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05 ottobre 2008

ARMAFOAM: the ECJ rules on linguistic and changes OHIM's rules on conversion

Fabio Angelini

In a recent decision, the ECJ in case C-514/06 of 18 September 2008, Armacell v. Ohim, was, once again, requested to deal with the linguistic differences of the European Union. But, in doing so, it might have triggered an avalanche whose effects are still untested.

Armacell filed a CTM application for ARMAFOAM. The owner of an earlier CTM, NOMAFOAM, opposed it. Of course (for all English speaking readers….) both designated, in various classes goods made in plastic (foam). The Opposition Division found no similarity between the signs, but the Board reversed –and the CFI affirmed- finding that for non English speaker the term FOAM would not have any meaning and thus for these (illiterate, let’s be honest…) consumers NO-MAFOAM and AR-MAFOAM would be confusingly similar.

Armacell went up to the ECJ were it argued, among others, that the CFI should have dealt comprehensively with all questions and aspects, including the question of the similarity of the marks from the point of view of the English‑speaking public, since in taking later decisions regarding the fate of ‘ARMAFOAM’, it was essential for Armacell to ascertain in which geographical or linguistic area of the Community the likelihood of confusion exists (read it conversion).

But at §§59-61 the ECJ held that “…the appellant’s argument that the CFI should have also ruled on the issue of the similarity of those marks from the point of view of the relevant English-speaking public, taking into account the possibility of conversion of the appellant’s CTM application to a national trade mark application, must also be rejected. Admittedly, as follows from Article 108(2)(b) of CTMR No 40/94, the grounds for refusal of the registration of the CTM determine whether that trade mark can be registered at national level. However, the purpose of opposition proceedings is to provide undertakings with an opportunity to oppose, by way of a single procedure, applications for CTMs which might create a likelihood of confusion with their earlier marks or rights, and not to resolve in advance possible conflicts at national level.

However, and here comes the big surprise, at §62 the ECJ in an euphoric delirium of omnipotence as much as in a totally uncalled for dicta stated: “ As is apparent from the grounds, and in particular from paragraph 68, of the judgment under appeal, the CFI confirmed the assessment of the Board of Appeal only in regard to the similarity of the conflicting marks as perceived by the non-English-speaking public. It follows, as OHIM has also stated, that the judgment under appeal does not prevent the appellant from requesting the conversion of the CTM application to one for a national trade mark to the extent to which that application concerns English‑speaking countries” (emphasis added). What? Does not prevent?

This is a radical change which apparently is going undetected (or at least I have not seen it yet reported anywhere). When art 108 CTMR was modified back in 2004, OHIM announced that when a CTM application was rejected after an opposition based on an earlier CTM, there would not be any possibility of conversion and the practice still stands.

But even if a new window of opportunity is now available, one still wonders how and where the applicant of a rejected CTM may file a conversion, given that the ECJ did not overrule at all MGM (case T-342/02, MetroGoldwynMayer Lion v OHIM of 16 September 2004). In MGM the CFI stated that it does not follow from the first sentence of Article 43(5) CTMR that OHIM is required to found the rejection of the trade mark application on all the grounds for refusal of registration put forward in support of the opposition on the basis of which it could be rejected. Since the CFI did not require from OHIM to examine of its own motion whether a likelihood of confusion exists vis‑à‑vis each and every earlier right, provided that the Community trade mark application can be refused in its entirety on the basis of a portion of the earlier rights invoked in support of the opposition, OHIM feels still exempted from having to examine of its own motion whether a likelihood of confusion exists in all parts of the territory in which the earlier mark is registered.

So in a case like the above, would ARMACELL be allowed to convert in the UK and Ireland or somewhere else or nowhere else? Anyone wants to keep a keen eye on it and report?

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