Mere formality spells demise of apparently strong opposition

In Interkobo sp zoo v Office for Harmonisation in the Internal Market (OHIM) (Case T-523/10, June 27 2012), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had rejected an opposition against the registration of the figurative mark MYBABY.

The mark applied for covered the class heading of Class 28 of the Nice Classification, among other things. The opposition was based on three earlier marks:

• the Polish word mark MYBABY;
• the international word mark MYBABY; and
• the Polish figurative trademark MYBABY.

All three marks covered "games, playthings and sporting articles" in Class 28. The language of the proceedings was German.

The Opposition Division initially accepted the opposition on the grounds that there was a likelihood of confusion. The applicant appealed, and the appeal was accepted by the Fourth Board of Appeal of OHIM on the grounds that the opponent had failed to provide evidence of the existence, validity and scope of protection of the earlier trademarks (Rule 20 of the Community Trademark Implementation Regulation (2868/95)). Specifically, the evidence provided by the opponent did not include copies of the original documents; in addition, the German translations had not been submitted in the form of ‘stand-alone’ documents (ie, separate from the original) and did not reproduce the content of the official certificates and extracts.

The opponent had submitted extracts containing information in Polish, English and (grammatically incorrect) German. OHIM questioned whether these were authentic documents issued by the Polish Trademark Office, which, in practice, does not issue official extracts in three languages, or whether the partial German translations on the documents had been added by a third party. The same applied to the extract relating to the earlier international mark. Official certificates had also been filed, but their translations were incomplete.

As the General Court noted, Rule 19.3 of the regulation expressly provides that "the information and evidence... [regarding the earlier marks] shall be in the language of the proceedings or accompanied by a translation". Further, Rule 98 of the regulation provides that, "when a translation of a document is to be filed, the translation shall identify the document to which it refers and reproduce the structure and contents of the original document". These provisions have been held by the court to mean that translations must be filed in the form of one or several written documents separate from the original document, and not merely as annotations on the original; otherwise, they are not admissible. This interpretation is consistent with settled OHIM practice.

The court went on to explain the reason for this formal requirement, noting that the aim is to be able to readily differentiate the original document from the translation and to ensure that the translation is sufficiently clear, so that the debate between the parties can take place on a sound basis in accordance with the principles of audi alteram partem and equality of arms. The court also observed that translations must "faithfully" reproduce the content of the original document.

The opponent also alleged infringement of the principle of protection of legitimate expectations. In particular, the opponent sought to rely on certain provisions of the OHIM Guidelines - namely, that OHIM even accepts "hand-written inscriptions on the copies of the original certificates giving the meaning of the various entries in the language of the proceedings, provided of course that they are complete and legible". The opponent thus argued that OHIM accepts translations that are not submitted in the form of separate documents.

The court pointed out that, taken in isolation, these provisions could lend themselves to the interpretation suggested by the opponent. However, it went on to say that, under the regulation, when an original document drawn up in a language other than the language of the proceedings is submitted, OHIM accepts that it can be annotated in order to facilitate the reading and the review of its translation, which is presented in a separate document, as this is the only interpretation compatible with the other indications provided by the OHIM Guidelines.

The court observed that the guidelines are merely a set of consolidated rules setting out the line of conduct which OHIM proposes to adopt, and that the provisions of the guidelines cannot be deemed to be of a higher order than the provisions of Regulations 207/2009 and 2868/95 or indeed influence the interpretation of those regulations by the courts of the European Union. They are instead designed to be read in accordance with the said regulations. However, the court noted that the guidelines may be effectively relied on before the courts of the European Union in support of a plea alleging infringement of a general principle of law, provided that they provide precise, unconditional and consistent information, and are in conformity with the regulations.

Arguably, the court's interpretation is correct, as the guidelines are simply a compendium of internal procedures which may occasionally elicit questions as to how they should be interpreted. Therefore, should there be a departure from the regulations, their provisions should take precedence in all cases.

Luis Soriano, Elzaburu, Madrid