JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
13 September 2012 (*)
(Community trade mark – Invalidity proceedings – Community figurative mark representing a hand – Article 53(2)(c) of Regulation (EC) No 207/2009 – Existence of earlier copyright protected by national law – Burden of proof – Application by OHIM of national law – Review)
In Case T‑404/10,
National Lottery Commission, established in London (United Kingdom), represented by B. Brandreth, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Mannucci and J. Crespo Carrillo, acting as Agents,
defendant,
the other parties to the proceedings before the Board of Appeal of OHIM being
Mediatek Italia Srl, established in Naples (Italy),
Giuseppe De Gregorio, residing in Naples,
ACTION brought against the decision of the First Board of Appeal of OHIM of 9 June 2010 (Case R 1028/2009-1) relating to invalidity proceedings between, on the one hand, Mediatek Italia Srl and Giuseppe De Gregorio and, on the other, the National Lottery Commission,
THE GENERAL COURT (Seventh Chamber),
composed of A. Dittrich, President, I. Wiszniewska-Białecka and M. Prek (Rapporteur), Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Court Registry on 8 September 2010,
having regard to the response lodged at the Court Registry on 17 January 2011,
having regard to the reply lodged at the Court Registry on 12 April 2011,
having regard to the rejoinder lodged at the Court Registry on 31 May 2011,
having regard to the measures of organisation of procedure of 31 January 2012,
further to the hearing on 3 May 2012,
gives the following
Judgment
Background to the dispute
1 On 2 October 2007, the applicant – the National Lottery Commission – obtained the registration under No 4800399 of the Community figurative mark reproduced below (‘the contested mark’) at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)):
2 The goods and services for which the contested mark was registered are in Classes 9, 16, 25, 28 and 41.
3 On 20 November 2007, Mediatek Italia Srl and Giuseppe De Gregorio (‘the applicants for a declaration of invalidity’) filed an application for a declaration that the contested mark was invalid, on the basis, inter alia, of Article 52(2)(c) of Regulation No 40/94 (now Article 53(2)(c) of Regulation No 207/2009) in the light of the copyright, pre-dating the contested mark, owned by Giuseppe De Gregorio in the following figurative sign (‘the “mano portafortuna”’):
4 By decision of 16 July 2009, the Cancellation Division of OHIM granted the application for a declaration that the contested mark was invalid. In essence, the Cancellation Division found that (i) the applicants for a declaration of invalidity had demonstrated that Italian legislation offered copyright protection capable of applying to the ‘mano portafortuna’ and (ii) that copyright pre-dated the contested mark. Consequently, on the view that the ‘mano portafortuna’ and the contested mark were almost identical, the Cancellation Division declared the contested mark to be invalid, pursuant to Article 53(2)(c) of Regulation No 207/2009.
5 On 1 September 2009, the National Lottery Commission filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.
6 By decision of 9 June 2010 (‘the contested decision’), the First Board of Appeal dismissed the appeal. In particular, it found that:
– the protection provided for under Article 2575 et seq. of the Codice civile (Italian Civil Code) and under the Legge sul diritto d’autore (Italian Law on copyright) could apply to the humorous representation of a smiling hand, in that it has a minimum degree of creativity;
– sufficient evidence of the existence of copyright was provided through the the submission of the photocopy of an agreement, dated 16 September 1986, under which a third party purporting to be the author of the ‘mano portafortuna’ assigned to one of the applicants for a declaration of invalidity his rights to reproduce and use that work or to reproduce and use other drawings appended to the agreement (‘the 1986 Agreement’);
– pursuant to Article 2702 of the Italian Civil Code, the Board of Appeal was competent only to assess the content of that agreement and not to verify the provenance of the statements contained therein;
– the anomalies referred to by the National Lottery Commission (the mention of an incorrect date in relation to the maximum duration of the copyright protection; the error in the date of the post office stamp, the difference in artistic quality between the ‘mano portafortuna’ and the other drawings appended to the 1986 Agreement) gave no grounds for doubting the veracity of the content of that agreement;
– the contested mark constituted, under Italian law, an unauthorised reproduction of the ‘mano portafortuna’ and, accordingly, an infringement of copyright;
– the evidence produced by the National Lottery Commission did not adequately establish that the contested mark had been created independently;
– the author of the sign constituting the contested mark had merely certified that it was original ‘so far as it [was] reasonably aware’;
– given that, in 1988, the ‘mano portafortuna’ had been printed on 400 T-shirts in the Naples (Italy) region, it was more probable that the creators of the sign constituting the contested mark had been inspired by the ‘mano portafortuna’ than that the contested mark had been created independently;
– one of the penalties provided for under Italian law was a ban on using the infringing work.
