Judgment — ECLI:EU:T:2018:941
Date: 2018-12-13
Language of the case: German
Court formation: First Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - successful
Origin: Germany

Summary — Judgment of the General Court (First Chamber), 13 December 2018 1. EU trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Re-evaluation of the facts in the light of evidence produced for the first time before it — Not included (Council Regulation No 207/2009, Art. 65) 2. EU trade mark — Appeals procedure — Action before the EU judicature — Legality of the decision of a Board of Appeal — Account taken, for the purposes of applying EU law, of national legislation, case-law or academic writing — Lawfulness (Council Regulation No 207/2009, Art. 65) 3. Judicial proceedings — Time-limit for producing evidence — Article 85(1) of the Rules of Procedure of the General Court — Scope — Evidence in rebuttal and the amplification of evidence (Rules of Procedure of the General Court, Arts 85(1) and 92(7)) 4. EU trade mark — Procedural provisions — Examination of the facts of EUIPO’s own motion — Invalidity proceedings concerning absolute grounds for refusal — Examination restricted to the submissions of the parties — Well-known facts taken into account (Council Regulation No 207/2009, Arts 7(1), 52(1)(a) and 76(1)) 5. EU trade mark — Surrender, revocation and invalidity — Absolute grounds for invalidity — Registration contrary to Article 7(1)(c) of Regulation No 207/2009 — Word mark PLOMBIR (Council Regulation No 207/2009, Arts 7(1)(c) and 52(1)(a)) 6. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Aim — Need to preserve availability (Council Regulation No 207/2009, Art. 7(1)(c)) 7. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks composed exclusively of signs or indications capable of designating the characteristics of a product or service — Assessment of the descriptive nature of a sign — Criteria (Council Regulation No 207/2009, Art. 7(1)(c)) 8. EU trade mark — Decisions of EUIPO — Principle of equal treatment — Principle of sound administration — EUIPO’s previous decision-making practice — Principle of legality (Council Regulation No 207/2009) 1. See the text of the decision. (see para. 15) 2. See the text of the decision. (see para. 16) 3. Evidence in rebuttal and the amplification of previous evidence, submitted in response to evidence in rebuttal put forward by the opposing party in his defence, are not covered by the time-bar rule in Article 85(1) of the Rules of Procedure of the General Court, which provides that evidence produced or offered is to be submitted in the first exchange of pleadings. Indeed, that provision concerns fresh evidence and must be read in the light of Article 92(7) of the Rules of Procedure, which expressly provides that evidence may be submitted in rebuttal and previous evidence may be amplified. (see para. 21) 4. The presumption of validity of an EU trade mark in invalidity proceedings restricts the European Union Intellectual Property Office’s (EUIPO) obligation, under Article 76(1) of Regulation No 207/2009, to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal. As the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity of that mark to invoke before EUIPO the specific facts which call the validity of that trade mark into question. For the purposes of challenging the validity of a registered EU trade mark, the cancellation applicant may, however, rely on well-known facts. Well-known facts are facts which are likely to be known by anyone or which may be learnt from generally accessible sources. Moreover, where the bodies of EUIPO decide to take account of well-known facts, they are not obliged to establish in their decisions the accuracy of such facts. Similarly, the parties to proceedings before the adjudicating bodies of EUIPO cannot be criticised for not providing evidence of the accuracy of the well-known facts. It is only after stating that the well-known facts alleged by the parties to cancellation proceedings cannot be regarded as such that the Board of Appeal may, where appropriate, disregard them on the ground that the parties have not provided sufficient evidence of their accuracy. (see paras 31-34) 5. See the text of the decision. (see paras 35-38, 52-54, 60, 72-75) 6. See the text of the decision. (see para. 44) 7. See the text of the decision. (see paras 46, 71) 8. See the text of the decision. (see para. 58)