Decision highlights need to produce all necessary evidence in good time

In Bial-Portela & Cª SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-113/12, January 21 2014), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM finding that the figurative trademark PROBIAL was not confusingly similar to several earlier BIAL marks.

The facts of the case are fairly complex. Probiotical SpA applied for the registration of the figurative sign PROBIAL as a Community trademark (CTM) to identify various probiotic goods in Class 5 of the Nice Classification:

Bial-Portela & Cª SA filed an opposition based on various earlier rights, including:

• the Portuguese word mark BIAL for goods in Class 5;
• the figurative CTM BIAL for goods and services in Classes 3, 5 and 42: 
  
• the Spanish figurative trademark BIAL for services in Class 35:
  
• the international word mark BIAL for goods in Class 5, registered for the Benelux, Germany, France, Italy and Austria; and
• other IP rights established and registered under Portuguese law:
  • an emblem:
    
  • the business name Bial; and
  • a logo:
    

Bial-Portela claimed that the Portuguese word mark BIAL had a reputation in Portugal.

The opposition was based exclusively on the grounds referred to in Articles 8(1)(b) and 8(4) of the Community Trademark Regulation (207/2009). In its reply to the opposition, Probiotical requested that Bial-Portela submit proof of use of some of its earlier rights.

By a decision of April 20 2009, the Opposition Division of OHIM upheld the opposition for all of the contested goods based on a likelihood of confusion with the earlier CTM, and did not consider the remaining earlier rights on which the opposition was based.

Probiotical appealed. The Board of Appeal established that the mark applied for and the earlier CTM BIAL were not similar and, therefore, there was no likelihood of confusion. The board remitted the case to the Opposition Division so that the latter could assess whether the mark applied for should be refused on the basis of any of the other prior rights invoked in the opposition. The board's decision was not appealed by Bial-Portela.

The Opposition Division decided to reject the opposition in its entirety. Because all of Bial-Portela’s earlier rights were composed of the word 'Bial', which the Board of Appeal had already found not to be confusingly similar to PROBIAL, the Opposition Division concluded that a different ruling would be inconsistent with that of the Board of Appeal and contrary to the principle of equality.

Bial-Portela decided to appeal this decision, arguing that:

• Bial-Portela was a well-known company operating in the area of health, known for eight decades under the business name Bial or Laboratórios Bial;
• its trademark BIAL was well known and benefited from a reputation in Portugal (referring to the documents presented as proof of use in the opposition proceedings); and
• the conflicting signs were highly similar and identified identical goods.

In its reply, Probiotical contended that:

• the goods were not sufficiently similar;
• the enhanced distinctiveness of the earlier marks had not been proved; and
• no detriment or unfair advantage had been shown.

The Board of Appeal dismissed the appeal in its entirety, arguing as follows:

• As Bial-Portela had not appealed the Board of Appeal’s previous decision finding that the earlier BIAL CTM was not similar to the trademark applied for, and since this decision had become final, the analysis of the Board of Appeal had to be restricted to the other earlier rights on which the opposition was based.
• Because Bial-Portela had not relied on Article 8(5) of the regulation in its notice of opposition, the Board of Appeal could not base its assessment on the potential reputation of Bial-Portela’s earlier Portuguese IP rights.
• With respect to the likelihood of confusion between the conflicting signs, the evidence of use of the earlier rights did not prove that they were used to identify goods or services, but merely confirmed “the existence of a company in Portugal with the name 'Bial' producing pharmaceutical products, being actively involved in the 'Bial Foundation' and having a branch in Spain”. The only exception was the Spanish figurative trademark BIAL, the genuine use of which was considered to have been established.
• Regarding Bial-Portela’s additional IP rights (ie, the emblem, business name and logo), not enough evidence had been provided in order to conclude that those rights were used in the course of trade and had more than merely local significance, as required by Article 8(4) of the regulation. Similarly, Bial-Portela had failed to provide proof within the appropriate time limit that the trademark BIAL was well known in Portugal.
• The services covered by the Spanish figurative trademark BIAL in Class 35 were different from those covered by the mark applied for.

Bial-Portela brought an action before the General Court, seeking the annulment of the board's decision. Its arguments may be summarised as follows:

• The earlier rights (specifically, the Portuguese trademark BIAL) enjoyed a reputation in Portugal, in accordance with Article 8(5) of the regulation.
• The Board of Appeal had infringed Article 8(1)(b), as the trademark applied for and the earlier rights presented a high level of similarity, both visually and aurally, and identified identical goods in Class 5.
• The Board of Appeal had not taken into account the provisions of Article 8(4), as Bial-Portela’s emblem, business name and logo contained the element 'Bial', which was reproduced in the mark applied for. Moreover, those rights were used in the course of trade and enjoyed protection nationwide under Portuguese law.

The General Court essentially agreed with the arguments of the Board of Appeal:

• The Opposition Division could not have taken into account a ground for refusal that had not been included in the notice of opposition. Therefore, the Opposition Division had been right in not recognising the (alleged) reputation of the Portuguese trademark BIAL.
• Because Bial-Portela had not appealed the decision in which the Board of Appeal had considered that the mark applied for was not confusingly similar to the earlier CTM BIAL, it had allowed such decision to become final.
• Bial-Portela had failed to challenge the findings of the Board of Appeal regarding the absence of proof of genuine use, in a trademark sense, of the earlier rights relied upon.
• Concerning Bial-Portela’s claim that the Portuguese trademark BIAL enjoyed enhanced reputation in Portugal, the court corroborated the Board of Appeal’s finding that the opposition could not have been based on this circumstance because Bial-Portela had not submitted, within the prescribed period, any evidence in this regard.
• Concerning the Spanish trademark BIAL, Bial-Portela had not put forward any arguments demonstrating that the Board of Appeal had been wrong in considering that the services identified by that mark were dissimilar from those covered by the mark applied for.
• Bial-Portela had not proven in a timely manner that its Portuguese emblem, business name and logo were used in the course of trade, that they had more than local significance and that the other requirements stipulated in Paragraphs a) and b) of Article 8(4) of the regulation had been met.

This case illustrates the substantial differences between opposition proceedings before OHIM on the one hand, and national offices on the other. In Portugal, for example, the ex officio examination of relative grounds for refusal is still carried out. Contrary to what happens before OHIM, in an opposition filed before certain national offices (eg, the Portuguese IP office, INPI), it is possible to file additional submissions and supporting evidence, provided that the decision has not yet been issued. These differences, along with the fact that the INPI is much less stringent than OHIM with regard to the quantum of proof required to demonstrate the well-known character or reputation of trademarks, might explain the mishaps of certain Portuguese companies in cases such as this one.

Moreover, this case highlights the need to submit to OHIM (along with the grounds of opposition) not only all the evidence necessary to establish the earlier trademarks’ reputation or well-known character, but also the evidence required under Article 8(4) regarding other kinds of earlier rights enforceable against a trademark application.

It is expected that, should the proposal for the amendment of the Trademark Directive go ahead, there will be a full alignment between OHIM and the national offices regarding the way in which opposition proceedings are handled.

Micael Martins Teixeira and Francisca Ferreira Pinto, Garrigues, Portugal