Case T-304/09

Tilda Riceland Private Ltd

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for Community figurative mark BASmALI – Earlier non-registered trade mark and earlier sign BASMATI – Relative ground for refusal – Article 8(4) of Regulation (EC) No 40/94 (now Article 8(4) of Regulation (EC) No 207/2009))

Summary of the Judgment

Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an unregistered trade mark or other sign used in the course of the trade – Conditions – Proof of acquisition of rights over the sign by the opponent – Taking into account the national law invoked in support of the opposition

(Council Regulation No 40/94, Art. 8(4))

In accordance with Article 8(4) of Regulation No 40/94 on the Community trade mark, the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than merely local significance can lodge a statement of opposition against the registration of a Community trade mark where and to the extent that, pursuant to the law of the Member State which is applicable, rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or prior to the date of the priority claimed for the application for registration of the Community trade mark, and that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark. It follows that one of the conditions for applying Article 8(4) of Regulation No 40/94 is that the opponent has to show that it is the proprietor of the sign relied on in support of the opposition. That condition means that the opponent has to prove the acquisition of rights over that sign. Under that provision, those rights must make it possible to prohibit the use of a subsequent trade mark. The question whether an opponent has acquired rights over a non-registered trade mark or over a sign used in the course of trade – and, accordingly, whether he is proprietor of the sign relied on for the purposes of that provision – cannot be addressed without taking into account the national law invoked in support of the opposition. In that context, one of the roles played by the relevant national law is to define the procedures for acquiring rights over the sign relied on in support of an opposition brought under that provision.

(see paras 16-17, 22)