On 4 March 2011, Alma-The Soul of Italian Wine LLP (‘The Applicant’) filed a Community trade mark (‘CTM’) application for a figurative mark “SOTTO IL SOLE ITALIANO SOTTO il SOLE” in respect of ‘wines’ in Class 33. Miguel Torres, SA filed an opposition against the above-mentioned mark based on its earlier trade marks, inter alia, CTM VIÑA SOL in Class 33, under Article 8(1)(b) and (5) of Regulation No 207/2009. The Opposition Division upheld the opposition and the Applicant filed an appeal with OHIM against the decision.

The Appeal

The Board of Appeal of OHIM, taking into account the similarity of the signs, the distinctive character and reputation of the earlier trade mark, and the identity of the goods, found that there was a link between the signs such that registration of the mark was prevented under Article 8(5). Therefore, the Board of Appeal dismissed the Appeal.

Decision

The applicant raised four pleas in law, namely, infringement of Article 64, Article 8(5), Article 8(1)(b), Article 75 and Article 76(1) of Regulation No 207/2009.

By its fourth plea in law, the applicant submitted that the Board of Appeal acted in breach of its duty to provide a statement of reasons in so far as it did not take into account evidence provided. That evidence consisted of pages from various websites, concerning bottles of wine featuring trade marks containing the words ‘sol’, ‘sole’, ‘soleil’ or ‘sun’ and/or images of the Sun and also examples of CTMs, registered in Class 33, containing the words ‘sol’, ‘sole’, ‘soleil’ or ‘sun’, and/or images of the Sun. This was in order to show that the word ‘sol’ and translations thereof have a very weak distinctive character in the wine sector.

Article 75 provides that decisions of OHIM are to state the reasons on which they are based. This must be done in a clear and unequivocal manner.

The duty to state the reasons on which decisions of OHIM are based has a twofold objective:

• to enable the persons concerned to ascertain the reasons for the measure so that they can defend their rights
• enable the Courts of the European Union to exercise their jurisdiction to review the legality of the decision.

In the present case, neither the Opposition Division nor the Board of Appeal mentioned the evidence provided by the applicant and, accordingly, it cannot be established that such evidence was taken into account, even implicitly, when the Board gave its decision on the similarities between the signs and the risk of dilution to the opponent’s earlier rights. In particular, the Board’s finding that the word ‘sol’ had no descriptive character does not permit the assumption that the Board took into account the evidence.

Consequently, the Board acted in breach of its duty to provide a statement of reasons.

As such, the Applicant’s appeal was successful and the Board’s decision was annulled.

As the General Court has adopted a formal position in respect of Article 75, the obligation to state clear reasons is likely to leave less room for OHIM to argue that its reasoning is implicit. Where OHIM’s judgments fail to address key evidence or argument, an appeal should be recommended.

Amélie Gérard  2 February 2015