Forms of order sought
7 The National Lottery Commission claims that the Court should:
– annul the contested decision;
– remit the case to the Cancellation Division of OHIM for reconsideration together with a recommendation that OHIM properly and fully investigate the evidence of the existence of copyright pre-dating the contested mark;
– order OHIM to pay the costs, including those incurred in the proceedings before the Board of Appeal.
8 OHIM contends that the Court should:
– dismiss the action;
– order the National Lottery Commission to pay the costs.
9 At the hearing, the National Lottery Commission withdrew its second head of claim, a point which was noted in the minutes of the hearing.
Law
10 In support of its action, the National Lottery Commission relies on three pleas in law, alleging: (i) infringement of Article 53(2)(c) of Regulation No 207/2009; (ii) illegality of the Board of Appeal’s refusal to open an oral procedure or to adopt any measures for the collection of evidence; and (iii) incorrect assessment by the Board of Appeal of its powers to determine whether the 1986 Agreement was authentic.
11 By its first plea in law, the National Lottery Commission argues, essentially, that the Board of Appeal infringed Article 53(2)(c) of Regulation No 207/2009 by concluding that the applicants for a declaration of invalidity had shown that an earlier right existed as they contended. It is necessary to examine this plea in law in conjunction with the third plea, whereby the National Lottery Commission claims that the Board of Appeal was wrong in finding that it was not competent to assess the authenticity of the 1986 Agreement.
12 The National Lottery Commission claims, inter alia, that the Board of Appeal relied solely on its examination of the copy of an agreement transferring ownership of that copyright in 1986, without taking into account the plausibility of the arguments put forward by the parties. The National Lottery Commission also argues that, since the Board of Appeal is empowered to decide on the validity of a Community trade mark, it must necessarily be entitled to appraise the authenticity of a document on which a party’s claims are based when that authenticity is disputed. In refusing to undertake such an examination, the Board of Appeal did not accurately assess the scope of its own powers.
13 OHIM contends that this plea should be rejected. It points out, inter alia, that the Board of Appeal was required to take its decision in accordance with the rules and principles of Italian law. According to OHIM, the 1986 Agreement constitutes a document under private signature authenticated by a notary and, in consequence, has the same probative value as a document executed before a notary. That agreement constitutes proof as regards its provenance. It can be inferred from Articles 2702 and 2703 of the Italian Civil Code that a public authority cannot disregard an authentic document unless it has been challenged as a forgery before the Italian courts, pursuant to Article 221 of the Codice di procedura civile (Italian Code of Civil Procedure). Accordingly, all the Board of Appeal was entitled to do was to examine the content of the 1986 Agreement to assess whether it showed that the earlier right existed. OHIM infers from this that, instead of claiming that the Board of Appeal should disregard the evidence submitted by the applicants for a declaration of invalidity, the National Lottery Commission should have brought proceedings before the Italian courts for a declaration of forgery, while requesting that the proceedings for cancellation of the contested mark be stayed. OHIM argues, moreover, that the ‘anomalies’ to which the National Lottery Commission refers, are either not anomalies, or are not sufficiently anomalous to show that the 1986 Agreement is, wholly or in part, a forgery.
