Case T-170/11

Rivella International AG

v

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

(Community trade mark — Opposition proceedings — Application for the Community figurative mark BASKAYA — Earlier international figurative mark Passaia — Proof of genuine use of the earlier mark — Relevant territory — Article 42(2) and (3) of Regulation (EC) No 207/2009)

Summary of the Judgment

1.      Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Determination of the relevant territory — Question covered by Regulation No 207/2009 and not by national law

(Council Regulation No 207/2009, Art. 42(2) and (3); Commission Regulation No 2868/95, Commission Regulation No 2868/95, Art. 1, Rule 22(3))

2.      Approximation of laws — Trade marks — Directive 2008/95 — No genuine use of a trade mark — Five-year period — Concept of ‘date of the completion of the registration procedure’ — Absence of Community harmonisation — Determination by each Member State in accordance with its procedural rules on registration

(Directive 2008/95 of the European Parliament and of the Council, Art. 10(1))

3.      Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Proper reason for non-use — Concept — Recognition at national level of the registration of defensive trade marks — Not included

(Council Regulation No 207/2009, Art. 42(2) and (3))

4.      Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Trade marks registered under international arrangements which have effect in a Member State — Trade marks regarded as national marks

(Council Regulation No 207/2009, Arts 8(2)(a) and 42(3))

1.      It is apparent from Article 42(2) and (3) of Regulation No 207/2009 on the Community trade mark and from Rule 22(3) of Regulation No 2868/95, implementing Regulation No 40/94 that questions relating to the proof furnished in support of the grounds for opposition to an application for registration of a Community trade mark and questions relating to the territorial aspect of the use of marks are governed by the relevant provisions of Regulation No 207/2009 and it is not necessary to refer to any provision of domestic law of the Member States.

The fact that earlier national or international marks may be cited in opposition against the registration of Community trade marks does not imply that the national law applicable to the earlier mark cited in opposition is the relevant law as regards Community opposition proceedings.

It is true that, in the absence of relevant provisions in Regulation No 207/2009 or, where appropriate, in Directive 2008/95 relating to trade marks, national law serves as a point of reference.

That is true as regards the date of registration of an earlier mark cited in Community opposition proceedings.

However, that is not so as regards the determination of the territory in which use of the earlier mark must be established. That question is exhaustively governed by Regulation No 207/2009 and it is not necessary to refer to national law.

Under the provisions referred to above, genuine use of an earlier mark, be it a Community, national or international mark, must be proved in the European Union or in the Member State concerned.

(see paras 26-31)

2.      See the text of the decision.

(see para. 29)

3.      See the text of the decision.

(see para. 34)

4.      The reference to Article 8(2)(a) of Regulation No 207/2009 on the Community trade mark in Article 42(3) of that regulation must be understood as meaning that ‘trade marks registered under international arrangements which have effect in a Member State’ must be equated with ‘national marks’. Therefore, Article 42(3) of Regulation No 207/2009 is applicable to international marks.

(see paras 39, 40)