Judgment — ECLI:EU:T:2017:719
Date: 2017-10-12
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: Czechia

summary of the pleas in law on which the application is based and that summary must be sufficiently clear and precise to enable the defendant to prepare its defence and the General Court to rule on the action, if necessary without any other supporting information (see judgment of 18 September 2012, Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, not published, EU:T:2012:432, paragraph 16 and the case-law cited). As the plea alleging an infringement of Article 52(1)(b) of Regulation No 207/2009 patently does not comply with those requirements, that plea must be rejected as manifestly inadmissible. In addition, the reference to that plea at the present stage of the action is surprising, given that the applicant had expressly stated to the Opposition Division that it was no longer relying on the intervener’s bad faith. 31 It follows from the above that the plea in law alleging infringement of Article 52(1)(b) of Regulation No 207/2009 must be dismissed as inadmissible. 32 For the sake of completeness, it should be noted that Article 52(1)(b) of Regulation No 207/2009 sets out the absolute grounds for invalidity of an EU trade mark, including when the applicant acts in bad faith when filing its application for registration (judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli, C‑529/07, EU:C:2009:361, paragraphs 34 and 35), and therefore bad faith may be relied upon in the context of an application for a declaration of invalidity against a registered mark. However, as the intervener claims, the bad faith of the applicant for an EU trade mark is not included in Article 41 of Regulation No 207/2009 among the grounds for opposition to the registration of an EU trade mark. Therefore, that plea must, in any event, be rejected. Substance 33 In support of its action, the applicant relies essentially on two pleas in law. The first plea alleges infringement of Article 8(4) and Article 76(1) of Regulation No 207/2009 (Article 76(1) now being Article 95(1) of Regulation 2017/1001) and of Rule 50(1) 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). The second plea alleges infringement of Article 52(1)(b) of Regulation No 207/2009. 34 Since the second plea has been rejected as inadmissible, it is only necessary to consider the first plea. 35 In support of that plea, the applicant claims that the Board of Appeal erred in its application of Rule 50(1) of Regulation No 2868/95, read in conjunction with Article 76(2) of Regulation No 207/2009, when, in the contested decision, it failed to take into account the facts and evidence submitted that had been put forward by the applicant. The applicant maintains that the Board of Appeal misconstrued its discretionary power in relation to evidence first submitted in the appeal proceedings against the decision of the Opposition Division. The applicant claims that, in the present case, it submitted all of the evidence regarding its earlier right as a user of a non-registered sign within the prescribed time limit and that only the information on national law was missing. Consequently, the applicant maintains that it cannot be stated that it failed to file any evidence during the opposition proceedings. The applicant also argues that in the contested decision the Board of Appeal erroneously applied the principles laid down in the judgment of 28 October 2015, Rot Front v OHIM — Rakhat (Маска) (T‑96/13, EU:T:2015:813), since that judgment was delivered after the time limit for bringing an action again the Opposition Division’s decision. Consequently, the applicant submits, that judgment cannot be relevant for the present case. 36 EUIPO and the intervener dispute the applicant’s arguments. 37 As the arguments relied on by the applicant in its first plea overlap, it is necessary to examine them together. 38 Under Article 8(4) of Regulation No 207/2009, the proprietor of a sign other than a registered trade mark may oppose registration of a European Union trade mark if that sign satisfies all of four conditions: (i) the sign must be used in the course of trade; (ii) it must be of more than mere local significance; (iii) the right to that sign must have been acquired in accordance with EU law or the law of the Member State in which the sign was used prior to the date of application for registration of the EU trade mark; and (iv) the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark (see judgment of 29 June 2016, Universal Protein Supplements v EUIPO — H Young Holdings (animal), T‑727/14 and T‑728/14, not published, EU:T:2016:372, paragraph 22 and the case-law cited). Those conditions are cumulative; thus, where a sign does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) of Regulation No 207/2009 cannot succeed (see judgment of 21 January 2016, BR IP Holder v OHIM — Greyleg Investments (HOKEY POKEY), T‑62/14, not published, EU:T:2016:23, paragraph 20 and the case-law cited). 