Yesterday the Court of First Instance of the European Communities gave its ruling in Case T-85/07 Gabel Industria Tessile SpA v Office for Harmonisation in the Internal Market, Creaciones Garel, SA. In April 2004 Gabel applied to register as a Community trade mark the word GABEL, for various fabrics and clothes in Classes 24 and 25. Garel opposed, citing a likelihood of confusion with its earlier figurative Community trade mark GAREL (depicted, left) for various textiles, underwear and lace items in Classes 24, 25 and 26 -- but not explicitly mentioning bath gowns.

The Opposition Division upheld the opposition and rejected the application its entirety, taking the view that, given the similarity of the two marks and the identical nature of the goods covered by them, there was a likelihood of confusion. Gabel then wrote to inform OHIM of its decision to limit the list of the goods falling within class 25 to 'bath gowns', subsequently filing a notice of appeal. The Board of Appeal set aside the decision of the Opposition Division, allowing the trade mark to proceed to registration only in respect of 'bath gowns' in class 25. Gabel then sought to have the Board's decision annulled, in so far as it implicitly refused registration of the trade mark applied for in respect of the goods falling within class 24.

The Court of First Instance annulled the Board's decision, finding that the Board had failed to rule on the action brought before it, in that the action was directed at the refusal of the Opposition Division to register the mark applied for in respect of the goods in Class 24 as well as Class 25. Accordingly the Board had failed to take account of the first sentence of Article 62(1) of Regulation 40/94, since Gabel had not previously waived registration of its mark in respect of the goods in Class 24. Article 63(3) of the same Regulation enabled the Court to alter the decisions of the Boards of Appeal. However, that possibility was limited to situations in which the case had reached a stage appropriate for judicial adjudication. In this case, the fact that the Board of Appeal had failed to rule on one of the heads of claim meant that that stage had not been reached. Alteration of the Board's decision would thus imply that the Court was deciding for the first time on the substance of the pleas on which the Board of Appeal had failed to rule -- which the Court had no power to do. Accordingly, the Board's decision failed to comply with an essential procedural requirement and had to be annulled in its entirety.