The General Court ruled on an important procedural issue in Case T-11/13 Tegometall International AG v Office for Harmonisation in the Internal Market on 23 September 2014). 

The story begins in 2004, when Irega AD applied to register the word mark MEGO as a Community trade mark for goods in Classes 6 and 20. This application was unsuccessfully opposed by Tegometall'd predecessor in title, this opposition being based on its TEGO and TEGOMETALL marks.

In 2008 Tegometall -- now the owner of the TEGO and TEGOMETALL marks -- launched a cancellation action on the basis of the same marks. The Cancellation Division dismissed this action and its decision was upheld by the First Board of Appeal on the grounds that (i) the same set of facts and claims had already been raised and rejected in opposition proceedings against the MEGO mark between Irega and the predecessor of Tegometall and (ii) that opposition decision was final. As if that wasn't enough, the Board noted that the cancellation action was based on the Community trade marks TEGO and TEGOMETALL, which were registered after the MEGO mark, so Tegometall could not invoke priority.

On appeal, the General Court held that res judicata does not apply as between a final decision in opposition proceedings and a request for cancellation, since (i) proceedings before OHIM are administrative in nature, not judicial and (ii) and the Community Trade Mark Regulation makes no provision for the application of this doctrine. The Board of Appeal had therefore erred in dismissing the action for cancellation on the basis of a previous decision in opposition proceedings.

The question however remains as to what would have been the outcome of the case if the opposition decision had been appealed and the General Court had issued a decision.

Source: "General Court considers application of res judicata" by Richard Milchior (Granrut Avocats, Paris), posted in World Trademark Review, 3 October 2014.