OHIM breached rules in HIPOVITON opposition

In MFE Marienfelde GmbH v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance (CFI) has annulled an OHIM Board of Appeal decision to refuse an opposition to the registration of HIPOVITON as a Community trademark. The CFI found that the board had (i) not taken into consideration all the relevant facts, and (ii) breached the opponent's right to be heard.

MFE Marienfelde GmbH, a German producer of foodstuffs for animals, opposed the registration by Swiss company Chassot AG (now known as Vétoquinal AG) of HIPOVITON as a Community trademark for foodstuffs for animals in Class 31 of the Nice Classification on the basis of its earlier German registration for HIPPOVIT for the same goods. Marienfelde submitted advertising material and an affidavit indicating a sales turnover of Dm12,500 for the period of January to June 1998 as evidence of its use of the mark HIPPOVIT in the five years preceding its opposition action, as requested by Article 43(2) and (3) of the Community Trademark Regulation. The OHIM Opposition Division held that the evidence was insufficient to prove genuine use and rejected the opposition. It did not take into account a late submission by Chassot alleging that Marienfelde's sales of HIPPOVIT-marked products only represented the sale of 459 units and were minimal in relation to the company's total turnover of Dm2.8 million for 1998. Marienfelde appealed.

The Board of Appeal dismissed the appeal. It relied in part on Chassot's late submission to reach its decision, without inviting Marienfelde to reply. Marienfelde appealed to the CFI, claiming, among other things, that the board had not taken all the relevant facts into consideration, and had violated its right to be heard.

The CFI upheld Marienfelde's claims and annulled the board's decision. The CFI stated that, while the board's finding that limited sales do not amount to genuine trademark use may be correct, such reasoning must take into consideration the characteristics of the market at issue. As the board had failed to examine these characteristics and other factors in reaching its decision, the CFI concluded that the board had breached Article 43(2) and (3). The CFI further held that the Board of Appeal had infringed Marienfelde's right to be heard by taking into account Chassot's late submission without inviting Marienfelde to reply.

Stephan N Schneller, Maiwald Patentanwalts GmbH, Munich