General Court reminds OHIM of its duty to investigate content of national law relied on in opposition

In Rot Front OAO v Office for Harmonisation in the Internal Market (OHIM) (Case T-96/13, October 28 2015), the General Court has reminded OHIM of its obligation to assess, by whatever means it deems appropriate, the content and scope of the provisions of national law relied upon by an opponent.

The dispute related to the figurative Community trademark pictured below, which covered a range of snacks and confectionery products in Classes 29 and 30 of the Nice Classification.

Rot Front opposed this application under Article 8(4) of the Community Trademark Regulation (207/2009). The opposition was based on an identical unregistered mark used in the course of trade in connection with confectionery in Germany. The opponent claimed that, under the German Trademark Law (Markengesetz), it was entitled to prohibit the use of the CTM applied for.

The Opposition Division of OHIM considered that the evidence submitted was insufficient to establish that the earlier unregistered mark was recognised by a substantial part of the German public as belonging to the applicant. Despite the opponent’s efforts to establish that the relevant public was not the entire German population, the Opposition Division rejected the opposition. The Second Board of Appeal of OHIM concurred with these findings. In its opinion, the fact that the mark was written in Cyrillic characters and that the relevant goods were essentially sold in shops visited by a primarily Russian-speaking clientele was not sufficient to limit the relevant public to Russian-speaking consumers only.

Rot Front appealed, requesting the General Court to annul the Board of Appeal’s decision on the ground that OHIM had erred in its interpretation of the Markengesetz, and in particular, in defining the relevant public.  

According to the Markengesetz, trademark protection may be obtained through use of a sign in the course of trade, provided that such sign “has acquired recognition as a trademark within the affected trade circles”. Rot Front held that, even though the goods at hand were mass consumption goods, the relevant public should be limited to Russian-speaking consumers living in Germany. To support its argument that the relevant public could be more narrowly defined in certain circumstances, Rot Front relied on the case law of the German Supreme Court and on academic writings, which it produced for the first time before the court. Despite OHIM objections, the General Court clarified that, to the extent such documents were aimed at interpreting a provision of national law, they were deemed admissible.

The General Court agreed that the Board of Appeal had erred in law when it rejected the argument that the relevant public should be restricted to Russian or Russian-speaking consumers in Germany. First, the court pointed out that OHIM had been wrong to rely on EU case law to reject Rot Front’s arguments regarding the relevant public, as the ius prohibendi – or right to prohibit the use of a subsequent mark – of an unregistered mark should be determined in the light of the applicable national law and case law or academic writings which interpret it.

The court concluded that, by failing to adequately research the content and scope of the provisions of German law relied upon, OHIM had misinterpreted such provisions and therefore misapplied Article 8(4) of the regulation. Interestingly, the court reminded OHIM that its power to obtain information about national law of its own motion was expressly contained in the office’s Guidelines for Examination.

This judgment clearly states that OHIM has not only the power, but also the duty, to investigate of its own motion the content of the national law relied upon by the parties, in line with the case law of the Court of Justice of the European Union (see, in particular, OHIM v National Lottery Commission (Case C-530/12 P)). However, this reopens the debate as to whether OHIM and the General Court should interpret and apply national law provisions.

Celia Sueiras, Garrigues, Madrid