Ex officio examination of priority claims in opposition proceedings

General Court, 25 June 2015, Case T-186/12, Copernikus-Trademarks Ltd. v. OHIM

The General Court upheld the rejection by OHIM’s Board of Appeal of an opposition because the “earlier mark” on which the opposition had been based was not really earlier. It was filed after the opposed CTM application, but claimed an Austrian priority. However, the opponent had not submitted priority documents in time. When the opponent was invited to file priority documents, it filed just a copy of the application, which did not show that it had actually reached the Austrian PTO – or given rise to a filing date.

The Court confirms that OHIM can examine the validity of the priority claim of its own motion because it has to assess the validity of the mark and whether it in fact pre-dates the opposed application even without the parties making allegations on these points. It further holds that the rule whereby the validity of an earlier mark must not be put in issue in opposition proceedings cannot apply to the validity of the priority claim. While the validity of the trademark can be challenged in invalidity proceedings, there is no proper procedure for challenging a priority claim.