Unregistered trademarks should be explicitly mentioned in assignment agreements
In Nike International Ltd v Office for Harmonisation in the Internal Market (OHIM) (Case T-137/09 RENV, June 12 2014), the General Court has concluded that Nike had not shown that it was the holder of the Spanish unregistered trademark R10 when it joined the opposition proceedings.
The sign R10 is the combination of the letter 'R', which stands for the famous Brazilian football player Ronaldhino, and '10', which is the number he used when playing. From 2003 to 2008 Ronaldhino played in Spain and, at that time, Nike chose Ronaldinho to create a sportswear line bearing his acronym, 'R10'.
On January 2 2006 Aurelio Munoz Molina filed a Community trademark application for registration of the word sign R10. DL Sports & Marketing Ltda, the holder of Ronaldinho-related rights, filed an opposition against the registration of the trademark on the basis of the Spanish unregistered trademark R10.
On November 28 2006 the Opposition Division of OHIM granted DL Sports a period of four months to prove the existence and validity of the earlier right relied on, but the company failed to do so.
While the opposition proceedings were still pending, Nike informed the Opposition Division that, by a contract dated June 20 2007, DL Sports had assigned to it ownership of several trademarks and industrial property rights, including the Spanish unregistered trademark on which the opposition was based. Nike indicated that it wished to pursue the opposition proceedings.
The Opposition Division rejected the opposition, ruling that DL Sports had failed to meet the deadline for submitting evidence of the earlier right relied on.
Nike appealed, but the First Board of Appeal of OHIM dismissed the appeal as inadmissible, finding that Nike had not proven that it was the new proprietor of the unregistered right at issue and, consequently, it had not produced proof of its status as party to the opposition proceedings. The board noted that the transfer agreement of June 20 2007 proved only that the company had acquired several R10 trademarks, but not specifically the sign on which the opposition was based.
Nike brought an action before the General Court seeking, among other things, that its appeal to the Board of Appeal be declared admissible. Nike primarily alleged a violation of the rights of the defence by both the Opposition Division and the Board of Appeal, and a violation of OHIM’s procedural rules and guidelines on the examination of trademark transfers.
The court found that the Board of Appeal had failed to give Nike a chance to produce evidence that DL Sports had transferred its earlier rights in the R10 mark to it, and annulled the board's decision in this respect.
OHIM appealed to the Court of Justice of the European Union (ECJ) for the annulment of the judgment of the General Court. The ECJ reversed the court's decision and remitted the case for an assessment on the merit of whether the assignment of the Spanish unregistered mark R10 actually took place under the agreement.
In its decision rendered on June 12 2014, the General Court found that unregistered trademarks, as well as any registered rights, should be explicitly mentioned in transfer agreements for their assignment to take place. The agreement between DL Sports and Nike included a specific and detailed list of trademarks registrations and applications for R10 signs, but any reference to the Spanish unregistered mark was missing. Therefore, the agreement did not constitute a valid proof of the transfer of ownership of the Spanish unregistered mark R10 in favour of Nike.
In addition, Nike had failed to provide further clarification, as required by the court, as to its relation with DL Sports at the time the opposition was filed.
In view of the foregoing, the court concluded that Nike did not own the Spanish unregistered mark R10 when it joined the opposition proceedings and, therefore, was not entitled to appeal the decision of the Opposition Division to the Board of Appeal.
Giovanna Del Bene, Bugnion SpA, Milan
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