Judgments nº T-409/07 of Court of First Instance of the European Communities, September 23, 2009

• Resolution Date: September 23, 2009
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-409/07

In Case T-409/07,

Helge B. Cohausz, residing in Düsseldorf (Germany), represented initially by I. Friedhoff, lawyer, and subsequently by S. von Petersdorff-Campen and H. Timmann, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

José Izquierdo Faces, residing in Bilbao (Spain), represented by H. Bock, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 6 September 2007 (Case R 289/2006-1) relating to invalidity proceedings between Helge B. Cohausz and José Izquierdo Faces,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),

composed of M. Jaeger, President, V. Tiili (Rapporteur) and F. Dehousse, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 16 November 2007,

having regard to OHIM-s response lodged at the Court Registry on 10 March 2008,

having regard to the intervener-s response lodged at the Court Registry on 15 February 2008,

having regard to the decision of the President of the Court of First Instance of 10 March 2009 to sit in the present case, since one of the members of the Chamber was prevented from attending,

further to the hearing on 1 April 2009,

gives the following

Judgment

Background to the dispute

1 On 8 May 2000, the intervener, José Izquierdo Faces, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p.1)).

2 The mark in respect of which registration was sought is the following figurative sign:

3 The services in respect of which registration was sought fall within Classes 35 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

- Class 35: -Services consisting of business management and organisation consultancy, especially related to the industrial property all included in this class-;

- Class 42: -Valuations, reports, researches, studies in general, all related to the industrial and intellectual property-.

4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 12/2001 of 29 January 2001.

5 On 27 April 2001, the applicant, Helge B. Cohausz, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), against the trade mark registration applied for. The opposition was rejected by the decision of the Opposition Division of 29 November 2002 on the ground that the evidence of registration of the earlier mark had not been translated into the language of the case.

6 Concurrently, on 5 November 2001, the applicant filed an application for a Community trade mark for the word sign copat, against which the intervener brought opposition proceedings. At the request of the applicant, the proceedings in that case were suspended pending the outcome of the invalidity proceedings with which the present case is concerned.

7 The acopat trade mark was registered as a Community trade mark on 11 February 2004.

8 On 6 April 2004, the applicant applied, under Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009), for a declaration that that registration was invalid on the ground that registration was precluded by the relative ground for refusal laid down in Article 8(1)(b) of that regulation (now Article 8(1)(b) of Regulation No 207/2009).

9 In support of his application for a declaration of invalidity, the applicant relied on the following earlier marks, protected in Germany:

- the word mark COPAT, registered under No 1166152, with effect from 21 October 1989, for the following services within Class 42: -Services of a patent lawyer, services of European Patent Attorney; consulting, agency, appraisal and search (technical and legal) commercial right protection regarding patents, utility models, design patents, registered trade marks, topographic sort patent rights and patent rights licenses and administration of patent rights, including fee-monitoring; investigation in legal matters, in particular international patent right searches, technical consultations, physical technical appraisals, services of a physicist, technical and legal translation-;

- the word mark COPAT, registered under No 2056440, with effect from 20 October 1993, in particular for the following goods and services within Classes 9, 35, 41 and 42: -Computer programs, management consultancy, arranging and conducting of congresses and seminars, publication of books, magazines and computer programs as printed matter, services of an attorney, engineer, translator, programmer, searcher, designer-.

10 The application for a declaration of invalidity concerned all the services covered by the Community trade mark, and it was based on all the goods and services covered by the earlier marks.

11 On 30 July 2004, the intervener requested that, in accordance with Article 56(2) and (3) of Regulation No 40/94 (now Article 57(2) and (3) of Regulation No 207/2009), the applicant furnish proof that the earlier marks had been put to genuine use.

12 On 15 December 2004, OHIM received documents from the applicant intended to prove that the earlier marks had been put to genuine use in Germany during the five-year period preceding the application for a declaration of invalidity (that is to say, during the period from 6 April 1999 to 5 April 2004), as well as during the five-year period preceding the publication of the application for a Community trade mark (that is to say, during the period from 29 January 1996 to 28 January 2001).

13 On 22 December 2005, after comparing it with the mark COPAT (No 1166152), the OHIM Cancellation Division declared that the Community trade mark acopat was invalid. First, the Cancellation Division held that although the invoices, brochures and other evidence relating to the period from 29 January 1996 to 28 January 2001 had been -highly reduced-, the documents taken as a whole allowed the conclusion to be drawn that the mark COPAT (No 1166152) had been put to genuine use in the field of industrial property related services throughout the reference period (that is to say, from 6 April 1999 to 5 April 2004 and from 29 January 1996 to 28 January 2001). Secondly, the Cancellation Division held that, in view of the similarity of the signs at issue and the fact that the services in question were at least similar, there was a likelihood of confusion with the earlier mark COPAT (No 1166152).

14 On 20 February 2006, the intervener filed a notice of appeal with OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), in respect of the decision of the Cancellation Division.

15 By decision of 6 September 2007 (-the contested decision-), the First Board of Appeal of OHIM allowed the intervener-s appeal and set aside the decision of the Cancellation Division. It held that the applicant had failed to prove that his earlier marks had been put to genuine use during the five-year period preceding the publication of the application for a Community trade mark and, specifically, had failed to show the extent of use between 29 January 1996 and 28 January 2001. Accordingly, the Board of Appeal dismissed the application for a declaration of invalidity.

Forms of order sought

16 The applicant claims that the Court should:

- annul the contested decision;

- order the intervener and/or OHIM to pay the costs.

17 OHIM and the intervener contend that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

Law

The documents produced for the first time before the Court of First Instance

18 Both OHIM and the intervener contend that Annexes 6 to 14 to the application are new documents in that they were not produced before OHIM. In consequence, those documents are inadmissible. In addition, the intervener contends that the English-language version of Annexes 5 and 16 are inadmissible, as is Annex 17.

19 It should be pointed out that Annexes 6 to 12 are extracts of archived internet pages. Although they show how those pages appeared at the time, it should be noted that they were not produced before OHIM, a fact which the applicant confirmed at the hearing and formal note of which was taken in the hearing minutes. Annexes 13 and 14 display the results of searches on the internet site of the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office), which were not carried...