CELEX: 62011TJ0170
Community trade mark
Opposition proceedings
Application for the Community figurative mark BASKAYA
Earlier international figurative mark Passaia
Proof of genuine use of the earlier mark
Relevant territory
Article 42(2) and (3) of Regulation (EC) No 207/2009

Grounds
Background to the dispute
1. On 25 October 2007 the intervener, Baskaya di Baskaya Alim e C. Sas, filed an application for a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2. Registration as a mark was sought for the following figurative sign:
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3. The goods in respect of which registration was sought are in Classes 29, 30 and 32 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose 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 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats’;
– Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice’;
– Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
4. The Community trade mark application was published in Community Trade Marks Bulletin No 13/2008 of 31 March 2008.
5. On 30 June 2008, the applicant, Rivella International AG filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for, invoking a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
6. The opposition was based on an earlier international figurative mark, registered on 30 June 1992 under the number 470542 and extended until 30 June 2012, which produces effects in Germany, Spain, France, Italy, Austria and the Benelux countries, for the following goods in Class 32: ‘Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages’. That mark is reproduced below:
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7. Having been requested to provide proof of genuine use of the earlier mark, the applicant, on 31 March 2009, stated that it was maintaining the opposition only in respect of the German part of the international registration and submitted a number of documents by way of proof of use in Switzerland. It relied, in that regard, on Article 5 of the Convention of 13 April 1892 between Switzerland and Germany on the reciprocal protection of patents, designs and trademarks (‘the 1892 Convention’). According to that convention, use in Switzerland is tantamount to that in Germany.
8. By decision of 8 February 2010, the Opposition Division rejected the opposition since there was no proof of use of the earlier mark. It stated that it was apparent from the documents provided that the mark cited in opposition was used only in Switzerland and rejected the application of the 1892 Convention.
9. On 7 April 2010 the applicant filed a notice of appeal at OHIM against the Opposition Division’s decision.
10. By decision of 10 January 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal on the ground that the proof of genuine use of the earlier mark cited in opposition related only to Switzerland. It took the vie w that the only relevant legal framework was that of Regulation No 207/2009 and more specifically of Article 42(2) and (3) of that regulation, according to which the earlier mark must have been put to genuine use in the Member State in which it is protected.
Forms of order sought
11. The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
12. OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13. In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009.
14. It must be stated at the outset, first, that it is common ground that the intervener’s request for proof of genuine use of the earlier mark to be furnished was made in the course of the opposition proceedings.
15. Secondly, it must be pointed out that the applicant did not provide proof that the earlier mark had been used in Germany, as the proof of use related exclusively to Switzerland.
16. However, in that regard, the applicant submits that the proof of genuine use of the earlier mark in Switzerland is sufficient to support the opposition against the mark applied for.
17. In that connection, it refers to Article 5(1) of the 1892 Convention under which ‘[t]he legal disadvantages which, under the laws of the contracting parties, occur when an invention has not been implemented, a design has not been reproduced or a trade mark has not been used within a certain period of time are precluded if the implementation, reproduction or use takes place in the territory of the other party’.
18. In that regard, the applicant submits that, according to the 1892 Convention, the German part of an international registration is regarded as being ‘used’ in Germany when it is ‘used’ in Switzerland.
19. As the 1892 Convention is an integral part of German law, the international mark, the protection of which extends to Germany, should be assessed only in accordance with that law. It follows, according to the applicant that, as regards the assessment of the proof of use, the relevant territory extends to Switzerland.
20. Moreover, the applicant also casts doubt on whether proof of genuine use may be requested under Article 42(2) and (3) of Regulation No 207/2009 as regards an international mark.
21. The Court notes that the genuine use in Switzerland of the mark cited in opposition is not a matter of dispute in this case. Accordingly, it is appropriate to deal, first, with the relevant question in the present case, namely that relating to the territorial aspect of the genuine use and, secondly, with the question of the doubt expressed by the applicant regarding whether proof of genuine use may be requested under Article 42(2) and (3) of Regulation No 207/2009 in respect of an international mark.
22. As regards, first, the territorial aspect of the use of the marks and, more specifically, the question of the territory in respect of which the proof of use of the earlier mark must be furnished, it is important to bear in mind that the present case relates to Community opposition proceedings. Consequently, the relevant provisions of Regulation No 207/2009 as well as those of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, apply to those proceedings.
23. Article 42(2) of Regulation No 207/2009 provides that:
‘If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected.’
24. In addition, Article 42(3) of Regulation No 40/94 provides, ‘[p]aragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community’.
25. Furthermore, under Rule 22(3) of Regulation No 2868/95, as amended, the proof of use must relate to the place, time, extent and nature of use of the earlier mark.
26. It is apparent from the above provisions that questions relating to the proof furnished in support of the grounds for opposition to an application for registration of a Community trade mark and questions relating to the territorial aspect of the use of marks are governed by the relevant provisions of Regulation No 207/2009 and it is not necessary to refer to any provision of domestic law of the Member States.
27. The fact that earlier national or international marks may be cited in opposition against the registration of Community trade marks does not imply, contrary to what the applicant submits, that the national law applicable to the earlier mark cited in opposition is the relevant law as regards Community opposition proceedings.
