Copyright cannot be invoked in opposition proceedings

European Union
In Padilla v Office for Harmonization in the Internal Market (OHIM) (Case T-255/08, June 22 2010), the General Court has considered what type of rights can be asserted in opposition proceedings.
The intervener, José María Padilla Requena, filed an application for the registration of the mark JOSE PADILLA as a Community trademark (CTM) for goods and services in Classes 9, 25 and 41 of the Nice Classification. Eugenia Montero Padilla, the niece of composer José Padilla, filed an opposition based on earlier Spanish registrations for the mark JOSE PADILLA. She also relied on:
  • the well-known mark JOSE PADILLA;
  • the mark with a reputation JOSE PADILLA;
  • the rights attaching to the sign JOSE PADILLA used in trade, including rights in the name José Padilla and copyright.
The Opposition Division of OHIM rejected the opposition on the grounds that the existence of the earlier Spanish marks, the use of the name José Padilla as a trademark and the well-known nature of that mark had not been proven. Moreover, the rights in relation to the earlier sign used in trade could not be invoked in the context of opposition proceedings. The Second Board of Appeal of OHIM upheld the decision of the Opposition Division and Eugenia Montero Padilla appealed.
This case raised the issue of whether the name of a famous composer could be considered as an unregistered trademark with a reputation or a well-known mark under Article 6bis of the Paris Convention for the Protection of Industrial Property. Moreover, the issue was whether the reputation of the composer was independent from the use of his name on various products (eg, records, cassettes and CDs) or was closely linked to these products.
First, the General Court considered whether Eugenia Montero Padilla had changed the subject matter of the proceedings by claiming for the first time before the court that the registration of the mark applied for would enable the intervener to preclude her from using the name of composer José Padilla in exploiting the IP rights that she had inherited. In effect, Eugenia requested that the court review the legality of the board's decision in light of Article 9 of the Community Trademark Regulation (40/94). Therefore, the court held that this plea was inadmissible. The court stated that an opposition may be based only on the relative grounds for refusal set forth in Article 8 of the regulation. Consequently, neither the examiner nor the Opposition Division of OHIM had to take into consideration arguments based on Article 9 in examining the opposition.
The court further held that Article 8(5) of the regulation applies to earlier trademarks only insofar as they have been registered. Therefore, an unregistered trademark, such as that relied on by Eugenia Montero Padilla in this case, could not be taken into consideration. This conclusion was in compliance with earlier case law of the court (see Müllhens v OHIM (Case T-150/04)).
In addition, the court noted that the definition of 'earlier trademarks' under Article 8(1) also includes well-known marks within the meaning of Article 6bis of the Paris Convention. However, the court found that Eugenia had failed to prove that the earlier mark JOSE PADILLA was well known.
Finally, the court considered whether the other rights on which Eugenia relied could be asserted in opposition proceedings. In this respect, the court held that rights in a name could not be considered as earlier rights within the meaning of Article 8(4). Such rights could be asserted in invalidity actions, but not in opposition proceedings.
In addition, the court held that copyright cannot constitute a sign “used in the course of trade of more than mere local significance”, the rights in which “were acquired prior to the date of application for registration of the Community trademark” under Article 8(4). The court pointed out that Article 53(2)(c) of the regulation provides that a CTM shall be declared invalid if its use may be enjoined on the basis of “another earlier right”, particularly a copyright. Copyright is not mentioned in Article 8(4) and, therefore, cannot be invoked in opposition proceedings.
The court thus dismissed the action, thereby allowing the co-existence of two identical signs.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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