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Tuesday, 23 September 2003


This morning the Court of First Instance of the European Communities gave judgment in Henkel v OHIM . When a Community trade mark application was filed for KLEENCARE for various chemicals, abrasives and detergents in Classes 1 and 3, Henkel opposed, alleging a likelihood of confusion with its own earlier German-registered CARCLIN mark for the same products. The applicant demanded evidence that Henkel had used CARCLIN in Germany in the previous five years. Henkel submitted, among other things, a declaration made by its industrial manager to the effect that Henkel had used CARCLIN for cleaning motor bikes and that he knew that the making of a false declaration could subject him to penalties. The Opposition Division dismissed the opposition and disregarded the employee’s declaration, holding that statements made by an employee of a party to the proceedings were of less probative value than those made by third parties. The Board of Appeal upheld the Opposition Division’s decision, refusing either to reconsider the substance of the employee’s statement or to admit fresh evidence.

The Court of First Instance allowed Henkel’s appeal. Under the CTM Regulation the Board of Appeal has power to determine the issue before it on the basis of previous and fresh evidence or to remit it to the examiner or Opposition Division for reconsideration. Since the Opposition Division had the power to consider the substance of the employee’s declaration, the Board did too, even if the notice of appeal did not specifically demand that it do so. The Board of Appeal’s decision was therefore nullified.

The IPKat notes that the Boards of Appeal have made it plain in the past that they are reluctant to decide issues on the basis of evidence which should have been put before the examiner or Opposition Division in the first place. But the consideration of evidence already submitted does not come into that category, even if it may be of relatively little probative value.

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