14 Under Article 53(2)(c) of Regulation No 207/2009 ‘[the contested mark] shall also be declared invalid on application to [OHIM] or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Community legislation or national law governing its protection, and in particular: … a copyright’.
15 It is necessary, therefore, to determine whether the Board of Appeal infringed Article 53(2)(c) of Regulation No 207/2009 in finding that the applicants for a declaration of invalidity had adduced proof that copyright in the ‘mano portafortuna’ existed prior to the contested mark.
16 It is apparent from the wording of Article 53(2) of Regulation No 207/2009 that, when that provision refers to the situation in which the existence of an earlier right makes it possible to prohibit the use of a Community trade mark, it distinguishes clearly between two situations: the situation where the earlier right is protected under Community legislation and the situation where it is protected under national law.
17 As regards the procedural arrangements laid down by the implementing regulation in the case of an application submitted under Article 53(2) of Regulation No 207/2009, on the basis of an earlier right protected under national law, Rule 37 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended, provides that, in a situation such as that under consideration in the present case, the applicant must provide particulars showing that it is entitled under the applicable national law to assert that right.
18 As the Court has had occasion to point out, that rule requires the applicant for a declaration of invalidity to provide OHIM not only with particulars showing that, in accordance with the national law which it wishes to have applied, it satisfies the necessary conditions for having the use of a Community trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law (Case C‑263/09 P Edwin v OHIM [2011] ECR I-0000, paragraph 50).
19 Where, as in the present case, an application for a declaration that a Community trade mark is invalid is based on an earlier right protected by a rule of national law, the competent OHIM adjudicatory bodies must assess the weight and scope to be attributed to the particulars submitted by the applicant in order to establish the content of that rule. The General Court undertakes a full review of that assessment (Edwin v OHIM, paragraph 18 above, paragraphs 51 and 52).
20 Moreover, it is apparent from the case-law of the Court that, in circumstances in which OHIM may be called upon to take account, in particular, of the national law of the Member State in which protection is given to the earlier mark on which the application for a declaration of invalidity is based, it must – of its own motion and by whatever means considered appropriate – obtain information 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 invalidity 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. The restriction of the factual basis of the examination by OHIM does not preclude it from taking into consideration, in addition to the facts which have been expressly put forward by the parties to the invalidity proceedings, facts which are well known, that is to say, facts which are likely to be known by anyone or which may be learnt from generally accessible sources (see, by analogy, Case T‑303/08 Tresplain Investments v OHIM – Hoo Hing (Golden Elephant Brand) [2010] ECR I‑5659, paragraph 67 and the case-law cited).
21 It is in the light of those principles that it is necessary, first, to determine the rules and principles which the Board of Appeal had to apply for the purposes of verifying whether proof had been provided of the existence of the copyright claimed.
22 The National Lottery Commission relies on the theory of the balance of probabilities, arguing that the version of events which it postulates is more probable than that argued for by the applicants for a declaration of invalidity and that they have therefore failed to discharge the burden of proof upon them. By contrast, the Board of Appeal refers – as does OHIM in its written pleadings – to the authority attributed to the 1986 Agreement by the Italian Civil Code. It follows from the application of those provisions that the 1986 Agreement constitutes proof of the provenance of the statements of the parties to that agreement pending proceedings before the Italian courts, pursuant to Article 221 of the Italian Code of Civil Procedure, challenging it as a forgery (paragraph 30 of the contested decision). On that basis, the Board of Appeal found that it was competent only to examine the content of the 1986 Agreement and that the existence of copyright in the ‘mano portafortuna’ prior to the contested mark could reasonably be inferred from that.
23 Pursuant to the case-law referred to in paragraphs 18 to 20 above, in so far as the question on which the Board of Appeal had to decide concerns the point whether, under Italian law, the applicants for a declaration of invalidity are actually copyright owners, the Board of Appeal was right to rely on the rules of Italian law in determining the probative value of the 1986 Agreement.
