1

By its appeal, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) seeks to have set aside the judgment of the General Court of the European Union of 13 September 2012 in Case T‑404/10 National Lottery Commission v OHIM — Mediatek Italia and De Gregorio (Representation of a hand) (‘the judgment under appeal’), by which that court upheld the action brought by the National Lottery Commission (‘the NLC’) for annulment of the decision of the First Board of Appeal of OHIM of 9 June 2010 (Case R 1028/2009-1), relating to invalidity proceedings between Mediatek Italia Srl and Mr Giuseppe De Gregorio (‘the applicants for a declaration of invalidity’), on the one hand, and the NLC on the other (‘the contested decision’).

2

Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended by Council Regulation (EC) No 1891/2006 of 18 December 2006 (OJ 2006 L 386, p. 14) (‘Regulation No 40/94’), includes an Article 52, entitled ‘Relative grounds for refusal’, which provides in paragraph 2:

‘A Community trade mark shall also be declared invalid on application to [OHIM] or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right, and in particular:

…

…

under the Community legislation or national law governing the protection.’

3

Article 63(1) and (2) of that regulation, relating to actions before the Court of Justice of the European Union, provides:

‘1.   Actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals.

2.   The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power.’

4

Article 74(1) of Regulation No 40/94, entitled ‘Examination of the facts by the Office of its own motion’, provides:

‘In proceedings before it [OHIM] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.’

5

Regulation No 40/94 was repealed and codified by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009.

6

Articles 52, 63 and 74 of Regulation No 40/94 became, without any substantial modification, Articles 53, 65 and 76 respectively of Regulation No 207/2009.

7

Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4; ‘the implementing regulation’), lays down, inter alia, the rules governing the way in which proceedings for the revocation or invalidation of a Community trade mark are to be conducted before OHIM.

8

Rule 37 of the implementing regulation is worded as follows:

‘An application to [OHIM] for revocation or for a declaration of invalidity … shall contain:

…

9

On 2 October 2007, the NLC obtained the registration of the following Community figurative mark at OHIM (‘the contested mark’):

10

On 20 November 2007, the applicants for a declaration of invalidity filed an application with OHIM, on the basis of Article 52(2)(c) of Regulation No 40/94, for a declaration that the contested trade mark was invalid by virtue of the existence of an earlier copyright, owned by Mr De Gregorio in the following figurative sign (the ‘mano portafortuna’):

11

By decision of 16 July 2009, the Cancellation Division of OHIM granted that application for a declaration of invalidity on the ground, in essence, that the applicants for a declaration of invalidity had demonstrated that a copyright protected by Italian legislation existed which was virtually identical to the contested trade mark, and that it pre-dated the contested trade mark.

12

The NLC filed an appeal against that decision.

13

By the contested decision, the First Board of Appeal of OHIM dismissed that appeal on the ground that all the conditions required by Article 53(2) of Regulation No 207/2009 were satisfied.

14

As regards the existence of a copyright protected by Italian law, the Board of Appeal found, in the first place, that the applicants for a declaration of invalidity had provided evidence of the creation of a work, and of their status as owners of the copyright for that work, by producing a photocopy of a private document dated 16 September 1986 (‘the 1986 agreement’) under which a third party purporting to be the author of the ‘mano portafortuna’ claimed that he had assigned to one of those applicants his rights to reproduce and use that work reproduced, with other drawings, as annexed to that agreement.

15

In the second place, the Board of Appeal took the view that the anomalies referred to by the NLC, namely, the mention of a maximum duration of the copyright protection of 70 years, even though such a duration has existed only since 1996, the date of the post office stamp which is a Sunday, a day on which post offices are closed, and the difference in terms of quality and design between the drawing of the ‘mano portafortuna’ and the other drawings appended to the 1986 agreement, gave no grounds for doubting the veracity of the content of that agreement. In that context, the Board of Appeal made it clear that, whereas, under Article 2702 of the Italian Civil Code, the private document constitutes conclusive evidence regarding the provenance of the statements of the parties to the 1986 agreement, pending proceedings challenging it as a forgery, it follows, nevertheless, from the wording of that provision that the Board remained competent to assess the content of that agreement freely.

16

At the end of its examination of the 1986 agreement, the Board of Appeal confirmed the existence of a copyright protected by Italian law.

