On 30 May 2013, the EU General Court annulled a Board of Appeal ruling, which had overturned an earlier declaration of invalidity on the basis that the actions of the applicant for invalidity (the
On 30 May 2013, the EU General Court annulled a Board of Appeal ruling, which had overturned an earlier declaration of invalidity on the basis that the actions of the applicant for invalidity (the "applicant") had amounted to an abuse of rights. The invalidity action was based on Articles 56(1)(a) and 52 of Regulation No. 207/2009, which permits any natural or legal person to seek a declaration of invalidity in respect of any trade mark registration on absolute grounds. In this case, the applicant claimed that the mark ULTRAFILTER INTERNATIONAL was descriptive and non-distinctive in respect of various goods and services, including filters in class 7. The Cancellation Division agreed and declared the registration invalid.
In its decision, the Board of Appeal held that the applicant's motivation for initiating the invalidity action was a desire to use the mark itself and as such it did not pursue the public interest objectives laid down in Articles 7(1)(b) and (c) and Article 7(3) of Regulation No. 207/2009. Instead it found that these "hidden intentions" amounted to an abuse of rights.
In overturning the decision of the Board of Appeal, the General Court confirmed that the absolute grounds for refusal of registration aim to protect the public interest underlying them, i.e. ensuring that a trade mark functions as a badge of origin and that descriptive signs are kept free for use by all traders. In assessing whether a trade mark has been registered contrary to this public interest, OHIM is required to assess whether a mark is devoid of distinctive character and/or descriptive and cannot allow considerations such as the Applicant's motives or earlier conduct to influence its decision in this respect. OHIM's sole function is to ascertain whether a registration has been validly obtained and so whether or not an applicant takes an action with a view to subsequently using the mark in question is irrelevant for the purposes of the assessment. In these circumstances, there can be no question of an abuse of rights where an applicant seeks a declaration of invalidity on absolute grounds.
It is not surprising that the proprietor of the mark would seek to argue that the applicant was not motivated solely by public interest considerations in taking the invalidity action. However, the General Court was surely right to find that what is fundamentally important is not the causal mechanisms leading to an action for invalidity. Instead, where an action is brought and there is a chance that a mark could be descriptive or non-distinctive, it is essential that a proper assessment is conducted by the Office and where appropriate, a declaration of invalidity made.
The full decision can be found here: ultra air GmbH v OHIM, Case T-396/11, 30 May 2013
In its decision, the Board of Appeal held that the applicant's motivation for initiating the invalidity action was a desire to use the mark itself and as such it did not pursue the public interest objectives laid down in Articles 7(1)(b) and (c) and Article 7(3) of Regulation No. 207/2009. Instead it found that these "hidden intentions" amounted to an abuse of rights.
In overturning the decision of the Board of Appeal, the General Court confirmed that the absolute grounds for refusal of registration aim to protect the public interest underlying them, i.e. ensuring that a trade mark functions as a badge of origin and that descriptive signs are kept free for use by all traders. In assessing whether a trade mark has been registered contrary to this public interest, OHIM is required to assess whether a mark is devoid of distinctive character and/or descriptive and cannot allow considerations such as the Applicant's motives or earlier conduct to influence its decision in this respect. OHIM's sole function is to ascertain whether a registration has been validly obtained and so whether or not an applicant takes an action with a view to subsequently using the mark in question is irrelevant for the purposes of the assessment. In these circumstances, there can be no question of an abuse of rights where an applicant seeks a declaration of invalidity on absolute grounds.
It is not surprising that the proprietor of the mark would seek to argue that the applicant was not motivated solely by public interest considerations in taking the invalidity action. However, the General Court was surely right to find that what is fundamentally important is not the causal mechanisms leading to an action for invalidity. Instead, where an action is brought and there is a chance that a mark could be descriptive or non-distinctive, it is essential that a proper assessment is conducted by the Office and where appropriate, a declaration of invalidity made.
The full decision can be found here: ultra air GmbH v OHIM, Case T-396/11, 30 May 2013