Description of mark as 'advertising sentence' does not allow comparison

In El Corte Inglés SA v Office for Harmonisation in the Internal Market (OHIM) (Case T‑571/11, March 20 2013), the General Court has upheld a decision of the First Board of Appeal of OHIM in a case involving the Community word mark CLUB GOURMET.

On May 24 2004 Groupe Chez Gerard Restaurants Ltd applied for the registration of a Community trademark (CTM) consisting of the words ‘Club Gourmet’ to distinguish - after the restriction made during the proceedings before OHIM - certain goods in Classes 16, 21, 29, 30, 32 and 33 of the Nice Classification.

On July 22 2005 El Corte Inglés SA gave notice of opposition under Articles 8(1)(b) and 5 of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009).

The opposition was initially based on two Spanish word mark applications, a CTM application and a Spanish figurative mark but, subsequently, the opposition was based only on the Spanish figurative mark CLUB DEL GOURMET, EN… EL CORTE INGLES (No 1817328):

This mark was applied for on April 26 1994 and registered on January 5 1996 for services in Class 35, according to the following description:

"An advertising sentence. It will be applied to the products covered by the trademarks Nos 1013156 (Class 29), 1013157 (Class 30), 1815538 (Class 31), 1815539 (Class 32), 1013158 (Class 33), 1815547 (Class 42) EL CORTE INGLES (figurative)."

On September 3 2010 the Opposition Division rejected the opposition.

On October 6 2010 El Corte Inglés filed a notice of appeal against the decision of the Opposition Division, which was dismissed by the First Board of Appeal of OHIM on July 28 2011 on the following grounds:

1. Principally, the description of the earlier mark as "an advertising sentence" does not allow any comparison with the goods designated by the mark applied for, inasmuch as the earlier mark does not designate goods or a service in the sense of Article 8(1)(b) of the regulation.
2. Alternatively, even if it was considered that the earlier mark designates "advertising services" in Class 35, the goods and services designated by the marks at issue are dissimilar.
3. Lastly, the marks at issue were overall visually and phonetically dissimilar and there was only a slight degree of conceptual similarity.

El Corte Inglés appealed, alleging infringement of Article 8(1)(b) of the regulation.

El Corte Inglés submitted, in essence, that in accordance with the practice followed until 1997 by the Spanish Patent and Trademark Office (SPTO), a ‘slogan mark’ such as the earlier mark is protected not only for services in Class 35, but also for all the goods and services designated by one or more ‘basic marks’. Consequently, the mark No 1817328 in which the opposition is based, is also protected for goods and services in Classes 29 to 33 and 42, designated by the marks referred to in the earlier mark’s description of services.

On the contrary, OHIM contended that it is not possible to extend the protection of the earlier mark to goods in other classes or goods and services protected by other rights which have not been relied upon as the basis for the opposition.

The General Court established that it was first necessary to ascertain:

• the scope of the description of the goods or services for which the earlier mark had been registered;
• whether the additional information provided by the applicant for the first time before the General Court (and not before OHIM) should be considered by the court; and
• whether, and to what extent, there was any obligation on OHIM to examine certain matters of its own motion.

Regarding the first issue, the court considered that the earlier mark identifies a single service in Class 35, namely “an advertising sentence”, and excluded that the earlier mark was supposed also to designate the goods and services covered by the marks stated as constituting the scope of application of the service in question.

As for the second question, the General Court recalled that the purpose of an action before the court is the control of the legality of the decisions of the boards of appeal of OHIM, and notes that, within the meaning of Article 65 of the regulation, facts not submitted by the parties before the departments of OHIM cannot be submitted before the General Court, since the legality of the decisions of the boards must be assessed in the light of the information that was available to the boards at the time the decision was adopted.

The General Court stated that El Corte Inglés relied for the first time before the court on the specific practice of the SPTO concerning the treatment of ‘slogan marks’ until 1997 and on the Spanish case law concerning the scope of the protection conferred by registrations prior to that date (ie, the applicant did not allege before OHIM that the protection conferred by the earlier mark went beyond the services included in Class 35).

With respect to the third issue (ie, whether OHIM was required to take into account of its own motion the fact that, under Spanish law, the protection conferred by the earlier mark extended to the goods in Classes 29 at 33 and services in Class 42 designated by the marks mentioned in the description of the Spanish mark No 1817328), the court noted that, in principle, for the institutions of the European Union, the determination and interpretation of the rules of national law, insofar as they are essential in their activity, fall within the scope of the verification of facts and not within the scope of the application of the law (this application is limited to EU law). Consequently, national law is an issue of fact, where facts must be adduced and the requirements of the burden of proof apply, and the content of national law must be demonstrated where necessary by the production of evidence.

In relation to this issue, the General Court clarified that it is only where OHIM already has information relating to national law, either in the form of claims as to its meaning or in the form of evidence submitted and whose probative value has been adduced, that it shall obtain information about national law of its own motion.

Based on the foregoing the court concluded as follows:

• Neither the wording of the description of the services designated by the earlier mark nor the submissions or contentions of El Corte Inglés during the procedure before OHIM showed that the scope of the protection of the mark went beyond that strict wording. Therefore, it had to be assumed that the description of the services designated by the earlier mark was limited to the services in Class 35 as described below:

"An advertising sentence. It will be applied to the products covered by the trade marks Nos 1013156 (Class 29), 1013157 (Class 30), 1815538 (HPLC 31) 1815539 (Class 32), 1013158 (class 33), 1815547 (Class 42) EL CORTE INGLES (figurative)".

• For procedural reasons, the particularities of Spanish law which, in the applicant’s view, enabled the meaning of the description of the services to be conveniently clarified, could not be taken into consideration. Consequently, in line with the statement of the Board of Appeal, the description of the services designated by the earlier mark did not allow a comparison with the goods designated by the mark applied for.

As a result, the General Court rejected the appeal.

Antonia Torrente, Grau & Angulo, Barcelona