Case T‑249/15

JT

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — Application for EU figurative mark QUILAPAYÚN — Relative ground for refusal — Well-known mark — Article 8(2)(c) of Regulation (EC) No 207/2009 (now Article 8(2)(c) of Regulation (EU) 2017/1001) — Proprietor of the mark)

Summary — Judgment of the General Court (Fourth Chamber), 11 December 2017

1. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier unregistered mark which is well-known in a Member State — Likelihood of confusion with the earlier mark — Figurative mark QUILAPAYÚN

   (Council Regulation No 207/2009, Art. 8(2)(c))

2. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier unregistered mark which is well-known in a Member State — Conditions — Proof of acquisition of rights over the sign by the opponent

   (Council Regulation No 207/2009, Arts 8(2)(c) and 41; Commission Regulation No 2868/95, Art. 1, Rule 19(2))

3. EU trade mark — Definition and acquisition of the EU trade mark — Relative grounds for refusal — Opposition by the proprietor of an earlier unregistered mark which is well-known in a Member State — Conditions — Proof of exclusive ownership — None

   (Council Regulation No 207/2009, Arts 8(2)(c) and 41; Commission Regulation No 2868/95, Arts 1, Rule 15(1), 19(2) and 20(1))

4. EU trade mark — Appeals procedure — Action before the EU judicature — Power of the General Court to alter the contested decision — Limits

   (Council Regulation No 207/2009, Art. 65(3))

1.  See the text of the decision.

   (see paras 39-52)

2.  Proof of ownership of an unregistered mark corresponds to specific requirements. The opponent may not, for example, produce a certificate of filing or registration of the mark on which the opposition is based to prove that he is the proprietor of that mark. He must prove that, by use of the earlier unregistered mark, he has acquired rights over that mark.

   (see para. 42)

3.  It is not apparent from any provision that the opponent who brings opposition proceedings under Article 8(2)(c) of Regulation No 207/2009 on the European Union trade mark must prove that he is the ‘exclusive’ proprietor of the earlier well-known unregistered mark on which he bases his opposition. It may be inferred from Article 41 of Regulation No 207/2009, Rule 19(2) and Rule 20(1) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark that the opponent is required to prove that he has acquired sufficient rights in the earlier well-known unregistered mark, within the meaning of Article 8(2)(c) of Regulation No 207/2009, to be regarded as proprietor of that mark, something which does not involve establishing exclusive ownership of that mark.

   Rule 15(1) of Regulation No 2868/95 provides, moreover, that, ‘if an earlier mark and/or an earlier right has more than one proprietor (co-ownership), the opposition may be filed by any or all of them’, which allows each of the co-owners of an earlier mark to oppose the registration of a mark that is applied for.

   (see paras 46, 47)

4.  See the text of the decision.

   (see para. 52)