17

By application lodged at the Registry of the General Court on 8 September 2010, the NLC brought an action for annulment of the contested decision. In support of that action, it relied on three pleas in law, alleging (i) infringement of Article 53(2)(c) of Regulation No 207/2009, in so far as the Board of Appeal had found that the existence of an earlier copyright had been proved by the applicants for a declaration of invalidity; (ii) illegality of the Board of Appeal’s refusal to open an oral procedure and to order the production of the original of the 1986 agreement; and (iii) incorrect assessment by the Board of Appeal of its powers to determine whether that agreement was authentic.

18

By the judgment under appeal, the General Court granted the application, upholding the first and third pleas put forward by the NLC in support of its action.

19

In that regard, the General Court set out first of all, in paragraphs 14 to 21 of the judgment under appeal, the rules and principles that the Board of Appeal must apply for the purposes of determining whether proof of the existence of a copyright protected by a national regulation has been provided. Referring to the judgment in Case C-263/09 P Edwin v OHIM [2011] ECR I-5853, paragraphs 50 to 52, it held, at paragraph 18, that it is for the applicant to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law.

20

Next, the General Court observed, in paragraph 20 of the judgment under appeal, that, according to its own case-law, OHIM must, of its own motion and by whatever means considered appropriate, obtain information about the national law of the Member State concerned, where such information is necessary for the purposes of assessing the applicability of a ground for invalidity pleaded and, in particular, for the purposes of assessing the accuracy of the facts adduced or the probative value of the documents submitted. The General Court stated, moreover, that restricting the factual basis of the examination by OHIM does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the invalidity proceedings, facts which are well known, that is, facts that are likely to be known by anyone or that may be learnt from generally accessible sources.

21

Finally, in the light of those principles, the General Court held, in paragraphs 23 and 24 of the judgment under appeal, that the Board of Appeal was right to rely on the rules of Italian law in determining the probative value of the 1986 Agreement, but that it was for the General Court to determine whether the Board of Appeal had construed the relevant Italian law correctly in finding that, pursuant to Articles 2702 and 2703 of the Italian Civil Code, the 1986 agreement constituted conclusive evidence regarding the provenance of the statements of the parties to that agreement, pending the introduction of proceedings challenging it as a forgery.

22

In that regard, the General Court examined, in paragraphs 25 to 32 of the judgment under appeal, the provisions of Italian law, namely, Article 2704 of the Italian Civil Code, as interpreted by the Corte Suprema di Cassazione (Italian Supreme Court of Cassation) in its judgment No 13912 of 14 June 2007 (‘the judgment of 14 June 2007’). Having pointed out, at paragraph 33 of that judgment, that the contested decision made no reference to that article, the General Court considered, in paragraph 35 of the judgment under appeal, that, in accordance with the case-law of the Corte Suprema di Cassazione, it was open to the NLC, without having to bring proceedings for a declaration of forgery, to adduce proof that, in fact, the 1986 agreement had been drawn up on a date other than that shown on the post office stamp. The General Court therefore inferred from this, in paragraph 36 of that judgment, that the Board of Appeal had misinterpreted the national law applicable pursuant to Article 53(2) of Regulation No 207/2009 and therefore had failed to assess accurately the precise scope of its own powers.

23

Having noted, at paragraph 40 of the judgment under appeal, that that misinterpretation of the national law might have had an effect on the content of the contested decision, the General Court concluded, in paragraph 41 of that judgment, that the contested decision had to be annulled, without its being necessary to examine the second plea relied on by the NLC in support of its action.

24

OHIM claims that the Court should set aside the judgment under appeal and order the NLC to pay the costs incurred by it.

25

The NLC contends that the appeal should be dismissed.

26

In support of its appeal, OHIM relies on three pleas in law, alleging (i) infringement of Article 76(1) of Regulation No 207/2009 and of Rule 37 of the Implementing Regulation; (ii) infringement of the right to be heard, insofar as OHIM’s right to be heard regarding the judgment of 14 June 2007 was not observed; and (iii) manifest inconsistency and distortion of the facts which affect the reasoning followed and the conclusion reached by the General Court.

27

By its first ground of appeal, which consists of two limbs, OHIM submits that the General Court could not rely on either Article 2704 of the Italian Civil Code (first limb) or the judgment of 14 June 2007 (second limb), since those two factors had not been invoked by the parties and did not, therefore, fall within the subject-matter of the dispute brought before the Board of Appeal.

