Trademark regulation does not infringe 'equality of languages' principle

European Union

In Estate of Christina Kik deceased v Office for Harmonization in the Internal Market (OHIM), Advocate General Jacobs has ruled that Article 115 of the Community Trademark Regulation, requiring an applicant for a Community trademark to indicate English, French, German, Italian or Spanish as a second language, does not infringe the 'equality of languages' principle set out in Article 12 of the EC Treaty.

A representative of the estate of Christina Kik applied to the OHIM to register the name 'Kik' as a Community trademark. She filed the application in Dutch and, believing she was complying with Article 115(3), also designated Dutch as the second language. The applicant notified the OHIM that she wished to receive all communications in Dutch, and the OHIM accepted the request. However, the Community trademark application was dismissed on the grounds that the applicant had not complied with Article 115(3) because only English, French, German, Spanish or Italian are allowed to be designated as a second language. The OHIM rejected the application even though the choice of a second language only comes into effect in opposition, revocation or invalidity proceedings - none of which were at issue in this case.

The OHIM's decision was confirmed by the Board of Appeal and by the European Court of First Instance. The applicant further appealed and the case is now pending before the European Court of Justice (ECJ).

The applicant argued that Article 115(4) of the Community Trademark Regulation is contradictory since it states that the language of proceedings is the language used to file the application, but the OHIM may send written communications to an applicant in the designated second language. Although the OHIM had issued all communications in Dutch in the instant case, the applicant contended that allowing the OHIM the option of communicating in a second language contradicted the 'language of proceedings' principle in Article 115(4).

The applicant also argued that the whole language regime of the Community Trademark Regulation and, more specifically Article 115 thereof, infringes the principle of equality of languages set out in Article 12 of the EC Treaty.

In his opinion, Jacobs rejected the applicant's arguments and confirmed the OHIM's ruling. The ECJ is expected to follow his opinion because otherwise the whole language system governing the Community Trademark Regulation would break down.

Hans Georg Zeiner, Zeiner & Zeiner, Vienna

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