Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) v National Lottery Commission.
Date: 2014-03-27
32. It should be noted at the outset that, given the date on which the registration of the contested mark was obtained, namely, 2 October 2007, and the date on which the applicants for a declaration of invalidity submitted their application before OHIM, that is, on 20 November of the same year, the present ground of appeal must be assessed with regard to the provisions of Regulation No 40/94, since Regulation No 207/2009 was not in force on those dates (see, inter alia, Case C‑122/12 P Rintisch  v OHIM  [2013] ECR, paragraph 2).
34. With regard to the role of that applicant, the Court has held that Rule 37 of the Implementing Regulation imposes on him the burden of providing OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law ( Edwin  v OHIM , paragraph 50).
35. With regard to the competent OHIM bodies, the Court stated that it is incumbent on them to assess the authority and scope of the particulars submitted by the applicant in order to establish the content of the rule of national law that he relies on ( Edwin v OHIM , paragraph 51).
36. In relation to the role of the General Court, the Court, referring to Article 63(2) of Regulation No 40/94, which defines the cases in which an action may be brought against decisions of the Boards of Appeal of OHIM, stated that it has jurisdiction to conduct a full review of the legality of OHIM’s assessment of the particulars submitted by an applicant in order to establish the content of the national law whose protection he claims ( Edwin  v OHIM , paragraph 52).
37. Contrary to what is claimed by OHIM, it is not apparent from paragraphs 50 to 52 of Edwin  v OHIM that a rule of national law, made applicable by a reference such as that in Article 52(2) of Regulation No 40/94, should be treated as a purely factual matter, the existence of which OHIM and the Court merely establish on the basis of the evidence before them.
40. In that regard it should be noted that the review by OHIM and by the General Court must be conducted in the light of the requirement, referred to by the Advocate General in point 91 of his Opinion, of ensuring the practical effect of Regulation No 40/94, which is to protect the Community mark.
43. Where the competent OHIM bodies are called upon to rule, initially, on an application for a declaration of invalidity of a Community mark based on an earlier copyright protected by a rule of national law, their decision may have the effect of depriving the proprietor of the Community trade mark of a right that has been granted to him. The scope of such a decision necessarily implies that the authority which takes it is not limited to the role of mere validation of the national law as submitted by the applicant for a declaration of invalidity.
44. As regards the judicial review conducted, subsequently, by the General Court, it should be noted that, as the Advocate General pointed out in point 92 of his Opinion, that review must meet the requirements of the principle of effective judicial protection. In so far as the application of national law, in the procedural context in question, may have the effect of depriving the proprietor of a Community trade mark of his right, it is essential that that Court is not deprived, due to possible lacunae in the documents submitted as evidence of the applicable national law, of the real possibility of exercising an effective review. To that end, it must therefore 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 applicant for a declaration of invalidity.
53. In order to satisfy the requirements of that law, the European Union judicature must ensure that the principle that the parties should be heard is respected in proceedings before them and that they themselves respect that principle, which applies to any procedure which may result in a decision by an institution of the European Union perceptibly affecting a person’s interests (Case C‑89/08 P Commission  v Ireland and Others  [2009] ECR I‑11245, paragraphs 51 and 53, and Case C‑197/09 RX-II Review M  v EMEA  [2009] ECR I‑12033, paragraphs 41 and 42).
54. The rule that the parties should be heard does not merely confer on each party to proceedings the right to be apprised of the documents produced and observations made to the Court by the other party and to discuss them. It also implies a right for the parties to be apprised of the matters raised by those courts of their own motion, on which they intend basing their decision, and to discuss them. In order to satisfy the requirements relating to the right to a fair hearing, it is important for the parties to be apprised of, and to be able to debate and be heard on, the matters of fact and of law which will determine the outcome of the proceedings ( Commission  v Ireland and Others , paragraphs 55 and 56, and Case C‑472/11 Banif Plus Bank  [2013] ECR, paragraph 30).