Muswellbrook, Ltd. v. Nike International Ltd.

On the admissibility of the new arguments put forward and new evidence supplied: The Board considers that the additional arguments put forward and evidence supplied are inadmissible. Since the parties have not considered it appropriate to apply for a suspension of the proceedings, taking into account inter alia the appeal for protection brought before the Spanish Constitutional Court, the decision of which could be of direct interest in the present case, or other appeals still pending before the Supreme Court, the Board decides that there is no place for the admission of the above mentioned evidence and documents. On the ownership of the opponent's trade mark and the legitimate interest to present opposition: The applicant adduced that Muswellbrook Ltd. (opponent) did not own the trade mark in question and acted in bad faith in opposing the application, as there was an error in the transfer of the trade mark. The Board notes that in opposition proceedings before the Office, it is necessary to comply with Article 42(1)(a) CTMR. In the present case, in so far as the opponent has accredited the ownership of its trade mark, which is earlier than the trade mark contested, then it is clear that it has not only a legitimate but also a direct interest in opposing it. With regard to the question as to whether there was a violation in the transfer of the earlier trade mark according to Spanish legislation, the Board considers that this question is outside its competence, as the CTMR does not give it the competence to decide upon this. On limitation in consequence of acquiescence and the coexistence of the trade marks in conflict: the applicant articulates the applicability of Article 53(2) CTMR, alleging that the applicants Spanish trade mark ‘NIKE and the now opposing trade mark have peacefully coexisted for fourteen years in Spain. The Board rejects this ground: firstly because Article 53 CTMR can only be alleged before the Office as a means of exception to an action for invalidity and not in opposition proceedings as in the present case. And, secondly, because in dealing with an exception brought into the causes of invalidity, the later CTM must be a trade mark registered by the Office. On the genuine use of the earlier trade mark: in the Boards opinion, the judgment of the Spanish Supreme Court cited by the opponent, particularly in relation to the interpretation of the 'genuine and real use' of the trade mark, although it is a point of reference, cannot directly influence the present cause to be elucidated. In view of the proof submitted, considered overall, the Board deems that not only has no proof been furnished, but also that the earlier trade mark has been the subject of a use which could be qualified as ambiguous and defective, in using only the word part of the earlier trade mark. Therefore, it has not been proven that there was an effective use of the earlier trade mark.The Board annuls the decision of the OD in so far as it decided that the opponent had proved the use of its trade mark.