EU Courts do the 'Hokey Pokey' in Trademark Opposition Case

Background

Greyley Investments Ltd filed a CTM application claiming seniority of UK Mark 'HOKEY POKEY' in respect of confectionery. It filed the UK application in April 2000 and it was registered in September of the same year. BR IP Holder LLC (USA), opposed the grant claiming the existence of an earlier unregistered right in the UK for confectionery and ice cream. They claimed the right had been in use since 1997.

OHIM Opposition Division (OD) Decision

The OD dismissed the opposition. It considered that the opponent's evidence was insufficient to establish use "of more than mere local significance".

OHIM Board of Appeal (BA) Decision

The BA also dismissed the opposition, but on the different basis. It did so on the basis that the CTM applicant, not the opponent, held an absolute right of priority over the 'Hokey Pokey' trade mark.

BR IP appealed.

General Court (GC) Decision

The GC annulled an BA decision to reject an opposition, to the registration of the word mark 'Hokey Pokey' on identical goods, due to lack of clarity in the appeal boards reasoning which it described as being opaque and ambiguous.

In addition, the GC held that it is established case-law that the conditions of article 8(4) CTMR are collective and that the first two conditions are to be interpreted in the light of EU law whereas the other two conditions must be assessed in the light of the national law.

In light of the unclear decision making by the BA, the GC was not able to clarify the accuracy of the BA's reasoning and carry out its review of the lawfulness of the contested decision and consequently the decision had to be annulled.

The judgement can be found here: BR IP Holder v OHIM, Case T-62/14