28

Taking the view that it is not clear from the line of reasoning followed by the General Court whether that court regards applicable national law as a question of law or a matter of common knowledge, OHIM develops an alternative line of reasoning. In the event that the General Court took the view that the application of the national law is a question of law, it infringed, first, the principle, expressed in Rule 37(b)(iii) of the Implementing Regulation, that it is for the party which relies on the national law to furnish OHIM with particulars establishing the content of the legislation and the reason why it applies to the case in question, and, secondly, the solution provided in Edwin v OHIM, from which it is clear that the national law is a question of fact which the parties must invoke and prove. If the General Court took the view that the application of the national law is a question of fact, it unduly regarded the national legislation as a ‘matter of common knowledge’ which, on that basis, could be examined and relied upon by OHIM on its own initiative. Furthermore, the General Court substituted its own analysis for that of the Board of Appeal and assessed matters upon which the latter had not expressed a view.

29

In response to that line of argument, the NLC argues, first, that Rule 37 of the Implementing Regulation and Edwin v OHIM are concerned with the burden of proof incumbent upon the applicant for a declaration of invalidity and make no reference either to the defendant, who is at a disadvantage when an OHIM decision is challenged on the basis of a claim based on a right that he may be completely unaware of. Furthermore, the burden of proof incumbent upon the applicant under Rule 37 and Edwin v OHIM does not extend to issues of national procedural law.

30

Secondly, the NLC claims that the Board of Appeal did not simply conduct a factual analysis, but gave a legal decision. An interpretation of Article 76(1) of Regulation No 207/2009 to the effect that that provision restricts the examination carried out by the Board of Appeal merely to the relative grounds for refusal raised by the applicant for a declaration of invalidity would be contrary to the application of the fundamental principles of law which OHIM must take into account, as is made clear in, inter alia, in recital 13 in the preamble to that regulation and in Article 83 thereof.

31

Thirdly, the NLC points out that the error made by the Board of Appeal stemmed from a misinterpretation of Articles 2702 and 2703 of the Italian Civil Code, to which its attention had been directed, and that the issue of the probative value of the 1986 agreement had been raised before the Board of Appeal and the General Court. Accordingly, even assuming that the General Court was wrong to introduce a discussion on Article 2704 of that code and the related case-law, that error did not affect the outcome of the analysis which it carried out, so that the ground of appeal should be rejected as unfounded.

32

It should be noted at the outset that, given the date on which the registration of the contested mark was obtained, namely, 2 October 2007, and the date on which the applicants for a declaration of invalidity submitted their application before OHIM, that is, on 20 November of the same year, the present ground of appeal must be assessed with regard to the provisions of Regulation No 40/94, since Regulation No 207/2009 was not in force on those dates (see, inter alia, Case C‑122/12 P Rintisch v OHIM [2013] ECR, paragraph 2).

33

The first ground put forward in support of the appeal relates, in essence, to the procedural system that is followed when applying national law with regard, on the one hand, to an application for a declaration of invalidity of a Community trade mark brought before OHIM and, on the other, to an appeal brought before the General Court against the decision given on that application, where the dispute is based, in accordance with Article 52(2) of Regulation No 40/94, on the existence of an earlier right protected by a national rule of law. In order to assess whether that ground of appeal is well founded, it is appropriate, at the outset, to recall how, in such a context, the various roles are allocated between the applicant for a declaration of invalidity, the competent OHIM bodies and the General Court.

34

With regard to the role of that applicant, the Court has held that Rule 37 of the Implementing Regulation imposes on him the burden of providing OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law (Edwin v OHIM, paragraph 50).

35

With regard to the competent OHIM bodies, the Court stated that it is incumbent on them to assess the authority and scope of the particulars submitted by the applicant in order to establish the content of the rule of national law that he relies on (Edwin v OHIM, paragraph 51).

36

In relation to the role of the General Court, the Court, referring to Article 63(2) of Regulation No 40/94, which defines the cases in which an action may be brought against decisions of the Boards of Appeal of OHIM, stated that it has jurisdiction to conduct a full review of the legality of OHIM’s assessment of the particulars submitted by an applicant in order to establish the content of the national law whose protection he claims (Edwin v OHIM, paragraph 52).

37

Contrary to what is claimed by OHIM, it is not apparent from paragraphs 50 to 52 of Edwin v OHIM that a rule of national law, made applicable by a reference such as that in Article 52(2) of Regulation No 40/94, should be treated as a purely factual matter, the existence of which OHIM and the Court merely establish on the basis of the evidence before them.

