In Black & Decker Corporation v OHIM, Atlas Copco AB, the Court of First Instance ("CFI") has offered useful guidance on the correct interpretation of Rules 18(1), 79 and 80(2) of Regulation 2868/95 (the "Implementing Regulation") with regards to "…clearly identify[ing] the earlier mark and earlier right…" which forms the basis of any opposition notice.
Black & Decker filed thirteen applications for Community trade marks; each mark being a variation of a yellow and black power tool. On the day of expiry of the opposition period, Atlas Copco filed by fax – and, therefore, in black and white – opposition notices; the originals of which were sent by post and were received two to four days after the expiry of the period.
The oppositions were based on Arts 8(4) and 42(1)(c) of Regulation 40/94 (the "CTM Regulation"): Atlas Copco arguing that it had made use of similar signs to the marks applied for and, therefore, had the right to prohibit the use of said marks on the basis of passing off and unfair competition. Atlas Copco attached to the opposition notices (colour) images of its electric power tools – most of which were in a combination of yellow and black – and, for the most part, a description of the tool and the respective specifications (including reference numbers). The Opposition Division rejected the oppositions on the basis of Rule 18(1) of the Implementing Regulation; namely, the opposition notices did not clearly identify the earlier mark or the earlier right. Atlas Copco appealed to the First Board of Appeal which set aside the decision, holding that the notice of opposition did identify the earlier right in question "… since the [images] faxed in black and white, confirmed by mail in colour, were perfectly clear and precise." The Board of Appeal also relied, in identifying the images, on the reference numbers given to the images on the basis that it allowed a third party to verify the image by cross-checking it against the product itself.
Black & Decker brought an action against the decision of the First Board of Appeal.
Black & Decker claimed that the First Board of Appeal erred in law in that 1) it had incorrectly based its decision on the colour images of Atlas Copco’s electric power tools – the colour images being inadmissible because only black and white images had been sent before the expiry of the opposition period; and 2) it had held that the earlier signs – and the aspects of those signs upon which Atlas Copco relied – were clearly identified and, in particular, that it had held that the reference numbers and specifications had aided Black & Decker in identifying said images and aspects.
The CFI roundly rejected Black & Decker’s first argument. It noted that Rules 79 and 80 of the Implementing Regulation permit the submission of opposition applications by fax and provide that, where a fax is incomplete, OHIM should inform the sender of such ‘inadequacies’ and request it to submit the application in its original form – even if such submission was after the expiry of the notice period. The CFI found that a fax was incomplete if it had intended to communicate a colour document: therefore, it held that it would be contrary to the tenor of the Rules if Atlas Copco – which filed the originals after the expiry of the opposition period without OHIM notifying it of the ‘inadequacies’ – was not afforded this protection.
With regards the second ground, the CFI noted that each opposition had specified the countries in which the earlier signs were subject to protection, the goods on which the oppositions were based, the nature of the earlier rights, and provided images of the signs accompanied, in part, by a description of the tool and specifications (including reference numbers for certain models). It held that this was sufficient for the purposes of identifying the signs per se. With regards to identifying the aspects of the signs upon which Atlas Copco relied, the CFI held that it was ‘sufficiently clear’ that the oppositions were based on the overall external appearance of the respective tools.
This decision provides useful learning points with regards to the submission of opposition notices:
- An opposition notice which contains signs (where colour is claimed as part of the sign) is prima facie incomplete if submitted by fax. Therefore, any submission of a notice should always be by original or be sent in colour using alternative electronic means.
- If an original cannot be filed before the expiry of the opposition period, it is acceptable to submit the notice by fax – before expiry of the notification period – and submit the originals shortly thereafter.
- Any signs included in an opposition notice should be accompanied with a description explaining the aspect of the sign in which rights are claimed. In lieu of any description, the default (implied in the CFI’s decision) is that the aspect of the sign claimed is towards the "overall external appearance".
- When including a sign in an application it is prudent to include a reference to a third party source whereby the sign can be verified and clarified. This may serve to negate any ‘deficiencies’ in the sign (as attached to the notice).