General Court annuls OHIM decision, but refuses to alter it

European Union
In Völkl GmbH & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-504/09, December 14 2011), the General Court has addressed a number of interesting issues, including whether a decision of a board of appeal remitting the case to the Opposition Decision for re-examination may be challenged before the General Court, and the competence of the court to rule on matters which should have been decided by the boards of appeal.
The trademark applied for, the word mark VÖLKL, covered goods in Classes 3, 9, 18 and 25 of the Nice Classification. The goods in Class 25 were the following: “Shoes, in particular ski boots, après-ski boots, climbing boots, fur boots, climbing shoes, hiking shoes, sports shoes and shoes for leisurewear”.
The application was opposed based on the international word mark VÖLKL, which designated, among others, Spain and Italy. The opposition was based on Article 8(1)(b) of the Community Trademark Regulation (207/2009) and was directed only against part of the goods claimed by the mark applied for, namely "ski boots, snowboard boots and sports shoes" in Class 25.
The Opposition Division considered that the opponent had successfully shown proof of genuine use of the earlier VÖLKL mark in connection with all the relevant goods in Classes 18, 25 and 28, and concluded that there was a likelihood of confusion between the mark applied for and the earlier mark insofar as ski boots, snowboard boots and sports shoes were concerned. The registration of the mark applied for was thus allowed in Class 25 in respect of shoes other than those specified above, in addition to the goods in Classes 3, 9 and 18, against which the opposition had not been directed.
Upon appeal by the applicant, the Board of Appeal annulled the decision of the Opposition Division as regards the finding of a likelihood of confusion between the marks, and remitted the decision to the Opposition Division for further prosecution. The appeal was dismissed to the extent that it challenged the sufficiency of the evidence provided by the opponent to show genuine use of its earlier mark. 
Although the scope of the opposition had been clearly indicated by the opponent, the Board of Appeal disregarded the fact that the opposition had been directed only against specific goods (ie, ski boots, snowboarding boots and sports shoes). As a result, when the Board of Appeal remitted the case to the Opposition Division for re-examination, it did so in connection with all the goods covered by the application (including those against which the opposition was not directed).
This explains why the applicant requested that the General Court annul the Board of Appeal’s decision in its entirety, and not only insofar as it maintained the Opposition Division’s conclusions as to the sufficiency of the proof of use of the earlier mark.
The General Court upheld the applicant’s arguments relating to the infringement of Article 76(1) of the regulation, considering that the Board of Appeal had exceeded the limits of its jurisdiction by not restricting its examination to whether the opposition was rightly upheld in connection with ski boots, snowboarding boots and sports shoes. The court also found that the board had infringed the prohibition on reformatio in peius by putting the applicant in a worse position than it was before it appealed.
The applicant’s plea that the opponent had failed to prove the genuine use of its earlier mark was also upheld by the General Court. Although the Board of Appeal had reached the same conclusion as the Opposition Division, it had done so without adopting the grounds of the Opposition Division's decision and without referring to them in its own decision. In view of the limited amount of evidence which the board had taken into consideration to reach its conclusion, the court found that the board had erred in holding that such evidence was sufficient to establish the earlier mark’s genuine use, and criticised the board for not having deepened its analysis of the file.
The General Court, however, rejected the applicant’s request for the alteration of the contested decision. Firstly, the court found that, although the mark applied for did not expressly cover "snowboarding boots", such goods should be deemed to be contained in the general category of "sports shoes". Therefore, there was no reason to conclude that the opposition had not been rightly upheld in connection with "snowboarding boots".
Secondly, the court clarified that, although the Board of Appeal’s assessment of the genuine use of the earlier mark was incomplete, it was not within its competence to make its own finding regarding the insufficiency of such evidence and reject the opposition on that ground, as this would “upset the institutional balance on which the division of jurisdiction between OHIM and the court is based”. 
As the General Court confined itself to annulling the board's decision, without altering it, it will be interesting to see what measures OHIM will take to comply with the judgment pursuant to Article 65(6) of the regulation. While the judgment of the General Court is binding on the board, this does not necessarily mean that a new (and thorough) examination of the evidence of use submitted by the opponent will result in a different conclusion.
Celia Sueiras, Garrigues Abogados, Madrid

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