A Community Trade Mark application cannot be implicitly withdrawn

In Laytoncrest Ltd v OHIM [2009] T 171/06 (unreported), the Court of First Instance (CFI) annulled a decision made by the Second Board of Appeal of the Office for Harmonisation in the Internal Market (OHIM), finding that the Board had erred in finding that a Community Trade Mark (CTM) application had been implicitly withdrawn and in fact, withdrawal of a trade mark application must be express and unequivocal.

BACKGROUND

In July 2001, Laytoncrest filed an application for a CTM for the word TRENTON in Classes 7, 9 and 11. Erico International Corp filed an opposition based on its earlier registration of LENTON in Classes 6 and 7; the specification of goods in Class 7 being identical for both marks.

Laytoncrest did not file any observations on Erico’s opposition and was notified by OHIM that OHIM proposed to rule on the opposition on the basis of the evidence before it. The Opposition Division rejected the opposition, finding that there was no likelihood of confusion between the marks, despite the partial identity and partial similarity of the goods concerned.

Erico appealed to OHIM’s Second Board of Appeal stating that Laytoncrest did not exist, given its “complete procedural inactivity“. In the absence of Laytoncrest’s response, the Board of Appeal sought confirmation by telephone that no observations were to be submitted.

Subsequently, it was held that, on account of its procedural inactivity, Laytoncrest had implicitly withdrawn its application. The Board stated that while it is normal for this to be done explicitly, the CTM Regulation does not exclude the possibility that the withdrawal of a trade mark application could be implicit, if it could be inferred clearly from the circumstances. Laytoncrest appealed to the CFI under several of the Rules implementing the CTM Regulation, and Articles 44(1) and 73 of the CTM Regulation.

DECISION

The CFI held that the Board of Appeal had taken from Laytoncrest the benefit of its CTM application and the effects of that decision were not limited to those goods that were the subject of Erico’s opposition. The CFI upheld Laytoncrest’s argument that the Board of Appeal decision contravened Rule 54, which requires the Board to notify an applicant of any loss of rights that ensue from application of the Rules or the CTM Regulation.

The CFI was further convinced by Laytoncrest’s argument that Article 44(1) of the CTM Regulation required a withdrawal of a trade mark application to be express and unequivocal, finding that the right to withdraw the application or to restrict the specification of goods and services vested in the applicant alone. In this regard, the CFI pointed out that the implicit withdrawal of the whole of an application could not possibly be inferred from the fact that the Applicant did not defend itself against an attack mounted against only part of its application.

The CFI ordered that the decision of the Second Board of Appeal be annulled and that OHIM should bear its own costs and those of Laytoncrest, while Erico was to bear its own costs.

COMMENT

Whilst these procedural decisions do not make the most exciting reading, this case provides important clarification of the scope of OHIM’s powers as it is the first time that the question has arisen as to whether the withdrawal of a CTM application could be implicit.