CELEX: 62015TJ0249
EU trade mark
Opposition proceedings
Application for EU figurative mark QUILAPAYÚN
Relative ground for refusal
Well-known mark
Article 8(2)(c) of Regulation (EC) No 207/2009 (now Article 8(2)(c) of Regulation (EU) 2017/1001)
Proprietor of the mark

Background to the dispute
On 16 September 2010, Mr Eduardo Carrasco Pirard and the other parties to the proceedings before the Board of Appeal of the European Union Intellectual Property Office (EUIPO), whose names are listed in the annex to this judgment (‘the trade mark applicants’), filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (
OJ 2009 L 78, p. 1
), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (
OJ 2017 L 154, p. 1
)).
Registration as a mark was sought for the following figurative sign:
The goods and services for which registration was sought are in Classes 9, 16 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–
Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for the supply, distribution, transformation, accumulation, regulation or control of electric current; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.’
–
Class 16: ‘Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks’;
–
Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.
The EU trade mark application was published in
Community Trade Marks Bulletin
No 181/2010 of 27 September 2010.
On 27 December 2010, the applicant, JT, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
The opposition was based on the following earlier marks:
–
the trade mark well known in the European Union, reproduced below, in so far as it covers the service ‘musical group’, in Class 41:
–
the French trade mark, registered on 22 June 1998 under No 98738516, reproduced below, in so far as it covers goods and services in Classes 9, 16 and 41:
–
the international trade mark, registered on 24 December 2002 under No 801761, reproduced below, in so far as it covers goods and services in Classes 9, 16 and 41:
The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 207/2009 (now Article 8(1)(a) and (b) of Regulation 2017/1001).
By decision of 2 December 2013, the Opposition Division, on the basis solely of the earlier well-known trade mark, partially upheld the opposition by rejecting the application for registration in respect of ‘magnetic data carriers, recording discs’, in Class 9, and in respect of ‘entertainment; sporting and cultural activities’, in Class 41. It took the view that the documents produced by the applicant proved that the earlier unregistered mark was well known as being the name of a musical group and that it had been put to continuous use in the European Union, particularly in Spain. Furthermore, it held that, first, ‘entertainment’ in Class 41 was covered by the marks at issue and that, secondly, the ‘magnetic data carriers, recording discs’, in Class 9, and the ‘entertainment; sporting and cultural activities’ in Class 41, covered by the mark applied for, were similar to the services covered by the earlier mark. Consequently, having regard to the identity of the signs at issue and the identity or similarity of the abovementioned goods and services, the Opposition Division concluded that there was a likelihood of confusion between the marks in respect of those goods and services.
On 29 January 2014, the trade mark applicants filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
By decision of 13 March 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO annulled the Opposition Division’s decision and rejected the opposition in its entirety. It stated that the opposition would be examined solely on the basis of the earlier well-known mark, since the French trade mark registered under No 98738516 had been cancelled, as had subsequently the international trade mark registered under No 801761. Furthermore, it held that not simply had the applicant not proved that he was the ‘genuine proprietor’ of the earlier well-known trade mark, but that ownership of that mark was also claimed by the trade mark applicants. The Board of Appeal added that Regulation No 207/2009 did not confer jurisdiction on it to determine the ownership of the earlier well-known trade mark, that question being a matter for the national court having jurisdiction.
Procedure and forms of order sought
By document lodged at the Court Registry on 15 May 2015, the applicant applied for legal aid. By order of 29 October 2015, the President of the Court granted the applicant legal aid.
By letter of 6 August 2015, the Court reminded the applicant that anonymity had been granted to him in the legal-aid proceedings and asked him if he wished anonymity to be maintained in respect of the main proceedings. Following the applicant’s agreement, the President of the Fourth Chamber of the General Court decided, on 28 August 2015, to grant him anonymity in the present case.
The applicant claims that the Court should:
–
annul the contested decision;
–
refuse the application for registration of the trade mark applied for in respect of the goods and services in Classes 9 and 41.
