General Court annuls OHIM's decision in 'blade of grass in bottle' case

In CEDC International sp zoo v Office for Harmonisation in the Internal Market (OHIM) (Case T-235/12, December 11 2014), the General Court has annulled a decision of the Fourth Board of Appeal of OHIM in which the latter had found that the opponent had not proven the genuine use of the earlier three-dimensional mark relied on in the opposition.

On April 1 1996 Underberg AG filed an application for registration of the following three-dimensional trademark:

The mark was described as “a greeny-brown blade of grass in a bottle, the length of the blade of grass is approximately three-quarters the height of the bottle”. It covered “spirits and liquors” in Class 33 of the Nice Classification.

The application was opposed on September 15 2003 by Przedsiębiorstwo Polmos Białystok (SA), which was later replaced by CEDC International sp zoo. The opposition was based on, among other marks, the following French national registration (No 95588457) for “alcoholic beverages” in Class 33:

The description of the above mark read as follows: “a bottle as represented above, inside which a blade of grass is placed almost diagonally in the body of the bottle”. The opposition was also based on earlier national German, Polish, Japanese and French registrations, as well as unregistered marks claimed in various member states of the European Union.

The opponent was requested to submit proof of genuine use of the French mark, but the evidence provided was found to be insufficient and the opposition was rejected in its entirety. It was held that the evidence of use of the mark in the following form did not prove use of the mark as registered:

The appeal filed by the opponent was also dismissed in its entirety. The Board of Appeal stressed, among other things, that a vodka bottle bearing the Zubrowka label and containing a blade of bison grass did not prove “the nature of use of the earlier three-dimensional French mark, that is to say, the use of that mark as registered or in a form differing in elements which did not alter the distinctive character of that mark in the form in which it was registered”. The use of the unregistered marks had not been proved either.

The matter was finally sent for examination by the General Court. CEDC claimed, among other things, infringement of Article 75 and Article 76(1) and (2) of the Community Trademark Regulation (207/2009). According to Article 75, “decisions of the office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments”. Article 76(1) states that “in the proceedings before it the office shall examine the facts of its own motion; however, in the proceedings relating to relative grounds for refusal of registration, the office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and relief sought”, while Article 76(2) says that “the office may disregard facts or evidence which are not submitted in due time by the parties concerned”.

According to CEDC, OHIM had failed to examine the representations of the mark produced by CEDC, which showed the bottle from four different angles (not only from the front, but also from the back and the side):

This representation showed 700 ml bottles of Zubrowka vodka, which were exported to France. CEDC was of the opinion that such representation of the three-dimensional mark allowed to see clearly the shape of a blade of grass inside the bottle. The image was part of a statement from a specialist-technologist in charge of labelling for CEDC since 1992, and this statement was one of the pieces of evidence produced for the first time before the Board of Appeal. CEDC further stated that the Board of Appeal had failed to exercise its discretion whether or not to take such evidence into account and that no reasons for its decision had been provided. 

Having analysed the case, the General Court underlined that such late evidence could be taken into account by OHIM as it was produced along with the statement setting out the ground of CEDC’s action before the Board of Appeal. The court also shared CEDC’s point of view regarding OHIM’s failure to exercise the discretion whether or not to take such evidence into account and to provide reasons for such decision.

The General Court thus annulled the decision of Board of Appeal, ruling that:

“by failing to exercise its discretion in an objective, reasoned manner, to decide whether or not to take into account the evidence of use of the earlier three-dimensional French mark produced for the first time before it, the Board of Appeal infringed Article 76(2) of Regulation No 207/2009 and also Article 75 of the same regulation by failing to give reasons for its decision on the matter”.

The case was thus returned to the Board of Appeal to:

“assess, in keeping with the guidance from the case law and the present judgment, taking due account of all the relevant circumstances and providing reasons for its decision on the matter, whether or not account must be taken of the additional evidence submitted by the applicant for the first time before it, in order to make the decision it is called upon to give in the action which is still pending before it”.

Izabella Dudek-Urbanowicz, Patpol, Warsaw