Consent and coexistence agreements in the registration of community trademarks: the PENTASA case

The registration of a trademark will require the consent of
third parties, as long as it strictly conforms to the case, the Law and the
good faith. This is the statement that could be deduced from the Sentence handed down
recently by the General Court of the grouped cases  T-544/12 and T-546/12 (In English).

To the applicant for the PENSA PHARMA Community trademarks
and PENSA were granted these signs to
beginning of 2009. However, the owners of the PENTASA trademarks, trademarks
nationals registered in various countries of the European Union, presented different nullity actions against the new “PENSA” brands.

Both the Cancellation Division and the Appeals Chamber of
The OHIM considered such actions null and void, so the owner of the
new trademarks filed an appeal before the General Court (TG) alleging that the
registration of your brands had had the consent of the holders of
the previous PENTASA brands and arguing three main reasons.

The first of them is that the brands had coexisted
peacefully in Spain and Italy, and as a result, the owner of the
previous trademarks had implicitly consented to the registration of the trademarks
now contested. In this regard, the General Court considers that such
reasoning is irrelevant, since the risk of confusion that may exist
in one or more countries would be sufficient to deny registration of the trademarks
requested.

The second reason for which the applicant argues that
had the consent of the plaintiffs, it is because they
filed oppositions to PENSA trademark applications, and that such
oppositions were finally withdrawn. The Court responded to this argument
General that the plaintiffs sent letters to both the OHIM and the
applicant in which it was expressly stated that in the event that the
PENSA trademark applications were finally registered, they would file
nullity actions against such records. And for this reason, the withdrawal of the
oppositions cannot be interpreted as equivalent to consent
express by the plaintiffs.

Furthermore, the Court adds, the Regulation on the Community Trademark does not contemplate that the withdrawal of an opposition entails resignation
of the right to request a subsequent declaration of nullity.

The third reason is perhaps the one with the greatest
legal relevance. The applicant maintains that he presented before the Chamber of
OHIM appeal a coexistence agreement signed between the parties, by which the registration of the trademarks was consented.
However, this agreement did not concern the trademarks at issue,
but rather the coexistence between the brands "PENSA" (blue) and "PENTASA" was agreed.

In this sense, the General Court establishes that el
coexistence agreement does not apply or extend to brands that are now
object of nullity, and therefore, there is no consent between the
shares for the registration of new trademarks.

As we see, the TG rejected each and every one of the arguments
presented by the applicant regarding the consent between the parties.

The reasoning of the General Court certainly seems very
successful. However, the applicant for the PENSA trademarks has filed
appeal to the Court of Justice of the European Union, which is why
We will be very attentive to the final decision that said Court adopts.