Grant of CTMs not contrary to Portuguese ruling, says CFI

European Union
In Alberto Jorge Moreira da Fonseca Lda v Office for Harmonization in the Internal Market (OHIM) (Joined Cases T-318/06 to 321/06, March 24 2009), the Court of First Instance (CFI) has upheld a decision of the Board of Appeal of OHIM in which the latter had rejected applications for the cancellation of GENERAL OPTICA Community trademarks (CTMs).
General Óptica SA owned Community and international registrations for various figurative marks containing the words 'General Óptica' for optician services in Class 42 of the Nice Classification. Alberto Jorge Moreira da Fonseca Lda applied to OHIM for the cancellation of the CTMs, citing its earlier registration as a business name of the word 'Generalóptica' for the import and retail sale of optical, precision and photographic apparatus.
Fonseca also applied to a Portuguese court to have the extension to Portugal of General Óptica's international trademark and company name declared null and void. The Supreme Court, upholding the decisions of the lower courts, ruled in Fonseca's favour. This was added to the OHIM case file and formal notice was taken of it in the minutes of the hearing.

Applying the relevant provisions of the Community Trademark Regulation (40/94), the Cancellation Division of OHIM dismissed Fonseca's application for cancellation on the grounds that the latter had failed to prove:
  • genuine use of the sign relied on; or
  • use of more than local significance.
The Board of Appeal thus affirmed the decision of the Cancellation Division and Fonseca appealed to the CFI.

According to Fonseca, an EU decision which is contrary to a decision given by a Portuguese court would undermine the principle of the unity of the CTM system, under which a trademark must produce its effects in all the member states of the European Union. Fonseca also argued that the CTM system does not have absolute autonomy with respect to the various national laws. Consequently, Fonseca claimed that the proceedings should be stayed until the decision given by the Portuguese courts became final.
The CFI held that following the decision of the Portuguese Supreme Court (which makes final the decisions of the Portuguese courts), Fonseca’s request for the proceedings to be stayed had become devoid of purpose. Moreover, the CFI pointed out that:
"[i]n any event, the decision of the Portuguese courts concerns only the extension to Portugal of the international registration of the trademark GENERAL OPTICA and [General Óptica]'s company name. As the decision of the Portuguese courts does not contain any general prohibition against the use in Portugal of a mark including the words 'General Óptica', the GENERAL OPTICA [CTMs] are not affected by it. Therefore, [...] a decision of the [CFI] upholding the registration of the GENERAL OPTICA [CTMs] does not make it possible for [General Óptica] to circumvent the decision of the Portuguese courts."
In particular, the CFI highlighted that the confirmation of the validity of the GENERAL OPTICA marks had no bearing on the obligation arising from the decision of the Supreme Court to refrain from using the international trademark GENERAL OPTICA and the company name General Óptica in Portugal.

Finally, the CFI held that:
"the unitary character of the [CTM] system cannot be called into question by a contradiction between the decision of the Portuguese courts and the decision of the [CFI]. The unitary character of the CTM constitutes a principle which is not absolute, but permits exceptions, such as those provided for in Article 106 of [the regulation] relating to the prohibition of use of [CTMs] and Article 107 relating to prior rights applicable to particular localities."
The CFI thus dismissed Fonseca's action.
Jeremy Phillips, IP consultant to Olswang, London

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