EUIPO contends that the Court should:
–
dismiss the action;
–
order the applicant to pay the costs.
Law
Arguments of the parties
In support of the action, the applicant relies on a single plea in law, alleging an error in the interpretation and application of Article 8(2)(c) of Regulation No 207/2009 (now Article 8(2)(c) of Regulation 2017/1001), read in conjunction with Article 6
bis
(1) of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (‘the Paris Convention’).
The applicant maintains, first, that it is apparent from a combined reading of Article 8(2)(c) and 8(1)(b) of Regulation No 207/2009, that, in order to oppose a trademark application, two conditions must be satisfied, namely, first, that the trade mark on which the opposition is based is well known in the relevant territory at the time of the filing of the mark and, secondly, that there is a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected because of the identity or similarity of the two marks and because of the identity or similarity of the goods or services designated by those two marks. According to the applicant, those two conditions are satisfied in the present case.
Furthermore, the applicant cites the decision of the Oficina Española de Patentes y Marcas (Spanish Patent and Trade Mark Office), which refused to register the national mark QUILAPAYÚN in his favour, the decision of the Instituto nacional de propiedad industrial (Chilean National Institute of Industrial Property; ‘INAPI’) and a statement of the Sociedad chilena del derecho de autor (Chilean Copyright Society; ‘SCD’ ) in support of the argument that the mark applied for cannot be registered for the benefit of the trade mark applicants in so far as the sign QUILAPAYÚN is connected with a group of individuals to which both the applicant and the trade mark applicants belong.
Consequently, the applicant claims that the Opposition Division correctly interpreted the provisions of Article 8(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(2)(c) of that regulation and Article 6
bis
of the Paris Convention, in refusing registration of the mark applied for solely for the benefit of the trade mark applicants, on the ground that there was an earlier mark which was well known in the European Union, particularly in Spain, of which he is the proprietor. In that regard, the applicant states that he alone has maintained continuous trade, business and artistic relationships by using the sign QUILAPAYÚN.
The applicant adds that the mark QUILAPAYÚN was registered in France in 1998 before its registration was cancelled in 2003 by the French courts. In that regard, the applicant claims that the French courts committed a serious error of assessment in cancelling the registration of the national mark and that that decision, in any event, concerns only the territory of France.
The applicant also states that in 2002 he had the mark QUILAPAYÚN registered with the World Intellectual Property Organisation (WIPO) and that that registration remained valid until 24 December 2012, without the trade mark applicants opposing that registration.
The registration of the QUILAPAYÚN marks in France and with WIPO demonstrates, according to the applicant, his desire to protect the QUILAPAYÚN sign even before the trade mark applicants formed a new musical group in 2003.
In so far as there are no regulations on the co-ownership of a mark or of a name, and having regard to the fact that the musical group directed by the applicant has, since the trade mark applicants left the group, continued to produce music under the name Quilapayún on the basis of, inter alia, a ‘gentleman’s agreement’, the trade mark applicants, who formed a new musical group in 2003, should not have used the sign QUILAPAYÚN in order to avoid confusion on the part of the public and the media.
The applicant also argues that, before forming a new group in 2003, the trade mark applicants were involved in work that had nothing whatsoever to do with music, lived in very different parts of the world, met mainly during holidays for ad hoc concerts taking advantage of the guaranteed audience gathered for other artistic events, reunited in every possible configuration, including with their children, and did not create any significant work under the name Quilapayún.
By contrast, concerning the applicant, in addition to his exclusive relationship with a record company under the name Quilapayún and commercial, business and artistic relationships maintained using the sign QUILAPAYÚN, the various press cuttings produced demonstrate the continued use of the earlier mark, at least in Spain, and demonstrate that such use is well known. He claims to be the sole member of the original group who has travelled the world, principally Europe and Chile, for over 40 years continuously under the name Quilapayún. He also released three compact discs between 1988 and 2003 and two compilations, all of which were very well received by the public and reviewers. During all those years, the trade mark applicants were not part of the group.
