• ALICANTE ABSTRACT

    OHIM CAUGHT IN TANGLED WEB Over Internet Evidence

    OHIM earned a stern rebuke recently for refusing CTM applications on the basis of Internet evidence not notified to applicants or provided in hard copy to them. The decision of the Court of First Instance in Kustom Musical Amplification Inc. v OHIM (Case T-317/05) contained strong criticism of OHIM’s practice in this area and has led to a published change in examination procedure.

     

    INTERNET EVIDENCE CITED BY EXAMINER

    Kustom revolved around a non-distinctiveness objection against CTM application no. 3206372 for the shape of an electric guitar for “stringed instruments, namely guitars.”

    In an official letter, the examiner wrote that “a brief search of the internet [had] shown that a large number of major guitar manufacturers all produce[d] similar shape guitars.” He referred to two websites of other guitar manufacturers, but did not provide hard copies of the web pages relied upon.

    In a further official letter, the examiner stated that “[the] internet findings submitted to the applicant have formed the basis for rejection of the mark,” citing links to five further websites. Again, no hard copies of the web pages were provided.

    In the refusal, the examiner resiled somewhat, observing that “Internet references…can never form the sole basis for an objection raised.” However, he gave no other basis for the refusal under Article 7 (1) (b) CTMR. Kustom appealed.

     

    FURTHER INTERNET EVIDENCE ON APPEAL

    The Board of Appeal upheld the examiner’s refusal, agreeing that the guitar shape was devoid of distinctiveness.

    It found that similar “pointy guitar” shapes were in widespread use, and in support of this view cited the website links referred to by the examiner, as well as a list of 19 further Internet links notified for the first time to the applicant in the Board of Appeal’s decision.

    In response to the applicant’s argument that the examiner should have provided hard copies of the web pages relied upon, the Board of Appeal agreed that hard copies would have been helpful. However, it distinguished between “ephemeral” websites and “websites which were not ephemeral,” holding that print-outs were not essential in respect of objections based on the latter. The Board of Appeal placed the sites of the well-established guitar manufacturers on which the examiner’s decision had been based firmly in the second camp, and it did not itself provide hard copies of the further Internet pages to which it referred for the first time in its decision.

     

    COURT OF FIRST INSTANCE

    Kustom appealed further to the Court of First Instance, asserting infringement of its right to be heard under Article 73 CTMR. Under that provision, OHIM may only make decisions on the basis of facts or evidence notified to the parties in advance and on which they have had an opportunity to comment.

    The CFI agreed. It noted that the applicant had been unable to access several of the links cited by the examiner, thus depriving it of the only opportunity it had to comment on the grounds of the first-instance decision. Moreover, the lack of print-outs appeared to ignore the possibility that the content of any website could change over time, potentially even between the examiner’s consultation of the site and the applicant’s efforts to view it.

    Of the further links cited by the Board of Appeal, the CFI noted disapprovingly that even where they were accessible, some of them depicted multiple guitar shapes and it would only have been by contacting the Rapporteur that the applicant could have determined which shape or shapes had formed part of the basis for the decision.

    Even more critically, however, the applicant did not have an opportunity to view and comment on any of the 19 further links listed by the Board of Appeal as a basis for its decision, since these were only cited for the first time in the appeal decision itself. The decision had therefore been taken on the basis of facts and evidence on which the applicant had had no opportunity to comment.

    At the appeal hearing, OHIM was invited to produce hard copies of the web pages accessed via the links on which it had relied. It emerged that in fact no hard copies had been retained.

    The CFI needed little further convincing that the applicant’s right to be heard had been infringed at every level. The breaches vitiated the refusal and the CFI ordered the decision to be annulled.

     

    COMMENT

    OHIM’s problematic reliance on Internet links without supplying hard copies has long been widely known. Until Kustom, however, the practice had never been successfully challenged.

    Despite the Board of Appeal’s remarks, it is generally recognised that all websites are ephemeral. Their content and the routing of links change over time, sometimes frequently, and the importance of capturing and communicating evidence derived from web pages in hard copy cannot be overstated. The fact that OHIM had not itself retained physical evidence of the web pages on which it relied in Kustom was little short of breathtaking.

    OHIM reacted to the CFI’s decision by issuing an official notice announcing that it would, in future, provide hard copies of all Internet pages relied on in support of objections. For applicants currently challenging decisions issued before the practice change, however, a review of the extent to which those decisions were based on Internet evidence not properly communicated is in order.

    Looking to the future, however, OHIM’s willingness to change its procedures to avoid future injustices of this nature is to be commended. It properly levels the playing field between examiners and applicants where Internet evidence is concerned, allowing a fairer assessment of such evidence by both sides. The new practice is warmly welcomed.