Keywords

Summary



Keywords

1. Community 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 — Exclusion

(Council Regulation No 207/2009, Art. 65)

2. Community trade mark — Appeals procedure — Action before the EU judicature — Legality of a decision of a Board of Appeal — Account taken, for the purposes of interpreting national law, of matters arising from legislation or national case-law not pleaded before OHIM — Lawfulness

(Council Regulation No 207/2009, Art. 65)

3. Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier trade mark as referred to in Article 8(4) of Regulation No 207/2009 — Conditions — Interpretation in the light of EU law — Assessment by reference to the criteria determined by the national law governing the sign relied on

(Council Regulation No 207/2009, Arts 1(2), 8(4), and 53(1)(c))

4. Community trade mark — Appeals procedure — Action before the EU judicature — Legality of a decision of a Board of Appeal — Account taken, for the purposes of interpreting national law, of a judgment subsequent to the contested decision marking a departure from national case-law — Lawfulness

(Council Regulation No 207/2009, Art. 65)

5. Community trade mark — Lodging of the application for a Community trade mark — Identification of the goods or services concerned by the trade mark — Use of general indications of the class headings of the Nice classification — Scope

(Commission Regulation No 2868/95, Rule 2(4))

6. Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier trade mark as referred to in Article 8(4) of Regulation No 207/2009 — High distinctiveness of the earlier right — Criteria for assessment

(Council Regulation No 207/2009, Art. 8(4) and (5))

7. Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier trade mark as referred to in Article 8(4) of Regulation No 207/2009 — Word mark LAGUIOLE — Company name Forge de Laguiole

(Council Regulation No 207/2009, Art. 8(4))

Summary

1. See the text of the decision.

(see para. 21)

2. Neither the parties nor the Court itself can be precluded from drawing on national legislation or case-law for the purposes of interpreting national law to which EU law refers, since what is in issue is not the allegation that the Board of Appeal failed to take into account the facts of a specific judgment handed down by a specific national court, but rather the reliance on statutory provisions or judgments in support of a plea alleging that the Boards of Appeal misapplied a provision of national law.

Whilst it is true that the Court of Justice stated that a party seeking the application of a national rule is required to provide the Office for Harmonisation in the Internal Market (Trade Marks and Designs) with particulars establishing the content of that rule, that does not mean that the application of the national rule by OHIM cannot be reviewed by the General Court in the light of a national judgment which postdates the adoption of the OHIM decision and is relied on by a party to the proceedings.

(see paras 23, 24)

3. Under Article 53(1)(c) of Regulation No 207/2009 on the Community trade mark, read in combination with Article 8(4) of the same regulation, the existence of a sign other than a mark makes it possible to obtain a declaration that a Community trade mark is invalid if that sign satisfies all of four conditions: the sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of application for registration of the Community trade mark; and, lastly, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those four conditions limit the number of signs other than marks which may be relied on to dispute the validity of a Community trade mark throughout the Community under Article 1(2) of Regulation No 207/2009.

The first two conditions, namely those concerning the use and scope of the sign relied on, the latter having to be not merely local, arise from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. Thus, Regulation No 207/2009 establishes uniform standards concerning the use of signs and their scope, which are consistent with the principles which inspire the system established by that regulation.

By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to the law of the Member State governing that sign’, that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. This reference to the law governing the sign relied on is entirely justified, given that Regulation No 207/2009 makes it possible for signs which fall outside the Community trade mark system to be relied on against a Community trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the Community trade mark and whether it can justify a prohibition of the use of a subsequent trade mark.

(see paras 27-29)

4. A judgment of a national court, representing a departure from the case-law, may be taken into account by the General Court in its review of the interpretation by OHIM of the national law to which EU law refers, even if it postdates the contested decision. In principle, such departures from precedent apply retroactively to existing situations.

That principle is justified on the ground that the case-law interpretation of a rule at a given point in time cannot differ depending on when the facts under consideration took place and no one can rely on an acquired right to case-law set in stone. Whilst it is true that this principle may be applied more flexibly, in that, in exceptional circumstances, the courts may deviate from it in order to modify the effect in time of the retroactivity of a departure, the retroactivity of departures remains the rule.

Therefore, even if a judgment of a national court marking a departure is, as such, a new matter of fact, it simply sets out national law as it should have been applied by the Board of Appeal in the contested decision and as it should be applied by the Court.

(see paras 45-50)

5. The purpose of the Nice Classification is purely administrative and seeks only to facilitate the drafting and processing of trade mark applications by suggesting certain classes and categories of goods and services. By contrast, the headings of the classes do not constitute a system in which goods or services included in one class or category are precluded from also forming part of another class or category, as is apparent, in particular, from Rule 2(4) of Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark.

(see para. 88)

6. The existence of an unusually high level of distinctiveness as a result of the public’s recognition of a business name on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, without its necessarily having to have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to state in general terms, for example by referring to given percentages relating to the degree of recognition attained by the business name within the relevant section of the public, that it has a highly distinctive character because of the public’s recognition of it. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a business name and its distinctive character in that the more the business name is recognised by the target public, the more its distinctive character is strengthened. In order to assess whether a business name has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the company in question; how intensive, geographically widespread and long-standing use of the business name has been; the amount invested by the undertaking in promoting the business name; the proportion of the relevant section of the public which, because of the business name, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

(see para. 132)

7. See the text of the decision.

(see paras 161-166)