It is settled case law that the statement of reasons of BOAs’ decisions need be given for all goods and services applied for. Accordingly the BOAs must determine specifically that none of the grounds for refusal listed by Article 7(1) CTMR applies to the mark in question in relation to each of those goods or services claimed, and they may reach different conclusion depending upon the goods or services considered.
In the case ULTIMATE FIGHTING, 2 April 2009, the 1st Board failed to do so and the CFI, although the applicant did not invoked this failure, annulled of its own motion and in this respect the contested decision.
It’s true that the same grounds of refusal are given for a category or group of goods or services and the BOARD can limit itself to using general reasoning for all the goods or services concerned . However this is of poor assistance when, as in the subject case, the trademark applied for covers more than 215 goods falling within four separate classes as well as at least 13 kinds of different services.
The plain application of the principles governing the statement of grounds may lead the BOARDs in some cases to be overloaded by a very hard work. Moreover, to assess which goods or services are to be considered homogenous (complementary) is an uneasy additional exercise that must be reviewed by the CFI pursuant its control of legality of the appealed decision.
Any idea as how to meet the productivity expectations of the Office and their clients?