Case C‑445/12 P

Rivella International AG

v

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

‛Appeal — Community trade mark — Figurative mark containing the word element ‘BASKAYA’ — Opposition — Bilateral convention — Territory of a non-Member State — ‘Genuine use’’

Summary — Judgment of the Court (First Chamber), 12 December 2013

1. 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 — Application of Article 42(3) of Regulation No 207/2009

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

2. Community trade mark — Observations of third parties and opposition — Examination of the opposition — Proof of use of the earlier mark — Genuine use — Concept exclusively governed by EU law

   (European Parliament and Council Directive 2008/95, Arts 10(1) and 42(2) and (3))

1.  It is clear from the wording of Article 42 of Regulation No 207/2009 on the Community trade mark that Article 42(2) applies to earlier Community trade marks, while Article 42(3) applies to earlier national trade marks.

   Those two provisions do not distinguish national trade marks from trade marks which are the subject of an international registration. However, the ‘earlier national trade marks’ mentioned in Article 42(3) of Regulation No 207/2009 must be understood as being trade marks which have effect in a Member State, regardless of whether they have been registered nationally or internationally.

   Article 42(3) states that the rules laid down therein are to apply to the ‘earlier national trade marks’ referred to in Article 8(2)(a) of Regulation No 207/2009, but makes no distinction between the four categories of ‘earlier trade marks’ listed in that latter provision, which include trade marks registered under international arrangements which have effect in a Member State.

   It follows that Article 42(3) of Regulation No 207/2009 is intended only to apply the requirement under Article 42(2) of that regulation — that an earlier Community trade mark must have been used within the Community — to earlier national trade marks, in respect of which it is stated that use is required in the territory of a Member State.

   Accordingly, Article 42(3) of Regulation No 207/2009 may be applied to an earlier international trade mark on which opposition proceedings are based.

   (see paras 35-39)

2.  The concept of use of a Community trade mark in the European Union is exhaustively and exclusively governed by EU law.

   The Community trade mark system is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. Thus, the Court has held that the national concept of a defensive trade mark, pursuant to which an earlier trade mark is protected on the basis of national law even if its use cannot be established, cannot be used to oppose the registration of a Community trade mark.

   The position would be different only if the legislation governing the Community trade mark did not harmonise the concept of use of a trade mark. However, Article 10(1) of Directive 2008/95 on trade marks provides that, after a certain period, a trade mark which has not been put to genuine use by its proprietor in a Member State is to be subject to the sanctions provided for in that directive, including invalidity.

   (see paras 48-52)