Case T‑191/04

MIP Metro Group Intellectual Property GmbH & Co. KG

v

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

(Community trade mark – Opposition proceedings – Application for a figurative mark consisting of the word mark METRO – Earlier national word mark METRO – Expiry of protection of earlier national trade mark)

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 registered for identical or similar goods or services

(Council Regulation No 40/94, Arts 8(1)(b) and 42)

2.      Community trade mark – Observations of third parties and opposition – Examination of the opposition – Scope – Appeals procedure

(Council Regulation No 40/94, Art. 61(1))

3.      Community trade mark – Procedural provisions – Taking of evidence

(Council Regulation 40/94, Art. 76; Commission Regulation No 2868/95, Art. 1, Rules 16 and 20)

1.      The essential purpose of Articles 8 and 42 of Regulation No 40/94 on the Community trade mark and Rules 15, 16 and 20 of the implementing regulation, concerning relative grounds for refusal and opposition proceedings, is to ensure that, by making it possible to refuse registration of a new mark which may conflict with an earlier mark as there is a likelihood of confusion between them, the earlier mark may retain its function of identifying origin.

In that regard, the function of an earlier mark as a means of identifying its origin cannot be undermined by another mark which is registered only after the term of protection of the earlier mark has expired. Thus, no conflict can arise between the mark applied for and an earlier mark which has expired during the opposition period, given that the mark applied for may be registered only after the end of the opposition proceedings.

(see paras 31-33)

2.      According to case-law, in the context of the re-examination of the decision on the opposition conducted by the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) under Article 61(1) of Regulation No 40/94 on the Community trade mark, the outcome of the appeal depends on whether or not a new decision with the same operative part as the decision under appeal may be lawfully adopted at the time of the appeal ruling. In the course of that re-examination, the Office Boards of Appeal may exercise any power within the competence of the department which was responsible for the decision appealed, except where the case is remitted to that department. Consequently, the principle established by that case-law must be regarded as applicable to the findings of the Opposition Division, with the effect that neither the Opposition Division nor the Boards of Appeal may adopt a decision that is unlawful at the time when they make a decision based on the evidence submitted by the parties in the proceedings before them. Thus, the Opposition Division and the Boards of Appeal must take account of changes in circumstances that occur between the filing of the opposition and the decision on the opposition as a result of evidence submitted by the parties in response to the Office’s request for information.

(see paras 34-36)

3.      In order to ascertain in opposition proceedings whether the earlier trade mark’s function of identifying origin may be invalidated as a result of it co-existing in time with the mark applied for, with which it is liable to be confused, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) must be aware of the earlier mark’s term of protection.

The power to request information from an opponent on the earlier mark’s term of protection may be inferred from Regulation No 40/94 on the Community trade mark and the implementing regulation. Thus, pursuant to Article 76 of Regulation No 40/94, the Office may request information and the production of documents in any proceedings before it, in particular such information or documents as it deems necessary to enable it to make a decision on the opposition. It follows from Rule 16 in conjunction with Rule 20 of the implementing regulation that the Office may request the opponent to submit facts, evidence and arguments which are not set out in the notice of opposition, including, inter alia, the certificate of registration of the earlier mark. Thus, the Office is entitled to require an opponent to prove that an earlier trade mark has been renewed after its term of protection has expired where such an event occurs after the notice of opposition has been filed and before the Office has given a decision on the opposition.

(see paras 38-41,46)