Keywords
Summary

Keywords

1. Community trade mark – Decisions of the Office – Observance of the rights of the defence

(Council Regulation No 40/94, Art. 73; Commission Regulation No 2868/95, Art. 1, Rule 54)

2. Community trade mark – Registration procedure – Withdrawal, restriction and amendment of the trade mark application – Power vested solely in the applicant

(Council Regulation No 40/94, Art. 44(1))

3. Community trade mark – Observations of third parties and opposition – Examination of the opposition – No action on the part of the applicant in the course of the opposition and appeal proceedings before OHIM

(Commission Regulation No 2868/95, Art. 1, Rules 20(3) and 50(1))

Summary

1. In accordance with Article 73 of Regulation No 40/94 on the Community trade mark, decisions of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) must state the reasons on which they are based and may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. Pursuant to Rule 54 of Regulation No 2868/95 implementing Regulation No 40/94, if OHIM finds that the loss of any rights results from those regulations without any decision having been taken, it must communicate that to the person concerned and draw his attention to the possibility for him, within two months after notification of that communication, to apply for a decision on the matter by OHIM.

Even on the assumption that the Board of Appeal is entitled to find that procedural inactivity during the opposition and appeal proceedings before OHIM is evidence capable of demonstrating that the applicant for a Community trade mark has lost all interest in registration of that mark and has therefore implicitly withdrawn its application, a decision by a Board of Appeal finding that the applicant has implicitly withdrawn its application on the basis of that inactivity infringes, in any event, Article 73 of Regulation No 40/94 and Rule 54 of Regulation No 2868/95 and must for that reason be annulled, if that Board of Appeal did not at any time inform the applicant of its intention to take such a decision.

(see paras 33-35)

2. Pursuant to Article 44(1) of Regulation No 40/94 on the Community trade mark ‘[t]he applicant may at any time withdraw his Community trade mark application or restrict the list of goods or services contained therein’.

That provision is to be interpreted as meaning that the power to restrict the list of goods or services is vested solely in the applicant for a Community trade mark, who may at any time apply to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) for that purpose. In that context, the withdrawal, in whole or part, of an application for a Community trade mark or the restriction of the list of goods or services contained therein must be made expressly and unconditionally.

That provision concerns only the applicant for a Community trade mark and not the Board of Appeal of OHIM. It cannot therefore rely on that provision to infer – by substituting itself for the applicant – from the applicant’s procedural inactivity that there has been an implicit withdrawal of its trade mark application.

Consequently, that provision cannot be relied upon to infer the implicit withdrawal of the Community trade mark application by reason solely of the fact that the applicant for that mark took no action in the course of the opposition and appeal proceedings before OHIM.

(see paras 41-42, 44, 46)

3. According to Rule 20(3) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark, which deals with the assessment of the opposition, ‘[i]f the applicant submits no observations, [OHIM] shall base its ruling on the opposition on the evidence before it’. In addition, Rule 50(1) of Regulation No 2868/95 states that, ‘[u]nless otherwise provided, the provisions relating to proceedings before the department which has made the decision against which the appeal is brought shall be applicable to appeal proceedings mutatis mutandis’.

In the absence of any provision to the contrary, the Board of Appeal is thus bound to apply Rule 20(3) of Regulation No 2868/95 and, therefore, the applicant’s procedural inactivity at the stage of the opposition and appeal proceedings cannot be treated by the Board of Appeal as constituting a situation in which the applicant had implicitly withdrawn its Community trade mark application.

(see paras 54-55)