26 October 2005

Community Trade Marks: Peek & Cloppenburg v OHMI

This is a case that in Holmfirth we call a "mullock". An application to register the sign CLOPPENBURG as a word mark for "retail trade services" in class 35 was rejected. The applicant appealed to the Board of Appeal but its appeal was rejected. The disappointed applicant then brought annulment proceedings against OHIM in the Cour of First Instance. "Nothing unusual in that", one might think. Except that OHIM supported the application.

Now the Board of Appeal's decision is a little hard to follow. Cloppenburg is the name of a town in Lower Saxony of about 28,000 inhabitants and a local government district or Landkreis of some 150,000 souls. That makes it about the size of Ilkley and its website suggests that it is quite similar. Its attractions include a city park and folk museum. According to the CFI, the Board took the view that the word designated the town and Landkreis, that towns and districts of the size of Cloppenburg were regularly referred to in national met reports and forecasts, its name appeared on motorway signs and traffic reports, the sign designated the place where the provider of services was based and, therefore, the place where the retail trade services had been planned and from where they were supplied. It deduced therefrom that German end users would perceive the word "Cloppenburg" as an indication of geographical origin.

In its "Defence" to the annulment application, OHIM pleaded that it intended to support the claim for annulment. It contended that that approach would be tantamount to accepting the applicant's request and would therefore relieve the Court of the need to give a ruling. It asked the Court to rule on the action, having regard to the arguments of fact and law and declined to suggest any particular form of order. In the light of that pleading the Judge-Rapporteur ordered an oral hearing. In those proceedings, OHIM resiled form its pleaded position in that it it did not seek formerly the annulment of the contested decision but left the matter to the Court's discretion.

Although it was common ground that the Board's decision was wrong, the Court believed it was still bound to consider the merits in order to set aside the Court's decision. Moreover a judgment of the Court was necessary because OHIM did not have power to override the Boards of Appeal. The Court held that while most people in Germany may have heard of the town of Cloppenberg they did not associate it with any particular goods or services. Thus, the geographical origin exception in art 7 (1) (c) of the CTM Regulation simply did not apply.

Despite the fact that OHIM has not opposed the application it (that is to say we) had to pay the costs of the proceedings. The independence of Boards of Appeal is all very well but the Council should think seriously of introducing an amendment to the Regulation to allow the Office to reopen an examination in cases such as this.

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