European Union - Trademarks - Registration

Chalk v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM): General Court of the European Union (First Chamber) (Judges Azizi (Rapporteur), President, Cremona and Frimodt Nielsen): 9 September 2011

In June 2001, the applicant company filed a community trademark application, seeking to register the sign 'CRAIC'. The goods in respect of which registration was sought corresponded to the description: 'Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and preparations for making beverages' and 'Poteen; alcoholic beverages containing poteen'.

In January 2006, an assignment was completed in favour of the applicant. In May 2007, the applicant indicated that the mark had been assigned to him before it had been transferred to the intervener. A dispute arose as to who had possessed the mark earlier, and the applicant brought proceedings against the defendant Office for Harmonisation in the Internal Market. The examiner found that the registration to the intervener had been valid and reflected the applicant's request to revoke the registration of the mark. The applicant appealed to the Board of Appeal and then to the General Court, seeking to annul the contested decision.

The court had consideration, inter alia, to article 16 of regulation 40/94 on the community trademark and rule 31 of regulation 2868/95 implementing regulation 40/94. The application would be dismissed.

(1) Article 16 of regulation 40/94 did not govern the law applicable to a contract, which included the rules on the validity of contracts concerning a community trademark such as assignments. In those cases the rights and obligations concerned were inter partes. Therefore, article 16 of regulation 40/94 did not require the respondent to apply the national laws of member states concerning a community trade mark as an object of property.

In the instant case, the intervener's request for transfer satisfied the requirements of rule 31 of regulation 2868/95, for it had been accompanied by a document assigning the trademark in accordance with that rule. Therefore the first request for registration of a transfer and the registration of the intervener as the new proprietor of the mark had been valid. However, the second request had not met those requirements, since the applicant had not been the registered proprietor of the mark, who at that time had been the intervener.

In that regard, a potential conflict between the two assignments at issue raised questions in relation to the law of contract and property, which exceeded the scope of rule 31 of regulation 2868/95 and the solution to which did not fall within the respondent's jurisdiction (see [28]-[30] of the judgment).

The defendant had not been required or entitled to consider the validity and the legal effects of a transfer under the applicable national law (see [31] of the judgment).

(2) At the time of deciding to enter the transfer of the mark to the intervener, the respondent had relied on the documents submitted, which gave rise to no doubts as to their validity. On the fact, the documents had been correctly accepted by the respondent, and there had been no apparent irregularity. The respondent had not been obliged to consider documents submitted subsequently in order to call into question the validity of a transfer which had been notified to it earlier and the corresponding transfer of which had been registered (see [33]-[35] of the judgment).

There had been no manifest error attributable to the respondent (see [34] of the judgment).

(3) In order to be able to assert his rights regarding third parties, the new proprietor after the transfer of a trademark had to register that transfer. In the absence of registration, third parties having no knowledge of the transfer could not have that transfer raised against them (see [36] of the judgment).

In the instant case, the applicant had not registered the transfer of the trade mark in the defendant's register. Further, there was no indication or claim that the intervener had known of the earlier assignment of the mark at issue to the applicant. Consequently the transfer of the mark to the applicant could not be raised against the intervener (see [36] of the judgment).

The transfer of the mark had been lawfully registered to the intervener (see [37] of the judgment).