Case T-609/15

Repsol YPF, SA

v

European Union Intellectual Property Office

(EU trade mark — Invalidity proceedings — EU figurative mark BASIC — Earlier national trade names basic and basic AG — Relative ground for refusal — Use in the course of trade of a sign of more than mere local significance — Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009)

Summary – Judgment of the General Court (Eighth Chamber), 21 September 2017

1.      EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier right covered by Article 8(4) of Regulation No 207/2009 – Conditions – Interpretation in the light of EU law – Assessment by reference to the criteria determined by the national law governing the sign relied on

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

2.      EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier right covered by Article 8(4) of Regulation No 207/2009 – Use of the sign in trade – Temporal criterion

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

3.      EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Existence of an earlier right covered by Article 8(4) of Regulation No 207/2009 – Figurative mark BASIC and trade names basic and basic AG

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

1.      See the text of the decision.

(see paras 24-27)

2.      As regards the first condition for application of Article 8(4) of Regulation No 207/2009 on the EU trade mark, it should be noted that, according to the case-law, a sign is used in the course of trade where that use occurs in the context of commercial activity with a view to economic advantage and not as a private matter.

As regards the relevant period for the purpose of assessing that condition, it is clear from the case-law that an applicant for a declaration of invalidity must prove that the sign relied on was used in the course of trade before the date of application for registration of the EU mark at issue. Furthermore, according to the case-law, that sign must still be in use at the time of filing of the application for a declaration of invalidity. In other words, it must be established that the sign relied on was used not only on the date of filing of the application for registration of the EU mark, but also on the date of filing of the application for a declaration of invalidity, and where such evidence is furnished it may legitimately be considered that that sign was ‘still ... in use’ on the latter date, within the meaning of the case-law cited above.

(see paras 47, 48)

3.      See the text of the decision.

(see paras 49-67)