Judgment — ECLI:EU:T:2016:372
Date: 2016-06-29
Language of the case: English
Court formation: Fourth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded

summary of the conditions, in particular as regards the acquisition and the rights conferred on the proprietor of the right. However, that table does not contain citations of the provisions of the national laws referred to in it. 32 In the present case, the applicant relied on the use of the sign ANIMAL, as an unregistered mark, in several European Union countries and made a general reference to the table annexed to the EUIPO guidelines. Accordingly, even though the table contains all the information relating to one or several applicable national rights necessary to comply with the obligation arising under Rule 37(b)(ii) of Regulation No 2868/95 to provide the particulars of the right on which the application for a declaration of invalidity is based, it must however be observed that, in the present case, the applicant, during the administrative procedure, did not identify, in a precise and unambiguous manner, the provisions of the various national laws on which it based its applications for declarations of invalidity. As the Board of Appeal held, in paragraph 29 of the contested decisions, that general reference to the table annexed to the EUIPO guidelines did not allow EUIPO to identify the provisions of national law on which the applicant’s applications for declarations of invalidity were based or to apply the content of those rights, or the intervener to exercise his rights of defence. 33 Consequently, it must be held that the applicant has not provided the evidence establishing the content of the national rights relied on. 34 In that regard, it should be added that, even if the form of words used by the Board of Appeal in paragraph 23 of the contested decisions, namely that the applicant had indicated no provision or right, which the applicant disputes, might seem maladroit, the fact remains that the Board of Appeal’s conclusion that the applicant had not satisfied the conditions laid down in Rule 37(b)(ii) of Regulation No 2868/95 is well founded. 35 Furthermore, as is clear from the case-law cited in paragraph 27 above, in accordance with Rule 37(b)(ii) of Regulation No 2868/95, the applicant was not only obliged to provide information showing the content of the national laws, but also evidence demonstrating that it fulfilled the conditions required, in accordance with those national laws, in order to have use of an EU trade mark prohibited pursuant to that earlier right. 36 In the present case, as the Board of Appeal rightly held at paragraph 36 of the contested decisions, the applicant has also not demonstrated that it fulfilled the necessary conditions to be able to have use of the EU trade marks at issue prohibited pursuant to various national laws mentioned in the table to which the applicant referred. It therefore did not satisfy the second requirement under Rule 37(b)(ii) of Regulation No 2868/95. 37 In that regard, the applicant submitted, in particular, that an applicant for a declaration of invalidity must give particulars of the right on which it relies and how that right confers the right to prohibit an EU trade mark. 38 However, contrary to what the applicant appears to submit, in order to satisfy the requirements of Rule 37(b)(ii) of Regulation No 2868/95, it is not sufficient for a party relying on rights flowing from Article 8(4) of Regulation No 207/2009 merely to set out or indicate, in abstracto, the conditions for the application of national provisions, but on the contrary requires, that it shows, in concreto, in the instant case, that it satisfies those conditions of application. In the present case, as held in paragraph 36 above, the applicant has not provided such information. 39 It follows that, having regard to the foregoing, the Board of Appeal was fully entitled to find that the applicant had not satisfied the requirements under Rule 37(b)(ii) Regulation No 2868/95. 40 Consequently, the present plea must be rejected. The second plea, alleging that EUIPO did not of its own motion obtain information on the rights in the Member States concerned, in breach of Article 76 of Regulation No 207/2009 41 The applicant submits that, during the administrative procedure, it had clearly provided particulars as to the content of the relevant provisions and that a line of case-law of the General Court and the Court of Justice places EUIPO under a duty to obtain further information as necessary as regards the national legislation and its field of application. In that regard, the applicant refers, in particular, to the judgment of 27 March 2014 in OHIM v National Lottery Commission (C‑530/12 P, EU:C:2014:186). The applicant considers that the Board of Appeal failed in its duty to obtain of its own motion information on the national law of the Member States concerned. 42 EUIPO and the intervener dispute those allegations. 43 Article 76(1) of Regulation No 207/2009 provides that in proceedings before it EUIPO is to examine the facts of its own motion. However, in proceedings relating to relative grounds for refusal of registration, the examination is limited to the facts, evidence and arguments provided by the parties and the relief sought. 44 As has already been recalled in paragraph 26 above, Rule 37(b)(ii) of Regulation No 2868/95 provides that an application for a declaration of invalidity of an EU trade mark, filed with EUIPO pursuant to Article 56 of Regulation No 207/2009, is to contain, in the case of an application made pursuant to Article 53(1)(c) of Regulation No 207/2009, particulars of the right on which the application for a declaration for invalidity is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity. 45 Similarly, it is apparent from the case-law of the Court of Justice, as recalled in paragraph 27 above, that Rule 37 of Regulation No 2868/95 requires the applicant to provide EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law (judgments of 5 July 2011 in Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 50, and 27 March 2014 in OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 34). 46 It follows that, in proceedings for a declaration of invalidity pursuant to Article 53(1)(c), read in conjunction with Article 8(4), of Regulation No 207/2009, it is specifically the applicant for a declaration of invalidity relying on an earlier right within the meaning of Article 8(4) of Regulation No 207/2009 that is required to provide particulars of the relevant national law. 47 On the other hand, since the application of national law can lead to a finding that there is a ground for invalidation of a duly registered EU trade mark, it is necessary for EUIPO to be able, before granting the application for a declaration of invalidity of such a mark, to ascertain the relevance of the evidence produced by the opponent with regard to the taking of evidence, which is incumbent upon it, concerning the content of that national law (judgment of 27 March 2014 in OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 41). 48 However, that requirement to carry out a verification, in the manner recalled by the Court of Justice in paragraph 35 of the judgment of 27 March 2014 in OHIM v National Lottery Commission (C‑530/12 P, EU:C:2014:186), as EUIPO rightly submits, must be exercised by EUIPO only if the applicant for a declaration of invalidity has provided the particulars necessary regarding the applicable national rights. 49 In the present case, as is clear from paragraph 33 above, the applicant has not provided to EUIPO particulars regarding the applicable national rights. The Board of Appeal was therefore fully entitled to hold, in paragraph 35 of the contested decisions, that it was not required, in the present case, to exercise its power of verification. 50 Consequently, the present plea must be rejected and the action must be dismissed in its entirety. Costs 51 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. 52 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Fourth Chamber) hereby: 1. Dismisses the applications; 2. Orders Universal Protein Supplements Corp. to pay the costs. Prek Labucka Kreuschitz Delivered in open court in Luxembourg on 29 June 2016. [Signatures] * Language of the case: English.