Introduction

In This Issue Spring 2005

How crucial it is to get things right at Patent Office and OHIM level was recently underscored by decisions of the High Court and the Court of First Instance.

In the High Court, the ruling in Hormel v Antilles on issue estoppel (see page 15) was issued just before we went to press. Fuller commentary will appear in the next MYM.

Similar toughness was on display, however, when the CFI ruled in the autumn that OHIM need not consider all earlier rights pleaded when deciding oppositions. In the interests of procedural economy, the CFI held, OHIM is not obliged to consider each and every earlier right pleaded, since a single right within the E.U. is sufficient to found a refusal (Metro-Goldwyn-Mayer Lion Corp. v. OHIM (Case T-342/02)).

The ramifications are far-reaching, as defeated applicants may be left with a right of conversion in countries where earlier rights were pleaded, but not considered by OHIM.

This decision is of striking importance for those drafting CTM oppositions. The rights on which CTM oppositions are based should be chosen with an eye to guiding OHIM down the right road. Getting it wrong cannot be easily righted, as the CFI found that the risk of incurring expense and time in fighting conversion applications is a future and uncertain legal situation which does not give the opponent any standing to appeal.

Sometimes the rights most tactically likely to secure the broadest refusal possible will be obvious, as when the earlier rights are a CTM and a smattering of national rights which merely duplicate it. In other cases, however, the way forward will be less clear, as when certain national rights contain broader, or different, protection to the CTM, or when a CTM is still pending, or is under attack.

The best right, or combination of rights, on which to oppose will vary from case to case. The time and effort involved in crafting that case must take account not only of strategy and commercial aims, but also of the need to safeguard against a temporary victory which succeeds only in moving the battle to the national stage. Following MGM, it is clearer than ever that effort invested at this early stage is vital, and can pay substantial dividends down the line.