European Union Intellectual Property Office (EUIPO) v Gilbert Szajner.
Date: 2017-04-05
24


Given that EUIPO acted, in this case, as defendant and not as intervener at first instance, and that it was unsuccessful in part, its locus standi and its interest in bringing the appeal are indisputable, and in no way does EUIPO need, in that regard, to demonstrate that the General Court’s decision affects it directly.
35


It is appropriate first of all to recall, as regards the allocation of the various roles between the applicant for a declaration of invalidity, the competent bodies of EUIPO and the General Court, first, that Rule 37 of the implementing regulation provides that the applicant must provide particulars showing that he is entitled under the national law applicable to lay claim to an earlier right protected under national law. That rule requires the applicant, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, to provide EUIPO with, not only particulars showing that he satisfies the necessary conditions under the national law which he seeks to have applied, but also particulars establishing the content of that law (see, to that effect, judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraphs 49 and 50, and of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 34).
36


Second, as regards, more specifically, EUIPO’s obligations, the Court has held that, where an application for an EU trade mark to be declared invalid is based on an earlier right protected by a rule of national law, the competent EUIPO bodies must first assess the authority and scope of the particulars submitted by the applicant in order to establish the content of that rule (judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 51, and of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 35). In addition, since the decision of the competent EUIPO bodies may have the effect of depriving the proprietor of the 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 (judgment of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 43).
37


Third, in accordance with Article 65(1) and (2) of Regulation No 207/2009, the General Court has jurisdiction to conduct a full review of the legality of EUIPO’s assessment of the particulars submitted by an applicant in order to establish the content of the national law whose protection he claims (see, to that effect, judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 52, and of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 36).
38


Furthermore, in so far as the application of national law, in the procedural context in question, may have the effect of depriving the proprietor of an EU trade mark of his right, it is essential that the General Court is not deprived, notwithstanding possible lacunae in the documents submitted as evidence of the applicable national law, of the real possibility of carrying out 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. Consequently, the judicial review conducted by the General Court must meet the requirements of the principle of effective judicial protection (judgment of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 44).
39


Next, it is important to stress that the review by EUIPO and by the General Court must be conducted in the light of the need to ensure the practical effect of Regulation No 207/2009, which is to protect the EU trade mark (see, to that effect, judgment of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 40).
44


This conclusion is not called into question by the case-law according to which, first, the General Court must, in principle, confine itself to finding the decision that the Board of Appeal of EUIPO should have reached on the basis of the particulars underlying the Board of Appeal’s decision, second, the General Court may annul or alter a decision against which an action has been brought only if, at the date on which that decision was adopted, it was vitiated by one of those grounds for annulment or alteration referred to in Article 65(2) of Regulation No 207/2009, and, third, it may not annul or alter that decision on grounds which come into existence subsequent to its adoption (see, to that effect, judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraphs 71 and 72, and of 26 October 2016, Westermann Lernspielverlage v EUIPO, C‑482/15 P, EU:C:2016:805, paragraph 27 and the case-law cited).
56


It should be recalled from the outset that, so far as concerns the examination, in the context of an appeal, of the findings made by the General Court with regard to the applicable national law, the Court of Justice has jurisdiction to determine, first of all, whether the General Court, on the basis of the documents and other evidence submitted to it, distorted the wording of the national provisions at issue or of the national case-law relating to them, or the wording of the academic writings concerning them; second, whether the General Court, as regards those particulars, made findings that were manifestly inconsistent with their content; and, last, whether the General Court, in examining all the particulars, attributed to one of them, for the purpose of establishing the content of the national law at issue, a significance which is not appropriate in the light of the other particulars, where that is manifestly apparent from the documentation in the case file (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 53).
57


Therefore, it is for the Court of Justice to determine whether EUIPO’s argument relates to errors allegedly made by the General Court in its findings with regard to the national legislation at issue, which would be open to review by the Court of Justice on the basis of the considerations set out in the preceding paragraph of the present judgment (see, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 54).