Case T-255/08

Eugenia Montero Padilla

v

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

(Community trade mark – Opposition proceedings – Application for the Community word mark JOSE PADILLA – Earlier marks and sign JOSE PADILLA – Relative grounds for refusal – No well-known trade mark within the meaning of Article 6 bis of the Paris Convention or trade mark with a reputation – Article 8(2)(c) and Article 8(5) of Regulation (EC) No 40/94 (now Article 8(2)(c) and Article 8(5) of Regulation (EC) No 207/2009) – No earlier sign used in the course of trade – Article 8(4) of Regulation No 40/94 (now Article 8(4) of Regulation No 207/2009))

Summary of the Judgment

1.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark well known in a Member State

(Council Regulation No 40/94, Art. 8(1) and (2)(c))

2.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark enjoying a reputation – Protection of well-known earlier mark extended to dissimilar goods or services

(Council Regulation No 40/94, Art. 8(5))

3.      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 trade

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

1.      It has not been proved that the name José Padilla – relied on in the opposition proceedings against registration of the word sign JOSE PADILLA as a Community trade mark, for goods in Classes 9, 25 and 41 of the Nice Agreement – had been used as a trade mark. The documents provided demonstrate only the renown of the deceased composer and the use of his name to identify the author of the musical compositions, not the use of that name as a trade mark. It has not therefore been proved that, at the date of application for registration of the mark applied for, the earlier sign JOSE PADILLA was well known in a Member State and used for goods which are identical or similar to those covered by the trade mark applied for.

(see paras 53, 56)

2.      It follows from the wording of Article 8(5) of Regulation No 40/94 on the Community trade mark, which uses the expression ‘for which the earlier trade mark is registered’, that this provision applies to earlier trade marks within the meaning of Article 8(2) of that regulation only in so far as they have been registered.

Consequently, in contrast to Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, which allows, as regards identical or similar goods or services, opposition based on marks for which no proof of registration has been provided, but which are well known within the meaning of Article 6 bis of the Paris Convention for the Protection of Industrial Property, Article 8(5) of Regulation No 40/94 protects, in relation to goods or services which are not similar, only those well-known marks within the meaning of Article 6 bis of the Paris Convention for which proof of registration has been provided.

(see paras 47-48)

3.      Copyright cannot constitute a ‘sign used in the course of trade’ within the meaning of Article 8(4) of Regulation No 40/94 on the Community trade mark. It is apparent from the scheme of Article 52 of that regulation that copyright is not such a sign. Article 52(1)(c) provides that a Community trade mark is to be declared invalid where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled. Article 52(2)(c) provides that a Community trade mark is also to be declared invalid where the use of such trade mark may be prohibited pursuant to any ‘other’ earlier right and in particular a copyright. It follows that copyright is not one of the earlier rights as referred to in Article 8(4) of Regulation No 40/94.

(see para. 65)