General Court annuls Board of Appeal's decision on procedural grounds

In Cytochroma Development Inc v Office for Harmonisation in the Internal Market (OHIM) (Case T‑106/12, July 3 2013), the General Court has annulled a decision of the First Board of Appeal of OHIM based on procedural considerations.

On March 3 2005 Ineos Healthcare Ltd, the predecessor in law of Cytochroma Development Inc, applied to register ALPHAREN as a Community trademark for “pharmaceutical and veterinary preparations containing magnesium iron hydroxy carbonate or hydrotalcite or derivatives of these compounds; pharmaceutical and veterinary preparations for use in renal dialysis and in the treatment of renal diseases and kidney ailments; phosphate binders for use in the treatment of hyperphosphataemia” in Class 5 of the Nice Classification.

On March 6 2006 Teva Pharmaceutical Industries Ltd filed a notice of opposition based on the Hungarian, Lithuanian and Latvian word marks ALPHA D3, covering “pharmaceutical preparation for calcium regulator” in Class 5.

On October 2007 the Opposition Division upheld the opposition. On March 24 2009 the Second Board of Appeal of OHIM dismissed the appeal. On February 9 2011, the General Court annulled the decision of the board only in respect of “pharmaceutical and veterinary preparations containing magnesium iron hydroxy carbonate or hydrotalcite or derivatives of these compounds” and “phosphate binders for use in the treatment of hyperphosphataemia”. The action was dismissed as to the remainder.  The case was remitted to the boards of appeal and, on December 2 2011, the First Board of Appeal rejected the contested mark for these products only. The matter then went back before the General Court.

The court upheld Cytochroma’s first plea alleging that OHIM had infringed Article 1(d)(2) of Commission Regulation 216/96 laying down the rules of procedure of the boards of appeal of OHIM inasmuch as one of the members of the Second Board of Appeal responsible for the 2009 decision also sat on the First Board of Appeal, which had considered the present case. That member was also the rapporteur for both decisions.

Cytochroma also argued that OHIM had taken the initiative to re-examine the case, while nothing in the General Court’s judgment required that the case be re-examined, and it was not necessary to do so. However, according to the court, the 2011 judgment dealt only with procedural aspects in relation to some categories of the goods involved. It did not rule on the merits and, in particular, it did not consider whether there was a risk of confusion between the marks. As a result, OHIM had taken the right approach, as it was required to carry out a new examination.    

Finally, Cytochroma alleged that the board had erred in carrying out an examination of the facts ex officio through an internet search, instead of confining itself to the facts, evidence and arguments provided by the parties. The court, however, took the view that, while the information filed by the parties was sufficient for the board to rule on the similarity of the goods at issue, the board had not relied on the information which had made the decision of 2009 unlawful.

Interestingly, this decision does not include the usual comparison of the goods and the signs. For once, the decision involves only procedural aspects, and it is quite instructive. When it comes to forming an overall strategy, it may lead parties who would otherwise have had slim chances of success on the merits to consider each and every point that might allow them to overcome a decision. Arguably, this is akin to a ‘US lawyer’ approach - who would have thought about raising the argument that the same board member sat on both the Second Board of Appeal and later on the First Board of Appeal?

Jean-Philippe Bresson and Franck Soutoul, INLEX IP EXPERTISE, Paris