First, EUIPO states that the applicant does not dispute the contested decision in so far as it holds that the earlier French and international marks cannot serve as a basis for opposition.
Next, EUIPO contends that the necessary conditions for filing notice of opposition are not limited to those laid down in Article 8 of Regulation No 207/2009. The opponent must also comply with the conditions laid down by Rule 19(2)(b) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community Trade Mark (
OJ 1995 L 303, p. 1
) (now Article 7(2)(b) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96 (
OJ 2017 L 205, p. 1
) and by Article 41(1)(a) of Regulation No 207/2009 (now Article 46(1)(a) of Regulation 2017/1001), according to which the opponent must adduce proof of his entitlement to file the opposition. Therefore, the opponent must prove not only that the earlier mark is well known but also that he is the proprietor of that mark.
EUIPO states, in addition, that the well-known character of the earlier mark has not been disputed by the trade mark applicants.
EUIPO also submits that the applicant’s arguments intended to prove that he is the proprietor of the earlier mark focus on the well-known character of the mark by reference to the decisions of national trade mark offices, commercial, business and artistic relationships that he has maintained in order to safeguard the sign QUILAPAYÚN and the registrations made to protect that sign.
EUIPO maintains that neither the applicant nor the trade mark applicants are the exclusive proprietors of the sign QUILAPAYÚN. Both the decisions of the national offices and of the national courts and the case-law cited by the applicant show, on the contrary, that the latter cannot claim any exclusive right to the earlier mark. At the hearing, in reply to a question put by the Court, EUIPO stated that the question of co-ownership of the earlier mark had not been raised before EUIPO and that it was too late to raise it for the first time before the Court.
The documents produced by the applicant do not, according to EUIPO, establish the existence of consent on the part of the trade mark applicants for the applicant to acquire exclusive ownership of the earlier mark. The commercial, business and artistic relationships that the applicant maintained in order to ensure the continuity of the earlier mark do not, as such, prove that he enjoys the status of exclusive proprietor of that mark. The marks corresponding to the sign QUILAPAYÚN that were registered have all been cancelled and all of the applications for registration of that sign have been rejected.
According to EUIPO, the Board of Appeal therefore acted correctly in law in rejecting the opposition as unfounded, pursuant to Rule 20(1) of Regulation No 2868/95 (now Article 8(1) and Article 7 of Delegated Regulation 2017/1430).
Lastly, EUIPO adds that, as the trade mark applicants can use the mark despite not having the right to register it, any argument concerning joint use of the mark is irrelevant. According to EUIPO, the only question on which the Board of Appeal had to decide was whether the applicant had exclusive rights over the earlier mark such as to enable him to oppose registration of the mark applied for. If not, the opposition had to be rejected without that prejudicing the validity of the registration of the mark applied for by the trade mark applicants. According to EUIPO, only a court can decide the question relating to the status of the proprietor and the right to apply for registration of the EU trade mark. In so far as Article 101(2) of Regulation No 207/2009 (now Article 129(2) of Regulation 2017/1001) does not provide for any action for recovery of the status of trade mark proprietor, it is the national law which must apply.
Findings of the Court
Article 8(1)(a) and (b) of Regulation No 207/2009 reads as follows:
‘1.   Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:
(a)
if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;
(b)
if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.’
According to Article 8(2)(c) of Regulation No 207/2009, ‘earlier trade marks’ means, inter alia, those which, on the date of application for registration of the EU trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark, are well known in a Member State, within the meaning of Article 6
bis
of the Paris Convention.
Article 41(1)(a) of Regulation No 207/2009 provides that notice of opposition to registration of an EU trade mark may be given, on the grounds under Article 8(1) of that regulation, ‘by the proprietors of earlier trade marks referred to in Article 8(2)’.
