Certmedica International and Lehning Enterprise v OHIM
In invalidity proceedings, the General Court of the European Union (the Court) has today agreed with the decision of the OHIM Board of Appeal (the Board) that there is a likelihood of confusion between a Community trade mark registration for the mark ‘L112’ in classes 5 and 29 owned by Certmedica (the CTM registration) and an earlier French trade mark registration for the mark ‘L.114’ in Class 5 owned by Lehning enterprise (the earlier mark). The Court concluded that the Board was correct to authorise the CTM registration in relation to a limited number of goods in Class 5. The Court also dealt with a number of procedural issues in its decision.
Lehning applied to OHIM for a declaration that the CTM registration was invalid on the basis of Article 8(1)(b) of Regulation 40/94 (now Article 8(1)(b) of Regulation no. 207/2009) together with Article 52(1)(a) of that regulation (now Article 53(1)(a) of Regulation No. 207/2009) and relied upon its earlier mark. Lehning submitted evidence purporting to prove genuine use of its earlier mark and the Cancellation Division of OHIM annulled the CTM registration in respect of certain goods in Class 5, but confirmed that the CTM registration was valid as regards ‘veterinary products’. The Board partially upheld Certmedica’s appeal and annulled part of the decision of the Cancellation Division, authorising the CTM registration for ‘sanitary preparations’ and ‘dietetic foodstuffs’ within Class 5.
On appeal both parties sought to rely on evidence which had not been submitted during the proceedings before OHIM. In confirming that arguments developed from such ‘new’ evidence were inadmissible, the Court reiterated that its review of the legality of decisions of the Board must be assessed on the basis of the facts and law existing at the time when the decision was taken by the Board.
Certmedica’s application also included a general reference to all pleas put forward during the proceedings before OHIM. In declaring such general references inadmissible, the Court confirmed that the application must contain a clear and precise summary of the pleas in law relied upon which enables the defendant to prepare its defence, and the Court to rule, without further information.
Lehning stated in its application that the Court should confirm certain aspects of the Board’s analysis. The Court reiterated that a successful appeal can only result in annulment or alteration of the Board’s decision.
The Decision of the Court
The Court considered that the Board had correctly concluded that Lehning had proved genuine use of the earlier mark in France during the relevant period. The Court also confirmed that goods can be regarded as identical where the goods covered by an earlier mark are included in a more general category covered by the subsequent mark and agreed with the Board’s assessment that certain goods covered by the CTM registration and the earlier mark were similar. The Court considered that the marks were visually very similar and ultimately agreed with the Board’s finding that there was a likelihood of confusion between the marks. The Court did, however, annul a section of the Board’s decision which implicitly held the CTM registration to be invalid in respect of ‘veterinary preparations’ as the Board was not competent to rule on this point.