Case T‑567/14

Group OOD

v

European Union Intellectual Property Office

‛EU trade mark — Opposition proceedings — Application for European Union figurative mark GROUP Company TOURISM & TRAVEL — Earlier, non-registered national figurative marks GROUP Company TOURISM & TRAVEL — Relative ground for refusal — Application of national law — Article 8(4) of Regulation (EC) No 207/2009 — Evidence establishing the content of the national right — Rule 19(2)(d) of Regulation (EC) No 2868/95 — Failure to take account of evidence adduced before the Board of Appeal — Discretion of the Board of Appeal — Article 76(2) of Regulation No 207/2009’

Summary — Judgment of the General Court (Fourth Chamber), 29 June 2016

EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Conditions — Assessment by reference to the criteria determined by the national law governing the sign relied on — Verification of the content of national law — Scope

EU trade mark — Observations of third parties and opposition — Facts, evidence and observations submitted in support of the opposition — Proof of the acquisition, permanence and scope of the protection of an earlier right within the meaning of Article 8(4) of Regulation No 207/2009 — Evidence for establishing the content of the applicable national law — Aim — No need to produce the text of the legislation from an official source

EU trade mark — Appeals procedure — Appeal against a decision of the Opposition Division of OHIM — Examination by the Board of Appeal — Scope — Facts and evidence not produced in support of the opposition within the period prescribed for that purpose — Account taken — Discretion of the Board of Appeal

EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Sign giving its holder the right to prohibit the use of a more recent trade mark — Burden of proof

EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Conditions — Interpretation in the light of EU law — Assessment by reference to the criteria determined by the national law governing the sign relied on

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 interpreting national law, of matters arising from legislation or national case-law not pleaded before OHIM — Lawfulness — Limits

The purpose of an action before the General Court is to review the legality of decisions of the Boards of Appeal of EUIPO as provided for in Article 65 of Regulation No 207/2009 on the Community trade mark. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it. Admittedly, neither the parties nor the Court itself can be precluded from drawing on national legislation, case-law or academic writing for the purposes of interpreting national law to which EU law makes reference, where it is not alleged that the Board of Appeal failed to take the factual aspects of a specific national judgment into account, but rather reliance is placed on judgments or academic writing in support of a plea alleging that the Board of Appeal misapplied a provision of national law. The fact remains, however, that, in the context of an opposition based on the existence of an earlier right within the meaning of Article 8(4) of Regulation No 207/2009, documents containing national legislative provisions are not sources on which the Court can draw for the purposes of interpreting national law, but are evidence for establishing the content of the applicable national law for the purposes of Rule 19(2)(d) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark. In so far as those documents were not produced by the applicant in the course of the administrative proceedings before the Office, they must be declared inadmissible. (see paras 19-21)

See the text of the decision. (see paras 26-28)

In applying the provisions of Article 8(4)(b) of Regulation No 207/2009, regard must be had, in particular, to the national rules relied on and to the judicial decisions delivered in the Member State concerned. On that basis, the opponent must establish that the sign in question falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited. Moreover, Rule 19(2)(d) of Regulation No 2868/95 places on the opponent the burden of providing EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law which he is seeking to have applied, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, but also with particulars establishing the content of that law. It follows that, in the absence of any allegation or evidence to that effect submitted by the parties, EUIPO is under no obligation to gather of its own motion particulars about the applicable national law. (see paras 29, 33, 34)

In the context of an opposition based on the existence of an earlier right within the meaning of Article 8(4) of Regulation No 207/2009 on the EU trade mark, Rule 19(2)(d) of Regulation No 2868/95 does not list, specifically and exhaustively, which documents are to be produced in support of the opposition. Therefore, in so far as that latter provision refers merely to the obligation to provide proof of the acquisition, permanence and scope of the protection of the earlier right within the meaning of Article 8(4) of Regulation No 207/2009, without providing any further specifics, the opponent is not deemed to be aware of the precise documents which he has to produce in support of its opposition. In those circumstances, the Board of Appeal’s discretion in taking into account facts and evidence adduced late laid down in Article 76(2) of Regulation No 207/2009 do not need to be exercised in a restrictive manner. A Board of Appeal which does not exercise, even restrictively, the discretion with which it is vested and justifies on that basis its refusal to take account of references to national law produced before it, therefore infringes Article 76(2) of Regulation No 207/2009 and the third subparagraph of Rule 50(1) of Regulation No 2868/95. (see paras 53, 55, 56, 59, 61)

In the context of an opposition based on the existence of an earlier right within the meaning of Article 8(4) of Regulation No 207/2009, Rule 19(2)(d) of Regulation No 2868/95 does not list, specifically and exhaustively, the evidence establishing the existence, validity and scope of the protection of an earlier right within the meaning of Article 8(4) of Regulation No 207/2009 that an opponent relying on such a right should provide before EUIPO. Therefore, the relevant national legislation may be regarded as one piece of evidence proving the acquisition, permanence and the scope of the protection of an earlier right within the meaning of Article 8(4) of Regulation No 207/2009. Nevertheless, neither Regulations Nos 207/2009 and 2868/95 nor the case-law identify the manner in which the content of national legislation must be proven. In that regard, the elements of national law which the opponent must produce must enable EUIPO to identify correctly and unequivocally the applicable law. That information about the applicable legislation must enable EUIPO to understand and apply the content of that legislation, the conditions for obtaining the protection and the scope thereof, and enable the applicant to exercise his rights of defence. In order to achieve those objectives, the text of the legislation emanating from an official source is not indispensable. (see paras 58, 69, 70)