General Court revisits limits of jurisdiction of OHIM's boards of appeal

The General Court has already been called upon several times to clarify and apply the provisions of Articles 64(1) and 76(1) of the Community Trademark Regulation (207/2009). Pursuant to the former, "the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution". The latter provides that:

"in proceedings before it, [OHIM] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [OHIM] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought."

However, the General Court has been asked only in a few cases to define the exact scope of the jurisdiction conferred upon OHIM’s boards of appeal by the two aforementioned provisions in respect of appeals against decisions of the Opposition Division of OHIM. The most recent of these cases is Bimbo SA v Office for Harmonisation in the Internal Market (OHIM) (T-227/12, March 20 2013).

Italian company Café do Brasil SpA sought to register the following figurative mark as a Community trademark (CTM) for a range of goods in Classes 11, 21 and 30 of the Nice Classification.

The goods in Class 30 were as follows:

"coffee, tea, cocoa, sugar, rice, tapioca, sago coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacles; yeast, baking powder; salt, mustard; vinegar sauces (condiments); relish; ice."

Spanish company Bimbo SA filed a notice of opposition on the basis of:

• the Spanish word mark BIMBO (No 291 655), registered in 1955 for "cereals, milling industry, baking, pastry and starch" in Class 30; and
• the earlier unregistered word mark BIMBO, allegedly well known in Spain for "cereals, milling industry, baking, pastry and starch".

The grounds invoked by Bimbo for substantiating its opposition were those laid down in Articles 8(1)(a), 8(1)(b) and 8(5) of the regulation. The opposition was based on all the goods allegedly covered by the earlier trademarks and was directed against some of the goods covered by Café do Brasil's application, namely those in Class 30 as detailed above.

Following the notice of opposition, OHIM informed Bimbo that it had to prove the existence and the extent of the protection conferred by the two trademarks relied upon. With regard to the unregistered mark, OHIM informed Bimbo that it had to clarify the goods and/or services for which that mark was well known in Spain. In response to OHIM’s request, Bimbo provided a series of items of evidence.

In its observations in response to the opposition, Café do Brasil argued that the marks in conflict were not confusingly similar, and that the goods covered by them were also dissimilar. Moreover, it submitted that Spanish consumers appeared to know the BIMBO mark only in connection with "packaged sliced bread", but did not specify whether it referred to the registered or unregistered BIMBO mark, or to both.

The Opposition Division of OHIM:

• rejected the opposition as unfounded on the basis of the earlier Spanish mark No 291655, since Bimbo had failed to file any documents proving that the mark was in force;
• ruled, on the basis of the evidence furnished by Bimbo, that the unregistered trademark BIMBO was well known in Spain for "packaged sliced bread" and, consequently, was also well known in the same territory for "cereals, milling industry, baking, pastry and starch";
• upheld the opposition on the basis of the earlier unregistered well-known trademark BIMBO for "flour and preparations made from cereals, bread, pastry and confectionery, ices, yeast, baking powder", finding all those goods to be identical or similar to those for which the earlier unregistered trademark was considered to be well known, namely "cereals, milling industry, baking, pastry and starch"; and
• dismissed Bimbo’s opposition and accepted Café do Brasil’s trademark application for the remaining goods, namely "coffee, tea, cocoa, sugar, rice, tapioca, sago coffee substitutes; honey, treacles; salt, mustard; vinegar sauces (condiments); relish; ice".

Café do Brasil appealed and requested that the Board of Appeal of OHIM reject the opposition in its entirety, arguing that the marks were different and that the goods for which the Opposition Division had rejected its CTM application were dissimilar to those covered by Bimbo’s earlier rights. Nevertheless, in its observations to the Board of Appeal, Café do Brasil did not criticise the findings of the Opposition Division in relation to the existence of the unregistered well-known mark BIMBO and the goods covered by its scope of protection.

The Fourth Board of Appeal of OHIM upheld the appeal in part and annulled the Opposition Division’s decision insofar as it rejected the CTM application in respect of "flour, confectionery, ices, yeast and baking powder". The board dismissed the appeal as to the remainder and confirmed the rejection of Café do Brasil's application with regard to "preparations made from cereals, bread, pastry".

In its decision, the Board of Appeal confirmed that the opposition should be examined exclusively on the basis of the earlier unregistered mark BIMBO, which was allegedly well known in Spain, and re-assessed of its own motion the well-known character of this unregistered trademark. It concluded that such character had been substantiated in Spain, but only in respect of "packaged sliced bread".

The board considered that there was a likelihood of confusion between the trademarks only for "preparations made from cereals, bread, pastry", since the rest of the goods claimed by the contested trademark ("flour, confectionery, ices, yeast and baking powder") were dissimilar to "packaged sliced bread".    

Bimbo appealed. In its submissions to the General Court, it claimed, among other things, that in reassessing the scope of the goods covered by the earlier unregistered well-known mark BIMBO of its own motion without being requested to do so by the appellant (Café do Brasil), the Board of Appeal had exceeded the limits of its jurisdiction as defined in both Article 64(1) and Article 76(1) of the regulation.

The General Court considered that the Board of Appeal had not exceeded the limits of its jurisdiction, as defined in Articles 64(1) and 76(1), as it was perfectly entitled to:

• raise of its own motion the issue of the existence and scope of the unregistered well-known trademark on which Bimbo had relied as the basis for its opposition; and
• conduct an ex officio re-examination of the items of evidence provided by Bimbo during the opposition proceedings to show for which goods and/or services the mark was well known in Spain and compare these with the goods covered by the application.

On the one hand, the General Court based its conclusion on a broad interpretation of Article 64(1) (previously adopted in Völkl v OHIM (Case T-504/09), Paragraph 53), according to which, when confronted with appeals regarding decisions taken by the Opposition division, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact. This full examination implies that the board may adjudicate on whether the goods and services covered by the conflicting marks are similar or dissimilar even when the appellant considers it unnecessary (see, by analogy, Armacell v OHIM(Case T-172/05), Paragraphs 41 and 42).

On the other hand, with regard to Article 76(1), the General Court decided to apply by analogy the judgment of the Court of First Instance in SPAG v OHIM (Case T-57/03, Paragraph 21), and affirmed that:

“the criteria for applying a relative ground for refusal or any other provision relied on in support of the claims made by the parties are naturally part of the matters of law submitted for examination by OHIM (…) a matter of law may have to be ruled on by OHIM even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of [the regulation] in the light of the facts, evidence and arguments provided by the parties and the relief sought. Thus the matters of law put forward before the Board of Appeal also include any question of law which must necessarily be examined for the purpose of assessing the facts, evidence and arguments provided by the parties and for the purpose of allowing or dismissing the claims, even if the parties have not put forward a view on that question".

The judgment at hand refers to a type of situation that had not yet been brought to the attention of the General Court. The General Court decided to apply by analogy the existing case law regarding Articles 64(1) and 76(1)and interpreted in a rather generous manner the powers conferred upon the boards of appeal by the said provisions.

Doubts may eventually be raised as to the appropriateness of applying literally to the present case, without any adaptation or clarification, the obiter dictum in SPAG v OHIM, as the matters at issue in both cases do not appear to be exactly the same. It will be interesting to see whether, in future cases involving Article 76(1), the General Court clarifies the concept of 'arguments provided by the parties' and explains its relationship with the neighbouring concepts of ‘claim’, ‘relief sought’ and ‘ground of opposition/appeal’.

Joao Miranda de Sousa, Garrigues, Madrid