Joined Cases T-225/06, T-255/06, T-257/06 and T-309/06

Budějovický Budvar, národní podnik

v

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

‛Community trade mark — Opposition proceedings — Applications for Community word and figurative marks BUD — Appellations ‘bud’ — Relative grounds for refusal — Article 8(4) of Regulation (EC) No 40/94’

Judgment of the Court of First Instance (First Chamber), 16 December 2008   II ‐ 3562

Summary of the Judgment

1. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Sign giving its proprietor the right to prohibit use of a subsequent mark

   (Council Regulation No 40/94, Art. 8(4))

2. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Sign giving its proprietor the right to prohibit use of a subsequent mark

   (Council Regulation No 40/94, Art. 8(4); Commission Regulation No 2868/95, Art. 1, Rule 20(7)(c))

3. Community trade mark — Procedural provisions — Examination of the facts of the Office’s own motion

   (Council Regulation No 40/94, Art. 74(2))

4. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade

   (Council Regulation No 40/94, Arts 8(1)(b) and (4), and 43(2) and (3); Commission Regulation No 2868/95, Art. 1, Rule 22)

5. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade

   (Council Regulation No 40/94, Art. 8(4))

6. Community trade mark — Definition and acquisition of the Community trade mark — Relative grounds for refusal — Opposition by the proprietor of an unregistered trade mark or other sign used in the course of trade — Sign giving its proprietor the right to prohibit use of a subsequent mark

   (Council Regulation No 40/94, Art. 8(4))

7. Community trade mark — Procedural provisions — Examination of the facts of the Office’s own motion

   (Council Regulation No 40/94, Art. 74(1))

1.  The decision of the Board of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) that, because the effects of the appellation of origin ‘bud’, registered with the World Intellectual Property Organisation (WIPO) under the Lisbon Agreement in respect of beer had been declared invalid by the judgment of a French court, the opposition brought against the word and figurative signs BUD for which registration as a community trade mark was sought for goods in respectively Classes 16, 21, 25 and 32 and Classes 32, 33, 35, 38, 41 and 42 of the Nice Agreement could not succeed on the basis of a right ‘presented as an appellation of origin’, but which in fact ‘is not … an appellation of origin at all’, when that judgment is subject to an appeal the effect of which is to suspend the judgment’s effect, is an infringement of Article 8(4) of Regulation No 40/94 on the Community trade mark.

   Since the effects of the appellation of origin ‘bud’ have not been declared definitively to be invalid in France, the Board of Appeal ought, under Article 8(4) of Regulation No 40/94, to have taken account of the relevant national law and the registration made under the Lisbon Agreement, and did not have the power to call in question the fact that the claimed earlier right was an ‘appellation of origin’.

   (see paras 83, 87, 90)

2.  As is apparent from the fifth recital in the preamble to Regulation No 40/94 on the Community trade mark, Community law relating to trade marks does not replace the laws of the Member States on trade marks. Accordingly, the Court of First Instance has held that the validity of a national trade mark may not be called in question in proceedings for registration of a Community trade mark.

   It follows that the system set up by Regulation No 40/94 presupposes that the Office for Harmonization in the Internal Market (Trade Marks and Designs) takes into account the existence of earlier rights which are protected at national level. Accordingly, Article 8(1), read in conjunction with Article 8(4) of Regulation No 40/94, provides that the proprietor of another sign used in the course of trade of more than mere local significance and which is effective in a Member State may, subject to the specified conditions, oppose the registration of a Community trade mark. To ensure that protection, Article 8(4) of Regulation No 40/94 refers specifically to ‘the law of the Member State governing’ the claimed earlier right.

   Since the effects of an appellation of origin have not been declared definitively to be invalid in a State which is a contracting party of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, the Office must, under Article 8(4) of Regulation No 40/94, take account of the relevant national law and the registration made under the Lisbon Agreement, and does not have the power to call in question the fact that the claimed earlier right constitutes an ‘appellation of origin’.

   If the Office has serious doubts as to whether the earlier right could be classified as an ‘appellation of origin’ and therefore as to the protection to be afforded to it under the national law relied on, when that issue is in fact the subject of court proceedings within the contracting State in question, it is entitled, under Rule 20(7)(c) of Regulation No 2868/95 implementing Regulation No 40/94, to suspend the opposition proceedings until a final judgment on the matter is delivered.

   (see paras 88-91)

3.  It is clear from the wording of Article 74(2) of Regulation No 40/94 on the Community trade mark that the Office for Harmonization in the Internal Market (Trade Marks and Designs) may disregard facts or evidence not submitted in due time by the parties. It can be inferred from such wording that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits governing such submission provided for in Regulation No 40/94 and that the Office is in no way prohibited from taking account of facts and evidence which are submitted late.

   (see para. 153)

4.  Under Article 8(4) of Regulation No 40/94 on the Community trade mark, opposition proceedings may be brought against an application for a Community trade mark on the basis of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance.

