In Case T‑396/11, ultra air v OHIM - Donaldson Filtration Deutschland, the General Court examined the applicability of the concept of 'abuse of rights', in relation to an application for a declaration of invalidity of a Community trade mark, under Articles 56(1)(a), 7(1)(b) and (c) of Regulation 207/2009. The Court annulled the decision of the Fourth Board of Appeal of OHIM, clarifying that, in light of the public interests enshrined in the above provisions, the motives and earlier conduct of the applicant cannot affect the scope of the assessment conducted by OHIM. Therefore, 'there can be no question of an abuse of rights on the part of the applicant for a declaration of invalidity'.
In 2008, ultra air GmbH filed an application for a declaration of invalidity of the CTM under Article 51(1)(a) of Regulation 40/94 (now Article 52(1)(a) of Regulation 207/2009), alleging infringement of Articles 7(1)(b) and (c) and 7(3). The Cancellation Division upheld the application, recognizing that the sign was descriptive and devoid of any distinctive character. The Fourth Board of Appeal, on 18 May 2011, annulled the decision rendered at first instance and declared the application inadmissible, as vitiated by an abuse of rights. The Board noted that, with its application, ultra air did not pursue the public interest objectives laid down in Articles 7(1)(b) and (c) and Article 7(3). Rather, the company seeked to use the sign 'ultrafilter' [which, says Merpel, is also a mathematical concept] itself as a trade mark, alone or in combination with other terms, and had resorted to the application for invalidity only after its own application for registration of a figurative CTM comprising the word 'ultrafilter' (No. 5329529) had been rejected. Proof of these hidden intentions, according to the Board, came from the fact that the manager of the applicant had previously defended the distinctive character acquired by the contested mark through use, when he was a manager of the CTM's proprietor company. Thus, the action amounted to an abuse of rights, as the application had sought to attain objectives other than those which are legitimate under trade mark law.
The General Court first observed that the application for a declaration of invalidity under Article 56(1)(a) of Regulation 207/2009 'is an administrative procedure and not a court action' [to the effect that, as noted in Case C‑408/08 P Lancôme v OHIM, the application is not subject to the rules of admissibility applicable to judicial proceedings]. It then highlighted the differences between the requisites of admissibility for the actions laid down, on one hand, in Article 56(1)(a), and, on the other, in Articles 56(1)(b) and (c):
Article 56(1)(a) provides that an application for a declaration of invalidity based on an absolute ground for invalidity may be submitted by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which has the capacity in its own name to sue and be sued, whereas Article 56(1)(b) and (c), concerning applications for a declaration of invalidity based on a relative ground for invalidity, reserves the right to make such an application to certain specific persons who have an interest in bringing proceedings. Consequently, it is apparent from the scheme of that article that the legislature intended to restrict the group of persons able to apply for a declaration of invalidity in the latter case, but not in the former.
|Abuse of rights? Get out of here!|
Given that, in applying the provisions at issue in the context of invalidity proceedings, OHIM does not rule on the question whether the rights of the proprietor of the mark take precedence over any rights which the applicant for a declaration of invalidity might have, but ascertains whether the rights of the proprietor of the mark were validly obtained in the light of the rules governing the registrability of marks, there can be no question of an ‘abuse of rights’ on the part of the applicant for a declaration of invalidity.