ddrg/super_eurlex huggingface dataset:
EU trade mark—Appeals procedure—Appeal against a decision of the Opposition Division of EUIPO—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—No contrary provision

(Council Regulation No 207/2009, Art. 76(2); Commission Regulation No 2868/95, Art. 1, Rules 20(1), and 50(1), third para.)

(see paras 99-102, 106, 108)
Judgment of the General Court (Appeal Chamber) of 14 December 2016 —

Todorova Androva v Council and Others

(Case T‑366/15 P)

(Appeal — Civil Service — Officials — Promotion — 2011 promotion procedure — Non-inclusion on the list of officials eligible for promotion — Action at first instance dismissed — Article 45 of the Staff Regulations — Clause 4 of the Framework Agreement on fixed- term work concluded by ETUC, UNICE and CEEP — Equal treatment — Obligation to state reasons — Burden of proof — Obligation on the court hearing the substantive application to investigate — Plea of illegality — Rule of correspondence between the complaint and the action before the EU Courts)

1. Acts of the institutions — Directives — Directive 1999/70 concerning the ETUC, UNICE and CEEP Framework Agreement on fixed-term work — Direct imposition of obligations on EU institutions in relations with their staff — Precluded — Invocability — Scope (Art. 288, third para., TFEU; Council Directive 1999/70) (see paras 33, 34)

2. Acts of the institutions — Directives — Directive 1999/70 concerning the ETUC, UNICE and CEEP Framework Agreement on fixed-term work — Prohibition on discrimination against fixed-term workers — Whether capable of being pleaded against EU institutions in the context of their staff relations (Art. 288, third para., TFEU; Council Directive 1999/70, Annex, Clause 4) (see paras 35-38)

3. Acts of the institutions — Directives — Implementation by Member States — Need to ensure that directives are effective — Obligations of national courts — Obligation of conforming interpretation — Scope — Interpretation of national law contra legem — Precluded (Art. 288, third para., TFEU) (see paras 43-45)

4. Officials — Promotion — Minimum seniority in the grade required — Calculation — Account taken of periods of work as a member of the temporary staff — Precluded (Staff Regulations, Arts 34 and 45; Conditions of Employment of Other Servants of the European Communities, Arts 15 and 16) (see paras 48, 49)

5. Officials — Promotion — Minimum seniority in the grade required — Calculation — Exclusion of periods completed as a member of the temporary staff — No infringement of Directive 1999/70 concerning the ETUC, UNICE and CEEP Framework Agreement on fixed-term work (Staff Regulations, Art. 45; Council Directive 1999/70, Annex, Clause 4) (see paras 58, 59, 71)

6. Actions brought by officials — Prior administrative complaint — Correspondence between the complaint and the application — Same subject-matter and legal basis — Submissions and arguments not made in the complaint but closely related to it — Admissibility (Staff Regulations, Arts 90 and 91) (see paras 78, 79)

Re:

APPEAL brought against the judgment of the Civil Service Tribunal of the European Union (Second Chamber) of 29 April 2015, Todorova Androva v Council (F‑78/12, EU:F:2015:37), seeking to have that judgment set aside.

Operative part

The Court:

1. Dismisses the appeal;

2. Orders Ms Viara Todorova Androva to bear her own costs and to pay those incurred by the Council of the European Union and the European Commission;
Under Article 52(1)(b) of Regulation No 207/2009, an EU trade mark must be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings, where the applicant was acting in bad faith when it filed the application for registration of the contested mark.

It is for the applicant for a declaration of invalidity seeking to rely upon that ground to prove the circumstances which substantiate a finding that the EU trade mark proprietor had been acting in bad faith when it filed the application to register that mark.

The concept of ‘bad faith’ referred to in Article 52(1)(b) of Regulation No 207/2009 is not defined, delimited or even described in any way in the legislation.

The relevant time for determining whether there was bad faith on the part of the applicant is the time of filing the application for registration.

In order to determine whether the applicant was acting in bad faith within the meaning of Article 52(1)(b) of Regulation No 207/2009, all the relevant factors specific to the particular case have to be taken into account, in particular:

— the fact that the applicant knows or should know that a third party is using, in at least one Member State, an identical or similar sign for an identical or similar product liable to be confused with the sign for which registration is sought;

— the applicant’s intention of preventing that third party from continuing to use such a sign;

— the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought.

That being so, the three factors set out above are only examples drawn from a number of factors which can be taken into account in order to decide whether the applicant was acting in bad faith at the time of filing the application.

It must therefore be considered that, in the context of the overall analysis undertaken pursuant to Article 52(1)(b) of Regulation No 207/2009, account may also be taken of the origin of the sign at issue and of its use since its creation, and of the commercial logic underlying the filing of the application for registration of that sign as an EU trade mark, and the chronology of events leading up to that filing.

