General Court considers application of res judicata

In Tegometall International AG v Office for Harmonisation in the Internal Market (OHIM) (Case T-11/13, September 23 2014), the General Court has decided, in a short decision, on an important procedural issue.

In 2004 Irega AG filed an application for the registration of the mark MEGO in Classes 6 and 20 of the Nice Classification. The registration was opposed without success by the predecessor of Tegometall International AG based on the trademarks TEGO and TEGOMETALL.

In 2008 Tegometall filed a cancellation action on the basis of the same marks. The action was rejected by the Cancellation Division of OHIM. The First Board of Appeal of OHIM rejected the appeal on the grounds that:

• the same set of facts and claims had been invoked and rejected in opposition proceedings against the MEGO mark between Irega and the predecessor of Tegometall; and
• this opposition decision was final.

In addition, the board noted that the cancellation action was based on the Community trademarks TEGO and TEGOMETALL, which were registered after the MEGO mark. Therefore, Tegometall could not invoke priority.

On appeal, the General Court decided that the authority of res judicata is not applicable to the relation between a final decision in opposition proceedings and a request for cancellation, since:

• proceedings before OHIM are administrative in nature, rather than judiciary; and
• no provision of the Community Trademark Regulation (207/2009) includes a rule in this respect.

As a consequence, it was decided that the board had erred in dismissing the action for cancellation on the basis of a previous decision in opposition proceedings.

The question remains of what would have been the outcome of the case if the opposition decision had been appealed and the General Court had issued a decision.

Richard Milchior, Granrut Avocats, Paris