62019TJ0169_RES
Case T‑169/19
Style & Taste, SL
v
European Union Intellectual Property Office
Judgment of the General Court (Tenth Chamber, Extended Composition), 2 June 2021
(EU trade mark – Invalidity proceedings – EU figurative mark representing a polo player – Earlier national design – Relative ground for invalidity – Article 52(2)(d) of Regulation (EC) No 40/94 (now Article 60(2)(d) of Regulation (EU) 2017/1001))
EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Use of the mark capable of being prohibited by virtue of another earlier right – Intellectual property right – Figurative mark representing a polo player – Earlier national design
(Council Regulation No 40/94, Art. 52(2)(d))
(see paragraphs 25-32)
Résumé
Following an application filed on 29 September 2004 with the European Union Intellectual Property Office (EUIPO), The Polo/Lauren Company LP obtained registration of the figurative sign representing a polo player as an EU trade mark. The trade mark was registered on 3 November 2005.
On 23 February 2016, Style & Taste, SL, filed an application for a declaration of invalidity of the contested mark on the basis of Article 52(2)(d) of Regulation No 40/94, (
1
) according to which an EU trade mark is to be declared invalid where the use of that mark may be prohibited by virtue of an earlier industrial property right. (
2
) In support of its application for a declaration of invalidity, it relied on a Spanish design registered on 4 March 1997.
Given that its application for a declaration of invalidity had been rejected by a decision of the Fifth Board of Appeal of EUIPO of 7 January 2019, on the ground that the registration of the earlier design had expired on 22 May 2017, Style & Taste brought an action before the General Court seeking annulment of that decision.
In its judgment, the Court holds, for the first time, that an application for a declaration of invalidity of an EU trade mark based on Article 52(2) of Regulation No 40/94 must be rejected if the conditions for prohibiting the use of that mark are no longer fulfilled on the date on which EUIPO decides on that application. It therefore dismisses the action.
Findings of the Court
First of all, the Court recalls that the provisions of Regulation No 40/94 must be interpreted in the light of the priority principle, pursuant to which the earlier right takes precedence over later registered trade marks.
Next, the Court notes that the use of the present tense in Article 52 of Regulation No 40/94 suggests that EUIPO must verify that the conditions for declaring an EU trade mark invalid under that provision are met on the date on which it decides on the application for a declaration of invalidity. In addition, the Court emphasises that it is apparent from the scheme of the other provisions of Regulation No 40/94, relating to relative grounds for invalidity, and in particular from Article 56(2) thereof, that an application for a declaration of invalidity must be rejected where it is established with certainty that the conflict with the earlier EU trade mark has ceased at the end of the invalidity proceedings.
Consequently, the Court considers that the proprietor of an earlier industrial property right referred to by Article 52(2)(d) of Regulation No 40/94 must establish that he or she may prohibit the use of the EU trade mark at issue not only on the date of filing or priority of that mark, but also on the date on which EUIPO decides on the application for a declaration of invalidity. In the present case, the Court states that Style & Taste neither claimed nor, a fortiori, demonstrated that, in accordance with Spanish law, it was possible to prohibit the use of an EU trade mark by virtue of a Spanish design whose registration expired. Consequently, it considers that the use of the contested mark could no longer be prohibited by virtue of the earlier design relied on by Style & Taste at the date of the contested decision.
(
1
)	Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
(
2
)	Article 52(2)(d) of Regulation No 40/94 (now Article 60(2)(d) of Regulation 2017/1001).