Account may also be taken of the intention of the applicant, amounting, in the objective circumstances of the particular case, to the willingness to circumvent its contractual obligations, as one of the relevant factors in assessing whether the applicant acted in bad faith.

(see paras 22-28, 44)
Judgment of the General Court (Eighth Chamber) of 14 July 2016 —

Volkswagen v EUIPO (ConnectedWork)

(Case T‑491/15)

‛European Union trade mark — Application for European Union word mark ConnectedWork — Absolute ground for refusal — Lack of distinctive character — Article 7(1)(b) and Article 75 of Regulation (EC) No 207/2009 — Obligation to state reasons’

1. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Assessment of distinctive character — Criteria (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 13, 14)

2. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Marks constituted of advertising slogans — Distinctive character — Application of specific criteria for assessment — Not permissible (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 15-17)

3. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Marks constituted of advertising slogans — Flattering promotional formula (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 18, 19, 32)

4. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Marks devoid of any distinctive character — Word mark ConnectedWork (Council Regulation No 207/2009, Art. 7(1)(b)) (see paras 21, 26, 27, 31, 34, 35)

5. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Lack of distinctiveness — Trade mark made up of several elements — Possible for the competent authority to examine each of the elements making up the trade mark — Need to take account of the overall perception of the combination by the relevant public (Council Regulation No 207/2009, Art. 7(1)(b)) (see para. 22)

6. EU trade mark — Procedural provisions — Statement of reasons for decisions — Article 75, first sentence, of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU (Art. 296 TFEU; Council Regulation No 207/2009, Art. 75, first sentence) (see para. 39)

7. EU trade mark — Definition and acquisition of the EU trade mark — Absolute grounds for refusal — Separate examination of the grounds for refusal in relation to each of the goods or services covered by the application for registration — Obligation to state the reasons for refusing to register — Scope (Council Regulation No 207/2009, Arts 7(1)(b) and 75, first sentence (see paras 40, 41, 44, 46)

Re:

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 29 June 2015 (Case R 160/2015-5) concerning an application for registration of the word sign ConnectedWork as a European Union trade mark.

Operative part

The Court:

1. Dismisses the action;
Judgment of the General Court (First Chamber) of 28 October 2016 —

Unicorn v EUIPO — Mercilink Equipment Leasing (UNICORN-čerpací stanice)

(Case T‑123/15)

‛EU trade mark — Opposition proceedings — Application for the EU word mark UNICORN-čerpací stanice — Earlier national word and figurative marks UNICORN — Relative ground for refusal — Reputation — Article 8(5) of Regulation (EC) No 207/2009’

1. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Reputation of the mark in the Member State or the EU — Concept — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 35-38, 45)

2. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Word mark UNICORN-čerpací stanice — Word and figurative marks UNICORN (Council Regulation No 207/2009, Art. 8(5)) (see paras 40, 46, 54)

Re:

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 13 January 2015 (Case R 153/2014-5), concerning opposition proceedings between Unicorn and Mercilink Equipment Leasing.

Operative part

1. The Court: Dismisses the action;
Judgment of the General Court (Seventh Chamber) of 30 September 2016 —

Flowil International Lighting v EUIPO — Lorimod Prod Com (Silvania Food)

(Case T‑430/15)

‛EU trade mark — Opposition proceedings — Application for EU figurative trade mark Silvania Food — Earlier EU word marks SYLVANIA — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Article 8(5) of Regulation No 207/2009’

1. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 15, 29)

2. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Similarity between the goods or services in question — Complementary nature of the goods or services (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 20, 23)

3. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Figurative mark Silvania Food and word marks SYLVANIA (Council Regulation No 207/2009, Art. 8(1)(b)) (see paras 27, 28, 30)

4. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation — Protection of well-known earlier mark extended to dissimilar goods or services — Conditions — Link between the marks — Criteria for assessment (Council Regulation No 207/2009, Art. 8(5)) (see paras 35, 36, 42, 43, 50)

Re:

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 8 May 2015 (Case R 616/2014-2), concerning opposition proceedings between Flowil International Lighting (Holding) and SC Lorimod Prod Com.

