On the contrary, in accordance with the spirit and system of the single regulatory framework of the common agricultural policy (recital 1 of Regulation No 491/2009), as regards the scope of Regulation No 491/2009, the precise conditions and scope of that protection are laid down exclusively in Article 118m(1) and (2) of that regulation. That article governs, in a uniform and exclusive manner, both the authorisation of and limits to, and even the prohibition of, commercial use of the protected designations of origin and of the protected geographical indications under EU law, so that, in that specific context, there is no need for the Board of Appeal to apply the conditions for protection specifically established in the relevant rules of national law which were the basis for the entry of the appellations of origin or geographical indications in the E-Bacchus database.

That automatic protection, although based directly on the relevant national legislation, did not necessarily mean that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) was obliged, under Regulation No 491/2009, to comply with the provisions of that legislation or the conditions for protection laid down by it. The expressions ‘protected designations of origin’ and ‘protected geographical indications’ used in Article 118m(1) and (2) of Regulation No 491/2009 merely repeat those used in Article 118n of that regulation, which refers only to the designations of origin and geographical indications listed in the E-Bacchus database, including those stemming from national legislation, but do not prescribe the application of the conditions for protection established by the relevant rules of that legislation.

It is clear from Article 118s(1) of Regulation No 491/2009 amending Regulation No 1234/2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation) that wine names protected in accordance with, inter alia, Articles 51 and 54 of Regulation No 1493/1999 on the common organisation of the market in wine are automatically be protected under that regulation and that the Commission is to list them in the register provided for in Article 118n of Regulation No 491/2009, namely in the E-Bacchus database. It follows from the automatic nature of the protection of wine names already protected under Regulation No 1493/1999 that an entry in the E-Bacchus database is not necessary for those wine names to benefit from protection in the European Union, since that entry is only a consequence of the automatic transition of the pre-existing protection from one regulatory regime to another, and not a condition of that protection.

Under Article 53(1)(c) of Regulation No 207/2009 on the Community trade mark, read in conjunction with Article 8(4) thereof, where a sign other than a mark exists it is 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; the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Although the first two conditions, namely those relating to the use of and not merely local significance of the sign relied on, follow from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law, it follows 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 must be assessed in the light of the criteria set by the law governing the sign relied on.

The question of the extent to which a sign which is protected in a Member State confers the right to prohibit the use of a subsequent trade mark must be examined in the light of the applicable national law. In this connection, account must be taken, in particular, of the national legislation relied on and 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.

In that context, where the applicant has repeatedly invoked, with various items of evidence in support, the relevant rules of national law governing the protection of the appellations of origin and the decision-making practice of the national courts and authorities in that regard, and where neither the Board of Appeal nor OHIM has asserted that the applicant has not discharged the burden of proof borne by it in this connection, the Board of Appeal, having regard to its duty to examine the facts of its own motion under Article 76(1) of Regulation No 207/2009 and to its duty of diligence, is not entitled to dismiss that evidence and fail to apply the national legislation in question, on the ground that the protection of those designations of origin or geographical indications fell exclusively within Regulation No 491/2009, and indeed the exclusive competence of the European Union.

Such an approach by the Board of Appeal proceeds from a manifest misinterpretation of the scope of Article 53(1)(c) of Regulation No 207/2009, read in conjunction with Article 8(4) thereof, and of Article 53(2)(d) of that regulation, which vitiates the legality of the Board of Appeal’s decision.

(see paras 46-49)