Extension of time in revocation actions: OHIM may make it conditional on other party's consent

European Union

In Husky CZ sro v Office for Harmonisation in the Internal Market (OHIM) (Case T-287/13, February 13 2015), the General Court of the European Union has considered aspects of OHIM procedure and practice in the context of an appeal from a decision of the First Board of Appeal of OHIM in respect of an application for revocation of the Community word mark HUSKY (No 152546), registered in Classes 3, 9, 14, 16, 18 and 25 of the Nice Classification in the name of Husky of Tostock Ltd.

The mark is used primarily in relation to a famous style of quilted impermeable jackets traditionally intended for hunting and horse-riding. More profanely, Husky jackets are a ‘must have’ if you are going for the 'preppy' look.

Husky CZ filed an application for revocation of the HUSKY mark on the basis that it had not been put to genuine use in respect of the goods covered by the registration pursuant to Article 50(1)(a) of the Community Trademark Regulation (40/94) (now Article 51(1)(a) of the Community Trademark Regulation (207/2009)).

The Cancellation Division and First Board of Appeal of OHIM granted the application in part, but held that the mark could remain registered in respect of certain goods in Classes 18 and 25. Husky CZ lodged an appeal with the General Court, putting forward three pleas in law, namely that OHIM had erred in:

  1. granting an extension of time for the filing of evidence without obtaining Husky CZ’s consent;
  2. taking into account untranslated documents; and
  3. taking into account undated documents.

The appeal was rejected on all counts.

With regard to the extension of the time limits for filing evidence, the General Court looked at the interpretation of Rule 71(2) of the Community Trademark Implementation Regulation (2868/95), whereby “where there are two or more parties, the office may extend a period subject to the agreement of the other parties”.

The court considered other language versions of the Implementing Regulation and looked at the nature and aim of Rule 71(2) - ie, that granting extensions of time falls within the scope of OHIM’s discretion to be exercised when it is appropriate in the circumstances (as brought to the attention of OHIM by the party seeking the extension). This was in line with the French, German, Italian and Spanish versions of the Implementing Regulation.

The court held that Rule 71(2) should be read as saying that “the office may subject the extension of a period to the agreement of the other parties” - ie, the other party’s agreement is not a necessary requirement for granting the extension but a condition precedent that OHIM may wish to impose where appropriate on the facts.

With regard to OHIM’s alleged error in not requesting translations of certain documents submitted by Husky of Tostock, the court found that OHIM "may" require a party to submit translations but that there was no automatic requirement, in the absence of an express request from the other party to the proceedings.

Finally, the court did not think that OHIM had erred in considering undated documents in its assessment of genuine use of the mark by Husky of Tostock. The court confirmed that, when assessing whether use of a mark is genuine, one needs to look at “all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real”. Pursuant to Rule 22(3) of the Implementing Regulation, evidence of use of a mark “shall consist of indications concerning the place, time, extent and nature of use”. However, the rule does not require each item of evidence to provide such information. It is an "overall assessment", whereby OHIM may look at an accumulation of items of evidence, even though each individual item would not have been sufficient to establish genuine use by itself.

Rather belatedly, Husky CZ argued before the court that the term 'husky' was generic in Italian for "padded winter jackets", but then conceded at the hearing that the application for revocation was based solely on Article 51(1)(a) of the Community Trademark Regulation.

It would have been interesting to see OHIM's and the court’s approach to a genericism attack and Husky CZ’s evidence in support of it. As a native Italian speaker, the author can see why genericism was raised, but can also see the possible difficulties arising from the ‘identification’ of the sign alleged to have become generic. In Italian, 'husky' tends to be pronounced without an ‘H’ and, rather predictably, without an English accent. There is a possibility that the Italian public’s perception of the sign phonetically may not match the mark visually. Particularly for that section of the public that knows the sign only phonetically, there is no guarantee that it would associate the phonetic sign with the mark, when the mark is shown to them. A survey could have given very unpredictable results.

Cam Gatta, Redd Solicitors LLP, London

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