Prospective TM owner can file oppositions, rules CJEU
The Court of Justice of the European Union (CJEU) has confirmed that a prospective trademark owner who is not yet the registered owner can file a notice of opposition based on the mark.
The CJEU delivered its decision on Wednesday, July 26.
At the centre of the dispute was the word sign ‘Medialbo’, covering numerous classes including 9, 41, and 42 for circuits, computer apparatus, and software consulting.
In 2012, the mark was applied for by an individual, Alexander Bopp, with German company QuaMa Quality Management becoming the mark’s successor in title.
Microchip Technology, a provider of technical products and services, then filed an opposition to the mark’s registration at the European Union Intellectual Property Office (EUIPO) on the basis of its prior registered trademark ‘MediaLB’.
‘MediaLB’ was registered in 2005 for electronic apparatus and software development in classes 9, 41, and 42.
Microchip’s opposition filing was accompanied by a request to change the name and address of the ‘MediaLB’ mark’s owner to Microchip, as 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.
The opposition to the ‘Medialbo’ mark was upheld in 2014 and the Fourth Board of Appeal affirmed the decision in 2015, as did the EU General Court in 2017.
At the CJEU, QuaMa raised a point of law centring on who is entitled to file a notice of opposition. The German company claimed that Microchip was not the owner of the mark at the time of filing the opposition so was not entitled to oppose the mark.
Earlier this year, advocate general (AG) Yves Bot opined on QuaMa’s first ground of appeal.
The AG said that QuaMa had repeated the same arguments made before the General Court in the hope of obtaining a different assessment of the facts, and advised the CJEU to dismiss the appeal as unfounded in part and inadmissible in part.
Bot also concluded that the EUIPO was entitled to treat Microchip’s application as a transfer of ownership, as the content of its application clearly related to a transfer request.
Last week, the CJEU agreed with Bot that QuaMa had “merely reproduced” the arguments it raised at the General Court.
QuaMa’s second ground of appeal, which Bot had not needed to opine on, alleged that the EUIPO did not sufficiently determine who the relevant public would be for the goods and services covered by its applied-for mark. This therefore impacted the assessment of likelihood of confusion, the company claimed.
In response to the second ground, the CJEU said that the characteristics of the relevant public fall within the realm of factual assessments rather than a question of law. Appeals to the CJEU should be based on a question of law, the court confirmed.
The CJEU ruled that the appeal was inadmissible and unfounded, as both the EUIPO and the General Court had addressed QuaMa’s concerns regarding the relevant public.
The court dismissed QuaMa’s appeal and ordered it to pay the costs of Microchip and the EUIPO.
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