OHIM reminded to be cautious when rejecting 'new' arguments

European Union
In Mäurer + Wirtz GmbH & Co KG v Office for Harmonization in the Internal Market (OHIM) (Case T-63/07, March 17 2010), the General Court has considered whether the Board of Appeal of OHIM had been correct in rejecting as inadmissible the opponent’s argument on dilution.
 
Exportaciones Aceiteras Fedeoliva AIE applied to register the figurative mark TOSCA DE FEDEOLIVA as a Community trademark for goods and services in Classes 16, 29, 35 and 39 of the Nice Classification. Mäurer + Wirtz GmbH & Co KG lodged an opposition based on earlier registrations for the word mark TOSCA in Class 3. The opposition was directed against all the goods and services covered by the application. In particular, Mäurer claimed that:
  • there was a likelihood of confusion under Article 8(1)(b) of the Community Trademark Regulation (40/94); and
  • use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the well-known TOSCA mark under Article 8(5) of the regulation.
The Opposition Division of OHIM rejected the opposition in its entirety, holding that:
  • the conflicting goods and services were clearly dissimilar, which precluded any likelihood of confusion under Article 8(1)(b); and
  • Mäurer had failed to prove that use of the mark applied for would take unfair advantage of, or be detrimental to, the TOSCA mark under Article 8(5).
On appeal, the Second Board of Appeal of OHIM found that the goods and services at issue were undisputedly dissimilar and, therefore, there was no likelihood of confusion within the meaning of Article 8(1)(b). As regards the claim that the TOSCA mark was entitled to extended protection under Article 8(5), the board held that Mäurer had failed to substantiate this ground of opposition before the Opposition Division. The fact that Mäurer had ticked box 95 of the notice of opposition (which states that the opposition is based on the contention that the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark) did not exempt it from its duty to provide facts, arguments and evidence to prove that all the conditions of Article 8(5) were met. Moreover, the board rejected Mäurer's argument that there was a risk of dilution by blurring of the distinctive character of its mark, since that argument had been put forward for the first time during the proceedings before it.

Accordingly, the board rejected the appeal and affirmed the contested decision.
 
On further appeal to the General Court, Mäurer argued that the board should not have rejected as inadmissible its argument that there was a likelihood of dilution by blurring. The court agreed, holding that:
  • Mäurer's argument should not have be considered as a "new fact", as it merely clarifies the alleged likelihood of harm and provides reasons in that regard; and
  • the board should have assessed whether Mäurer's clarification of the type of risk posed to its mark was sufficient to allow the opposition to be upheld pursuant to Article 8(5).
Unless OHIM files a further appeal to the Court of Justice of the European Union, the case will be sent back to the board for a decision on the merits. The decision shows that OHIM must be careful when rejecting 'new' arguments put forward on appeal.

Peter Gustav Olson, MAQS Law Firm, Copenhagen

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