24 Secondly, however, the Court must determine whether the Board of Appeal construed the relevant Italian law correctly in finding that, pursuant to Articles 2702 and 2703 of the Italian Civil Code, the 1986 Agreement constituted conclusive evidence of the provenance of the statements of the parties to that agreement, pending the introduction of proceedings challenging it as a forgery.
25 Under Article 2702 of the Italian Civil Code, a document under private signature constitutes proof, pending proceedings challenging it as a forgery, of the provenance of the statements made therein by the signatory, if either the person against whom it is relied upon recognises the signature or that signature is considered to be lawfully recognised.
26 Article 2703 of the Italian Civil Code provides that a signature which has been certified as genuine (‘authenticated’) by a notary or by another public official with the requisite authority is to be treated as having been recognised. ‘Authentication’ is defined as consisting in the certification by the official that the signature was written in his presence. Additionally, under that provision, the official must verify at the outset the identity of the signatory.
27 Article 2704 of the Italian Civil Code specifies that the date of a document under private signature, in respect of which the signature has not been authenticated, is not certain and cannot be relied upon against third parties until after the day on which the document is registered; or after the day of the death, or the onset of physical incapacity, of the signatory or one of the signatories; or after the day on which the content of the document is reproduced in public documents; or, lastly, after the day on which another fact is determined which establishes in an equally certain manner that the document under private signature had been drawn up beforehand.
28 In paragraph 30 of the contested decision, the Board of Appeal found that the 1986 Agreement ‘[was] a document under private signature and therefore [constituted] proof of the statements of the parties to that agreement, pending proceedings under Article 2702 of the Civil Code challenging it as a forgery’.
29 However, it is clear from Articles 2702 to 2704 of the Italian Civil Code that, in the circumstances of the present case, such an assertion will be correct only if the signatures of the parties to the agreement can be regarded as lawfully recognised, in that they have been authenticated in accordance with Article 2703 of the Italian Civil Code, or if one of the exceptions provided for under Article 2704 of that code applies.
30 However, it cannot validly be found that the fact asserted in paragraph 5 of the contested decision – that an ‘agreement confirming assignment’ had been signed in the presence of a notary on 4 August 2008, confirming the clauses laid down in the 1986 Agreement – is capable of authenticating the signatures of the parties to the 1986 Agreement for the purposes of Article 2703 of the Italian Civil Code. Such an assumption, which would mean that an agreement signed in 1986 was enforceable against third parties by virtue of the intervention of a notary almost 22 years later, is in direct contradiction with the terms of Article 2703, under which authentication consists in attestation by a public official that the signature has been written in his presence.
31 Moreover, as regards the application of Article 2704 of the Italian Civil Code, it should be noted that this makes it possible to enforce against third parties a document under private signature, in respect of which the signature has not been authenticated, as from the day following its registration or the occurrence of an event which establishes in a equally certain manner that the document under private signature had been drawn up beforehand.
32 Pursuant to the case-law of the Corte suprema di cassazione (Italian Supreme Court of Cassation), the affixing of a post office stamp to a document under private signature constitutes a fact establishing the exact date of that document for the purposes of Article 2704 of the Civil Code, since the stamp appears in the body of the document (judgment No 13912 of 14 June 2007). It is also apparent from that case-law that proof may be adduced that the date of a post office stamp is not genuine, without it being necessary for proceedings to be brought for a declaration of forgery.
33 In the present case, it should be noted that, although no mention is made in the contested decision of Article 2704 of the Italian Civil Code, reference is made to the presence of a post office stamp dated 21 September 1986. According to the file for the proceedings before OHIM, that post office stamp appears on the first page of the agreement, as well as on the annex where the drawing of the ‘mano portafortuna’ appears. The inference can therefore be made that, through the affixing of that post office stamp, the conditions laid down by the case-law of the Italian Supreme Court of Cassation have been satisfied.
