ALICANTE ABSTRACTS

Investigating the Facts in Relative Grounds Proceedings
How Far Can OHIM Go?

To some, OHIM’s inflexibility is famed. Yet a recent Court of First Instance judgment has upheld one of its rare forays into the broad sunlit uplands of more generous statutory interpretation, on the extent to which OHIM may take into account information not submitted by the parties in relative grounds proceedings. Paradoxically, the CFI purported to apply a strict interpretation, and the breadth of the outcome is therefore surprising, as well as, in some respects, concerning.

Claude Ruiz-Picasso and Others v. OHIM (Case T-185/02) concerned an opposition by the estate of Pablo Picasso to a trade mark application for PICARO in respect of vehicles in Class 12. OHIM had rejected the opposition, taking into account that Picasso’s fame as an artist would distinguish the perception of the marks. The Picasso estate appealed, asserting that arguments based on the fame of Picasso had not been put forward by the parties.

On appeal, the CFI considered the ambit of Article 74 (1) of Council Regulation (EC) No. 40/94, which provides that in proceedings relating to relative grounds for refusal, OHIM is restricted to considering the facts, evidence and arguments put forward by the parties. This provision, it opined, was an exception to the general principle that OHIM may examine facts of its own motion. Therefore, it must be interpreted strictly, or narrowly, so that its effects did not exceed the legislative intention.

The intent behind Article 74 (1), the CFI ruled, was to relieve OHIM of the need to investigate the facts itself in the context of proceedings between parties. Such an objective would not be compromised if OHIM were permitted to take into account well-known facts, or information “which may be learnt from generally accessible sources.” Picasso’s fame as an artist was a well-known fact of which OHIM was entitled to take notice regardless whether the parties put it forward.

 

Comment

The outcome of this case is pure common sense, but the breadth of the CFI’s formulation is surprising.

It is neither reasonable nor realistically possible for OHIM to ignore well-known facts of which any court would be entitled to take judicial notice. However, Article 74 (1) has always offered parties the comfort of knowing the full case against them, because OHIM could decide it only on the basis of the facts, evidence and arguments submitted by the parties. This judgment appears to pave the way for OHIM to take account not only of well-known facts (to which parties cannot normally object), but also of information which it may learn through researching generally accessible sources, such as the Internet.

In practice, OHIM is unlikely to see this case as a green light to base its decisions openly on materials which it has consulted independently, without notice to the parties. The risk that decisions will be overturned on the grounds that the parties had no adequate opportunity to be heard will be too great for that. However, it does create a risk that unknown and unseen factors will be taken into account when OHIM decides oppositions and cancellations in future, and that parties will not object because they will not realise what has happened.

OHIM’s heavy case-load may make such activism rare. Nonetheless, the principle that parties control the shape of their own case has been unmistakably diluted.