Operative part

The Court:

1. Dismisses the action;
Judgment of the General Court (Fourth Chamber) of 28 February 2017 — Labeyrie v EUIPO — Delpeyrat (Representation of a sowing of golden fish on a blue background)

(Case T‑766/15)

(EU trade mark — Revocation proceedings — EU figurative mark representing a sowing of golden fish on a blue background — Declaration of revocation — Genuine use of the mark — Article 15(1)(a) and Article 51(1)(a) of Regulation (EC) No 207/2009 — Form differing by elements not altering the distinctive character)

EU trade mark—Surrender, revocation and invalidity—Causes of revocation—No genuine use of a trade mark—Use of the mark in a form differing by elements not altering the distinctive character of the mark—Subject-matter and scope of Article 15(1), second paragraph, (a), of Regulation No 207/2009—Examination of alteration of distinctive character

(Council Regulation No 207/2009, Arts 15(1), second subpara., (a), and 51(1)(a))

(see paras 18, 20-22, 46)

Re:

ACTION brought against the decision of the First Board of Appeal of EUIPO of 15 October 2015 (Case R 2693/2014-1), relating to revocation proceedings between Depeyrat and Labeyrie.

Operative part

The Court:

1. Dismisses the action;

2. Orders Labeyrie to bear its own costs as well as those incurred by EUIPO;
Article 15(1), second paragraph, (a) of Regulation No 40/94 on the EU trade mark relates to a situation where a national or EU registered trade mark is used in trade in a form slightly different from the form in which registration was effected. The purpose of that provision, which avoids imposing strict conformity between the used form of the trade mark and the form in which the mark was registered, is to allow its proprietor, on the occasion of its commercial exploitation, to make variations in the sign, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned. In accordance with its purpose, the material scope of that provision must be regarded as limited to situations in which the sign actually used by the proprietor of a trade mark to identify the goods or services in respect of which the mark was registered constitutes the form in which that same mark is commercially exploited. In such situations, where the sign used in trade differs from the form in which it was registered only in negligible elements, so that the two signs can be regarded as broadly equivalent, the abovementioned provision envisages that the obligation to use the trade mark registered may be fulfilled by furnishing proof of use of the sign which constitutes the form in which it is used in trade.

In order to establish a change in the distinctive character of the registered trade mark it is necessary to perform an examination of the distinctive and dominant character of the elements which have been added, based on the intrinsic qualities of each of these elements as well as the relative position of the various elements in the configuration of the trade mark.

For the purposes of that finding, account must be taken of the intrinsic qualities and, in particular, the greater or lesser degree of distinctive character of the earlier mark used solely as part of a complex trade mark or jointly with another mark. The weaker the distinctive character, the easier it will be to alter it by adding a component that is itself distinctive, and the more the mark will lose its ability to be perceived as an indication of the origin of the product. The reverse is also true.

Moreover, where a mark is constituted or composed of a number of elements and one or more of them is not distinctive, the alteration of those elements or their omission is not such as to alter the distinctive character of that trade mark as a whole.

In order for the second subparagraph of Article 15(1)(a) of Regulation No 207/2009 to apply, the additions to the registered mark must not alter the distinctive character of the mark in the form in which it was registered, in particular because of their ancillary position in the sign and their weak distinctive character.

(see paras 27-31)
Judicial proceedings—Application initiating proceedings—Formal requirements—Brief summary of the pleas in law on which the application is based—Pleas in law not set out in the application—Reference to elements in an annex—Inadmissibility

(Statute of the Court of Justice, Arts 21, first para., and 53, first para.; Rules of Procedure of the General Court, Art. 76(d))

(see para. 77)
EU 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—Precluded

(Rules of Procedure of the General Court, Art. 188; Council Regulation No 207/2009, Art. 65)

(see para. 17)
EU trade mark—Appeals procedure—Action before the EU judicature—Jurisdiction of the General Court—Review of the lawfulness of decisions of the Boards of Appeal—Re-examination of the facts in the light of evidence not previously submitted before EUIPO bodies—Precluded

(Council Regulation No 207/2009, Art. 65; Rules of Procedure of the General Court, Art. 188)

(see para. 69)
Judgment of the General Court (Seventh Chamber) of 4 May 2017 —

JYSK v Commission

(Case T‑403/15)

(Action for annulment — ERDF — Article 41(3) of Regulation (EC) No 1083/2006 — Refusal to grant a financial contribution to a major project — Undertaking responsible for project implementation — No direct concern — Inadmissibility)

1. Actions for annulment — Natural or legal persons — Measures of direct and individual concern to them — Whether directly concerned — Criteria — Decision of the Commission addressed to a Member State refusing the grant of a financial contribution from ERDF to a national project — Action by the undertaking responsible for carrying out the project — Not directly concerned — Inadmissibility (Art. 263, fourth para., TFEU; Council Regulation No 1083/2006) (see paras 18, 23, 28-31, 36, 41, 42, 44)

2. European Union — Judicial review of the legality of the acts of the institutions — Acts requiring national application measures — Natural or legal persons able to resort to a request for a preliminary ruling for an assessment of validity — Obligation on Member States to establish the necessary remedies to ensure effective judicial protection (Art. 4 TEU; Arts 263, fourth para., TFEU and 267 TFEU) (see paras 61, 64)

Re:

APPLICATION based on Article 263 TFEU seeking annulment of Commission Decision C(2015) 3228 of 11 May 2015, refusing to make a financial contribution from the European Regional Development Fund (ERDF) to the major project ‘European Shared Services Centre — Intelligent Logistics Systems’ forming part of the operational programme ‘Innovative Economy’ drawn up by the Republic of Poland for the 2007-2013 programming period.