34 Accordingly, the presence of the post office stamp is a factor which enables it to be established that the 1986 Agreement has a definite date as from 21 September 1986 and that in consequence, pursuant to Articles 2702, 2703 and 2704 of the Civil Code, read in conjunction, it constitutes proof of the provenance of the statements made therein, including as regards third parties, as from 22 September 1986.
35 However, pursuant to the case-law referred to in paragraph 32 above, it was open to the National Lottery Commission, without having to bring proceedings for a declaration of forgery, to adduce proof that, in actual fact, the 1986 Agreement had been drawn up on a date other than that shown on the post office stamp.
36 Accordingly, by finding in paragraph 30 of the contested decision that the 1986 Agreement ‘[was] a document under private signature and therefore [constituted] full proof of the provenance of the statements made by the signatories, pending a declaration of forgery in accordance with Article 2702 of the Civil Code’, when it was not necessary to bring proceedings for a declaration of forgery in the circumstances, the Board of Appeal based its approach on a misinterpretation of the national law applicable pursuant to Article 53(2) of Regulation No 207/2009 and therefore failed to assess accurately the precise scope of its own powers.
37 Moreover, it should be noted that, during the proceedings before the Board of Appeal, the National Lottery Commission drew attention to certain factors, which it referred to as ‘anomalies’ and which showed that it was unlikely that the 1986 Agreement had been drafted in that way on the date claimed. Those factors include, in particular, the facts that the date of the post office stamp (21 September 1986) corresponds to a day on which post offices were closed and that the 70‑year copyright protection provided for under the agreement corresponds to the term of copyright protection applicable after 1996, whereas, at the time when the 1986 Agreement was purportedly drafted, copyright protection lasted for only 50 years.
38 In paragraphs 26 and 27 of the contested decision, the Board of Appeal attributed those anomalies to possible errors on the part of the clerk who had affixed the post office stamp and the lawyer who had drafted the 1986 Agreement.
39 Without it being necessary to consider the merits of those findings by the Board of Appeal, it is sufficient to note that they could have been affected by the misinterpretation of Italian law pointed out in paragraph 36 above. Arguably, the Board of Appeal would have attributed more weight to those factors if it had believed that it was legitimate for the National Lottery Commission to challenge before it the reliability of the date indicated on the post office stamp and that, accordingly, the 1986 Agreement did not necessarily constitute proof of the provenance of statements made therein.
40 In the light of the above, it must be concluded that, in finding that the applicants for a declaration of invalidity had shown the existence of an earlier right, the Board of Appeal based its approach on a misinterpretation of the national law governing copyright protection and that that error may have had an effect on the content of the contested decision.
41 Consequently, the plea alleging infringement of Article 53(2)(c) of Regulation No 207/2009 must be upheld and the contested decision must be annulled, without it being necessary to examine the second plea.
Costs
42 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
43 In the present case, since OHIM has been unsuccessful, it must be ordered to pay the costs incurred by the National Lottery Commission in the proceedings before the Court, in accordance with the form of order sought by the National Lottery Commission.
44 The National Lottery Commission also applied for OHIM to be ordered to pay the costs incurred by it for the purposes of the proceedings before the Board of Appeal. In that connection, it should be recalled that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Accordingly, since OHIM has been unsuccessful, it must also be ordered to pay the costs incurred by the National Lottery Commission for the purposes of the proceedings before the Board of Appeal, in accordance with the form of order sought by the National Lottery Commission.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 9 June 2010 (Case R 1028/2009‑1);
2. Orders OHIM to pay the costs, including those incurred by the National Lottery Commission in the proceedings before the Board of Appeal.
Dittrich | Wiszniewska-Białecka | Prek |
Delivered in open court in Luxembourg on 13 September 2012.
[Signatures]