HERE COMES THE SUNRIDER

The IPKat is grateful to Kathrin Vowinckel of Kilpatrick Stockton, who has provided him with the pertient points of the Sunrider decision:

OHIM objected to the application for the word mark TOP covering "food made of herbs,..." (class 05) and "supplements made of herbs" (class 29) on the basis of Art. 7(1)(b) and (c) CTMR.

Amongst others, the CFI had to consider

- ... the language of the proceedings. The application had been filed in Greek, second language was English. It appears that all correspondence between the parties before the OHIM Examiner as well as the BoA was in English (even the appeal notice and arguments). The CFI ruled that use of the English language was contrary to Art. 115 (4) CTMR (following Kik v OHIM, C-361/01P). However, the claimant's rights had not been infringed because there had not been any disadvantage to the claimant. The claimant was able to fully understand all the issues relating to the matter, and had made use of its right to file evidence (in support of acquired distinctiveness - and which were also in English).

- whether the proceedings took unreasonably long (the appeal was filed on 7 June 1999 and the BoA decision passed on 30 May 2002). The claimant argued that the BoA had infringed its rights under the European Human Rights Convention. The CFI ruled that even if there was an infringement of the principle that decisions must be taken within a reasonable period of time this would not automatically result in an invalidation of the relevant decision. And in any event, the CFI pointed out that the claimant did not have an interest in an invalidation of the decision as this would result in the matter to be referred back to the BoA - and would prolong the proceedings to the claimant's disadvantage.

- an infringement of Art. 73 CTMR - the BoA decision on non-distinctiveness was based on an Internet search the results of which had not been passed on to the claimant. The CFI did not agree as the BoA had based its decision not solely on the results from the Internet search, but had moreover argued that the term "top" was generic, usual or used often in respect of the products covered by the application (similarly to the words "best", "excellent" and "super")...

- that the arguments put forward by the BoA were too vague. The CFI pointed out that the argumentation was indeed brief but did not agree that it was vague - it was sufficient to point to the laudatory character of the mark which informed consumers of the very high quality of the relevant products. And as concerned the non-distinctiveness of the mark, the BoA had argued (in paragraphs 41 to 50 of its decision) that the sign was merely a term which was usual or often used in connection with the relevant products.

- Art. 7(1)(b) and (c). On Art. 7 (1) (b), the CFI agreed with the BoA and more or less repeated the arguments already mentioned above (generic and laudatory character, etc.). Consequently, Art. 7(1)(c) was not considered.

- whether the BoA had made a mistake in considering the evidence filed by the claimant. The claimant argued that the BoA considered the evidence separately when in fact (and according to Art. 7(3) CTMR) it should have been considered as a whole. The CFI ruled that the evidence provided (catalogues without date and indication of geographic origin, sales figures) were documents and information of a different kind and that the BoA had not made a mistake in considering them separately.

Therefore, the claimant was unsuccessful on all grounds.