Joined Cases T-114/07 and T-115/07

Last Minute Network Ltd

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

(Community trade mark – Cancellation proceedings – Community figurative mark LAST MINUTE TOUR – Earlier unregistered national mark LASTMINUTE.COM – Relative ground for refusal – Reference to the national law governing the earlier mark – Action for passing off – Article 8(4) and Article 52(1)(c) of Regulation (EC) No 40/94 (now Article 8(4) and Article 53(1)(c) of Regulation (EC) No 207/2009))

Summary of the Judgment

Community trade mark – Surrender, revocation and invalidity – Relative grounds of invalidity

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

According to Article 52(1)(c) of Regulation No 40/94 on the Community trade, 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) and the conditions set out in that paragraph are fulfilled.

It is clear from the combination of those two provisions that the proprietor of a non-registered trade mark or other sign used in the course of trade of more than mere local significance may obtain the cancellation of a more recent Community trade mark where and in so far as, according to the law of the Member State governing that sign, the rights over that sign were acquired before the date on which the application for the Community trade mark was filed and that sign gives its proprietor the right to prohibit the use of a subsequent mark.

For the purposes of the application of 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 falls within the scope of the law of the Member State relied on and that it enables the use of a subsequent mark to be prohibited.

(see paras 45-47)