Decisions, Divisions and Appeals at the Office for Harmonisation in the Internal Market

In a reform of the EU Trade Mark Directive (2008/95/EC) the Office for Harmonisation in the Internal Market is set to be re-named as the European Union Intellectual Property Office.  

The Office for Harmonisation in the Internal Market (OHIM) is located in Madrid, Spain, nevertheless how does it make its decisions?

At OHIM various divisions can be found such as the Opposition Division, Cancellation Division and the Administration of Trade Marks and Legal Division.

The Opposition Division is responsible for deciding oppositions to trade mark registrations, with the Cancellation Division responsible for deciding applications for revocation or for declarations of invalidity. These divisions must consist of three members, one of which must be legally qualified.

The Administration of Trade Marks and Legal Division is responsible for decisions that under the Regulation do not fall within the capacity of an examiner or one of the other divisions.  An example of work done in this division is keeping a list of professionals who may act for the OHIM.

An appeal from an examiner or a division will go to the Board of Appeal. The Board of Appeal sits with three members, two of which must be legally qualified.  An appeal from the Board of Appeal will go to the Court of First Instance.  An appeal from the Court of First Instance will go to the Court of Justice.

In the case of Ferrerro SpA v OHIM Case T-140/08, the Court of Appeal considered that the Cancelation Division must comply with its own previous acts with the principle “nemo potest venire contra factum proprium”. For those not fluent in Latin this means no one may set himself in contradiction to his own previous conduct.  The Court of Appeal looked to this principle in relation to its acts that has enabled parties to legitimately acquire rights to a registered trade mark.

However, the Court of First Instance did not agree in Ferrerro SpA v OHIM Case C-552/09. It was stated that if the Court of Appeal was correct, applications for a declaration of invalidity in a case where there had been opposition proceedings between the same parties, the parties would be deprived of practical effect as OHIM would be bound by its previous act.

The Court of Justice, on the subsequent appeal made no finding on the issue. 

By Sam O'Toole