38

It is apparent, by contrast, from those paragraphs that the Court intended to emphasise the scope of the review that is required, both before the competent bodies of OHIM and before the General Court, regarding the application of national law in a dispute arising from an application for annulment of a Community trade mark.

39

It is in the light of those considerations that it must be examined whether OHIM and the General Court, in such a procedural context, should do no more than examine the documents submitted by the applicant in order to establish the content of the applicable national law or whether they may exercise a power of verification regarding the relevance of the law invoked that involves, if necessary, obtaining information of their own motion on the conditions of application and the scope of the rules of national law relied upon.

40

In that regard it should be noted that the review by OHIM and by the General Court must be conducted in the light of the requirement, referred to by the Advocate General in point 91 of his Opinion, of ensuring the practical effect of Regulation No 40/94, which is to protect the Community mark.

41

In view of the above, since the application of national law can lead to a finding that there is a ground for invalidation of a duly registered Community trade mark, it seems necessary for OHIM and the General Court to be able, before granting the application for a declaration of invalidity of such a mark, to ascertain the relevance of the evidence produced by the applicant with regard to the taking of evidence, which is incumbent upon it, concerning the content of that national law.

42

The review conducted by the competent OHIM bodies and by the General Court must also meet the requirements of the role performed by them in disputes relating to Community trade marks.

43

Where the competent OHIM bodies are called upon to rule, initially, on an application for a declaration of invalidity of a Community mark based on an earlier copyright protected by a rule of national law, their decision may have the effect of depriving the proprietor of the Community trade mark of a right that has been granted to him. The scope of such a decision necessarily implies that the authority which takes it is not limited to the role of mere validation of the national law as submitted by the applicant for a declaration of invalidity.

44

As regards the judicial review conducted, subsequently, by the General Court, it should be noted that, as the Advocate General pointed out in point 92 of his Opinion, that review must meet the requirements of the principle of effective judicial protection. In so far as the application of national law, in the procedural context in question, may have the effect of depriving the proprietor of a Community trade mark of his right, it is essential that that Court is not deprived, due to possible lacunae in the documents submitted as evidence of the applicable national law, of the real possibility of exercising an effective review. To that end, it must therefore be able to confirm, beyond the documents submitted, the content, the conditions of application and the scope of the rules of law relied upon by the applicant for a declaration of invalidity.

45

Consequently, it was without making any error of law that the General Court held, in paragraph 20 of the contested judgment, that ‘in circumstances in which OHIM may be called upon to take account, in particular, of the national law of the Member State in which protection is given to the earlier mark on which the application for a declaration of invalidity is based, it must — of its own motion and by whatever means considered appropriate — obtain information about the national law of the Member State concerned, where such information is necessary for the purposes of assessing the applicability of a ground for invalidity relied on before it and, in particular, for the purposes of assessing the accuracy of the facts adduced or the probative value of the documents submitted’.

46

In the present case, the General Court, after noting, at paragraph 24 of the judgment under appeal, that OHIM had applied Articles 2702 and 2703 of the Italian Civil Code to assess the probative value of the 1986 agreement, also took into consideration, in paragraphs 27 to 32 of that judgment, Article 2704 of that code, with regard to the reliability of the date of a private document, together with the national case-law concerning the interpretation and application of that article. In so doing, the General Court did not exceed the limits of its power to seek information of its own motion in order to ascertain the content, the conditions of application and the scope of the rules of national law relied upon by the applicant for a declaration of invalidity in order to establish the probative value of the agreement on which the latter based its earlier right to the contested mark.

47

In those circumstances, both limbs of the first ground of appeal must be rejected.

48

Referring to the general principle of EU law that a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known, OHIM submits that, in the present case, it did not have that opportunity with regard to the judgment of 14 June 2007, which was not invoked by the parties during the administrative procedure, and, therefore, did not form part of the subject-matter of the dispute before the Board of Appeal. According to OHIM, had it had that opportunity, the line of reasoning followed and conclusion reached by the General Court would have been different.

49

OHIM concludes from this that the General Court infringed its right to be heard.

