Opinion of the Advocate General — ECLI:EU:C:2011:30
Date: 2011-01-27
Language of the case: Italian
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible

Summary of the Judgment 1. Community trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Use of a mark which may be prohibited pursuant to the national law governing the protection of any other earlier right – Right to a name (Council Regulation No 40/94, Art. 52(2)(a)) 2. Appeals – Grounds – Error of law – Infringement of a rule of national law made applicable to the dispute by the reference made in Article 52(2) of Regulation No 40/94 (Art. 256(1), second subpara., TFEU; Statute of the Court of Justice, Art. 58, first para.; Council Regulation No 40/94, Art. 63(2), and 52(2)(a); Commission Regulation No 2868/95, Art. 1, rule 37) 3. Community trade mark – Appeals procedure – Actions before the Courts of the European Union – Power of the General Court to alter the contested decision – Limits (Council Regulation No 40/94, Art. 63(2) and (3)) 1. The wording and structure of Article 52(2) of Regulation No 40/94 on the Community trade mark do not, where a right to a name is asserted, allow application of that provision to be restricted merely to situations in which the registration of a Community trade mark conflicts with a right intended exclusively to protect a name as an attribute of the personality of the person concerned. According to that provision, a Community trade mark may be declared invalid on application by a person concerned claiming ‘another earlier right’. In order to clarify the nature of such an earlier right, that provision lists four rights, while indicating, by the use of the adverb ‘in particular’, that that list is not exhaustive. It is apparent from that non-exhaustive list that the rights cited by way of examples are intended to protect interests of different types. For some of them, such as copyright and industrial property rights, the economic aspects are protected, both under the national legal systems and under European Union law, against commercial infringements. (see paras 34-36) 2. It is apparent from the wording of Article 52(2) of Regulation No 40/94 on the Community trade mark that when that provision refers to the situation in which the existence of an earlier right makes it possible to prohibit the use of a Community trade mark, it clearly distinguishes two situations, depending on whether the earlier right is protected under the Community legislation ‘or’ under national law. As regards the procedural arrangements laid down by Regulation No 2868/95 implementing Regulation No 40/94 in the case of an application pursuant to Article 52(2) of Regulation No 40/94, based on an earlier right protected under national law, Rule 37 of Regulation No 2868/95 requires the applicant to provide the Office for Harmonisation in the Internal Market (Trade Marks and Designs) not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law. Where an application for a Community trade mark to be declared invalid is based on an earlier right protected by a rule of national law, the competent OHIM bodies must first assess the authority and scope of the particulars submitted by the applicant in order to establish the content of that rule. Secondly, according to Article 63(2) of Regulation No 40/94, actions may be brought before the General Court against decisions of the Boards of Appeal on grounds of infringement of the Treaty, of Regulation No 40/94 or of any rule of law relating to their application. It follows from this that the General Court has jurisdiction to conduct a full review of the legality of OHIM’s assessment of the particulars submitted by an applicant in order to establish the content of the national law whose protection he claims. As regards the examination, in the context of an appeal, of the findings made by the General Court with regard to that national law, the Court of Justice has jurisdiction to determine, first of all, whether the General Court, on the basis of the documents and other evidence submitted to it, distorted the wording of the national provisions at issue or of the national case-law relating to them, or of the academic writings concerning them; second, whether the General Court, as regards those particulars, made findings that were manifestly inconsistent with their content; and, lastly, whether the General Court, in examining all the particulars, attributed to one of them, for the purpose of establishing the content of the national law at issue, a significance which is not appropriate in the light of the other particulars, where that is manifestly apparent from the documentation in the case‑file. (see paras 48-53) 3. The review carried out by the General Court under Article 63 of Regulation No 40/94 on the Community trade mark is a review of the legality of the decisions of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs). It may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 63(2) of that regulation. It follows that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take. (see paras 71-72)