CFI clarifies relevant date for invalidation assessment

European Union
In Frosch Touristik GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-189/07, June 3 2009), the Court of First Instance (CFI) has annulled a decision of the Fourth Board of Appeal of OHIM in which the latter had found that the trademark FLUGBÖRSE was invalid.

On April 1 1996 Frosch Touristik GmbH filed an application for the registration of the mark FLUGBÖRSE as a Community trademark in respect of goods and services relating to travel and accommodation. The mark was registered on October 29 1998.
 
On April 8 2003 DSR Touristik GmbH applied for a declaration of invalidity of the registration under Article 51(1)(a) of the Community Trademark Regulation (40/94) - now Article 52(1)(a) of the Community Trademark Regulation (207/2009). Article 52(1)(a) states that “a trademark shall be declared invalid […] where the Community trademark has been registered contrary to […] Article 7”. In particular, DSR Touristik argued that the mark:
  • was “devoid of any distinctive character”; and
  • consisted “exclusively of signs or indications which may […] designate the kind, quality, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service”.
Failing that, DSR Touristik sought to rely on Article 51(1)(a) of Regulation 40/94, alleging that the mark was misleading. Furthermore, in April 2004 DSR Touristik applied for revocation of the registration on the grounds that the mark had “become the common name in the trade for a product or service” under Article 51(1)(b). In November 2004 the Cancellation Division of OHIM declared that the registration was invalid for all the goods and services covered by the mark, except the provision of food and drink in restaurants.
 
In March 2007 the Board of Appeal of OHIM dismissed the appeal brought by Frosch against the Cancellation Division’s decision. The board observed that:
  • an application for a declaration of invalidity should be examined in relation to the market conditions at the date on which the mark was registered;
  • the mark had not “acquired a distinctive character in relation to the goods or services for which it was registered” under Article 52(2) of Regulation 207/2009; and
  • the word 'Flugbörse' was merely descriptive of the goods and services on the registration date.
The board stated that the word  'Flugbörse' would be understood by the average German consumer as an amalgamation of the words 'Flugdatenbank' (flight database) and 'intelligente Suchmaschine' (intelligent search engine). Frosch appealed to the CFI.
 
The CFI disagreed with the board's finding that the relevant date when examining the market conditions surrounding a trademark (on consideration of an application for a declaration of invalidity of the mark) was the date of registration. It held that the relevant date should be the date of application (in this case, April 1 1996), which was some 30 months before the mark was registered. The board had thus been incorrect in stating that the date of registration was the date to be used when assessing whether the trademark was descriptive of the goods and services.

Further, case law that supports OHIM’s view that developments which occur between the application and registration dates may be taken into account does not contradict Article 51(1)(a) of Regulation 40/94. However, it is possible to consider an issue that came to light after the application is made only if it “directly relates to the situation on the date of filing […] the application”.

The CFI also stated that a trademark must have distinctive character before the application date - as opposed to the registration date - due to the often lengthy registration process.
 
The decision clarifies the position on the correct date to be applied when examining whether a trademark should be declared invalid. However, it fails to explore fully the meaning of events which become apparent after an application has been filed, but before the mark is formally registered. It is thus expected that there will be more case law on this issue in the future.

Hannah Jenkins, Hammonds LLP, London

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