General Court sheds light on validity requirements for priority claims

European Union

In Copernicus-Trademarks Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-186/12), the General Court has addressed the issue of the validity requirements for a priority claim.

On July 29 2009 Maquet SAS filed a Community trademark (CTM) application for LUCEA LED in Class 10 of the Nice Classification. Capella EEOD (subsequently Copernicus) lodged an opposition on the basis of a CTM application for the trademark LUCEO. The opponent’s application had been filed on September 16 2009 - that is, after that of Maquet - but claimed priority based on an Austrian trademark filed on March 6 2009.

The Opposition Division of OHIM upheld the opposition and refused the application for LUCEA LED. Maquet contested that decision, and the Fourth Board of Appeal of OHIM held that the opponent's mark was not earlier than the mark applied for, given that certain priority claim requirements had not been met.

Capella contested the ruling of the Board of Appeal and the case was referred to the General Court.

In its judgment, the General Court first established that the Board of Appeal was competent to review, of its own motion, the correctness of a priority claim, even in the event that it had not been contested.

The court then addressed certain procedural issues, concluding in this regard that, while it is true that the validity of a CTM may be challenged only in invalidity proceedings, there was no specific proceeding for examining the validity of a priority claim. It was therefore in the context of the opposition that such an issue had to be resolved.

As to the question of which documents must be submitted in order to prove the validity of a priority claim, the court noted that the applicant must provide a declaration of priority and a copy of the previous application. According to the Community Trademark Implementation Regulation (2868/95), the applicant is required to indicate the number of the previous application and to submit a certified true copy of that previous mark accompanied by a certificate from the relevant office confirming the filing date thereof. However, the evidence to be submitted may consist of less than this, provided that OHIM is able to access the required information through the database of that office.

In this case, Maquet was able to prove that, when the Austrian trademark application was filed, the list of goods and services were not available and that, as no such list could be accessed via the Internet either, priority could not be validly claimed. The court also stressed that it is incumbent on the applicant, and not OHIM, to check that the relevant information may be viewed on the Internet.

For these reasons, the General Court dismissed the appeal lodged by Capella in its entirety.

The judgment is of particular interest in that it clearly sets out the obligations of the parties in these circumstances. First, it is the party claiming priority who must ensure that the necessary conditions for the validity of the priority claim are met. Second, although OHIM may have doubts as to whether a priority claim is acceptable or not, it is not obliged to inform that party of its doubts so that the latter may, if appropriate, submit the relevant documentation.

Therefore, anyone wishing to oppose a CTM application based on a mark filed on a later date, but claiming the priority of an earlier national trademark, should ensure that all the requirements for the validity of that claim have been met; otherwise, the priority right will be forfeited and the opposition will fail.

Marta Rodríguez Aguado, Elzaburu, Madrid

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