Internet evidence requirements clarified by CFI

In Kustom Musical Amplification v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has allowed an appeal against a Board of Appeal decision to uphold the examiner's refusal to register the shape of a guitar as a Community trademark.

Kustom Musical Amplification Inc applied to OHIM to register the shape of an electric guitar as a Community trademark in 2003. Following the examiner's decision to refuse registration, Kustom appealed to the Board of Appeal.

Dismissing the appeal, the board held, among other things, that the average guitar player was used to seeing a large number of models of electric guitars with a variety of extravagant shapes and, in particular, numerous shapes of 'pointy' guitars, so that he will not see an indication of origin in a shape which is not significantly different from that of other electric guitars, but will perceive the shape in question as ornamentation.

Kustom appealed to the CFI based on the following main grounds:

• The examiner referred to internet links in the notices of refusal, but did not provide hard copies of the relevant webpages. However, the content of these webpages was taken into account by the examiner and the Board of Appeal.
  
  
• The Board of Appeal provided 19 new internet links in its decision and not only did it fail to provide hard copies of the relevant webpages, but also it did not give Kustom an opportunity to comment on this material before the adoption of the contested decision.

The CFI found in Kustom's favour, indicating that the mere communication of internet links was not sufficient and that facts were taken into consideration which were not communicated to Kustom. The CFI concluded that the board had failed to comply with the duty to state the reasons on which its decision was based and had violated Kustom's right to be heard pursuant to Article 73 of the Community Trademark Regulation.

In practice, this case means that OHIM must be careful to include along with any internet links, hard copies of the content which it has viewed and upon which it has based its decision. This seems correct since the content of webpages is updated and, as happened in this case, some of the websites could not subsequently be accessed.
The introduction of new links at the Board of Appeal stage must also be treated with caution by OHIM, since the applicant will not have had an opportunity to comment on the issues raised.

Bronwyn O'Hagan, F R Kelly & Co, Belfast