In Case T-396/11, ultrafilter GmbH, now Donaldson Filtration Deutschland GmbH- applied for registration of ultrafilter international for goods and services in Class 7, 11, 37, 41 and 42, among others for ‘filters’ and ancillary services. In 2001, the examiner had rejected the CTM application pursuant to Article 7(1)(b) and (c) CTMR because it was descriptive and devoid of any distinctive character.

Following an appeal brought by the Applicant, the Second Board of Appeal of OHIM annulled that decision in 2003 and affirmed that the contested mark had become distinctive within the meaning of Article 7(3) CTMR in the German and English-speaking Member States.

ultra air GmbH applied for invalidity and the CTM was cancelled by the Cancellation Division on absolute grounds. However, the Fourth Board of Appeal of OHIM granted the appeal, annulled the decision of the Cancellation Division and rejected the application for a declaration of invalidity. According to the Board of Appeal, the application for a declaration of invalidity was vitiated by an abuse of rights and had to be rejected as inadmissible.

The Board of Appeal considered, in essence that the applicant was in reality seeking to use the designation ‘ultrafilter’ itself as a trade mark (whether alone or in combination with other terms). It thus pursued objectives other than the public interest objectives laid down in Article 7(1)(b) and (c) and Article 7(3) CTMR. Its hidden intentions, which amount to an abuse of rights, are further evidenced by the fact that, in 2003, the former manager of the proprietor of the contested mark and current manager of the company seeking a declaration of invalidity personally defended the distinctive character which that mark had acquired through use. Since an abuse of rights constitutes a ‘general obstacle to the procedure’, abusive applications and actions which amount to procedures designed to attain objectives other than those which are legitimate under trade mark law are not admissible, and there is no need to refer to the procedural law of the Member States, in accordance with Article 83 of CTMR.

The General Court annulled the contested decision holding that OHIM is required to assess whether the mark under examination is descriptive and/or devoid of distinctive character, without the motives and earlier conduct of the applicant for a declaration of invalidity being able to affect the scope of the task entrusted to OHIM in relation to the public interest underlying Article 7(1)(b) and (c) and Article 56(1)(a) of CTMR.

Given that, in applying the provisions at issue in the context of invalidity proceedings, OHIM does not rule on the question whether the rights of the proprietor of the mark take precedence over any rights which the applicant for a declaration of invalidity might have, but ascertains whether the rights of the proprietor of the mark were validly obtained in the light of the rules governing the registrability of marks, there can be no question of an ‘abuse of rights’ on the part of the applicant for a declaration of invalidity.

Thus, contrary to what OHIM submits, the fact that the applicant for a declaration of invalidity may file an application with a view to subsequently affixing the sign in question to its own products is perfectly in line with the public interest safeguarded by Article 7(1)(c) CTMR of keeping signs freely available. Consequently, contrary to what the Board of Appeal found, such conduct cannot amount to an abuse of rights in any circumstances. That assessment is confirmed by Article 52(1) of Regulation No 207/2009, pursuant to which a CTM may also be declared invalid on the basis of a counterclaim in infringement proceedings, which presupposes that the defendant in that action may obtain a declaration of invalidity even if he has used the mark in question and intends to continue to do so.