39 The first two conditions, namely those concerning the use and scope of the sign relied on, the latter having to be of more than mere local significance, arise from the wording itself of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (see judgment of 29 June 2016, animal, T‑727/14 and T‑728/14, not published, EU:T:2016:372, paragraph 23 and the case-law cited). 40 By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to ... the law of the Member State governing that sign’ that the two other conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, are conditions laid down by that regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is entirely justified, given that Regulation No 207/2009 allows signs which fall outside of the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark. In accordance with Article 76(1) of Regulation No 207/2009, the burden of proving that such condition is met lies with the opponent before EUIPO (see judgment of 29 June 2016, animal, T‑727/14 and T‑728/14, not published, EU:T:2016:372, paragraph 24 and the case-law cited). 41 With regard to the application of the provisions of Article 8(4)(b) of Regulation No 207/2009, regard must be had, in particular, to the national rules relied on and to the judicial decisions delivered in the relevant Member State. On that basis, the opponent must establish that the sign at issue falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited (see judgment of 29 June 2016, animal, T‑727/14 and T‑728/14, not published, EU:T:2016:372, paragraph 25 and the case-law cited). 42 Rule 19(2)(d) of Regulation No 2868/95 (now Article 7(2)(d) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)) places on the opponent the burden of providing EUIPO not only with particulars showing that it satisfies the necessary conditions, in accordance with the national law that it is seeking to have applied, in order to be able to have the registration of an EU trade mark prohibited by reason of an earlier right, but also with particulars establishing the content of that law (see, to that effect and by analogy, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 50). It is true that the Board of Appeal and the EU judicature must, of their own motion, obtain information about the national law where such information is necessary to assess whether the ground for refusal of registration in question applies, which entails them taking into consideration, in addition to the facts which have been expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, facts which are likely to be known by anyone or which may be learnt from generally accessible sources (see, to that effect, judgments of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraphs 39, 44 and 45, and of 28 October 2015, Маска, T‑96/13, EU:T:2015:813, paragraph 31 and the case-law cited). However, that obligation only applies in circumstances where EUIPO or the EU judicature already have before them information relating to national law, either in the form of claims as to its content, or in the form of evidence submitted and whose probative value has been claimed (see, to that effect and by analogy, judgment of 28 October 2015, Маска, T‑96/13, EU:T:2015:813, paragraph 31 and the case-law cited). 43 Therefore, in the present case, it is indeed for the applicant, in its capacity as opponent, to provide EUIPO with particulars establishing the content of the national law. 44 In addition, it is necessary to note that, to support its opposition, the applicant referred to a non-registered earlier trade mark with identical wording to the mark applied for and claimed that such earlier mark exists at least in the territory of the Czech Republic. As stated in paragraph 7 above and as follows from the seventh subparagraph of paragraph 9 of the contested decision, the only evidence relating to the use of the earlier mark that the applicant provided to the Opposition Division is a two-page document headed ‘Sales confirmation’ and dated 8 October 2013. The applicant provided no evidence of the relevant national law, which caused its opposition to be rejected by the Opposition Division. As pointed out in paragraph 12 above, it is in the statement of grounds in its action before the Board of Appeal that the applicant referred for the first time to the provisions of Czech national law governing the legal protection of non-registered signs. 45 Therefore the Court must assess whether the Board of Appeal was entitled to conclude, in paragraph 70 of the contested decision, that in circumstances such as those of this case it did not have the discretion to accept evidence submitted for the first time before it regarding the protection given to the earlier mark by the relevant Czech law, since the applicant had failed to provide any evidence to that effect before the Opposition Division. 