Case T‑501/13

Karl-May-Verlag GmbH, formerly Karl May Verwaltungs- und Vertriebs- GmbH

v

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

(Community trade mark — Invalidity proceedings — Community word mark WINNETOU — Absolute ground for refusal — Descriptive character — Article 7(1)(c) of Regulation (EC) No 207/2009 — Article 52(1) and (2) of Regulation No 207/2009 — Principles of autonomy and independence of the Community trade mark — Obligation to state reasons)

Summary — Judgment of the General Court (First Chamber), 18 March 2016

1.      Community trade mark — Appeals procedure — Action before the EU judicature — Legality of the decision of a Board of Appeal — Account taken, for the purposes of applying EU law, of national legislation, case-law or academic writing — Lawfulness

(Council Regulation No 207/2009, Art. 65)

2.      Community trade mark — Surrender, revocation and invalidity — Invalidity proceedings —Determination of the grounds on which an application for a declaration of invalidity based

(Council Regulation No 207/2009, Art. 52(1)(a))

3.      Community trade mark — Definition and acquisition of the Community trade mark — Assessment of the registrability of a sign — EU rules only taken into account — Decisions of national authorities not binding EU bodies

(Council Regulation No 207/2009)

4.      Community trade mark — Procedural provisions — Statement of reasons for decisions — Article 75, first sentence, of Regulation No 207/2009 — Scope identical to that of Article 296 TFEU

(Council Regulation No 207/2009, Art. 75, first sentence)

5.      Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Separate examination of the grounds for refusal in relation to each of the goods or services covered by the application for registration — Obligation to state the reasons for refusing to register — Scope

(Council Regulation No 207/2009, Art. 75, first sentence)

1.      Neither the parties nor the General Court itself can be precluded from drawing on national legislation, case-law or academic writing, where it is not alleged that the Board of Appeal failed to take the factual aspects of a specific national judgment into account, but rather reliance is placed on judgments or academic writing in support of a plea alleging that the Board of Appeal misapplied a provision of Regulation No 207/2009 on the Community trade mark.

(see para. 18)

2.      In order to determine the grounds on which an application for a declaration of invalidity is based, it is necessary to examine all of the application, especially in light of the detailed statement of reasons in support of it.

(see para. 26)

3.      According to settled case-law, the Community trade mark system is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system.

Thus, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant EU rules alone, as interpreted by the EU judicature. The Office for Harmonisation in the Internal Market (Trade Marks and Designs) is accordingly not bound by decisions adopted in the Member States, even in a situation where those decisions were adopted under national legislation harmonised with the First Council Directive 89/104 relating to trade marks.

It should be added that nothing in Regulation No 207/2009 requires OHIM or, on appeal, the General Court to come to the same conclusions as those arrived at by national administrative bodies or courts in similar circumstances.

It follows from an equally consistent line of decisions that, while OHIM is not bound by decisions made by national authorities, OHIM may nevertheless take those decisions into consideration, without them being binding or even determinative, as indicia in the assessment of the facts of the case.

It follows from all those elements that, apart from the situation referred to in Article 8(4) of Regulation No 207/2009 under which OHIM is obliged to apply national law, including the related national case-law, OHIM or the Court cannot be bound by the decisions of national administrative bodies or courts.

(see paras 34-37)

4.      The first sentence of Article 75 of Regulation No 207/2009 on the Community trade mark provides that decisions of OHIM are to state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that deriving from Article 296 TFEU, according to which the statement of reasons must disclose, clearly and unequivocally, the reasoning of the author of the measure, in such a way as to enable the persons concerned to ascertain the reasons for it and to enable the competent court to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question.

In particular, where OHIM refuses to register a sign as a Community trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal — absolute or relative — which precludes that registration and the legal provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify application of the provision relied on. Such a statement of reasons is, in principle, sufficient.

(see paras 53, 54)

5.      See the text of the decision.

(see paras 65-68)