28. It is true that, in the absence of relevant provisions in Regulation No 207/2009 or, where appropriate, in Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), national law serves as a point of reference.
29. That is true as regards the date of registration of an earlier mark cited in Community opposition proceedings. Regulation No 207/2009 does not enable the date on which the earlier national trade marks are considered to be registered in each of the Member States to be determined, with the result that that question is covered by the national law of the Member State concerned. Furthermore, although national trade mark law was harmonised by Directive 2008/95, it is none the less clear from paragraphs 26 to 31 of the judgment in Case C-246/05 Häupl  [2007] ECR I-4673 that that directive does not harmonise the procedures for the registration of trade marks, and it is thus for the Member State in respect of which the application for registration has been filed to determine, in accordance with its own procedural rules, the time at which the registration procedure comes to an end (see Case T-466/08 Lancôme  v OHIM — Focus Magazin Verlag (ACNO FOCUS)  [2011] ECR II-1831, paragraphs 30 and 31 and the case-law cited).
30. However, as is apparent from the foregoing, that is not so as regards the determination of the territory in which use of the earlier mark must be established. That question is exhaustively governed by Regulation No 207/2009 and it is not necessary to refer to national law.
31. Under the provisions referred to above, genuine use of an earlier mark, be it a Community, national or international mark, must be proved in the European Union or in the Member State concerned.
32. Consequently, the applicant’s argument that the Board of Appeal should have taken account of Paragraph 26 of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz) (German Law on the protection of trade marks and other signs) must be rejected.
33. Furthermore, it must be stated that the harmonised trade mark law of the Member States also assumes that use must be in the Member State concerned (see Article 10(1) of Directive 2008/95). It must also be stated that the requirement of genuine use, and the sanctions laid down by that directive failing such use, have been transposed into national law (Paragraph 26 of the Markengesetz). The fact that, in its internal legal order, the Federal Republic of Germany applies, in some circumstances, Article 5 of the 1892 Convention, a bilateral Convention which, under Article 351 TFEU does not bind the European Union, is however irrelevant in the present case.
34. Consequently, in the case which gave rise to the judgment in Case C-234/06 P Il Ponte Finanziaria  v OHIM  [2007] ECR I-7333, paragraphs 101 to 103, the Court held that the argument that the holder of a national registration who opposes a Community trade mark application can rely on an earlier trade mark, the use of which has not been established, on the ground that, under national legislation, that earlier mark constitutes a ‘defensive trade mark’ is incompatible with Article 42(2) and (3) of Regulation No 207/2009.
35. Given that the national law is of no relevance in the present case, the applicant’s reference to the statement of reasons for the amendments to the Patentgesetz (German Law on patents), the Markengesetz and other Laws as regards the applicability of the 1892 Convention and the transposition of Directive 89/104 into German law, have no bearing on the outcome of the present case. The same is true of the case-law of the Bundesgerichtshof (Federal Court of Justice, Germany) relating to national legal interpretations.
36. Lastly, according to the applicant, the non-application of the 1892 Convention would be contrary to the unitary character of the Community trade mark in the context of Article 42(2) and (3) of Regulation No 207/2009, if the applicant asked the national court to prohibit the use in Germany of the mark applied for, given that German law, of which the 1892 Convention is part, still applies. In so far as the applicant takes the view that the Board of Appeal’s approach constitutes an infringement of the principle of the unitary character of the Community trade mark, it is sufficient to refer to recitals 4 and 6 in the preamble to Regulation No 207/2009. It is apparent from those recitals that the national systems and the Community system coexist. Furthermore, as the applicant itself conceded by referring to Articles 111 and 165 of Regulation No 207/2009, it is apparent from recital 3 in the preamble to that regulation that that principle is not absolute.
37. As regards, secondly, the question whether proof of genuine use may be requested as regards an international mark — in so far as the applicant submits that it cannot because Article 42(3) of Regulation No 207/2009 refers only to national marks — the General Court points out that Article 8(2)(a) of Regulation No 207/2009 specifies what is meant by ‘earlier trade marks’. Under Article 8(2)(a)(iii) of that regulation, earlier trade marks are, inter alia, trade marks registered under international arrangements which have effect in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
38. Likewise, Article 4(1) of the Madrid Agreement concerning the International Registration of Marks of 14 April 1891, as revised and amended, and Article 4(1)(a) of the Protocol relating to the Madrid Agreement, provide that the protection of the mark in each of the Contracting Parties concerned shall be the same as if the mark had been deposited direct with the Office of that Contracting Party.
39. Consequently, the reference to Article 8(2)(a) of Regulation No 207/2009 in Article 42(3) of that regulation must be understood as meaning that ‘trade marks registered under international arrangements which have effect in a Member State’ must be equated with ‘national marks’.
40. Therefore, the doubt expressed by the applicant concerning the applicability of Article 42(3) of Regulation No 207/2009 to international marks is not justified.
41. Consequently, it must be held that the Board of Appeal could lawfully reject the opposition in the absence of proof of genuine use of the earlier mark in Germany in accordance with Article 42(2) and (3) of Regulation No 207/2009.
42. It follows from the foregoing that the single plea and, therefore, the action in its entirety, must be rejected.
Costs
43. Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
Operative part
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Rivella International AG to pay the costs.