Rule 19(2) of Regulation No 2868/95 states:
‘… the opposing party shall ... file proof of the existence, validity and scope of protection of his earlier mark or right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:
...
(b)
if the opposition is based on a well-known mark within the meaning of Article 8(2)(c) of the Regulation [No 207/2009], evidence showing that this mark is well known in the relevant territory.’
Under Rule 20(1) of Regulation No 2868/95, if the opposing party does not prove the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition is to be rejected as unfounded.
It follows from the provisions referred to in paragraphs 33 to 37 above that, in order to give notice of opposition, within the meaning of Article 8(1) of Regulation No 207/2009, on the basis of a well-known mark, within the meaning of Article 8(2)(c) of that regulation, the opposing party must establish that the mark is well known in a Member State, within the meaning of Article 6
bis
of the Paris Convention, and that that party is its proprietor.
In the present case, the applicant filed notice of opposition to registration of the mark applied for on the basis of three earlier marks (see paragraph 6 above). The Opposition Division and the Board of Appeal examined the opposition only in so far as it is based on the well-known unregistered mark, which is not disputed by the parties and must be approved in the light of the cancellation of the French mark and, consequently, of the cancellation of the effects of the international mark.
Concerning the condition that the earlier mark must be well known, the Board of Appeal referred to the Opposition Division’s assessment that the earlier mark is well known in the European Union, particularly in Spain, a fact which is not disputed by the trade mark applicants.
The assessment conducted by the Board of Appeal related solely to whether the applicant was the proprietor of the earlier mark and therefore whether he was entitled to file a notice of opposition to registration of the mark applied for. The Board of Appeal took the view that the applicant had not provided proof that he was the ‘genuine’ proprietor of the earlier mark, particularly since the trade mark applicants also claimed that they were the proprietors of that mark. In short, the Board of Appeal criticises the applicant on the ground that he did not prove that he was the ‘exclusive’ proprietor of the earlier mark, which EUIPO confirmed in its response and at the hearing.
In that regard, it is necessary, first, to note that proof of ownership of an unregistered mark, such as the earlier mark in the present case, corresponds to specific requirements. The applicant may not, for example, produce a certificate of filing or registration of the mark on which the opposition is based to prove that he is the proprietor of that mark. He must prove that, by use of the earlier unregistered mark, he has acquired rights over that mark (see, to that effect, judgment of 18 January 2012, Tilda Riceland Private v OHIM — Siam Grains (BASmALI),
T‑304/09
,
EU:T:2012:13
, paragraph
).
However, following a question put by the Court at the hearing, the applicant maintained that the procedural rules on opposition did not stipulate the need to prove ownership of the earlier well-known trade mark through the production of an official document from which it is apparent that a specific individual is proprietor of that mark, since that mark had not been registered. On the other hand, he claimed that he had adduced evidence that he had used the earlier well-known mark, with the result that a connection could be established between him and that mark.
It should be noted that the Board of Appeal did not examine that evidence of use of the earlier mark by the applicant. It merely found that the applicant had not adduced proof that he was the proprietor of that mark and, furthermore, that ownership of that mark was also claimed by the trade mark applicants.
Thus, for the Board of Appeal, in so far as the applicant was not able to establish that he was the exclusive proprietor of the earlier mark, having regard to the evidence produced and the fact that the trade mark applicants also claimed ownership of that mark, he was not entitled to file a notice of opposition, within the meaning of Article 8(1) of Regulation No 207/2009.
However, it is not apparent from any provision referred to in paragraphs 33 to 37 above that the opponent who brings opposition proceedings under Article 8(2)(c) of Regulation No 207/2009 must prove that he is the ‘exclusive’ proprietor of the earlier well-known unregistered mark on which he bases his opposition. It may be inferred from Article 41 of Regulation No 207/2009, Rule 19(2) and Rule 20(1) of Regulation No 2868/95 that the opponent is required to prove that he has acquired sufficient rights in the earlier well-known unregistered mark, within the meaning of Article 8(2)(c) of Regulation No 207/2009, to be regarded as proprietor of that mark, something which does not involve establishing exclusive ownership of that mark.
