OHIM held to have infringed the rights of the defence

In Lidl Sitftung & Co KG v Office for Harmonisation in the Internal Market (OHIM) (Case T-715/13, May 5 2015), the General Court has held that OHIM's failure to communicate evidence of the renewal of the marks on which the opposition was based infringed the rights of the defence.

In 2008 Lidl Stiftung & Co KG applied to OHIM for the registration of the figurative mark CASTELLO, pictured below, in connection with bread and pastry products in Classes 29, 30 and 31 of the Nice Classification:

This application was opposed by Spanish company Horno del Espinar SL on the basis of several earlier marks which consisted of, or comprised, the surname Castelló, including the Spanish registration shown below:

These marks covered overlapping goods in Class 30, and related retail and distribution services in Classes 35 and 39.

The Opposition Division of OHIM found that there was a likelihood of confusion between the mark applied for and the earlier marks, and therefore refused to register CASTELLO for all the goods claimed. The Second Board of Appeal of OHIM upheld this conclusion and dismissed Lidl’s appeal. In particular, the board found that the signs at issue were similar due to the fact that they shared the dominant component 'Castello/Castelló'. In its view, the presence of additional secondary elements, such as 'Dulces' ('sweets' in Spanish) or 'Castelló y Juan SA' in the earlier marks, was not sufficient to dispel the overall similarity of the marks.

Before issuing its decision, however, OHIM failed to notify Lidl that the opponent had filed evidence of the renewal of the earlier Spanish marks relied upon in the opposition. Lidl only became aware of the existence of such documents because they were expressly mentioned in the Board of Appeal’s decision.

Lidl appealed, requesting that the General Court annul the Board of Appeal’s decision. It argued that OHIM had infringed Lidl’s right to be heard (Articles 75 and 79 of the Community Trademark Regulation (207/2009)), and had erred in its assessment of the existence of a likelihood of confusion (Article 8(1)(b)).  

The General Court had no difficulty in confirming that the Board of Appeal had not misapplied Article 8(1)(b) due to the similarity of the signs and the similarity of the relevant goods and services. However, it found that, by failing to provide Lidl with evidence of the renewal of the earlier marks, OHIM had deprived Lidl of the possibility to express its views on material that constituted one of the foundations of the board's decision.

Despite OHIM’s efforts to minimise the importance of this procedural irregularity (it claimed that the outcome would have been identical even if the irregularity had not taken place), the General Court was not convinced by these arguments. In the court’s view, the evidence of renewal was essential for establishing the validity and scope of protection of the earlier marks and, to that extent, were indispensable for rejecting the registration of the mark applied for. The failure to provide Lidl with a copy of the renewal documents filed by the opponent had a concrete effect on Lidl’s ability to defend itself.

The court thus upheld Lidl's action and annulled the decision of the Board of Appeal.

Celia Sueiras, Garrigues, Madrid