FRESH FROM LUXEMBOURG: THREE MORE CFI DECISIONS

The IPKat's just found three more Community trade mark appeal decisions from the Court of First Instance on the European Court of Justice website today. They are

* Case T-164/02 Kaul v OHIM, Bayer: the OHIM Opposition Division and Board of Appeal held that the applicant's ARCOL mark was held to be so different from the opponent's CAPOL that not even if they were to be used for identical products would there be a likelihood of confusion. The CFI has annulled the Board of Appeal's decision, basically because insufficient weight was given to the opponent's evidence relating to what it maintained was the high level of distinctiveness of its mark (this is the illogical proposition, following Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, that there is a greater, rather than a lesser, likelihood of confusion where the opponent's mark has a highly distinctive character).

* Case T-396/02 August Storck KG v OHIM: OHIM rejected an application to register a three dimensional mark consisting of a light brown sweet, in respect of confectionery. This appeal was a total no-hoper and it couldn't be saved by limiting the specification of goods to "caramel sweets".

* Case T-402/02 August Storck KG v OHIM: OHIM rejected an application to register a three dimensional mark consisting of a light brown twisted sweet wrapper, also in respect of sweets. Another no-hoper on the merits, dismissed by the CFI.

The IPKat notes how often, when an application to register a Community trade mark is so weak as to be pretty well untenable, the applicant brings procedural point after procedural point in support of its case. There's almost a principle of proportionality developing here: the weaker the application, the more the procedural points.

Stop press. The IPKat has received an observation on Case T-164/02 Kaul v OHIM from a knowledgeable but unattributable source:

"The CFI is about to complicate and extend unnecessarily -- and to the prejudice of the parties -- proceedings before the Office. It is, with some differences in details, the unanimous position of the Office (including the Opposition Division, the hierarchy of the Trade Mark Department and all Boards of Appeal) that evidence which is presented for the first time before the Boards of Appeal should be rejected. New evidence, presented for the first time before a Board of Appeal, is by definition filed outside the time limit for bringing it before the Opposition Division. Such time limits would lose any value if the admission of new facts were allowed before the Boards.

Look at the case in issue. It was not until the opposition reached the Board of Appeal that the opponent remembered that its mark might perhaps have a reputation. Why allow tactics which prolong registration proceedings without any justification?

It also seems logical that the Boards of Appeal, by definition, should decide on appeals, rather than act as a second tier of the first instance. Is it not in the clear interest of each party that everyone has to lay their cards on the table at first instance and not seek to tease the party (or indeed the Office) through a methodology of trial and error? This is why all the Boards of Appeal reject as fallacious the idea of "functional continuity" in inter partes cases. Art.62 CTMR and Art.8 of the Rules of Proceedings of the Boards of Appeal mention two competencies: the obligation to decide on the appeal and the option, if appropriate for reasons of procedural economy, to continue proceedings in the position of the first instance. Moreover, the case law of the CFI is inconsistent and contradictory. In other cases (eg Case T-235/02 Scala/Scala and Case T-232/00 Chef/Cheff) the importance of time limits before the Opposition Division is emphasised.

Hopefully, the Office will appeal".

The IPKat fully agrees. It is not only wasteful of time and resources but also demeaning to expect the Boards of Appeal to expend their resources in dealing with evidential issues that could have been addressed by the Opposition Division or the examiner in the first place.