Luxembourg, 15/05/2007 (Agence Europe) - With a decision on 15 May (Joint Affairs T-239/05 and others), the Court of First Instance (CFI) ruled that the use of black and yellow side by side, with or without pictures of electric tools, could not be registered as a European brand by the American company, The Black & Decker Corporation. The Court of First Instance ruled that the opposition stated by the Swedish company, Atlas Copco AB, also a manufacturer of tools, was legitimate.
Atlas Copco, which has used the colours black and yellow for marketing its tools for several years now, reacted immediately to each publication of the different trade mark requests from Black & Decker, which appeared in the Community Trade Mark Bulletin in 2001, 2002 and 2003. Each time, however, the opposition voiced by Atlas Copco was received by the Office of Harmonisation in the Internal Market (OHIM) on the very last day allowed for submitting the statement of objection by fax, not followed until a few days later by the hard copy. The key element of the disputed brand - namely the colours yellow and black - were not forwarded by fax (in black and white) and were only recognisable in the version sent by post, after the deadline. The OHIM opposition division consequently rejected the statement of opposition from Atlas Copco, for failure to comply with the procedure set out in Commission Regulation (EC) No 2868/95 which sets out the arrangements for application of Council Regulation (EC) No 40/94 on Community trade marks.
The decision was then cancelled by the OHIM first board of appeal. The reason given was that the opposition was sufficiently backed by information and illustrations received in black and white by fax before expiry of the deadline. It was against this 2005 decision of OHIM that Black and Decker lodged an appeal with the Court of First Instance in the case in hand.
The Court of First Instance backed the decision, however, against the arguments put forward by Black & Decker. In addition to the above-mentioned justification given by OHIM, the ruling stresses that it is possible to extend the time allowed for opposition to be made if more clarification is needed. The Court of First Instance admits this arrangement is usually invoked at the initiative of OHIM, but finds that it is not reasonable to condemn Atlas Copco for having gone ahead, sending colour versions before receiving the express request to do so. Furthermore, the CFI considered that Atlas Copco had given sufficient proof of its earlier use of the signs and marks that were the subject of the litigation, which was also challenged by Black & Decker.
Black & Decker now has a standard two-month period in which to appeal against this ruling. (cd)