OHIM’s role in registering transfer of CTM is essentially procedural

European Union
In Chalk v Office for Harmonisation in the Internal Market (OHIM) (Case T-83/09, September 9 2011), the General Court has confirmed that neither OHIM nor the European courts are under an obligation to consider the validity and legal effects of an assignment of a Community trademark (CTM) under the laws of the relevant member state, providing that such transfer complies with the formalities under the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009).
 
Arthur Crack Ltd (the initial proprietor) obtained a CTM for CRAIC for goods in Classes 32 and 33 of the Nice Classification in 2002. In July 2006 the company was dissolved and the mark was apparently vested in the Crown as bona vacantia.
 
On March 12 2007 the Crown assigned the mark to Reformed Spirits Company Holdings Ltd, the intervener in the proceedings, which secured the registration of such transfer at OHIM on April 16 2007.
 
In May 2007 David Chalk, the applicant, sought to register an assignment of the mark from the initial proprietor to himself, apparently entered into on January 21 2006 (ie, before the intervener’s assignment), and requested the revocation of the intervener’s registration.
 
The examiner and, subsequently, the Board of Appeal of OHIM rejected the applicant’s request, both reasoning that there is no legal provision of the regulation that allows OHIM to amend a decision formally taken, unless said decision contains "obvious procedural errors attributable to the office" pursuant to Article 77(a) of the regulation. Chalk’s application had been lawfully rejected because the intervener was the registered proprietor of the mark and its rights could not be affected by an earlier transfer not entered in the register (Article 17(6) of the regulation).
 
The applicant appealed to the General Court, claiming, among other things, that the court should annul the decision of the Board of Appeal and remit the case to the latter for reconsideration on the basis of the court’s findings.
 
The applicant’s key arguments were as follows:
  • Pursuant to Article 16(1) of the regulation, OHIM was required to consider and apply the laws of the member states when reaching a decision in relation to the transfer of a CTM. Therefore, OHIM should have called into question the validity of the transfer from the Crown to the intervener, as the applicant was already the proprietor of the mark at the time of the later assignment.
  • Pursuant to Rule 31 of Commission Regulation 2868/95 implementing the Community Trademark Regulation, OHIM is expected to consider the validity and effect of documents that are submitted to it if the legal effects of those documents are challenged. Therefore, OHIM should have considered the impact of the assignment of the mark to the applicant on the intervener’s later assignment.
  • Article 77(a) of the Community Trademark Regulation allows OHIM to consider the validity of its decisions also in the light of further facts and evidence provided to OHIM at a later stage. Once OHIM was made aware of the applicant’s earlier assignment, it should have concluded that the registration of the intervener’s assignment had taken place as a result of an obvious procedural error.
The court concluded that the Board of Appeal was "justified in holding that OHIM had lawfully registered the transfer of the [mark] to the intervener" on the basis of the evidence provided to it and in refusing to revoke such registration.
 
In particular, addressing the applicant’s claims, the court held as follows:
  • Article 16 does not require OHIM or the European courts "to consider or rule on contractual or legal questions" under the laws of the member states in relation to a CTM as "an object of property".
  • Rule 31 must be read in conjunction with Article 17 of the Community Trademark Regulation, setting out the requirements for assignments of CTMs. The intervener’s request for the registration of the transfer of the mark met the requirements of Rule 31, as it enclosed a valid assignment under Article 17 of the regulation. Conversely, the applicant’s request did not, as the latter was not the registered proprietor of the mark. The court reiterated that "a potential conflict between the two assignments" raised questions of property and contract law which were outside OHIM’s jurisdiction.
  • In registering the intervener as the new proprietor of the mark, OHIM had relied on documents "which gave rise to no doubts about their validity and content" and, consequently, there was "no apparent irregularity which should have been perceived by OHIM" and which led OHIM to commit a manifest error.
This case confirms that the role of OHIM in registering the transfer of a CTM is essentially procedural and administrative. It is not its role to look into any substantive matters of national law - that is for the national court. The case also highlights the need to record all transfers at OHIM promptly.

Cam Gatta, D Young & Co LLP, London

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