Judgment — ECLI:EU:C:2010:456
Date: 2010-07-29
Language of the case: English
Court formation: Fourth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible

Summary of the Judgment Community trade mark – Observations of third parties and opposition – Facts, evidence and arguments presented in support of the opposition – Proof of renewal of the earlier trade mark (Council Regulation No 40/94, Art. 42(3); Commission Regulation No 2868/95, Art. 1, Rules 16, 19 and 20) Although it follows from a reading of Rule 16 in conjunction with Rule 20 of Regulation (EC) No 2868/95 implementing Regulation No 40/94, as worded prior to amendment by Regulation No 1041/2005, that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is entitled to require proof that an earlier mark has been renewed where that mark expires after notice of opposition has been filed, those provisions do not require the opponent, on its own initiative, to submit such proof. Neither Article 42(3) of Regulation No 40/94 on the Community trade mark nor Rules 16(1) and (3) and 20(2) of Regulation No 2868/95 specify the facts, evidence and arguments which must be submitted in support of the opposition within the period fixed under Article 42(3) of Regulation No 40/94. In particular, those provisions contain nothing to suggest that an opponent should automatically provide, within that period, evidence of renewal of the earlier mark relied on where the renewal is to occur after notice of opposition has been filed. While paragraphs 2 and 4 of Rule 19 of Regulation No 2868/95 now impose, within certain limits, an express obligation on an opponent to produce proof of renewal of the earlier trade mark within the period referred to in Article 42(3) of Regulation No 40/94, they thereby clarify in that respect the general rule laid down by Article 42(3) of the regulation, which is intended to afford greater legal certainty to operators engaged in opposition proceedings before the Office. In those circumstances, the new rules laid down in Regulation 2868/95 cannot be applied with retroactive effect. (see paras 57-58, 68-69)