46 According to settled case-law, it is clear from the wording of Article 76(2) of Regulation No 207/2009, relating to the assessment of the facts by EUIPO of its own motion, that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the time limits to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are invoked or produced out of time (see judgment of 11 December 2014, CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 44 and the case-law cited). In other words, EUIPO may take them into account after the time limit set by the Opposition Division and, as the case may be, for the first time before the Board of Appeal by applying the discretion conferred on it by Article 76(2) of Regulation No 207/2009 (see, to that effect, judgment of 11 December 2014, Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraph 44 and the case-law cited). 47 It is also consistently held that, in stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, that provision grants EUIPO a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account (see judgment of 11 December 2014, Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraph 45 and the case-law cited). 48 It is understood that such discretion relates only to the matter of whether or not it is necessary to accept evidence that is submitted out of time. Such discretion does not relate to the assessment of the nature of that evidence. 49 Under the third subparagraph of Rule 50(1) of Regulation No 2868/95, where the action is directed against a decision of an Opposition Division, the Board of Appeal must limit its examination of the action to facts and evidence presented within the time limits set or specified by the Opposition Division, unless the Board considers that ‘additional’ or ‘supplementary’ facts and evidence must be taken into account pursuant to Article 76(2) of Regulation No 207/2009 (see, to that effect, judgments of 3 October 2013, Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 31, and of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraph 23). 50 In that respect, the Court of Justice initially interpreted Article 76(2) of Regulation No 207/2009, in relation to proof of use, as follows: when no proof of genuine use of the relevant mark is submitted within the time limit set by EUIPO, the opposition must automatically be rejected by EUIPO; conversely, where evidence was produced within the time limit set by EUIPO, the submission of additional proof remains possible (see, to that effect, judgment of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraphs 28 and 30). 51 Subsequently, the Court of Justice held that Article 76(2) of Regulation No 207/2009 should be interpreted in the same way in relation to proof of the existence, validity and scope of protection of a trade mark, since that provision contains a rule which applies horizontally within the scheme of that regulation, inasmuch as it applies irrespective of the nature of the relevant proceedings. The Court of Justice inferred from the above that Rule 50 of Regulation No 2868/95 cannot be interpreted as meaning that it extends the discretion of the Boards of Appeal to new evidence (judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraph 27, and the Opinion of Advocate General Szpunar in OHIM v Grau Ferrer, C‑597/14 P, EU:C:2016:2, points 55 and 57). 52 Taking into account the principles set out above, it is therefore necessary to assess whether the applicant had, in the context of the opposition proceedings, produced at least some evidence as to the existence, validity and scope of protection of the earlier non-registered trade mark on which it is relying. 53 Clearly, in that respect, the Board of Appeal was entitled to hold that the applicant had produced no evidence as to the content of the national law at issue within the time limit and that the applicant had also failed to submit a legitimate reason justifying its conduct. 54 The only piece of evidence submitted by the applicant for the purpose of proving the existence, validity and scope of protection of the earlier non-registered trade mark was, as is referred to in paragraphs 7 and 44 above, a two-page document headed ‘Sales confirmation’ dated 8 October 2013 and relating to a delivery of calculators from Hong Kong. 55 As EUIPO points out in its response, that document provides no information on the use of the earlier mark relied on that relates to, inter alia, the place and duration of that use, or even on the possibility of concluding that the scope of that trade mark is of more than mere local significance. Nor does that document contain information on the requisite conditions under the law of the Czech Republic. 56 It is also clear that the ‘Sales confirmation’ is a list that refers to a number of products, amongst which the earlier non-registered mark does not feature, the closest reference to it being ‘SDC‑444+’. 57 Moreover, as the intervener submits, the ‘Sales confirmation’ does not contain any specifications relating to the specific products that it lists, and does not prove that the order to which it appears to refer led to a delivery of the relevant goods for the earlier non-registered trade mark. 58 During the hearing, in response to the General Court’s question as to how exactly the aforementioned ‘Sales confirmation’ contained information on the requisite conditions and on the protection offered by the law of the Czech Republic regarding the earlier non-registered trade mark, the applicant gave no explanation. 