General Court confirms procedural rules on admissibility of appeals

European Union
In Paroc Oy AB v Office for Harmonisation in the Internal Market (OHIM) (Case T-157/08, February 8 2011), the General Court has clarified procedural aspects relating to the admissibility of appeals lodged against decisions of OHIM’s boards of appeal in connection with Community trademark (CTM) applications that were already the subject of earlier proceedings. The court found that it was inadmissible to lodge an appeal against a decision to reject a CTM application for the word sign INSULATE FOR LIFE for the same goods for which the applicant had - unsuccessfully - previously sought registration.

The applicant, Paroc Oy AB, had filed a first CTM application for INSULATE FOR LIFE in May 2004 for goods in Classes 6, 17 and 19 of the Nice Classification, including “common metals, rubber and building materials”. The OHIM examiner had rejected the application on the grounds that INSULATE FOR LIFE was devoid of any distinctive character and was descriptive within the meaning of Articles 7(1)(b) and (c) of the Community Trademark Regulation (40/94). This decision was upheld by the Second Board of Appeal in April 2006. Paroc did not appeal against the board's 2006 decision.

In May 2007 the company filed a second CTM application for the word sign INSULATE FOR LIFE, seeking registration for the same goods in Classes 6, 17 and 19, as well as “building and construction; repair; installation services” in Class 37. The examiner refused registration on the grounds that the mark was devoid of any distinctive character within the meaning of Article 7(1)(b). On Paroc’s appeal, the Second Board of Appeal upheld the refusal and dismissed the appeal in its entirety on February 21 2008. The company then filed an appeal against this decision with the General Court.

Paroc not only filed the application for identical goods in Classes 6, 17 and 19, but also relied on essentially the same arguments before the Second Board of Appeal as those raised in the course of the first proceedings. With respect to the goods in Classes 6, 17 and 19, the General Court concluded that the subject matter of the dispute was largely the same as that which gave rise to the first decision in 2006. In the court’s view, the fact that the second application was also made in respect of services in Class 37 was irrelevant, because the goods in Classes 6, 17 and 19 on the one hand, and the services in Class 37 on the other, were the subject of a separate assessment and reasoning with a view to determining the registrability of the word sign INSULATE FOR LIFE. The General Court thus regarded the 2008 decision of the Second Board of Appeal as merely confirmatory of its 2006 decision, and held that the appeal against the second decision, which was filed outside the two-month time limit pursuant to Article 65(5) of the regulation, was inadmissible.

The General Court went on to consider the registrability of INSULATE FOR LIFE in relation to the services in Class 37 and confirmed OHIM’s assessment that the mark was devoid of any distinctive character under Article 7(1)(b). It disagreed with Paroc’s argument that the mark, as a whole, was suggestive, and that its meaning was vague and unspecific with regard to the services at issue, therefore allowing the relevant public to identify their commercial origin. The court endorsed OHIM’s findings that, in light of the services at issue, the relevant public would understand INSULATE FOR LIFE, immediately and without further analytical effort, as a reference to very long-lasting services related to the use of a particularly durable insulation material and, therefore, not as an indication of the commercial origin of those services.

The decision is hardly surprising as far as the registrability of the slogan 'insulate for life' is concerned. In this respect, the decision must be regarded as mere confirmation of established case law in connection with the registrability of slogans under Article 7(1)(b).

However, the decision is important for applicants who consider simply refiling an application for the mark instead of using their right to appeal against an unfavourable decision. At least as far as an application for an identical mark and for identical goods or services is concerned, it is bound to fail once it has reached the stage beyond the administrative proceedings before OHIM. Nevertheless, it remains unclear what constitutes a 'confirmatory decision' where an application is filed for registration of a similar sign and/or for similar goods and services that was the subject of previous proceedings. Trademark applicants and professionals will have to assess on a case-by-case basis whether such an application would have to be considered on its own merits.

Florian Traub, Squire Sanders & Dempsey (UK) LLP, London

Get unlimited access to all WTR content