Case T‑96/13

Rot Front OAO

v

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

(Community trade mark — Opposition proceedings — Application for Community figurative mark Маcка — Unregistered earlier national figurative mark Маcка — Relative ground for refusal — Article 8(4) of Regulation (EC) No 207/2009 — Application by OHIM of national law)

Summary — Judgment of the General Court (First Chamber), 28 October 2015

1.      Community trade mark — Appeals procedure — Action before the EU judicature — Jurisdiction of the General Court — Review of the lawfulness of decisions of the Boards of Appeal — Re-examination of the facts in the light of evidence not previously submitted before OHIM bodies — Exclusion

(Council Regulation No 207/2009, Art. 65)

2.      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 — Conditions — Assessment by reference to the criteria determined by the national law governing the sign relied on — Verification of the content of national law — Scope

(Council Regulation No 207/2009, Art. 8(4))

1.      See the text of the decision.

(see para. 17)

2.      When examining opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade under Article 8(4) of Regulation No 207/2009 on the Community trade mark, the question of the extent to which a sign which is protected in a Member State confers the right to prohibit the use of a subsequent trade mark must be examined in the light of the applicable national law.

In such circumstances, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) must, of its own motion and by whatever means considered appropriate, obtain information about that national law, where such information is necessary to assess the applicability of the ground for refusal of registration in question. Accordingly, OHIM must take into consideration, in addition to the facts which have been expressly put forward by the parties to the opposition 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. That obligation to obtain, of its own motion, information about national law applies to OHIM, in appropriate cases, where it already has before it information relating to national law, either in the form of claims as to its content, or in the form of evidence submitted and whose probative value has been claimed.

In that regard, OHIM must use all the means available to it in connection with its power to verify in order to obtain information about the applicable national law and to carry out further research into the wording and scope of the provisions of national law relied on, in the light of the arguments submitted by the applicant, either of its own motion or by inviting the applicant to corroborate its claims.

(see paras 24, 31, 35)