General Court annuls Board of Appeal decision in opposition proceedings due to failure to state reasons

In Rintisch v Office for Harmonisation in the Internal Market (OHIM) (Case T-382/14, September 24 2015), the Eighth Chamber of the General Court – without an oral procedure – has found a failure to state reasons in the Board of Appeal’s decision in opposition proceedings.

In August 2008 French company Compagnie laitière européenne SA obtained from the International Bureau of the World Intellectual Property Organisation an international registration designating the European Community for the word mark PROTICURD, claiming protection for, among other things, “pharmaceutical preparations” in Class 5 and “milk powders, whey proteins, milk beverages, with milk predominating; proteins of animal or vegetable origin and/or based on unicellular organisms for human food consumption purposes” in Class 29 of the Nice Classification.

A German individual, Bernhard Rintisch, filed an opposition based on various prior German registrations, including the word marks PROTI and PROTIPLUS and the figurative mark PROTI POWER, all claiming protection for goods in Class 29 (eg, “milk products, protein in particular in powder form”) and Class 32 (“preparations, particularly proteins and carbohydrates, particularly in powder form, for beverage preparation”). In the course of the opposition proceedings, upon the request of the French company, Rintisch furnished proof of use of his earlier German marks, including:

• an affidavit stating that the marks were used in relation to “protein concentrates as food supplements for the field of sport and fitness” in Germany and stating the turnovers in respect of those marks between 2000 and 2007;
• brochures and price lists for the year 2008;
• labels; and
• invoices showing sales of various goods under those marks in Germany between 2006 and 2008.

The Opposition Division of OHIM upheld the opposition in respect of the goods in Classes 5 and 29, finding that the proof of use showed that the earlier marks had been used in respect of “protein concentrates as food supplements for the field of sport and fitness” in Class 29 and “protein concentrates as food supplements for the field of sport and fitness, for beverage preparation” in Class 32.

The Fourth Board of Appeal of OHIM partially granted the appeal of the French company, partially annulled the Opposition Division’s decision and rejected the opposition in respect of all the goods covered by the mark applied for in Class 5 (“pharmaceutical preparations etc”) and some of the goods covered by the mark in Class 29, namely “milk powders and milk beverages with milk predominating”. By contrast, it refused protection as regards “whey proteins, proteins of animal or vegetable origin and/or based on unicellular organism for human food consumption purposes” in Class 29. The Board of Appeal found that genuine use of the earlier mark(s) was proved only with respect to “preparations, particularly proteins, also supplemented with vitamins and/or mineral salt as well as carbohydrates, each particularly in powder form, for beverages preparation” in Class 32. On this basis, the Board of Appeal found there was no likelihood of confusion with regard to the dissimilar goods in Class 5, as well as with regard to the only remotely similar goods “milk powders, milk beverages, with milk predominating” in Class 29.

Rintisch filed an action putting forward three pleas in law:

• the board had infringed Article 8(1)(b) of the Community Trademark Regulation (207/2009) by wrongly concluding that there was no likelihood of confusion with regard to the contested goods in Class 5 and some of the contested goods in Class 29;
• the board had infringed Article 42(2) by taking into account only the goods in Class 32 which are registered for the earlier mark PROTI and not the goods in Class 29; and 
• the board had infringed Article 75 by not stating the reasons for its implicit assessment that Rintisch had not proved genuine use of the earlier trademark PROTI in connection with the goods in Class 29.

The General Court confirmed that the Board of Appeal had not ruled clearly and unequivocally on whether the earlier mark PROTI had been put to genuine use in connection with “dietetic foodstuffs not for medical purposes” in Class 29 and, therefore, on whether those goods had to be taken into consideration for the purposes of assessing whether there was a likelihood of confusion. This constituted an infringement of essential procedure requirements, as both the Opposition Division and the parties before the Board of Appeal had discussed whether there was genuine use by the earlier marks, in particular PROTI, in connection with certain goods in Class 29. This did not enable, first, Rintisch to defend his rights and, secondly, the courts of European Union to exercise their power to review the legality of that decision.

The court upheld the first plea and annulled the contested decision, without it being necessary to examine the further pleas.

The General Court correctly annulled the decision of the Board of Appeal due to a technical/formal error in its reasoning. This is another - at least temporary - victory for Rintisch, who has become known in the trademark world for the decision of the Court of Justice of the European Union in a reference for a preliminary ruling from the German Federal Court of Justice on the use of a trademark in a different form, which also concerned his portfolio of PROTI marks (Case C-553/11, October 25 2012).

Florian Schwab, Boehmert & Boehmert, Munich