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10 luglio 2008

CFI holds that standing is not really a requisite for filing a CTM invalidity action on absolute ground of refusal

Fabio Angelini

In some EU countries, standing (a.k.a. “intérêt à agir” or “interesse ad agire”) is a necessary prerequisite in order to be able to file an invalidity action based on absolute grounds of refusal (like descriptiveness and so forth). In other countries standing is only necessary to file invalidity actions for relative grounds of refusal. So what’s the CTM solution? The question has now been answered by the CFI in the case Lancôme Parfums et Beauté & Cie SNC. V. OHIM, case T‑160/07 of July 10, 2008.

A law firm had filed an invalidity action against COLOR EDITION, a CTM owned by Lancôme. OHIM’s Invalidity Division held the CTM valid, but the Board of Appeal reversed and declared it invalid. Lancome went to the CFI asking to reverse such decision, arguing in the first place that a law firm did not have standing to file an invalidity action.

The CFI rejected Lancome’s claim, stating that standing is not necessary to file such an action. The CFI’s holding is construed on two basic arguments, one based on a literal interpretation of the CTMR, the other based on the rationale of the rule itself.

From a literal point of view, the CFI observed that nothing in the CTMR supports an interpretation which would exclude a law firm from filing an invalidity action for violation of absolute ground of refusal: article 55 (1)(a)CTMR does not make any reference to any particular subject who may or may not file such an action. At most, the CTMR requires that the party which files the invalidity is either a physical person or a juridical entity (at §23).

On the contrary art. 55 subsequent paragraphs 1(b) and 1(c) do impose that only certain subjects (holders of earlier marks) may file for invalidity.

On a rationale-based analysis, the CFI held that since absolute grounds of refusal protect the interests of the general public at large as stated in SAT.1/OHMI, case C‑329/02, at §25, having in mind the goal of granting tha widest possible protection to such interest, invalidity for absolute grounds of refusal must and can be raised by the largest possible number of subjects. We’ll see now if Lancome will appeal.

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