Operative part

The Court:

1. Dismisses the action as inadmissible;
Judgment of the General Court (Second Chamber) of 14 July 2017 — Certified Angus Beef v EUIPO — Certified Australian Angus Beef (CERTIFIED AUSTRALIAN ANGUS BEEF)

(Case T‑55/15)

(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark CERTIFIED AUSTRALIAN ANGUS BEEF — Earlier well-known figurative and word marks SINCE 1978 CERTIFIED ANGUS BEEF BRAND and CERTIFIED ANGUS BEEF BRAND — Relative ground for refusal — No similarity between the signs — Article 8(1)(b) of Regulation (EC) No 207/2009)

EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services — Likelihood of confusion with the earlier mark — Criteria for assessment

(Council Regulation No 207/2009, Art. 8(1)(b))

(see paras 18, 25)

Re:

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 30 October 2014 (Case R 662/2014-4), relating to opposition proceedings between Certified Angus Beef and Certified Australian Angus Beef.

Operative part

The Court:

1. Dismisses the action;
EU trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Criteria for assessment — Requirement of solid and objective evidence

(Council Regulation No 207/2009, Art. 42(2) and (3); Commission Regulation No 2868/95, Art. 1, Rule 22(2) and (3))

(see paras 16, 17)
Judgment of the General Court (Sixth Chamber) of 15 May 2017 — Morton’s of Chicago v EUIPO — Mortons the Restaurant (MORTON’S)

(Case T‑223/15)

(EU trade mark — Invalidity proceedings — EU figurative mark MORTON’S — Earlier non-registered national trade marks MORTON’S, MORTONS, MORTON’S CLUB, MORTONS CLUB, MORTON’S THE RESTAURANT, MORTONS RESTAURANT and M MORTON’S — Relative ground for refusal — Declaration of invalidity — Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009)

1. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier right referred to in Article 8(4) of Regulation No 207/2009 — Conditions (Council Regulation No 207/2009, Arts 8(4), and 53(1)(c)) (see para. 12)

2. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier right referred to in Article 8(4) of Regulation No 207/2009 — Use of the sign in trade — Temporal criterion (Council Regulation No 207/2009, Arts 8(4), and 53(1)(c)) (see paras 26, 27)

3. National law — Reference to national law — United Kingdom law — Action for passing off (see para. 38)

4. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier right referred to in Article 8(4) of Regulation No 207/2009 — Figurative mark MORTON’S — Non-registered marks MORTON’S, MORTONS, MORTON’S CLUB, MORTONS CLUB, MORTON’S THE RESTAURANT, MORTONS RESTAURANT and M MORTON’S (Council Regulation No 207/2009, Arts 8(4), and 53(1)(c)) (see paras 56, 57, 65, 66, 69-72, 78)

5. EU trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier right referred to in Article 8(4) of Regulation No 207/2009 — Local scope of sign (Council Regulation No 2007/2009, Arts 8(4), and 53(1)(c)) (see paras 59-61, 74)

Re:

ACTION brought against the decision of the First Board of Appeal of EUIPO of 12 February 2015 (Case R 46/2014-1), relating to invalidity proceedings between Mortons The Restaurant and Morton’s of Chicago.

Operative part

The Court:

1. Dismisses the action;
Actions for annulment—Judgment annulling a measure—Scope—Commission decision finding aid incompatible with the internal market and ordering its recovery—Annulment for a manifest error of law and manifest errors of assessment—New analysis required by the annulment judgment able to be carried out by the Commission without starting the investigation of the case afresh—Right to be heard having been respected at the time the annulled decision was adopted—Adoption of a new decision without re-opening the formal investigation procedure—Lawfulness

(Arts 108(2) TFEU and 266 TFEU; Charter of Fundamental Rights, Art. 41; Council Regulation No 659/1999)

(see paras 63-79, 85, 86)
EU trade mark—Procedural provisions—Statement of reasons for decisions—First sentence of Article 75 of Regulation No 207/2009—Scope identical to that of Article 296 TFEU—Essential formality

(Art. 296 TFEU; Council Regulation No 207/2009; First sentence of Art. 75)

(see paras 120, 122)