Case T-45/16

Nelson Alfonso Egüed

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — Application for the EU figurative mark BYRON — Earlier non-registered trade mark BYRON — Relative ground for refusal — Article 8(4) of Regulation (EC) No 207/2009 — Rules governing common-law actions for passing-off — Goodwill — Proof of the acquisition and continued existence of the earlier right)

Summary – Judgment of the General Court (First Chamber), 18 July 2017

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 — Use of the sign in trade — Temporal criterion — Proof of the acquisition and continued existence of the earlier right

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 — BYRON Figurative mark BYRON and non-registered mark BYRON

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 — Review by the competent bodies of OHIM and by the Court as to the national law applicable — Scope

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 — Jurisdiction of the General Court — Amendment of a decision by the Office — Assessment having regard to the competences conferred on the Board of Appeal

A head of claim, submitted in the context of an action against a decision relating to opposition proceedings, seeking to have the Court alter the contested decision, so that the mark applied for is registered, is inadmissible. The bodies of the European Union Intellectual Property Office with jurisdiction in the matter do not adopt a formal decision declaring the registration of an EU trade mark which might be the subject. Consequently, the Board of Appeal does not have power to take cognisance of an application that it register an EU trade mark. In those circumstances, it is similarly not for the Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect. (see paras 18-21)

Under Article 8(4) of Regulation No 207/2009 on the European Union trade mark, the proprietor of a non-registered trade mark may oppose the registration of an EU mark if that non-registered trade mark satisfies four conditions. The non-registered trade mark must be used in the course of trade; it must be of more than mere local significance; the right to that mark must have been acquired pursuant to the law of the Member State in which the mark was used, prior to the date of application for registration of the EU trade mark; lastly, that mark must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those conditions are cumulative, so that where a mark does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark used in the course of trade within the meaning of Article 8(4) of Regulation No 207/2009 cannot succeed. The first two conditions, namely those relating to use and the more than mere local significance of the earlier trade mark, are apparent from the actual wording of Article 8(4) of Regulation No 207/2009 and must, therefore, be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation. By contrast, in Article 8(4) of Regulation No 207/2009, 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 two remaining conditions laid down by that regulation are, unlike the preceding conditions, assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is justified, given that Regulation No 207/2009 makes it possible for signs which fall outside the EU trade mark system to be relied on against an EU trade mark. Therefore, only the Member State’s law which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify the prohibition of the use of a subsequent trade mark. (see paras 23-27, 29)

In accordance with Article 76(1) of Regulation No 207/2009 on the European Union trade mark, the burden of proving that, pursuant to the law of the Member State governing the sign relied on under Article 8(4)(b) of Regulation No 207/2009, that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark, lies with the opponent before the European Union Intellectual Property Office. On the basis of the national rules advanced in support of the opposition and the judicial decisions delivered in the Member State concerned, it is for the opponent to establish that the sign concerned 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. (see para. 31)

In the context of an opposition based on an earlier right protected a rule of national law, the European Union Intellectual Property Office and the General Court are able to ascertain the relevance of the evidence submitted by the opponent with regard to the taking of evidence, which is incumbent upon it, concerning the content of the national law. Accordingly, the competent EUIPO bodies, called upon to rule initially, are not limited to the role of mere validation of the national law as submitted by the opponent. EUIPO may obtain information of its own motion about the national law of the Member State concerned, where such information is necessary for the purposes of assessing the applicability of a ground for opposition relied on before it and, in particular, for the purposes of assessing the accuracy of the facts adduced or the probative value of the documents submitted. In order to carry out an effective review, the General Court subsequently conducting a review, must be able to confirm, beyond the documents submitted, the content, the conditions of application and the scope of the rules of law relied upon by the opponent. (see paras 33-35)

It follows from the national law that the opponent must establish, in accordance with the legal rules governing actions for passing-off, as laid down by the laws of the United Kingdom, that three conditions are satisfied: first, the goodwill acquired (that is to say, the attractive force which brings in custom) by the non-registered trade mark or the sign at issue, secondly, misrepresentation by the proprietor of the subsequent mark and, thirdly, damage caused to that goodwill. (see para. 43)

See the text of the decision. (see paras 68, 81, 90, 103, 118, 122)

Rule 19(2)(d) of Commission Regulation No 2868/95 implementing Council Regulation No 40/94 on the Community trade mark states that an opponent relying on Article 8(4) of Regulation No 207/2009 must provide evidence not only of the earlier right’s acquisition and the scope of its protection, but also that right’s continued existence. This presupposes normally that the sign in question must still be in use at the time of the filing of the notice of opposition. (see paras 83, 84)