Keywords
Summary

Keywords

Community trade mark – Appeals procedure

(Council Regulation No 40/94, Arts 58 and 108 to 110)

Summary

A decision of the Opposition Division of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) which allows, in respect of all the services concerned, opposition brought against the registration of a Community trade mark and based on an earlier national mark and an earlier Community mark, does not in any way adversely affect a party to proceedings which led to a decision, for the purpose of Article 58 of Regulation No 40/94 on the Community trade mark, where the opposition was not allowed on the basis of both marks put forward as grounds of opposition, but only on the basis of the earlier national mark, the applicant for a Community trade mark thus still being able to apply for the conversion, in accordance with Article 108(1)(a) of Regulation No 40/94, of its application to an application for a national mark in the Member States with the exception of the Member State where, under the Opposition Division’s decision, grounds for refusal of registration apply to the trade mark application.

The aim of opposition proceedings is to give undertakings an opportunity to challenge, by means of one procedural system, applications for Community trade marks which might give rise to a likelihood of confusion with their earlier marks or rights, and not to settle pre-emptively potential conflicts at national or even Community level.

Furthermore, the conversion procedure provided for in Articles 108 to 110 of Regulation No 40/94 is merely optional for an applicant for a Community trade mark and the fact that an application for conversion may be transmitted to the national authorities concerned, in accordance with Article 109(3) of the regulation, does not mean that the trade mark application will automatically lead to registration. It is the task of the national authorities to examine any possible grounds for refusal of registration, the opponent being able, in principle, to assert his rights before those authorities.

Finally, although Article 108(2)(b) of Regulation No 40/94 provides, on grounds of consistency of decisions and procedural economy, that conversion is not to take place for the purpose of protection in a Member State in which, in accordance with the decision of the Office, grounds for refusal of registration apply to the Community trade mark application, that provision only requires the Office to comply with such a decision where one has already been made. However, there are no grounds for assuming that that provision also seeks to require the body adjudicating on an opposition to adjust its decision in order to prevent as far as possible the applicant for a Community trade mark from applying for its conversion.

(see paras 27-30, 37)