Case T‑579/10

macros consult GmbH — Unternehmensberatung für Wirtschafts- und Finanztechnologie

v

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

(Community trade mark — Invalidity proceedings — Community figurative mark makro — Company name macros consult GmbH — Right acquired prior to the application for registration of a Community trade mark and entitling its holder to prohibit the use of the Community trade mark applied for — Non-registered signs protected under German law — Article 5 of the Markengesetz — Article 8(4), Article 53(1)(c) and Article 65 of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (First Chamber), 7 May 2013

1.      Community trade mark — Surrender, revocation and invalidity — Relative grounds for invalidity — Existence of an earlier right under Article 8(4) of Regulation No 207/2009 — Conditions — Interpretation in the light of EU law — Assessment having regard to the criteria laid down by the national law governing the sign relied on

(Council Regulation No 207/2009, Arts 8(4) and 53(1)(c))

2.      Community trade mark — Surrender, revocation and invalidity — Invalidity action based on the existence of an earlier national right — Burden of proof

(Council Regulation No 207/2009, Arts 8(4), 53(1)(c), and (2), and 65; Commission Regulation No 2868/95, Art. 1, Rule 37(b)(ii))

3.      Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Account taken by the General Court of evidence not previously raised before the departments of OHIM — Exclusion

1.      Under Article 53(1)(c) of Regulation No 207/2009 on the Community trade mark in conjunction with Article 8(4) thereof, the existence of a sign other than a mark makes it possible to obtain a declaration that a Community trade mark is invalid if that sign satisfies all of four conditions: the sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with the law of the Member State in which the sign was used prior to the date of application for registration of the Community trade mark; and, lastly, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those four conditions limit the number of signs other than marks which may be relied on to dispute the validity of a Community trade mark throughout the Community under Article 1(2) of Regulation No 207/2009. Given that the conditions laid down by Article 8(4) of Regulation No 207/2009 are cumulative, it is sufficient that only one of those conditions not be satisfied for an application for a declaration of invalidity of Community trade marks to be rejected.

The first two conditions, namely those relating to the use of the sign relied on and its significance, which must be more than merely local, are apparent from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation.

By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to the law of the Member State governing that sign’, that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is entirely justified, given that Regulation No 207/2009 makes it possible for signs which fall outside the Community trade mark system to be relied on against a Community trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the Community trade mark and whether it can justify a prohibition of the use of a subsequent trade mark.

(see paras 54-56, 70)

2.      It is apparent from the wording of Article 53(2) of Regulation No 207/2009 on the Community trade mark 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, depending on whether the earlier right is protected under the EU legislation ‘or’ under national law.

As regards the procedural arrangements laid down by Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark in the case of an application pursuant to Article 52(2) of Regulation No 207/2009, based on an earlier right protected under national law, Rule 37 of Regulation No 2868/95 provides that the applicant must provide particulars showing that he is entitled under the applicable national law to lay claim to that right.

That rule requires the applicant, in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right, to provide OHIM with not only particulars showing that he satisfies the necessary conditions under the national law whose application he is seeking, but also particulars establishing the content of that law.

Since Article 53(1)(c) of Regulation No 207/2009 expressly refers to Article 8(4) of that regulation, and the latter provision concerns earlier rights protected under EU legislation or under the law of the Member State governing the sign at issue, the rules of evidence referred to above also apply when a provision of national law is invoked on the basis of Article 53(1)(c) of Regulation No 207/2009. Rule 37(b)(ii) of Regulation No 2868/95 provides similar provisions in relation to the proof of an earlier right in the event of an application made under Article 53(1) of Regulation No 207/2009.

The issue of the existence of a national right is thus a question of fact, and it is for the party which alleges the existence of a right fulfilling the conditions set out in Article 8(4) of Regulation No 207/2009 to establish before OHIM not only that that right arises under the national law, but also the scope of that law.

(see paras 57-60, 62, 72)

3.      See the text of the decision.

(see para. 61)