Judgment — ECLI:EU:T:2009:226
Date: 2009-06-30
Language of the case: English
Court formation: Second Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Earlier non-registered mark or other earlier sign used in the course of trade
Procedure: Action for annulment - unfounded

Summary of the Judgment 1. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade (Council Regulation No 40/94, Art. 8(4)) 2. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade (Council Regulation No 40/94, Art. 8(4)) 3. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade (Council Regulation No 40/94, Arts 8(4) and 52(2)) 4. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade (Council Regulation No 40/94, Art. 8(4)) 1. The essential function of a trade mark is to identify the commercial origin of goods or services, thus enabling the consumer who purchases them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition. The same sign may be protected as an original creative work by copyright and as an indicator of commercial origin by trade mark law. It is therefore a matter of different exclusive rights based on distinct qualities, that is to say the original nature of a creation, on the one hand, and the ability of a sign to distinguish the commercial origin of the goods and services, on the other. Therefore, even if the title of a film can be protected pursuant to certain national laws as an artistic creation independent of the film itself, it cannot automatically enjoy the protection afforded to indicators of commercial origin, since only signs which develop characteristic trade mark functions may enjoy that protection. (see paras 23, 26) 2. Under Article 8(4) of Regulation No 40/94 on the Community trade mark, the existence of an earlier non‑registered trade mark or a sign other than a trade mark gives good grounds for opposition if the sign satisfies the following conditions: it is used in the course of trade; it is of more than mere local significance; it confers on its proprietor the right to prohibit the use of a subsequent trade mark; rights to the sign in question were acquired, pursuant to the law of the Member State in which the sign was used, prior to the date of application for registration of the Community trade mark. 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 40/94 cannot succeed. (see para. 35) 3. It is clear from Article 8(4) read in conjunction with Article 52(2) of Regulation No 40/94 on the Community trade mark that the protection provided for by copyright cannot be relied on in opposition proceedings, but only in proceedings for a declaration of invalidity of the Community mark in question. (see para. 41) 4. Under Article 8(4) of Regulation No 40/94 on the Community trade mark the existence of a sign other than a trade mark gives good grounds for opposition to the registration of a Community trade mark, if that sign satisfies all four of the following conditions: it is used in the course of trade; it is of more than mere local significance; it confers on its proprietor the right to prohibit the use of a subsequent trade mark; rights to the sign in question were acquired, pursuant to the law of the Member State in which the sign was used, prior to the date of application for registration of the Community trade mark. Under that article, the condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a Community trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights. In the specific case of the titles of works, the use of the title presupposes that the work in question has been placed on the relevant market. (see para. 44)