The Court of First Instance recently handed down its decision in Advance Magazine Publishing Inc. v OHIM (Case T-481/04) in respect of opposition proceedings for a Community Trade Mark.

In this case, the applicant, Advance Magazine Publishing Inc. (Advance) filed an application for a Community trade mark with the Office for Harmonisation in the Internal Market (OHIM) on 1 April 1996. Registration was sought for the word mark VOGUE in respect of several classes including sunglasses, jewellery, magazines and clothing in class 25. After the publication of the application J. Capela & Irmãos Lda lodged a notice of opposition against the registration. The opposition was based on registration of an earlier Portuguese word mark VOGUE PORTUGAL in 9 August 1968 for footwear in class 25 and on the Portuguese business name VOGUE  SAPATARIA registered on 28 February 1991. The applicant requested that the opponent furnish proof that the earlier mark had been put to genuine use during the five years preceding its application. The opponent was able to provide a significant amount of evidence which convinced the Opposition Division, who ruled in favour of the opponent. The addition of the word Portugal was discounted as it was based on old Portuguese law which required that goods mention their Portuguese origin.

Advance filed an appeal with OHIM against the Opposition Divisions decision contesting the decision in its entirety. Subsequently, Advance lodged a statement which provided grounds for the appeal on the basis of its earlier international registration for the word mark VOGUE which also applied in Portugal. The registration was for ready-made clothing of all kinds and underclothing in class 25. Advance argued that since this mark had been registered in 1951, the marks had thus co-existed in Portugal for more than 30 years. However, the Second Board of Appeal of OHIM dismissed the appeal, ruling that the argument relating to earlier international registration covering Portugal was inadmissible as it had not been raised before the Opposition Division.

Advance again appealed to the Court of First Instance which held that the Opposition Division had erred in ruling that it had no discretion as to whether to take into account facts that were not pleaded, or evidence that was not submitted, by the parties in due time. However, the CFI did not decide on the case on its facts, and referred it back to the OHIM Board of Appeal for reexamination.

It remains to be seen whether the applicants earlier international registration will entitle the applicant to register the Community Trade Mark.