Mark expiring during opposition proceedings no threat to application

In MIP METRO Group Intellectual Property GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has rejected an opposition to the registration of a mark on the grounds that the opponent failed to prove that its earlier registration was still in force.

On January 28 2000 Tesco Stores opposed MIP Metro Group's application to register METRO as a Community trademark. Tesco based its opposition on an earlier METRO national mark whose term of protection expired on July 27 2000.

On June 13 2000 OHIM informed Tesco that it had four months to file evidence in support of its opposition. In an accompanying information sheet, OHIM stated that if the term of protection of the earlier mark had expired at the time the evidence was due, it was also to submit a certificate of renewal of the earlier mark. The deadline was subsequently extended and expired on March 13 2003. Proof of renewal was not submitted within the time limit.

On June 12 2003 the Opposition Division rejected the opposition on the basis that Tesco failed to prove that its earlier right was still in force. Tesco appealed the decision and the First Board of Appeal upheld the appeal. It found that on the date on which the opposition was filed and even on the date evidence of renewal was requested, the earlier right was still in force and, accordingly, Tesco did not have to prove renewal of its registration.

Before the CFI, MIP Metro Group sought to have the board decision annulled. OHIM endorsed the claim as OHIM observed that the contested decision was incompatible with its internal Opposition Guidelines.

On the admissibility of OHIM's claims, the CFI affirmed that, while OHIM does not have the requisite capacity to bring an action against a decision of the Board of Appeal, it cannot be required to defend every contested decision of the Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed.

The CFI noted that the essential purpose of the relevant provisions of the Community Trademark Regulation and the implementing regulation concerning relative grounds for refusal and opposition proceedings is to ensure that the earlier mark retains its function of identifying origin. The function of an earlier mark as a means of identifying its origin cannot be undermined by another mark which will only be registered after the term of protection of the earlier mark has expired. If there is no period during which both marks coexist, no conflict can arise.

Accordingly, the CFI found that the Board of Appeal was incorrect in its interpretation of the rules concerning relative grounds for refusal and opposition proceedings. The board failed to take into account that no conflict can arise between the mark applied for and an earlier mark that expired during opposition proceedings, given that the mark applied for may be registered only after the end of the opposition proceedings. The CFI acknowledged that the Opposition Division and the OHIM Boards of Appeal must take account of changes in circumstances that occur between the filing of the opposition and the decision on the opposition as a result of evidence submitted by the parties in response to OHIM's request for information.

Gavan Ferguson, FR Kelly & Co, Dublin