Rule 15(1) of Regulation No 2868/95 (now Article 2(1) of Delegated Regulation 2017/1430) provides, moreover, that, ‘if an earlier mark and/or an earlier right has more than one proprietor (co-ownership), the opposition may be filed by any or all of them’, which, as EUIPO confirmed at the hearing, allows each of the co-owners of an earlier mark to oppose the registration of a mark that is applied for.
It should be noted in this regard that, if exclusive ownership of the earlier mark were required, neither the applicant nor the trade mark applicants could oppose registration of the sign QUILAPAYÚN by a third party unless they opposed that registration together, since they all claim ownership of that sign.
The acquisition of rights by the applicant in the earlier unregistered mark would allow him to oppose registration of the mark applied for, irrespective of whether others, including the trade mark applicants, have also acquired rights in that mark from the use that they have also been able to make of it.
It must therefore be held that the Board of Appeal erred in law by requiring the applicant to prove that he was the exclusive proprietor of the earlier mark, without examining whether it was sufficient for him to be its co-owner.
That finding cannot be invalidated by EUIPO’s argument that the applicant has, for the first time before the Court, maintained that he was co-owner of the earlier mark. It must be borne in mind that the Opposition Division upheld the applicant’s opposition without addressing the question of ownership of the earlier mark. Furthermore, since the Opposition Division’s decision was in his favour, the applicant did not appeal against that decision. It is, admittedly, true that, as EUIPO stated at the hearing, the trade mark applicants, in the appeal brought by them against the decision of the Opposition Division before the Board of Appeal, disputed the applicant’s status as proprietor of the earlier mark. However, although in the observations in reply before the Board of Appeal the applicant did not rely on Rule 15 of Regulation No 2868/95, the possibility remained that the earlier mark could have several owners. The applicant stated to that effect that, without an explicit decision as to the ‘co-ownership of the mark’, two musical groups were set up in parallel, each claiming the sign QUILAPAYÚN. In those circumstances, EUIPO cannot argue that the concept of co-ownership was relied on for the first time before the Court (see, to that effect, judgment of 6 April 2017, Nanu-Nana Joachim Hoepp v EUIPO — Fink (NANA FINK),
T‑39/16
,
EU:T:2017:263
, paragraphs
and
).
It follows that the single plea in law must be upheld and that the contested decision must be annulled. Moreover, in respect of the applicant’s head of claim requesting the Court to refuse the application for registration of the mark applied for in respect of the goods and services in Classes 9 and 41, it must be noted that the jurisdiction of the Court to alter decisions pursuant to Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001) does not have the effect of conferring on the Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM,
C‑263/09 P
,
EU:C:2011:452
, paragraph
). In that regard, it must be observed that the Board of Appeal based the contested decision solely on the fact that the applicant had not proved that he was the exclusive proprietor of the earlier mark, without examining whether it was not sufficient that he was its co-owner. In those circumstances, it is not for the Court, in the present case, to examine the arguments concerning the acquisition of rights by the applicant in the earlier unregistered mark. The application for alteration of the contested decision presented by the applicant on the basis of that argument must therefore be rejected.
Costs
Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
In the present case, however, the applicant, who has been successful, did not apply for costs.
Each party must, therefore, be ordered to bear its own costs.

On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:

1.
Annuls the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 March 2015 (Case R 354/2014-2);

2.
Rejects the remainder of the claims set out in the application;

3.
Orders each party to bear its own costs.

Kanninen
Schwarcz
Iliopoulos
Delivered in open court in Luxembourg on 11 December 2017.
[Signatures]
(
*1
)	Language of the case: Spanish.
(
)	The list of the other parties to the proceedings before the Board of Appeal of EUIPO is annexed only to the version sent to the parties.