EMPLOYEE’S DECLARATION OF TRADE MARK USE SHOULD NOT BE IGNORED

This morning the Court of First Instance of the European Communities gave judgment in Henkel v OHIM . When a Community trade mark application was filed for KLEENCARE for various chemicals, abrasives and detergents in Classes 1 and 3, Henkel opposed, alleging a likelihood of confusion with its own earlier German-registered CARCLIN mark for the same products. The applicant demanded evidence that Henkel had used CARCLIN in Germany in the previous five years. Henkel submitted, among other things, a declaration made by its industrial manager to the effect that Henkel had used CARCLIN for cleaning motor bikes and that he knew that the making of a false declaration could subject him to penalties. The Opposition Division dismissed the opposition and disregarded the employee’s declaration, holding that statements made by an employee of a party to the proceedings were of less probative value than those made by third parties. The Board of Appeal upheld the Opposition Division’s decision, refusing either to reconsider the substance of the employee’s statement or to admit fresh evidence.

The Court of First Instance allowed Henkel’s appeal. Under the CTM Regulation the Board of Appeal has power to determine the issue before it on the basis of previous and fresh evidence or to remit it to the examiner or Opposition Division for reconsideration. Since the Opposition Division had the power to consider the substance of the employee’s declaration, the Board did too, even if the notice of appeal did not specifically demand that it do so. The Board of Appeal’s decision was therefore nullified.

The IPKat notes that the Boards of Appeal have made it plain in the past that they are reluctant to decide issues on the basis of evidence which should have been put before the examiner or Opposition Division in the first place. But the consideration of evidence already submitted does not come into that category, even if it may be of relatively little probative value.

Do you need KLEENCARE or CARCLIN? To get your motorbike really dirty click here , here or here


EMPLOYEE’S DECLARATION OF TRADE MARK USE SHOULD NOT BE IGNORED <strong>EMPLOYEE’S DECLARATION OF TRADE MARK USE SHOULD NOT BE IGNORED</strong> Reviewed by Jeremy on Tuesday, September 23, 2003 Rating: 5

No comments:

All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here: http://ipkitten.blogspot.com/p/want-to-complain.html

Powered by Blogger.