   The objectives and requirements associated with proof of genuine use of an earlier trade mark within the meaning of Article 43(2) of Regulation No 40/94 are not the same as those relating to proof of use, in the course of trade, of a sign covered by Article 8(4) of that regulation, particularly when the sign is an appellation of origin registered under the Lisbon Agreement or an appellation protected under a bilateral convention.

   Under Article 8(4) of Regulation No 40/94, it is possible for certain signs not to lose the rights attached to them, notwithstanding the fact that no ‘genuine’ use is made of them. An appellation of origin registered under the Lisbon Agreement cannot be deemed to have become generic, as long as it is protected as an appellation of origin in the country of origin. Moreover, the protection conferred on the appellation of origin is ensured without renewal of registration (Articles 6 and 7(1) of the Lisbon Agreement). That does not mean that it is possible not to use the sign relied on pursuant to Article 8(4) of Regulation No 40/94. However, the opposing party need do no more than show that the sign concerned was used in the context of a commercial activity with a view to economic advantage, and need not prove that the sign has been put to genuine use within the meaning and according to the requirements of Article 43(2) and (3) of Regulation No 40/94 and Rule 22 of Regulation No 2868/95 implementing Regulation No 40/94. A contrary interpretation would impose on signs covered by Article 8(4) requirements specifically linked to trade marks and the extent of their protection. Further, under Article 8(4) of Regulation No 40/94, unlike under Article 8(1)(b) of Regulation No 40/94, the opposing party must still show that the sign concerned gives him the right, according to the law of the Member State concerned, to prohibit use of a subsequent mark.

   It does not follow from the wording of Article 8(4) of Regulation No 40/94 that the sign concerned must be used in the territory whose law is invoked in support of the protection of that sign. The signs referred to in that Article may enjoy protection in a particular territory, even though they are not used in that particular territory, but only in another territory.

   It is necessary to determine whether the evidence provided by the opposing party in the course of the administrative proceedings reflects use of the signs concerned in the context of a commercial activity with a view to economic advantage, and not as a private matter, whatever the territory concerned by that use.

   Finally, according to Article 8(4) of Regulation No 40/94, the opposition is to be based on a sign ‘used’ in the course of trade. It does not follow from that provision that the opposing party must show that the sign concerned was used prior to the Community trade mark application. At most it may be required, as for earlier trade marks, and to avoid situations where the earlier right is used solely because of opposition proceedings, that the sign concerned was used before publication of the trade mark application in the Community Trade Marks Bulletin.

   (see paras 163, 166-169)

5.  Under Article 8(4) of Regulation No 40/94 on the Community trade mark, opposition proceedings may be brought against an application for a Community trade mark on the basis of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance.

   It can be inferred from a reading of that article that that provision refers to the significance of the sign concerned and not to the significance of its use. The significance of the sign concerned covers, under Article 8(4) of Regulation No 40/94, the geographical extent of its protection. The latter must not be merely local. If it is, any opposition to a Community trade mark application is bound to fail. Article 107 of Regulation No 40/94, which is headed ‘Prior rights applicable to particular localities’, specifies moreover that ‘[t]he proprietor of an earlier right which only applies to a particular locality may oppose the use of the Community trade mark in the territory where his right is protected in so far as the law of the Member State concerned so permits’. The significance of the right is therefore closely bound up with the territory where that right is protected.

   (see para. 180)

6.  Under Article 8(4) of Regulation No 40/94 on the Community trade mark, opposition proceedings may be brought against an application for a Community trade mark on the basis of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance.

   Under that article, the sign relied upon must confer on its proprietor the right to prohibit the use of a subsequent trade mark, pursuant to the Community legislation or the law of the Member State governing that sign. Since Article 8 of Regulation No 40/94 deals with relative grounds for refusal, and given the terms of Article 74 of that regulation, the burden of proving that the sign concerned confers the right to prohibit use of a subsequent trade mark lies on the party bringing an opposition before the Office for Harmonization in the Internal Market (Trade Marks and Designs).

   In that context, it is necessary to have regard, in particular, to the national rules relied on and the judicial decisions delivered in the Member State concerned. On that basis, the opposing party must establish that the sign concerned falls within the scope of application of the law of the Member State relied on and that it allows that party to prohibit use of a subsequent mark. In the context of Article 8(4) of Regulation No 40/94, the opposing party must establish those matters with regard to the Community trade mark for which registration is sought.

   (see paras 184, 185, 187)

7.  Under Article 74 of Regulation No 40/94 on the Community trade mark, in proceedings relating to relative grounds for refusal of registration, the Office for Harmonization in the Internal Market (Trade Marks and Designs) is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

   That restriction of the factual basis of the examination by the Office does not preclude it from taking into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, facts which are likely to be known by anyone or which may be learnt from generally accessible sources.

   (see paras 96, 193)