59 Further, the applicant produced before the Opposition Division a document to which was attached a letter sent by the intervener to a German body, which, however, contains no detail whatsoever as to the existence, validity and scope of the protection of the earlier non-registered trade mark. 60 In such conditions, it cannot be held that the applicant had already provided, during the proceedings before the Opposition Division, some evidence intended to prove the existence, validity and scope of the protection of the earlier trade mark. Therefore, the references to the provisions of Czech law provided by the applicant for the first time when setting out its statement of grounds in the application before the Board of Appeal are not ‘additional’ or ‘supplementary’ evidence to that which had been submitted before the Opposition Division. 61 Consequently, the Board of Appeal did not err in law when it held that it did not have discretion to accept evidence produced for the first time before it, since such evidence was out of time. 62 In the light of the foregoing, it should be noted that, unlike the circumstances of the case giving rise to the judgment of 29 June 2016, Group v EUIPO — Iliev (GROUP Company TOURISM & TRAVEL) (T‑567/14, under appeal, EU:T:2016:371), the evidence submitted by the applicant before the Opposition Division in the current case did not allow the Board of Appeal to exercise its discretion. 63 In addition, during the hearing, the applicant made available to the Court several examples of the calculator that it claims to market and on which was inscribed the earlier non-registered trade mark. However, without having to rule on the probative value of that evidence as regards the existence, validity and scope of the protection of the earlier non-registered trade mark, it is sufficient, for the purposes of rejecting such evidence, to find that such evidence has been submitted out of time. First, as is explained in paragraphs 38 to 51 of this judgment, that evidence should have been submitted during the proceedings before the Opposition Division of EUIPO. Second, in any event, under Article 85(1) of the Rules of Procedure, evidence produced or offered is to be submitted in the first exchange of pleadings. Pursuant to Article 85(3) of those rules, the main parties may, exceptionally, produce or offer further evidence before the oral part of the procedure is closed or before the Court’s decision to rule without an oral part of the procedure, provided that the delay in the submission of such evidence is justified. In that respect, the submission of the aforementioned evidence during the hearing occurred out of time for the purpose of those provisions. Since the applicant has not justified the submissions of such evidence out of time, it should be rejected as inadmissible, pursuant to Article 85(1) and (3) of the Rules of Procedure. 64 As regards the applicant’s argument that the Board of Appeal erred in applying the principles laid down in the judgment of 28 October 2015, Маска (T‑96/13, EU:T:2015:813), although that judgment was delivered after the deadline for the lodging of an action against the Opposition Division’s decision given in the present proceedings, it should be noted that, according to established case-law, the interpretation by the Court of Justice of a provision of EU law is limited to clarifying and explaining its meaning and scope, as it should have been understood and applied since its entry into force. It follows that the provision thus interpreted may, and must, be applied even to legal relationships which arose and were established before the judgment in question and it is only exceptionally, in application of a general principle of legal certainty which is inherent in the Union legal order, that the Court may decide to restrict the right to rely upon a provision, which it has interpreted, with a view to calling in question legal relationships established in good faith. Those considerations apply to the EU institutions when they, in turn, are required to implement the provisions of EU law which are subsequently interpreted by the Court (see judgment of 16 September 2013, Spain v Commission, T‑402/06, EU:T:2013:445, paragraph 104 and the case-law cited). 65 For the sake of completeness, the Board of Appeal was right to hold, in paragraph 71 of the contested decision, that, even if the evidence submitted before it for the first time had to be considered to be ‘additional’ or ‘supplementary’, and even if it were necessary to find that the Board of Appeal did have discretion allowing it to accept that evidence, it would not have taken such evidence into consideration. 