Case T-303/08

Tresplain Investments Ltd

v

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

(Community trade mark – Invalidity proceedings – Figurative Community trade mark Golden Elephant Brand – Non-registered national figurative mark GOLDEN ELEPHANT – Relative ground for refusal – Reference to the national law governing the earlier mark – Common-law action for passing-off – Article 74(1) of Regulation (EC) No 40/94 (now Article 76(1) of Regulation (EC) No 207/2009) – Article 73 of Regulation No 40/94 (now Article 75 of Regulation No 207/2009) – Articles 8(4) and 52(1)(c) of Regulation No 40/94 (now Articles 8(4) and 53(1)(c) of Regulation No 207/2009) – New pleas in law – Article 48(2) of the Rules of Procedure)

Summary of the Judgment

1.      Procedure – Application initiating proceedings – Formal requirements – Brief summary of the pleas in law on which the application is based – Pleas in law not set out in the application – General reference to documents – Inadmissibility

(Statute of the Court of Justice, Art. 21; Rules of Procedure of the General Court, Arts 44(1) and 48(2))

2.      Community trade mark – Procedural provisions – Statement of reasons for decisions

(Council Regulation No 40/94, Art. 73)

3.      Community trade mark – Procedural provisions – Examination of the facts of the Office’s own motion – Cancellation proceedings – Examination restricted to the submissions of the parties – Assessment by the Office of the correctness of the facts pleaded and the probative value of the evidence submitted

(Council Regulation No 40/94, Art. 74(1))

4.      Community trade mark – Appeals procedure – Decision on the appeal – Observance of the rights of the defence – Scope of the principle

(Council Regulation No 40/94, Art. 73)

5.      Community trade mark – Surrender, revocation and invalidity – Relative grounds of invalidity – Existence of an earlier right as referred to in Article 8(4) of Regulation No 40/94 – Conditions

(Council Regulation No 40/94, Arts 8(4) and 52(1)(c))

6.      Procedure – Introduction of new pleas during the proceedings – Conditions – Plea based on matters which have come to light in the course of the procedure

(Rules of Procedure of the General Court, Art. 48(2))

1.      It is clear from Article 21 of the Statute of the Court of Justice and Articles 44(1) and 48(2) of the Rules of Procedure of the General Court, that any plea which is not adequately articulated in the application initiating the proceedings must be held to be inadmissible.

It is necessary, in order for an action to be admissible, that the basic legal and factual particulars relied on be indicated coherently and intelligibly in the application itself, even if only in summary form. In that regard, although specific points in the text of the application may be supported and supplemented by references to specific passages in the documents attached, a general reference to other documents, even those annexed to the application, cannot compensate for the lack of essential elements of the legal arguments which, under the provisions set out above, must be included in the application. It is not for the General Court to seek and identify in the annexes the pleas and arguments on which it may consider the action to be based, since the annexes have a purely evidential and instrumental function.

(see paras 37-38)

2.      The Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision. It follows that the fact that the Board of Appeal did not reproduce all of the arguments of one party, or did not reply to each of those arguments, cannot by itself lead to a finding that the Board of Appeal refused to take them into account.

(see para. 46)

3.      According to Article 74(1), in fine, of Regulation No 40/94 on the Community trade mark, in proceedings relating to relative grounds for refusal of registration, the examination is restricted to the facts, evidence and arguments provided by the parties and the relief sought. Article 74(1), in fine, of that regulation also applies to cancellation proceedings involving a relative ground for invalidity under Article 52 of that regulation. Therefore, in invalidity proceedings relating to relative grounds for invalidity, the onus is on the party which brought the invalidity proceedings in reliance on an earlier national trade mark to prove its existence and, as the case may be, the extent of protection.

On the other hand, it is for the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to examine whether, in the context of invalidity proceedings, the conditions for the application of the ground for invalidity which has been pleaded have been met. In that context, it is necessary to assess the correctness of the facts pleaded, and the probative value of the evidence submitted by the parties.

The Office may be called upon to take account, in particular, of the national law of the Member State in which the earlier mark, on which the application for a declaration of invalidity is based, is protected. In that case, it must, of its own motion and by whatever means considered appropriate, obtain information about the national law of the Member State concerned, where such information is necessary in order for it to assess the applicability of the ground for invalidity in question and, in particular, the correctness of the facts pleaded or the probative value of the documents lodged. Restricting the factual basis of the examination by the Office does not preclude it from taking into consideration, in addition to the facts which have been expressly put forward by the parties to the invalidity proceedings, facts which are well known, that is, facts which are likely to be known by anyone or which may be learnt from generally accessible sources.

(see paras 65-67)

4.      Under the second sentence of Article 73 of Regulation No 40/94 on the Community trade mark, decisions of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.

In that context, the assessment of the facts forms part of the decision‑making act. The right to be heard extends to all the matters of fact or of law which form the basis for the decision-making act, but not to the final position which the administration intends to adopt.

(see paras 80-81)

5.      Under Article 52(1)(c) of Regulation No 40/94 on the Community trade mark, a Community trade mark is to be declared invalid, on application to the Office for Harmonisation in the Internal Market (Trade Marks and Designs), where there is an earlier right as referred to in Article 8(4) of that regulation and the conditions set out in that paragraph are fulfilled.

It follows from the combination of those two provisions that the proprietor of a non‑registered trade mark which is of more than mere local significance can obtain the cancellation of a subsequent Community trade mark where and to the extent that, under the law of the relevant Member State, first, rights to that sign were acquired prior to the date of application for registration of the Community trade mark, and, second, that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

For the purposes of applying Article 8(4) of Regulation No 40/94, the Board of Appeal must take into consideration both the national legislation applicable by virtue of the reference made by that provision and the judicial decisions delivered in the Member State concerned. On that basis, the applicant for a declaration of invalidity must establish that the sign at issue comes within the scope of application of the law of the Member State relied on and that it enables the use of a subsequent mark to be prohibited.

(see paras 89-91)

6.      The circumstance that a party became aware of a factual matter during the course of the procedure before the Court does not mean that that element constitutes a matter of fact which came to light in the course of the procedure. A further requirement is that the applicant was not in a position to be aware of that matter previously. A fortiori, the fact that a party became aware of the legal position only in the course of the procedure cannot constitute a new matter of law or of fact within the meaning of Article 48(2) of the Rules of Procedure of the General Court.

(see para. 167)