Community Trademark Regulation language regime is legal

In Kik v Office for Harmonization in the Internal Market (OHIM), the European Court of Justice (ECJ) has upheld the legality and clarified the application of the language regime set out in Article 115 of the Community Trademark Regulation.

The language regime provides that Community trademark applications must be filed in one of the 11 official languages of the OHIM. However, if the applicant files its application in a language other than one of the five main OHIM languages, namely English, French, German, Italian and Spanish, the applicant must also indicate which of those five it wishes to use as a second language. Article 115 also states that the OHIM may use the second language in opposition, revocation or invalidity proceedings, as well as in "written communications" with the applicant in examination proceedings.

The case stemmed from an application to the OHIM to register KIK as a Community trademark. The applicant filed the application in Dutch and also designated Dutch as the second language. The OHIM dismissed the application on the grounds that the applicant had not complied with Article 115 because she had failed to designate one of the OHIM's five main languages as a second language. The applicant appealed and the case went to the ECJ.

In its decision the ECJ stated that, in examination proceedings between the OHIM and an applicant, the phrase "written communications" was an exception to the general rule established by Article 115(4) that the filing language is the language of the proceedings before the OHIM. It held therefore that this term must be very narrowly defined to include only:

"[...] communications which, from their content, cannot be regarded as amounting to procedural documents, such as letters under cover of which the [OHIM] sends procedural documents, or by which it communicates information to applicants."

All other documents, including notifications and requests for corrections, clarification or other documents, constitute procedural documents and must therefore be in the filing language.

It is likely that this decision will have an effect on certain aspects of the OHIM's procedure, as previously it has used a much broader interpretation of "written communications". Generally, if the filing language was not one of the five main OHIM languages, all communications from the OHIM, whether procedural or otherwise, were sent in the second language indicated.

However, based on the ECJ's narrow interpretation of "written communications" in this decision, if an applicant files a Community trademark application in a language that is not one of the five main OHIM languages, such as Dutch, and indicates English as the second language, all substantive documents, including any objections to the classification of goods or services or absolute grounds of refusal, should be sent in Dutch. For this reason, applicants that previously strategically filed in a language other than one of the five main OHIM languages in order to ensure that communications would be in the second language should reconsider their filing strategies.

Based on its narrow interpretation of "written communications", the ECJ held that on a general level the language regime of examination proceedings used by the OHIM was legal.

Similarly, it upheld the language regime in connection with opposition, invalidity and revocation proceedings. In its reasoning, the ECJ held that the evidence produced by the applicant did not establish a principle of equality between all languages of the European Union and that the language regime did not therefore conflict with the EC Treaty or general principles of EU law. Consequently, it found that the provisions in Article 115 limiting the OHIM's official languages to those that are most widely known in the European Union were appropriate and proportionate.

For background information on this case, see Trademark regulation does not infringe 'equality of languages' principle.

Karina Dimidjian, Bureau DA Casalonga-Josse, Paris