Opinion of the Advocate General — ECLI:EU:C:2013:782
Date: 2013-11-28
Language of the case: English
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - successful
Origin: United Kingdom

Summary — Judgment of the Court (First Chamber), 27 March 2014 1. Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Use of trade mark that may be prohibited pursuant to another earlier right — Review conducted by the competent OHIM bodies and by the General Court as to the applicable national law — Scope (Council Regulation No 40/94, Art. 52(2)) 2. EU law — Principles — Rights of defence — Audi alteram partem rule — Scope 1. In the context of an application for a declaration of invalidity of a Community mark based on an earlier copyright protected by a rule of national law, the review by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and by the General Court must be conducted in the light of the requirement of ensuring the practical effect of Regulation No 40/94 on the Community trade mark, which is to protect the Community mark. In view of the above, since the application of national law can lead to a finding that there is a ground for invalidation of a duly registered Community trade mark, it seems necessary for OHIM and the General Court 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 applicant with regard to the taking of evidence, which is incumbent upon it, concerning the content of that national law. The review conducted by the competent OHIM bodies and by the General Court must also meet the requirements of the role performed by them in disputes relating to Community trade marks. Where the competent OHIM bodies are called upon to rule, initially, on an application for a declaration of invalidity of a Community mark based on an earlier copyright protected by a rule of national law, their decision may have the effect of depriving the proprietor of the Community trade mark of a right that has been granted to him. The scope of such a decision necessarily implies that the authority which takes it is not limited to the role of mere validation of the national law as submitted by the applicant for a declaration of invalidity. As regards the judicial review conducted, subsequently, by the General Court, that review must meet the requirements of the principle of effective judicial protection. In so far as the application of national law, in the procedural context in question, may have the effect of depriving the proprietor of a Community trade mark of his right, it is essential that that Court is not deprived, due to possible lacunae in the documents submitted as evidence of the applicable national law, of the real possibility of exercising an effective review. To that end, it must therefore be able to confirm, beyond the documents submitted, the content, the conditions of application and the scope of the rules of law relied upon by the applicant for a declaration of invalidity. Consequently, in circumstances in which OHIM may be called upon to take account, in particular, of the national law of the Member State in which protection is given to the earlier mark on which the application for a declaration of invalidity is based, it must — of its own motion and by whatever means considered appropriate — obtain information about the national law of the Member State concerned, where such information is necessary for the purposes of assessing the applicability of a ground for invalidity relied on before it and, in particular, for the purposes of assessing the accuracy of the facts adduced or the probative value of the documents submitted. (see paras 40-45) 2. See the text of the decision. (see paras 53, 54)