General Court considers whether OHIM breached equal treatment principle

European Union

In Aitic Penteo SA v Office for Harmonisation in the Internal Market (OHIM) (Case T-585/10, May 22 2012), the General Court has had a rare opportunity to decide whether the refusal to register a trademark constituted a breach of the principle of equal treatment.

On December 1 2006 Aitic Penteo SA applied for the registration of the word mark PENTEO as a Community trademark. Atos Worldline SA filed an opposition based on its earlier word mark XENTEO. The Opposition Division of OHIM upheld the opposition in its entirety and rejected the application for PENTEO. The decision was subsequently confirmed by the First Board of Appeal of OHIM.

Before the General Court, Aitic Penteo claimed that the court should alter the board's decision and allow the application for PENTEO to proceed. Aitic Penteo’s pleas in law included the following:

  • the refusal to register the PENTEO mark constituted a breach of the principle of equal treatment;
  • the board had not answered the applicant’s arguments concerning prior rights; and
  • the marks at issue were dissimilar.

Regarding the first plea, Aitic Penteo submitted that the refusal to register its trademark constituted a breach of the principle of equal treatment and infringed Article 14 of the Convention for the Protection of Human Rights and Fundamental Freedoms. This was based on the fact that OHIM had previously rejected an opposition by Aitic Penteo based on the alleged dissimilarity between Aitic Penteo's earlier figurative mark (pictured below) and the word mark XENTEO.

Aitic Penteo submitted that the two decisions were contradictory and, therefore, contrary to the principle of equal treatment.

The court rejected this plea on the grounds that the figurative mark GRUPO PENTEO and the word mark PENTEO were not identical and, consequently, the two decisions did not have the same subject-matter. Furthermore, the court held that Aitic Penteo could not invoke the benefit of a decision-making practice of OHIM which would be contradictory to the Community Trademark Regulation (207/2009) or lead to an unlawful decision.

With regard to the Board of Appeal’s reasons for its decision, the court stated that:

  • the board cannot be required to follow all lines of reasoning by the parties; and
  • the grounds stated may be implicit, provided that they enable the persons concerned to know the reasons for the decision and provide the competent court with sufficient material for it to exercise its power of review.

The court held that the board had fulfilled the obligation to state reasons under Article 75 of the regulation.

As to the issue of confusing similarity, the court confirmed the board’s view that the goods and services covered by the marks were identical. The goods and services covered by the earlier mark were found to be included in those covered by the application. The court also noted that the prospective assessment of the likelihood of confusion between two marks cannot be dependent on marketing intentions. Only the list of goods and services as it appears in the application should be considered.

Regarding the comparison of the signs, the court noted that the signs at issue differed in their first letters, namely 'P' and 'X'. The court stated that, while it is true that the initial part of word marks may be liable to attract the consumer’s attention more than the following parts, the difference in the first letters of each sign was insufficient to counteract the similarity between the signs in respect of all the other letters. The signs were thus considered to be visually and phonetically similar.

Since none of Aitic Penteo’s pleas in law were considered to be well founded, the action was dismissed in its entirety.

This decision confirms that each matter is to be decided on its own merits at the European level, and that one should be cautious when relying on previous decisions. In addition, it demonstrates that the assessment of the similarity of goods and services must be based on the actual specifications, rather than on information about the use that an applicant intends to make of its mark.

Lisbet Andersen, Bech-Bruun, Copenhagen  

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