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Thursday, 2 June 2005

PARMITALIA UNCOVERED


The IPKat is very grateful to Veronica Barresi of White and Case for providing him with this fine case note on Parmitalia

Despite the intriguing name of the mark involved recalling a far more important case law, the “PARMITALIA” case decided on May 31 by the CFI (Case T-373/03, Solo Italia S.r.l. v OHIM, Nuova Sala S.r.l.) is merely about procedure and bad representation.

Solo Italia S.r.l. applied for registration of the Community word mark “PARMITALIA” for cheeses in Class 29 on 14 January 2000.

An opposition was filed by Nuova Sala S.r.l. based on its earlier figurative colour mark

registered as a CTM for grated cheeses in Class 29. The Opposition Division found that the marks were visually and phonetically very similar as well as conceptually identical - in that they both alluded to or evoked Parmesan cheese of Italian origin. The opposition was therefore upheld in a decision of 26 November 2002 for all the contested goods in Class 29.

On 4 December 2002, Solo Italia S.r.l. paid 800 Euro (i.e. the cost of an appeal before the OHIM) into OHIM’s account but failed to mention what the payment was for and, more, such payment was made by a company with a different name. On 17 January 2003, OHIM informed the applicant that it had a one-month deadline to communicate the reason for the payment. On 17 February 2003, it submitted further references and a statement of grounds in French, followed on the 20 February, by its translation into English, the language of the proceedings. The ‘notice of appeal’ was filed on 3 March 2003 thus (much time) after the expiry of the deadline (26 January 2003) provided under art. 59 of the CTMR (i.e. two months after the date of notification of the decision appealed from). The notice was followed by a supporting statement filed by the applicant’s new representative on 21 March 2003 and further observations.

Despite the fact it had been represented at the time of the opposition, Solo Italia argued that, being a private company, it ignored the procedure before OHIM and had therefore thought that the one-month deadline given by the Office was a time limit (extension) also for the filing of the appeal. It also argued that that the earlier trade mark ‘PARMITAL’ and the CTM application ‘PARMITALIA’ could not be considered confusingly similar and concluded that the Board of Appeal (BoA) should annul the contested decision.

Nuova Sala S.r.l. argued that: i) the appeal was not admissible because of the deadline’s expiry; ii) the mere payment of the appeal fee could not replace a notice of appeal, as none of the requirements set out in Rule 48 of the Commission Regulation implementing the CTMR had be met (i.e. name and address of applicant and its representative, reference to the contested decision and extent of the appeal); iii) in any event the appeal was inadmissible because the bank order for the payment of fees was made in French whereas the language of the contested decision was English.

The BoA obviously concluded that ignorance of the law could not be a defence or an excuse justifying the appellant’s inobservance of mandatory and non-extendable time limits and therefore rejected the appeal.

The pugnacious Solo Italia S.r.l. appealed before the CFI and the grounds of appeal are worth noting. First, the fact that the contested decision was notified by OHIM via fax was an infringement of Art. 6 of the ECHR in so far it did not respect the requirement of certainty of the notifications. Second, the decisions of the Opposition division and the BoA had not been signed and stamped as provided by the relevant rules of the CTMR Implementing regulation and were therefore both invalid. Third, by receipt of the payment of the fees the OHIM had been substantially informed of the applicant’s decision of filing an appeal and, with its letter of 17 February 2003 also about the mistake made by its representative.

The OHIM argued that all arguments had to be rejected. The first one because not sufficiently motivated. The third one because an extension of the deadline granted in relation to the payment of fees could not have the effect of postponing the deadline for the filing of the appeal provided by Art. 59 of the CTMR. As regards the missing signature and stamp in the BoA’s decision, the Office noted that, in any event, the infringement of a procedural rule would not be sufficient to render a decision invalid. The Office also noted that the applicant had not requested a restitutio in integrum as provided by Art. 78 of the CTMR.

The CFI rejected the first two arguments straightforward in so far as they had not been raised in the course of the procedure before the OHIM and confirmed the OHIM’s view on the infringement of Art. 59 of the CTMR.

The CFI ruling consists of a 7 page judgment delivered 5 years after Solo Italia applied for registration of its CTM (which would become not less than 7 should Solo Italia appeal the CFI’s judgment before the ECJ). One wonders whether the EC courts should not address resources and time to more interesting subjects.

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