AG says TM successor in title can file oppositions
An advocate general (AG) has confirmed that a prospective trademark owner but who is not yet the registered owner is nonetheless entitled to file a notice of opposition in relation to that mark.
AG Yves Bot handed down his opinion (pdf) at the Court of Justice of the European Union (CJEU) today, May 3.
The dispute, filed at the CJEU by Germany company QuaMa Quality Management, centres on the word sign ‘Medialbo’. Microchip Technology, a provider of technical products and services, filed an opposition to the mark in 2012 based on its prior registered trademark ‘MediaLB’.
Microchip’s opposition was accompanied by a request to the European Union Intellectual Property Office (EUIPO) to alter the name and address of the ‘MediaLB’ mark’s owner. The mark was registered to SMSC Europe.
The EUIPO approved the transfer of the mark to Microchip, rather than the change of the owner’s name and address, because Microchip’s request actually amounted to a transfer ownership request.
In 2014 the Opposition Division of the European Union Intellectual Property Office (EUIPO) upheld Microchip’s opposition, as the applied-for mark covered similar services as the existing mark. The Fourth Board of Appeal affirmed the decision in 2015, as did the EU General Court in 2017.
QuaMa’s first ground of appeal at the CJEU raised a point of law concerning entitlement to file a notice of opposition. The CJEU did not ask Bot to present an opinion on QuaMa’s second ground of appeal, which centred on the conditions under which there is a likelihood of confusion between marks.
In relation to the entitlement point of law, QuaMa noted that Microchip originally applied to change the name and address of the ‘MediaLB’ mark’s owner, rather than to transfer ownership of the mark.
Therefore at the time of the opposition, Microchip was not the owner of the ‘MediaLB’ mark and therefore was not entitled to file an opposition, QuaMa said.
QuaMa also argued that the EUIPO was not entitled to reclassify Microchip’s request for a change of name and address as an application to transfer ownership and that the General Court’s acceptance of this point “distorted” the facts.
Overall, the AG described QuaMa’s argument as “inadmissible in part and unfounded in part”.
It was inadmissible as there was no evidence that the General Court distorted the facts and QuaMa was “merely” repeating the arguments it made before the court, in the hope of obtaining a different assessment of the facts.
The argument was unfounded as QuaMa’s own assessment of the facts failed to show that the court’s analysis was “manifestly incorrect,” and QuaMa’s assessment was based on a “misreading” of the judgment under appeal. It also “failed to identify any error of law that might vitiate the judgment,” Bot said.
Bot agreed with the General Court’s decision that, under European regulations, “successors in title to a mark who are not yet registered as proprietors but to whom the earlier mark has been transferred are entitled to file a notice of opposition”.
Affirming the court’s decision, Bot said Microchip filed the notice of opposition at the same time as the request for a change of name and address, which complied with the regulations.
The EUIPO was therefore entitled to treat the amended application as a transfer of ownership application, Bot confirmed, as the “clear content” of the original request actually related to a transfer rather than a name alteration.
Bot therefore proposed that the CJEU find QuaMa’s first ground of appeal inadmissible in part and unfounded in part.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today's top stories
Delta dispute with ‘fraudulent’ ticket site concludes
Nicki Minaj hit with copyright infringement claim
Fed Circuit dismisses summary judgment in gambling case
Barnes & Thornburg welcomes Brinks Gilson & Lione shareholder
