In El Corte Inglés SA v OHIM [2008] T-420/03 (unreported), the Court of First Instance (CFI) refused to overturn an Office for Harmonization in the Internal Market (OHIM) Board of Appeal decision rejecting an opposition to the registration of a Community trade mark. The Court held that the Board had been entitled to exercise its discretion to refuse to allow the opponent, the well-known Spanish department store chain El Corte Inglés, to submit evidence it had failed to adduce to the Opposition Division.

BACKGROUND

Two Spanish individuals applied to register the mark depicted below as a Community trade mark (CTM) for, among other things, “cinema and recording studios, rent of videos, concourse (scattering), installation of television and radiophones, production of films” in Class 41.

El Corte Inglés filed an opposition under Article 8(1)(a) and (b) and Article 8(5) of the CTM Regulation (40/94/EC) based on numerous earlier registrations held in the European Union, Greece, Ireland, Spain and the United Kingdom.

The OHIM Opposition Division rejected the opposition, holding that it was not only inadmissible, since details of the goods and services covered by some of the Spanish registrations had not been provided, but also unfounded for many of the marks upon which it was based, as no evidence of their existence had been submitted. Moreover, in respect of those rights for which El Corte Inglés had provided proof, the Opposition Division found that the opposition failed, inter alia, on the grounds that the goods and services were not similar and insufficient evidence had been submitted to prove that the earlier marks had a reputation.

On appeal, El Corte Inglés submitted further evidence, specifically extracts from the databas e of the Spanish Patentand Trade Marks Office concerning three Spanish registrations, along with a press article relating to the scale of its commercial activities in Spain. The Second Board of Appeal found the new evidence inadmissible and upheld the decision of the Opposition Division. El Corte Inglés applied to the CFI to annul the Board’s decision.

COURT OF FIRST INSTANCE

The Court held that the Board of Appeal had not, as El Corte Inglés argued, dismissed the action brought before it solely on the basis that the evidence was submitted out of time. Under Article 74(2) of Regulation 40/94, the Board has the discretion to take account of documents produced before it for the first time. However, in this case, El Corte Inglés had already been granted sufficient opportunity to produce all of the documents at issue before the Opposition Division.

The Court also held that the Board of Appeal had not erred in endorsing the Opposition Division’s conclusion that the existence of the three earlier Spanish registrations had not been proved; the opposition based on these rights was therefore unfounded.

The Court then went on to find that documents submitted by El Corte Inglés in support of the existence of its earlier well known marks in Greece, Ireland, Spain and the United Kingdom were insufficient and did not show use of the mark in these countries, never mind that they had a reputation. Moreover, although use in Spain had been proven, no information was provided regarding the duration and extent of that use, the degree of knowledge or recognition of the marks at issue, or any other information showing the marks to be well known in Spain.

The Court was also satisfied that the Board of Appeal had acted correctly in concluding that the conflicting goods and services were not similar and therefore there was no likelihood of confusion. The descriptions of the goods and services at issue showed that the goods covered by the earlier rights differed in their nature, intended purpose and method of use from those in the contested application. The Court considered that the fact that some of the services for which El Cortes Inglés had registered its marks might be advertised on television did not mean that those marks might be linked with television productions. In addition, and in line with case law, the goods and services could not be considered to be in competition nor complementary.

The Court also agreed with the Board that Article 8(5) of the Regulation was not applicable in this case. In order to satisfy the requirement of reputation, an earlier mark must be known to a significant part of the public concerned with the goods or services covered by the mark. Despite the degree of recognition being lower than in the case of well known marks under Article 6bis, the Applicant had failed to show the intensity, duration or geographical extent of the use made of the mark, or provide any other evidence showing that its earlier rights were known by a significant part of the public. For this reason the Court found that the Applicant had not established the reputation of the earlier rights.

COMMENT

The CFI confirmed the European Court of Justice’s interpretation of Article 74(2) in Kaul v OHIM & Bayer that, when hearing an appeal against a decision rejecting an opposition to the registration of a sign as a CTM, the Board of Appeal has the discretion as to whether or not to take into account facts or evidence presented for the first time. In this case, the Applicant had had numerous opportunities to present its evidence in earlier stages of the proceedings and the Board of Appeal was not sympathetic when evidence was submitted to it for the first time. Despite not offering much reasoning for its rejection of the evidence, the Board of Appeal had not acted out of line.