Hurrah for Chez Gerrard - Right Evidence at Right Time

In May 2004, Chez Gerrard applied for the mark CLUB GOURMET in various classes including classes 29, 30, 32 and 33. El Corte Inglés SA opposed the mark in its entirety under Article 8(1)(b) (likelihood of confusion) and 8(5) (mark with a reputation), based on a number of earlier registrations, only one of which was ultimately relied on: a Spanish national registration for the figurative mark (shown below) in class 35. The class 35 specification of the earlier mark reads: "An advertising sentence."

The Board of Appeal (BoA) held that the description of services of the earlier mark was "an advertising sentence", which designates neither goods nor a service, and therefore couldn't be compared with the goods/services of the CTM applied for. Even if the mark were deemed to cover "advertising services" (which was not permitted by the BoA), these were held to be dissimilar. The marks were also deemed to be sufficiently dissimilar to avoid confusion.

The opponent maintained that under Spanish registry practice until 1997, 'slogan marks' were protected not only for services in class 35, but also for all goods/services designated by one or more 'basic marks'. The earlier mark had been applied for in 1994 (registered in 1996): hence, the opponent maintained, its mark should be deemed to cover all goods/services covered by the marks referred to in the specification (ie, the mark should essentially be deemed to cover goods/services in classes 29, 30, 31, 32, 33 and 42).

The Board of Appeal disagreed, maintaining that the opponent could not extend the scope of protection of the earlier mark to goods/services protected by other rights which have not been relied upon in the context of the opposition.

Decision

The GC held that it was not apparent from the wording of the specification (ie, "an advertising sentence") that the earlier mark was supposed to designate all goods/services covered by the marks subsequently stated in the specification.

Perhaps most importantly, the court noted that facts brought before it for the first time and not before OHIM or the BoA cannot subsequently be relied on in a further appeal. The opponent had only brought up the Spanish registry's pre-1997 procedure concerning 'slogan marks' before the GC.

Despite the refusal by OHIM to take into account the goods/services in other classes, the opponent still did not address the issue before the BoA, where it referred to 'advertising' services being covered (albeit in relation to goods/services in additional classes), and also to an alleged complementarity between class 35 advertising services and the goods covered by the application being opposed.

As regards whether OHIM should have taken into account the fact that under Spanish national law the earlier mark extended to cover goods/services in other classes, the court held that this was a matter of establishing facts, not applying the law. The only law applied by EU Institutions (such as the General Court) is EU law. Any national law relied on must be demonstrated by adducing evidence. It was for the opponent to show the extent of protection of the marks relied on, and what goods/services they covered.

Overall, the GC held that it was not apparent from either the wording of the specification of the earlier mark (nor from the opponent's submissions) that the scope of protection of the earlier mark went beyond the strict wording of the specification as drafted.

Comment

The case shows the importance of submitting the correct evidence at the correct time in CTM opposition proceedings, particular when seeking to rely on an aspect of national law that does not form part of EU law more widely (and in fact may be completely alien to it).

Useful link

Published judgment of the General Court, 20 March 2013, Community trade mark opposition proceedings - application for Community word mark CLUB GOURMET: http://dycip.com/chezgerrard