OHIM held to have exceeded powers by ex officio re-opening examination of CTM

European Union

In Airbus SAS v Office for Harmonisation in the Internal Market (OHIM) (Case T-236/12, July 3 2013), the General Court has annulled in part a decision of the First Board of Appeal of OHIM rejecting Airbus SAS’s application to register the sign NEO as a Community trademark (CTM) in association with goods in Classes 7 and 12 and services in Class 39 of the Nice Classification

The OHIM examiner had considered that the sign was not eligible for registration under Articles 7(1)(b) and (c) and 7(2) of the Community Trademark Regulation (207/2009) on the grounds that it was descriptive and lacked distinctiveness for goods in Classes 7 and 12. However, the application was allowed to proceed for services in Class 39. The Board of Appeal not only agreed with the examiner's position as regards the descriptiveness of the mark NEO for goods in Classes 7 and 12, but also 'reopened' the examination of the application based on absolute grounds for refusal with regard to services in Class 37, ruling that the mark was devoid of distinctive character for that class as well.

The decision of the General Court addressed several questions concerning both the merits of the case and procedural matters.  

The General Court first examined the scope and extent of the Board of Appeal's power to rule on absolute grounds of refusal in the light of Articles 64(1) and 59 of the regulation. It held that:

if the examiner has rejected an application for registration of a Community trademark only in respect of the goods covered by that application, while allowing registration in respect of the services covered by it, the appeal brought by the applicant… can lawfully relate only to the examiner’s refusal to allow registration in respect of the goods covered by the application.

Accordingly, the General Court found that, even though Airbus had appealed the examiner’s decision in its entirety, the Board of Appeal should have examined the CTM application at issue only insofar as the lower department had rejected Airbus' claims. In view of the above, the court ruled that the Board of Appeal, by ex officio re-opening the examination of the entire CTM application, had exceeded the limits of its powers.

The General Court then assessed the distinctiveness of the proposed mark in relation to goods in Classes 7 and 12. It endorsed the findings of the Board of Appeal that the mark NEO was devoid of distinctive character and, as such, could not qualify as a CTM. In particular, it ruled that the word ‘neo’ is purely descriptive/generic, since the relevant public with a command of modern Greek would perceive it as “a laudatory or promotional term, referring to something either new or in line with latest technological developments”. On that basis, the General Court ruled that the fact that the proposed mark is generic for the relevant public with a command of the language of one member state - in this case, Greece - constituted a sufficient ground for refusal of registration under Articles 7(1)(c) and 7(2) of the regulation. Hence, it was not necessary to rule on whether the mark was distinctive in the other languages referred to in the board's decision.

Interestingly, the General Court held that the board's decision could not be called into question based only on the fact that the latter had not followed the decision-making practice of OHIM, since the legality of the decision was established directly on specific provisions of the regulation, namely Articles 7(1)(b) and (c) and 7(2). In ruling so, the General Court confirmed that the principle of legality prevails over the principles of equal treatment and sound administration. 

Finally, the General Court clarified that the applicant - and not OHIM of its own motion - bears the burden of proving the registrability of its application. In particular, the court rejected the argument that the board had infringed Article 76 of the regulation, holding that “it is for the applicant to provide specific and substantiated information to show that the trademark applied for has either intrinsic distinctive character or distinctive character acquired through usage”.

In view of the foregoing, the General Court annulled the contested decision with regard to the services in Class 39, dismissed the action with regard to the remainder, and ordered each party to bear its own costs.

The most interesting part of the judgment is that relating to the procedural restriction whereby the Board of Appeal can re-examine only absolute of grounds that have been 'cleared' at the examiner's level. By delimiting the scope of examination of the Board of Appeal, the decision enhances the principle of legal certainty and provides applicants with clear guidance as to the issues that they should address when pleading before the Board of Appeal. On the merits, the decision reiterates the well-established rule that absolute grounds for refusal limited to a single member state are sufficient to block the registration of a CTM. 

Nicolas Dontas, Dontas Law Offices, Athens 

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