Case: Lancome v OHIM (and CMS Hasche Sigle) – Who can bring cancellation proceeding against a CTM?
The Court of First Instance delivered its ruling in Case T-160/07
The case dealt with the issue of who can bring cancellation proceedings against Community Trade Mark owners.
Lancome owned a registered trademark in the EC on the name of ‘COLOR EDITION’ under class 3 for cosmetic products.
An application for cancellation of the above said Community Trade Mark was filed by CMS Hasche Sigle (CMS). They argued that this mark is descriptive and lacked distinctive character.
The application was dismissed by the cancellation division. CMS appealed the decision before the Board of Appeal, which overturned the decision in favour of CMS.
Lancome appealed to the Court of First Instance (CFI) and argued that the Board of Appeal erred under Article 55 (1) of Council Regulation 40/94 when it held that CMS is entitled to bring an application for a declaration of invalidity in relation to the CTM.
According to Lancome, “Community law does not recognise actions brought in the absence of a private individual or economic interest (actio popularis)”.
The CFI, while dismissing the appeal, held that CMS is entitled to bring an application to cancel a mark.
The Court interprets Art. 55(1) (a) which describes that “any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which under the terms of the law governing it has the capacity in its own name to sue and be sued” and further held that this category includes law firms as well albeit it is not in competition with Lancome in cosmetic trade and did not deal with such goods.