50

The NLC responds that the point of law to which the case-law of the Corte Suprema di Cassazione is relevant was raised before the hearing since, pursuant to Article 64 of its Rules of Procedure, by letter of 7 February 2012 the General Court had asked OHIM to respond to questions relating to the scope of Article 2704 of the Italian Civil Code. OHIM did therefore have the opportunity of being heard on that issue, both in writing and at the hearing, and it cannot be submitted that, in the absence of a prior notification concerning all relevant or potentially relevant case-law, a judgment which refers to that case-law infringes the rights of the defence.

51

The NLC adds that, even assuming that the General Court did err in law by failing to give OHIM the opportunity to submit observations on the national case-law relied on by it, that error did not in any event have any effect on the solution adopted by that court in the case before it.

52

The right to a fair trial is a fundamental principle of EU law, laid down in Article 47 of the Charter of Fundamental Rights of the European Union.

53

In order to satisfy the requirements of that law, the European Union judicature must ensure that the principle that the parties should be heard is respected in proceedings before them and that they themselves respect that principle, which applies to any procedure which may result in a decision by an institution of the European Union perceptibly affecting a person’s interests (Case C-89/08 P Commission v Ireland and Others [2009] ECR I-11245, paragraphs 51 and 53, and Case C-197/09 RX-II Review M v EMEA [2009] ECR I-12033, paragraphs 41 and 42).

54

The rule that the parties should be heard does not merely confer on each party to proceedings the right to be apprised of the documents produced and observations made to the Court by the other party and to discuss them. It also implies a right for the parties to be apprised of the matters raised by those courts of their own motion, on which they intend basing their decision, and to discuss them. In order to satisfy the requirements relating to the right to a fair hearing, it is important for the parties to be apprised of, and to be able to debate and be heard on, the matters of fact and of law which will determine the outcome of the proceedings (Commission v Ireland and Others, paragraphs 55 and 56, and Case C‑472/11 Banif Plus Bank [2013] ECR, paragraph 30).

55

In the present case, it is common ground that the judgment of 14 June 2007 was not mentioned either during the proceedings before OHIM or in the written pleadings before the General Court, but was referred to by the latter of its own motion at the end of the written procedure.

56

It is therefore necessary to examine whether or not, in the present case, the parties had the opportunity in the course of the proceedings before the General Court to submit their observations on that judgment.

57

As is clear from the letters which were sent to them on 7 February 2012 by the General Court and the questions annexed thereto, although they were invited to put forward their point of view on the provisions of Article 2704 of the Italian Civil Code, the parties were not, however, put in a position to submit their observations on the judgment of 14 June 2007, to which no reference was made in those letters.

58

Furthermore, as the Advocate General noted in point 117 of his Opinion, it is quite clear from a reading of paragraphs 32, 35, 36, 39 and 40 of the judgment under appeal that the content of the judgment of 14 June 2007 was crucial to the General Court’s line of reasoning. It is because it found that the Board of Appeal had failed to take into account that case-law, in accordance with which proof may be adduced that the date of the post office stamp is not genuine without its being necessary for proceedings to be brought for a declaration of forgery, that the General Court took the view that the Board of Appeal could have attributed more weight to the anomalies alleged by the NLC and that it was therefore necessary to annul the contested decision.

59

It follows from the foregoing that the General Court infringed the principle that the parties should be heard, stemming from the requirements relating to the right to a fair trial.

60

It follows that the second ground relied upon by OHIM in support of its appeal must therefore be upheld.

61

Having regard to the procedural defect vitiating the application, by the General Court, of the case-law of the Corte Suprema di Cassazione in relation to Article 2704 of the Italian Civil Code, it is not appropriate, at the present stage of the proceedings, to examine OHIM’s third ground of appeal, alleging manifest inconsistency and distortion of the facts which affect the merits of the reasoning followed by the General Court on the basis of that case-law.

62

It follows from all the foregoing that the judgment under appeal must be set aside.

63

According to the first paragraph of Article 61 of the Statute of the Court of Justice of the European Union, the latter may, where the decision of the General Court has been annulled, either itself give final judgment in the matter, where the state of the proceedings so permits, or refer the case back to the General Court for judgment.

64

In the present case, the Court considers that the state of the proceedings does not permit final judgment to be given in the matter, since the parties must first have the opportunity to express their views on some of the points of national law raised by the General Court of its own motion.

65

It is therefore necessary to refer the case back to the General Court for judgment on the substance of the case.

66

Since the case has been referred back to the General Court, the costs relating to the present appeal must be reserved.

On those grounds, the Court (First Chamber) hereby: