Log in

CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

Want to receive Class 46 by email?
Click here subscribe for free.

Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
FRIDAY, 26 JULY 2013
Juxebox v. Juke box : Not just music in General Court

In case T-589/10, opposition proceedings which started in 2008 regarding figurative trademarks JUKEBOX and JUKE BOX both registered for services in Classes 38 and 41, arrived in the General Court regarding a procedural question.

OHIM had upheld the opposition in 2010 and the Applicant Just Music Fernsehbetriebs GmbH brought an action for annulment of the contested decision by the Board of Appeal. In the alternative, it requested to stay the proceedings until definite decision regarding the revocation action brought by Just Music against earlier CTM owned by France Telecom.

In December 2011, the Cancellation Division cancelled the earlier mark for lack of genuine use for 5 years. In 2012 Just Music informed the Court of the definitive nature of the revocation decision and requested the Court to declare that there was no need to adjudicate, in so far as the earlier mark no longer existed and however was not to be interpreted as an indication that it wished to discontinue the proceedings within the meaning of Article 99 of the Rules of Procedure.

France telecom requested to dismiss the claim for no need to adjudicate claiming that the opposition had been upheld in 2008 before the earlier CTM was revoked.

Just Music and OHIM quoted as supporting case-law the case T-548/11 ‘real QUALITY’, and claimed that the procedural consequences were there is no need to adjudicate and the opposed CTM must be registered.

France Telecom further submitted that the contested decision would necessarily have legal effects precluding the registration of the mark applied for. It added that Just Music could, from a legal point of view, submit a new application for registration but that registration would have effect only from the date on which the earlier mark was revoked, that is to say, 21 December 2010 (date of application for revocation).

The General Court held necessary to determine whether, following the revocation of the earlier mark, annulment of the contested decision could still procure an advantage for Just Music. It is settled case-law that the interest in bringing proceedings must continue until the final decision, failing which there will be no need to adjudicate, which presupposes that the action must be likely, if successful, to procure an advantage for the party bringing it.

In the light of the definitive revocation of the earlier CTM and the fact that that the decisions of OHIM bodies have no effect – since according to Articles 64 (3) and 65 (5) CTMR, appeals have suspensive effect and the contested decisions had not become definitive- where the Court finds that there is no need to adjudicate, a judgment of the Court on the substance of the case is not likely, if successful, to procure an advantage for Just Music. Moreover, in the light of the definitive revocation of the earlier mark, France Telecom has not established that it retains an interest that could justify the Court ruling on the substance in the present case.

The Court therefore finds that there is no longer any need to adjudicate on the action for annulment and condemned each party to bear their own costs.

Posted by: Laetitia Lagarde @ 14.19
Tags: General court, procedural question, need to adjudicate,
Sharing on Social Media? Use the link below...
Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA3301
Reader Comments: 0
Post a Comment


MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.


The Class 46 Archive






 

 

 

 

 

 


CONTACT

info@marques.org
+44 (0)116 2747355
+44 (0)116 2747365
POST ADDRESS

Unit Q, Troon Way Business Centre
Humberstone Lane, Leicester
LE4 9HA

EMAIL

Ingrid de Groot
Internal Relations Officer
ingrid.de.groot@marques.org
Alessandra Romeo
External Relations Officer
aromeo@marques.org
James Nurton
Newsletter Editor
editor@marques.org
Robert Harrison
Webmaster
robertharrison@marques.org
BLOGS

Signup for our blogs.
Headlines delivered to your inbox