of the Board of Appeal of OHIM in which the latter had upheld an opposition against the registration of the mark ATOZ.

Deepak Rajani applied to register the mark ATOZ as a Community trademark for various services in Classes 35 and 41 of the Nice Classification. Artoz-Papier AG opposed, alleging a likelihood of confusion with its earlier word mark ARTOZ, which was protected in Austria, the Benelux, France, Germany, Italy, Portugal and Spain, and by International Registration 659480 in respect of similar services. Rajani requested proof of use of the international registration. Artoz did not adduce any proof, but stated that the international registration had been admitted for protection in Germany on February 11 1999.
 
The Opposition Division of OHIM upheld the opposition and the Board of Appeal dismissed Rajani's appeal. According to the board, a request for proof of use could be accepted only if, at the time of publication of the trademark application, the earlier international trademark had been registered for no less than five years. In this case, the date on which the five-year period began to run was the date of the actual completion of the registration procedure. Moreover, the board stated that an international registration does not become final until, at the earliest, the expiry of the period specified in Article 5(2) of the Madrid Agreement Concerning the International Registration of Marks. Rajani appealed to the CFI.
 
The CFI held that since neither the Community Trademark Regulation (40/94) nor the Madrid Agreement specify the date on which the five-year time limit begins to run in the case of an international registration having effect in a member state, it is a matter for the national law of the member state concerned. If, in Germany, an applicant for a trademark sought proof of use of an earlier international registration in respect of which the German Patent and Trademarks Office first made a declaration under Article 5 of the Madrid Agreement, and to which it later granted protection, the date of receipt by the World Intellectual Property Organization of the final notification of the granting of protection constituted the starting point for the calculation of the five-year time limit.
 
In the present case, since the Board of Appeal based its decision on an earlier international registration having effect in Germany, reference had to be made to German trademark law both for the date on which the international registration first took effect in Germany and for the starting point of the five-year time limit. The Board of Appeal was right to hold that:
  • the starting point for the five-year time limit ran from the date on which registration was completed; and
  • the time limit had not expired at the date of publication of the application for the ATOZ mark.
The CFI thus dismissed the appeal.
 
Jeremy Phillips, IP consultant to Olswang, London

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