Volkswagen succeeds in Community trademark appeal

In Volkswagen AG v Francisco Zaragoza Tarrago, the First Board of Appeal of the Office for Harmonization in the Internal Market (OHIM) has annulled a decision to reject Volkswagen's application for the Community trademark BUGATTI. The Opposition Division of the OHIM had rejected the application based on evidence of prior genuine use. However, the appellate board concluded that Tarrago's evidence was unreliable.

In 1998 Volkswagen applied for the Community trademark BUGATTI. Tarrago opposed the application on the basis of prior registration and use in Spain.

At the Opposition Division hearing, Volkswagen did not contest the registration but did contest Tarrago's genuine use of the Spanish mark. Tarrago presented as evidence a number of invoices bearing the word 'Bugatti', which he alleged covered a period of five years prior to the publication of Volkswagen's trademark application. He also presented four delivery notes, business cards and other items bearing the word 'Bugatti'.

The Opposition Division considered this evidence sufficient to demonstrate genuine use of the Spanish mark. Thus, Volkswagen's application was rejected.

On appeal, the First Board of Appeal reconsidered Tarrago's evidence of genuine use and concluded that it was unreliable. The board closely scrutinized the invoices and noticed that Tarrago's telephone number was quoted as a nine-digit number. The nine-digit system was not introduced in Spain until April 1998. The board therefore questioned the validity of the invoices dating from 1995 to 1997, casting doubt on the credibility of the other evidence as well.

The board annulled the Opposition Division's decision and remanded the matter back to it for further examination.

Peter Munzinger, Bardehle Pagenberg Dost Altenburg Geissler Isenbruck, Munich