• ALICANTE ABSTRACT

    FAXING OPPOSITIONS Based on Colour Marks

    Last-day oppositions to CTMs are common, but special problems can arise where colour is an essential element of the earlier rights pleaded.

    In a recent appeal, however, the CFI found that a last-day faxed opposition relying on earlier marks in colour was timely, provided colour representations followed within a term set by OHIM (The Black & Decker Corporation v OHIM, Joined Cases T-239/05, T-240/05, T-245/05 to T-247/05, T-255/05, T-274/05 to T-280/05).

     

    THE PROBLEM WITH MARKS IN COLOUR

    Where an opponent relies on colour CTMs, it need not provide representations of the marks before expiry of the opposition term because OHIM has access to them already. However, where national or unregistered rights in colour are pleaded in a last-day opposition, it is almost inevitable that a clear representation of them will only reach OHIM by mail or courier after the deadline has expired. Oppositions and supporting materials cannot yet be filed by email, and the new electronic opposition procedure is still in its infancy.

    In the absence of judicial guidance, the admissibility of late-filed confirmations of faxed oppositions based on national or unregistered marks in colour has always been in doubt. Indeed, under Rule 18 (1) CTMIR, failure to submit a clear representation of the earlier mark on which an opposition is based before the opposition term expires would appear to require the opposition to be deemed inadmissible.

     

    ATLAS COPCO’S OPPOSITION

    This issue came to the fore recently in Black & Decker. The opponent, Atlas Copco, filed last-day oppositions to 13 CTM applications by Black & Decker for figurative marks in colour, including a juxtaposed yellow and black colour mark.

    The oppositions were all based on earlier unregistered rights in colour under Article 8 (4) CTMR. Colour representations followed within two days of the end of the opposition term. At issue was whether the opposition was timely, given that representations of the marks in colour were only provided after the opposition term had expired.

    Under Rule 80 (2) CTMIR, where a fax received by OHIM is incomplete or illegible, OHIM must invite the sender to re-fax or supply the original within a term set. The re-faxed document or original is regarded as received on the date of the original fax, except in the case of new applications, to which additional provisions apply.

    In Black & Decker, the CFI found that a timely faxed opposition based on colour marks is manifestly an incomplete transmission within the meaning of Rule 80 (2). Consequently, OHIM is obliged to allow an opponent the opportunity to submit the original, which, if submitted within the period set, would be regarded as having been received within the opposition term, even though it may have arrived at OHIM after the expiry of that term.

    Where an opponent takes the initiative and submits the colour original without waiting for an invitation from OHIM, the CFI held that the documents were still to be regarded as having been received on the date of the original fax under Rule 80 (2). In its view, it would be contrary to the object of the rule for diligent opponents to be treated more harshly than those who waited for a communication from OHIM before supplying the missing materials.

     

    COMMENT

    The CFI’s ruling helped the opponent in Black & Decker to victory against marks in colour and a pure juxtaposed colour mark.

    For others, it is a welcome affirmation of a practice which has developed of necessity against the backdrop of non-extendible opposition deadlines and the unavailability of electronic means of supplying supporting materials to OHIM. Colour will not always be an essential element of earlier marks relied on in an opposition, but it may take centre stage where the mark being opposed is itself a colour or juxtaposed colours. In such cases, a facility to follow faxed oppositions with colour representations after the opposition term expires is a practical necessity.

    The need for this facility may decline in future as electronic oppositions develop and provide a means for submitting electronic representations of earlier marks on the last day of an opposition term. However, e-oppositions are still very new and their parameters have yet to be fully tested. Until they are, the CFI’s pragmatic approach is a welcome clarification of an important procedural issue. Filing oppositions early may be the ideal, but last-day opponents can breathe a little bit easier for now.