26.10.2013   

EN

Official Journal of the European Union

C 313/12

—

set aside the judgment of the General Court (Second Chamber) of 30 May 2013 in Case T-396/11 and, consequently, dismiss the action brought by ultra air GmbH against the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market of 18 May 2011 in Case R 374/2010-4;

—

order ultra air GmbH to pay the appellant’s costs.

1.

Failure to assess the alleged abuse of rights as a generally applicable concept of law

In the judgment under appeal, the General Court committed an error of law in failing to take account of the case-law of the Court of Justice pursuant to which an abuse of rights, which is a generally applicable concept of law, which permits and requires an assessment of the circumstances of the individual case, must also be observed in relation to Community trade mark law. It claims that, on the contrary, the General Court limited itself to finding that the proceedings under Article 52(1)(a), in conjunction with Article 56(1)(a) of Regulation No 207/2009, (1) constitute a ‘Popularantrag’ (an administrative application which may be made by any legal person) and, thus, did not asses the specific circumstances of the case at issue.

In doing so, the General Court failed to have regard to the fact that, although the legislature intended invalidity proceedings brought against a mark under Article 56(1)(a) of Regulation No 207/2009 to be a ‘Popularantrag’, this does not preclude, however, consideration of the alleged abuse of rights as a generally applicable concept of law which is also to be observed under Community law.

The exclusion of claims of an abuse of rights is not the same as the introduction of a requirement that positive evidence be furnished by the applicant for invalidity of a need for legal protection and, consequently, does not have the effect that the right to bring an action is limited by the adoption of addition requirements. Moreover, the fact that the legislature has made invalidity proceedings subject to application and that a court cannot declare a registered trade mark invalid of its own motion militate in favour of the interpretation that claims of an abuse of rights should be observed in the context of Article 56(1)(a) of Regulation No 207/2009.

2.

Failure to assess the specific circumstances of the individual case

Since the General Court failed to recognise the objection of an abuse of rights as a generally applicable concept of law, the specific circumstances of the present case, which illustrate that ultra air GmbH abused its rights in seeking a declaration of invalidity of the mark ‘ultrafilter international’ (Community trade mark No 001121839), were not assessed.

In using the sign at issue itself, the applicant for invalidity seeks to exploit for itself the notoriety of the mark in respect of which it seeks invalidity, by intentionally misleading the target public to believe that it was a traditional mark of the appellant’s renowned predecessor.

Moreover, the General Court failed to assess to a sufficient degree the role of ultra air GmbH’s director as the applicant for a declaration of invalidity of the mark ‘ultrafilter international’ (Community trade mark No 001121839). While employed by the appellant he was personally responsible for the proceedings concerning the registration of the mark which he is now challenging. All of the documents to be submitted in registration proceedings as evidence of use of the contested mark in trade were produced by him personally and were, in part, even drafted by him and fell within his exclusive area of competence.