Change in circumstances: Still a right to be heard?

Max Fuchs v OHIM

This case centered around a Community trade mark (CTM) application filed by Mr Max Fuchs which was successfully opposed by Les Complices SA on the basis of a likelihood of confusion with their earlier CTM and French national rights in classes 18 and 25.

Mr Fuchs appealed the decision to the Board of Appeal (BoA). The BoA rejected the appeal finding there was a likelihood of confusion with the earlier mark.

However, after the BoA had given its decision, OHIM's Cancellation Division revoked Les Complices' earlier CTM (and Les Complices made no attempt to appeal this revocation decision).

Mr Fuchs therefore filed an appeal to the GC requesting that the opposition decision be considered devoid of purpose insofar as it was based on the earlier, now revoked, CTM.

The court held that the lapsing of a mark relied on in a contested decision, which occurred after the lodging of an appeal to that decision, did not in itself place the court under an obligation to declare there was no need to adjudicate for lack of purpose or for lack of interest.

It was necessary to determine, following the revocation of the earlier CTM, whether annulment of the contested decision was still capable of procuring an advantage to the applicant.

The GC set out the following four points:

1. Revocation of earlier right aftera BoA decision issues
Revocation of the earlier right did not constitute an automatic withdrawal or repeal of the decision. Under Article 55(1) CTMR the CTM is deemed to have full effect up until the date the revocation action is filed, so if the decision was dismissed on the basis of the revocation it would be taking into account matters which arose after the contested decision. The GC found this neither affected the correctness of the decision nor had any relevance to the opposition proceedings.

2. Advantage to the applicant
Annulling the decision in a case such as this would give the applicant an advantage they would not get if the case was not adjudicated. The finding of no likelihood of confusion would provide the applicant with an advantage as they could have their CTM application proceed to registration for the goods covered by the revoked CTM registration, or re-file the CTM application without risk of receiving the same objections by Les Complices.

3. Voluntary withdrawal v revocation
The court found it was necessary to distinguish between a voluntary withdrawal of an opposition which allowed a contested CTM application to proceed, to one where the earlier CTM rights are revoked under Article 55(1) CTMR. The court found that the outcome decided on by the court where an opposition is withdrawn voluntarily, and which makes the BoA decision devoid of purpose, cannot be transposed to a case such as this where the earlier CTM right is revoked.

4. Suspensory effect to proceeding
The court set out that the mere fact that appeals against a decision from the opposition division (OD) and BoA have a suspensory effect to proceedings cannot suffice to call into question the applicant's interest in pursuing the action. It was reiterated that under Article 45 CTMR it is only once an opposition has been rejected by a definitive decision that the CTM is registered. Therefore, when the OD or BoA allows an opposition it will result in the CTM not being registered only so long as there has been no ruling on an appeal brought against that decision.

Having considered the above points the GC found that, despite the revocation of the earlier CTM, Mr Fuchs retained an interest in challenging the contested decision insofar as it covered the goods covered by the revoked CTM registration. The GC therefore went on to hear the case in full - however the appeal was eventually dismissed as it was found the BoA had not erred in their assessment.

This case raises an interesting question about invalidation actions that could similarly have an effect on earlier rights relied on in opposition proceedings.

Whilst a successful revocation action results in a ceasing of effect of the CTM right from the date the action was filed, an invalidation action would mean that the CTM had never existed, regardless of the date the action was filed. If that situation were transposed to the present case it is still unclear whether an invalidation action filed after a BoA decision issues would be seen as a matter that should not be taken into account by the court. It will be necessary to monitor subsequent court decisions to see how this potential situation is handled.

In short

• A change in the scope of trade mark protection relied on in an opposition will not affect the validity of a decision where the change relates to a revocation that occurs after the decision issues.
• Annulment of a decision must procure an advantage to the applicant, otherwise the court will find that hearing the case will have no merit.

Case details at a glance

Jurisdiction: European Union
Court: General Court
Parties: Max Fuchs v OHIM. Also Les Complices SA
Citation: T-342/12
Date: 08 October 2014
Full decision: http://dycip.com/maxfuchs1014