Withdrawal of opposition does not entail renunciation of right to file invalidity action
In Pensa Pharma SA v Office for Harmonisation in the Internal Market (OHIM) (Joined Cases T-544/12 and T-546/12, June 3 2015), the General Court has stated that the withdrawal of an opposition, prior to the filing of an invalidity action, could not be interpreted as being tantamount to an express consent to the registration of the contested trademark.
The General Court (Second Chamber) dismissed the actions filed by Pensa Pharma SA against two decisions of the Fifth Board of Appeal of OHIM confirming the invalidity of the Community word mark PENSA PHARMA and the figurative Community trademark (CTM) PENSA (depicted below).
The board had found that there was a likelihood of confusion with the earlier word marks PENTASA, owned by interveners Ferring BV and Farmaceutisk Laboratorium Ferring A/S, registered in a number of member states in respect of “pharmaceutical preparations” in Class 5 of the Nice Classification.
Before filing applications for a declaration of invalidity of the PENSA marks, the interveners had filed notices of opposition pursuant to Article 42 of the Community Trademark Regulation (40/94) (now Article 41 of the Community Trademark Regulation (207/2009)). However, the interveners had withdrawn the oppositions, informing OHIM and the applicant that such withdrawal would be followed by applications for a declaration of invalidity once those marks were registered.
The applications for a declaration of invalidity were filed in respect of each of the registered marks on the grounds that the registration was contrary to Article 53(1)(a) of Regulation 207/2009, read in conjunction with Article 8(1)(b) and Article 8(5), and to Article 53(2) of that regulation. The applications were directed against all the goods and services covered by each of the CTMs (Classes 3, 5 and 44).
Although the earlier marks were registered in a number of EU member states, the General Court considered that the Board of Appeal was justified in basing its examination, in both of the invalidity proceedings, on the earlier marks registered in the Benelux countries and France, respectively.
In its first plea, the applicant submitted that the interveners had consented, for the purposes of Article 53.3 of the regulation, to the registration of the contested marks before the submission of their applications for a declaration of invalidity. Article 53.3 provides that a CTM may not be declared invalid where the proprietor of a right referred to in Paragraphs 1 or 2 consents expressly to the registration of the CTM before submission of the application for a declaration of invalidity.
Firstly, the applicant argued that the marks had peacefully coexisted in Spain and Italy and that, consequently, the proprietor of the earlier mark implicitly consented to the contested registration. Such argument was considered irrelevant by the court, since the board’s decisions were based on an earlier mark which is registered in other member states, namely in the Benelux countries and in France.
The court pointed out that a likelihood of confusion established in one or more member states is sufficient to refuse registration of the trademark applied for, without it being necessary to rule on the likelihood of confusion in other states relevant to the dispute.
In addition, the court considered that the withdrawal of the oppositions by the interveners could not be interpreted as being tantamount to the interveners’ express consent to the registration of the contested marks. In this regard, the court highlighted that the principle of procedural economy cannot preclude a party’s right to protect its earlier rights by withdrawing its opposition with a view to filing an application for a declaration of invalidity. It also pointed out that there is no provision in Regulation 207/2009 that provides, at least expressly, that the withdrawal of an opposition entails the renunciation of the right to file an application for a declaration of invalidity.
Finally, the court stated that the coexistence agreement between the parties, which was signed in 2000, did not concern the contested marks, but a mark which was different from them and, therefore, the mentioned agreement could not be interpreted in such a way as to extend beyond its scope without the express consent of the parties, for the purposes of Article 53.3 of the regulation.
The General Court thus rejected the first plea, considering that none of the factors relied on by the applicant could serve as express consent for the purposes of Article 53.3.
In its second plea, the applicant alleged infringement of Articles 8(1)(b) and 53(1)(a) of the regulation, finding that neither the marks at issue nor the goods were similar and, consequently, there was no likelihood of confusion.
The General Court also dismissed the applicant’s second plea and confirmed the Board of Appeal’s analysis:
the relevant public consisted of consumers from the Benelux countries and French consumers, respectively, and the level of attention of that public, which consisted of the general public and of health professionals, was higher than average;
visually, there was a low degree of similarity between the contested marks and the PENTASA mark;
phonetically, the contested marks and the PENTASA mark were similar;
conceptually, neither the contested marks nor the PENTASA mark have any clear meaning for the relevant public; and
the goods and services covered by the marks at issue were identical or similar.
Based on the foregoing and the fact that the earlier mark PENTASA had acquired a highly distinctive character through use in the Benelux countries as well as in France, the General Court held that there was a likelihood of confusion between the marks at issue.
Beatriz Bejarano, Grau & Angulo, Barcelona
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