New owner of mark held to have capacity to bring proceedings

European Union
In Peek & Cloppenburg v Office for Harmonization in the Internal Market (OHIM) (Case T-361/08, April 21 2010), the General Court has considered an action for annulment against a decision of the Fourth Board of Appeal of OHIM.

The action was brought by the former and present owners (respectively, Peek & Cloppenburg and van Graaf GmbH & Co KG) of a German figurative mark representing a peacock (Registration 30336340) for goods and services in Classes 18 ("leather goods"), 25 ("clothing") and 35 (including "advertising and business management") of the Nice Classification.
Peek & Cloppenburg had previously filed an opposition against the registration of a figurative mark consisting of the image a peacock together with the word element 'Thai Silk' for goods in Class 24 ("silk") and 25 ("clothing, made of silk"). The Opposition Division of OHIM dismissed the opposition on the grounds that the marks were not similar. Peek & Cloppenburg appealed, but the Fourth Board of Appeal of OHIM affirmed the decision of the Opposition Division. Peek & Cloppenburg and van Graaf appealed to the General Court.
One of the issues before the court was whether the applicants had standing to bring an action for annulment of the board's decision, as Peek & Cloppenburg had transferred the earlier mark to van Graaf during the administrative proceedings.
OHIM argued that van Graaf, as the new proprietor of the earlier mark, was not entitled to bring the action, as the formal status of a party to the appeal proceedings is decisive for the purpose of Article 63(4) of Community Trademark Regulation (40/94). OHIM noted that van Graaf could have intervened only if it had applied to be subrogated to the other applicant, Peek and Cloppenburg. Since no application for subrogation had been filed, van Graaf did not have the capacity to bring proceedings. With regard to Peek and Cloppenburg, OHIM argued that, since it was no longer the owner of the earlier mark, it could not be adversely affected by the board's decision pursuant to Article 63(4) of the regulation. Thus, OHIM argued that neither Peek & Cloppenburg nor van Graaf had an interest in bringing proceedings.
The General Court first stated that, under Article 63(4) of the regulation, an action against a decision of the board is "open to any party to proceedings before the Board of Appeal adversely affected by its decision". According to previous case law, the new owner of an earlier mark may bring an action before the court once it has proven ownership of the right invoked before OHIM, even if the assignment of the mark occurred after the decision of the board, but before the introduction of the action before the court (see Canali Ireland v OHIM (Case T-301/03)). In the present case, the court found that van Graaf had proven ownership of the earlier mark and, therefore, the action was admissible in relation to van Graaf. Further, the court noted that this conclusion could not be invalidated by the fact that the transfer of the earlier mark had been officially registered by the Deutsches Patent- und Markenamt, rather than by OHIM, since the earlier mark was registered in Germany and it was not contested that assignment of the mark to van Graaf had taken place.
With regard to the substance of the case, the court found that the goods at issue were identical and that there was a weak conceptual similarity between the signs. However, the visual and aural differences between the marks neutralized the conceptual similarity. Further, the court stressed that it was impossible for the relevant public, when faced with the marks at issue, to "establish a link between them giving rise to a likelihood of confusion and causing them to believe that the goods concerned came from same undertaking or from economically linked undertakings". It was also improbable that the relevant public would believe that the two signs were variants of the same mark or sub-brands of the same manufacturer. Accordingly, the action was dismissed.

Nina Ringen, Plesner, Copenhagen

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