The Community trade mark court has jurisdiction to give judgment prohibiting the pursuance of acts of infringement or threatened infringement of a Community mark extending throughout the territory of the Union. Thus, the system provided for by Regulation No 207/2009 enables such disputes to be limited to a single set of proceedings in order to guarantee uniform protection of the Community trade mark throughout the territory of the Union.

Recital 16 in the preamble to Regulation No 207/2009 states that ‘decisions regarding the validity and infringement of Community trade marks must have effect and cover the entire area of the Community, as this is the only way of preventing inconsistent decisions on the part of the courts and [OHIM] and of ensuring that the unitary character of Community trade marks is not undermined’. Similarly, recital 17 in the preamble to Regulation No 207/2009 states that contradictory judgments should be avoided in actions which involve the same acts and the same parties and which are brought concerning the same facts on the basis of a Community trade mark and parallel national trade marks. The mechanisms put in place by Regulation No 207/2009 are therefore aimed at guaranteeing uniform protection of the Community mark throughout the territory of the Union. The legislature has thus confirmed the unitary character of the Community trade mark.

Article 95 of Regulation No 207/2009 on the Community trade mark provides that the Member States are to designate in their territories those national courts and tribunals which are to assume the role of ‘Community trade mark courts’, which are to perform the functions assigned to them by that regulation. In that regard, Article 96 of Regulation No 207/2009 states that the Community trade mark courts are to have jurisdiction inter alia for infringement actions and for counterclaims for revocation or for a declaration of invalidity of the Community trade mark.

The power of the General Court to alter decisions does not have the effect of conferring on that Court the power 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.

It is, moreover, clear that the decision of a national court sitting as a Community trade mark court in an action for infringement of a Community trade mark carries no weight of res judicata for the departments of OHIM in opposition proceedings concerning the registration of a Community trade mark, even if it is identical to the national mark which is the subject of the action for infringement. It follows that the existence of such a decision, even if it has become final, is not in itself sufficient to enable the General Court to ascertain which decision the Board of Appeal was required to take.

It is of course true that, through Regulation No 207/2009, the EU legislature put in place mechanisms aimed at guaranteeing uniform protection of the Community trade mark throughout the territory of the Union, thereby confirming the unitary character of the Community trade mark. In that context, it created the Community trade mark courts having jurisdiction to order the cessation of acts of infringement or threatened infringement of a Community trade mark extending throughout the territory of the Union.

However, according to consistent case-law, the legality of decisions of the Boards of Appeal must be evaluated solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of an earlier decision-making practice, those considerations also holding true for opposition proceedings brought on the basis of Article 8(1)(b) of Regulation No 207/2009. A fortiori the same holds true for the effect of earlier national judicial decisions for the outcome of the present dispute. The Union trade mark regime is an autonomous system, made up of a set of rules pursuing objectives specific to it, its application being independent of any national system. It follows that a refusal to register must be assessed solely on the basis of the relevant Union legislation; earlier decisions by national courts cannot, in any event, cast doubt on the lawfulness of the decision at issue.

It must also be noted that Regulation No 207/2009 does not contain any provision by which OHIM is bound by a decision by a Community trade mark court delivered in an action for infringement when it exercises its exclusive jurisdiction over registration of Community trade marks and when, in so doing, it examines oppositions lodged against applications to register Community trade marks. The provisions of Regulation No 207/2009, which apply the principle of res judicata, concern other situations.

Moreover, the requirement of the unitary character of the Community trade mark, as referred to in recitals 16 and 17 in the preamble to Regulation No 207/2009, does not mean that the principle of res judicata precludes the departments of OHIM and, consequently, the European Union Courts, from examining the possible existence of a likelihood of confusion in the context of opposition proceedings concerning the registration of a new Community trade mark, even though it is identical to a national mark which has been held by a Community trade mark court to undermine the earlier Community trade mark.

OHIM is the only body empowered by the Union legislature to examine registration applications and, accordingly, authorise or refuse registration of a Community trade mark. In the exercise of that jurisdiction, the decisions which the Boards of Appeal are led to take under Regulation No 207/2009 concerning registration or protection of a sign as a Community trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the lawfulness of Board of Appeal decisions must be assessed solely on the basis of that regulation, as interpreted by the European Union Courts. Regulation No 207/2009 does not contain any provision by which OHIM is bound, under the principle of res judicata, by a decision of a Community trade mark court upholding an action for infringement of a Community trade mark by a national mark.

(see paras 56-63)