OHIM not in breach of principle of equal treatment

European Union

In the joined cases of Axion SA and Belce v Office for Harmonization in the Internal Market (OHIM), the European Court of First Instance has upheld the OHIM's refusal to register certain three-dimensional shapes as Community trademarks. The court ruled that all applications for registration must be judged solely against the Community Trademark Regulation and not against the OHIM's prior practice. In so doing, it rejected the plaintiffs' argument that since the OHIM had allowed the registration of similar types of three-dimensional marks in previous decisions, it had breached the principle of equal treatment by refusing the plaintiffs' applications.

Axion, a Swiss company, applied to the OHIM to register as a Community trademark a three-dimensional shape representing a brown cigar. Christian Belce, an individual based in Switzerland, similarly applied for the registration of the three-dimensional shape of a gold ingot. In 2001 an examiner at the OHIM refused both applications on the grounds that the shapes are devoid of any distinctive character within the meaning of Article 7(1)(b) of the Community Trademark Regulation. An OHIM Board of Appeal rejected Axion's and Belce's appeals, stating that such shapes are commonplace in the relevant market and that the shapes in the proposed applications do not have the requisite level of distinctiveness.

Axion and Belce appealed to the European Court of First Instance, arguing, among other things, that the OHIM's refusal to register the shapes infringed the principle of equal treatment. They contended that since the OHIM had allowed the registration of other three-dimensional shapes on previous occasions, which, in their view, are neither more original, nor more fanciful than the shapes in their applications, the OHIM had not dealt with their applications fairly.

The court rejected the argument and upheld the OHIM's decision to refuse registration. It held that the legality of OHIM decisions and all applications for registration of Community trademarks must be judged solely against the Community Trademark Regulation as interpreted by the Community courts, and not against the OHIM's prior practice. In addition, the court noted that the trademarks in the decisions cited by Axion and Belce are not comparable to the shapes in their respective applications.

Pietro Pouchè, Carnelutti, Studio Legale Associato, Milan

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