OHIM held to have acted in breach of duty to provide statement of reasons

European Union

The recent judgment of the General Court in Alma-The Soul of Italian Wine LLLP v Office for Harmonisation in the Internal Market (OHIM) (Case T-605/13, September 25 2014) shows how Article 75 of the Community Trademark Regulation (207/2009) should be interpreted.

Article 75 reads as follows:

“Decisions of the office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments.”

In addition, the Guidelines for Examination in the Office for Harmonisation in the Internal Market, Part A, General Rules, set forth the general principles to be applied in any proceedings before OHIM. The first principle cited is that of "adequate reasoning". This principle allows interested parties to know the reasons for the decision taken so that they can defend their rights, and also enables the courts of the European Union to exercise their power to review the legality of OHIM decisions.

Although it is clear that decisions taken by OHIM must state the reasons on which they are based, Article 75 must still be interpreted in order to ascertain how far OHIM must take this obligation.

Based on previous case law, it is established that OHIM does not infringe its duty to state reasons if it does not express a view on every argument raised by the parties (see Wohlfahrt v OHIM (Case T-580/10) and Bimbo SA v OHIM (T-569/10)). As the guidelines indicate, “it is sufficient that it sets out the facts and the legal considerations of fundamental importance in the context of the decision”.

However, in Case T-605/13, the applicant alleged infringement of Article 75, submitting that the Board of Appeal had acted in breach of its duty to provide a statement of reasons insofar as it had not taken into account evidence that the applicant had provided to OHIM. That evidence consisted of documents which intended to establish that consumers in the European Union are accustomed to trademarks for wine containing the words ‘sol’ ('sun') and/or images of the sun and that, therefore, the word ‘sol’ and translations thereof have a weak distinctive character in the wine sector. The applicant submitted that the Board of Appeal had ignored that evidence, as it was not even cited in its decision.

OHIM contended that the Board of Appeal had implicitly taken that evidence into account when it stated in its decision that "the word 'sol' has no direct relationship with the goods in question since it is not descriptive".

The General Court recognised that the board's reasoning may be implicit. However, this is on the condition that such reasoning enables the parties concerned to know the reasons for the Board of Appeal’s decision and provides the competent court with sufficient material for it to exercise its jurisdiction to review legality.

In the present case, neither the Opposition Division nor the Board of Appeal had mentioned the evidence provided by the applicant and, accordingly, the Board of Appeal’s assessment of the similarities between the signs at issue contained no reference to that evidence. For this reason, the court found that, in this case, it could not be held that the board's decision showed, even implicitly, that the board had analysed the evidence in order to respond to the applicant’s arguments.

Therefore, the court held that there had been a breach of the duty to state reasons and annulled the contested decision.

Ramón Cañizares, Elzaburu, Madrid

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