66 As the Board of Appeal pointed out, it is clear from the wording of Article 76(2) of Regulation No 207/2009 that the fact that a party has invoked or produced evidence out of time does not confer on it an unconditional right to have that evidence taken into consideration by EUIPO. 67 In that regard, the Court of Justice has held that, where EUIPO is called upon to give judgment in the context of opposition proceedings, taking into account evidence produced out of time is particularly likely to be justified where EUIPO finds, first, that the evidence which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 44). 68 First, it should be pointed out that, as EUIPO correctly maintains, the applicant in the present case had to be aware that it was obliged to produce some evidence to establish the content of Czech law. 69 Such an obligation arises already from Rule 19(2)(d) of Regulation No 2868/95, as mentioned in paragraph 42 above. In addition, it clearly follows from the content of EUIPO’s letter of 5 August 2014 that it had informed the applicant of the evidence that had to be submitted in support of an opposition based on Article 8(4) of Regulation No 207/2009, indicating in particular the content of national law, particularly with regard to the conditions of protection of the right relied on and the scope of the holder’s rights, as well as, in respect of a non-registered trade mark, providing evidence that such trade mark was used in the course of trade. 70 Despite that specific request for information, the applicant failed to submit before the Opposition Division any evidence of the content of national law or any information whatsoever on such content. 71 Second, the information provided by the applicant to justify that delay cannot be accepted. 72 Turning first to the principle iura novit curia relied upon by the applicant, such principle relates only to the application of EU law. According to established case-law, the determination and interpretation of rules of national law is a matter of establishing the facts, not applying the law. Consequently, it is only EU law which falls within the area of law, in which the maxim iura novit curia applies; national law is an issue of fact, where facts must be adduced and the requirements of the burden of proof apply, and the content of national law must be demonstrated where necessary by the production of evidence (see, to that effect, judgment of 20 March 2013, El Corte Inglés v OHIM — Chez Gerard (CLUB GOURMET), T‑571/11, EU:T:2013:145, paragraph 35 and the case-law cited). As is clear from paragraph 42 of this judgment, first, it is only in circumstances where EUIPO already has information on national law available to it that it must of its own motion inform itself of the latter, if it is necessary to do so for the purposes of assessing the conditions for the application of a ground for refusal to register. Second, the Court is able to carry out an effective check on this point and verify, beyond the documents submitted to it, the wording, the conditions of application and the scope of the legal rules relied on by the applicant only if documents are submitted to it as evidence of the applicable national law and, if necessary, only by filling any gaps in those documents. 73 Thus, it is necessary to reject the applicant’s argument that EUIPO was too general when it requested the applicant to clarify its opposition. As stated in paragraph 69 above, the letter of 5 August 2014 requesting the applicant to complete its opposition contained sufficient detail as to the evidence needed to be submitted in support of its opposition. That letter clearly stated the pieces of evidence admitted in the context of an opposition based on Article 8(4) of Regulation No 207/2009 and provided more specific and detailed information in that respect than the information contained in Rule 19(2)(d) of Regulation No 2868/95. The applicant replied to that letter on 10 December 2014 and provided various details and pieces of information relating to the opposition, without, however, responding to the request from the Opposition Division of EUIPO for information on national law. Indeed, during the hearing, when responding to a question asked by the Court requesting that the applicant explain why it had not responded to that request of the Opposition Division, the applicant did no more than to insist that EUIPO’s request was too general, without providing any argument to substantiate that assertion. 74 It follows from the foregoing that the single plea in law put forward by the applicant must be rejected and, consequently, the action must be dismissed in its entirety. Costs 75 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 76 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Ninth Chamber) hereby: 1. Dismisses the action; 2. Orders Moravia Consulting spol. s r. o. to pay the costs. Gervasoni Madise Da Silva Passos Delivered in open court in Luxembourg on 12 October 2017. E. Coulon S. Gervasoni Registrar President * Language of the case: English.