Importance of adequate reasoning highlighted in third MATRATZEN Case
In Matratzen Concord GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-351/08, June 30 2010), the General Court has annulled a decision of the Second Board of Appeal of OHIM in which the latter had upheld a decision of the Opposition Division in favour of the opponents, Pablo Barranco Schnitzler and Mariano Barranco Rodriguez.
In September 2003 German company Matratzen Concord GmbH applied to register the word and device mark MATRATZEN CONCORD for goods in Classes 10, 20 and 24 of the Nice Classification. The word 'matratzen' means 'mattresses' in German, but has no meaning in Spanish. On publication, the application was opposed by Schnitzler and Rodriguez. The opposition was directed against all goods covered by the application, and was based on an earlier Spanish registration for MATRATZEN, which was registered in 1994 for goods in Class 20. Following Matratzen Concord’s request to prove that their mark had been put to genuine use, the opponents submitted 122 invoices which had been sent between 1999 and 2004 to customers in Spain, and 21 advertisements in Spanish newspapers.
The Opposition Division upheld the opposition. The Second Board of Appeal then dismissed Matratzen Concord’s appeal against the decision of the Opposition Division, holding that:
- the opponents had sufficiently proved that their mark had been put to genuine use in Spain; and
- there was a likelihood of confusion pursuant to Article 8(1)(b) of the Community Trademark Regulation (40/94).
Matratzen Concord appealed to the General Court. The court invited the parties to make written submissions on the question of whether the Second Board of Appeal’s decision included adequate reasoning. OHIM argued that the board had sufficiently assessed whether the opponents’ mark had been put to genuine use, and had disclosed its reasoning in Paragraph 24 of the contested decision.
The court disagreed and upheld the appeal on the basis that OHIM had infringed Article 73 of the regulation and Article 253 EC due to a lack of reasoning.
Referring to earlier case law, the court held that a statement of reasons must disclose, in a clear and unequivocal manner, the reasoning followed by OHIM in such a way as to enable the parties to ascertain the reasons for the decision and to enable the competent EU court to exercise its power of review. Nevertheless, the court explained that it is not necessary for the reasoning to examine all the relevant facts and points of law. In particular, when a board of appeal of OHIM upholds a lower level decision in its entirety, that decision, together with the board's statement of reasons, forms part of the context in which the board's decision is adopted.
However, in the present case, OHIM’s reasoning did not reach the required level: OHIM merely stated that, as could be seen from the newspaper advertisements, the opponents’ mark had not been used only for retail services without any connection to the goods concerned, as the advertisements included only the opponent’s mark, to the exclusion of any other.
Finally, the court held, in line with earlier case law, that defective or inadequate reasoning involves a question of public policy which the EU courts must raise of their own motion.
This is the third case involving the MATRATZEN mark that has been decided by the EU courts. The first two decisions, Matratzen Concord GmbH v OHIM (Case C-3/03 P) and Matratzen Concord AG v Hukla Germany SA (Case C-421/04) (for further details please see "Second MATRATZEN Case heard by ECJ"), were decided against Matratzen Concord, but the German company has won this time. It seems likely, however, that the dispute will continue. The decision emphasizes that OHIM must provide the parties (and legal practitioners) with adequate reasoning.
Florian Traub and Chris McLeod, Hammonds LLP, London
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