Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

30 June 2015 (*)

(Community trade mark — Invalidity proceedings — Community figurative mark representing a hand — Article 53(2)(c) of Regulation (EC) No 207/2009 — Existence of earlier copyright protected by national law — Burden of proof — Application by OHIM of national law)

In Case T‑404/10 RENV,

Gambling Commission, formerly National Lottery Commission, established in Birmingham (United Kingdom), represented by R. Cardas, lawyer, and B. Brandreth, Barrister,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,

defendant,

the other parties to the proceedings before the Board of Appeal of OHIM being

Mediatek Italia Srl, established in Naples (Italy),

Giuseppe De Gregorio, residing in Naples,

ACTION brought against the decision of the First Board of Appeal of OHIM of 9 June 2010 (Case R 1028/2009-1) relating to invalidity proceedings between, on the one hand, Mediatek Italia Srl and Giuseppe De Gregorio and, on the other, the National Lottery Commission,

THE GENERAL COURT (Fourth Chamber),

composed of M. Prek (Rapporteur), President, I. Labucka and V. Kreuschitz, Judges,

Registrar: J. Plingers, Administrator,

having regard to the written procedure and further to the hearing on 4 March 2015,

gives the following

Judgment

 Background to the dispute

1        On 2 October 2007, the applicant — the National Lottery Commission — now the Gambling Commission, obtained the registration under No 4800399 of the Community figurative mark reproduced below (‘the contested mark’) at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)):

2        The goods and services for which the contested mark was registered are in Classes 9, 16, 25, 28 and 41.

3        On 20 November 2007, Mediatek Italia Srl and Giuseppe De Gregorio (‘the applicants for a declaration of invalidity’) filed an application for a declaration that the contested mark was invalid, on the basis, inter alia, of Article 52(2)(c) of Regulation No 40/94 (now Article 53(2)(c) of Regulation No 207/2009) in the light of the copyright, pre-dating the contested mark, owned by Giuseppe De Gregorio in the following figurative sign (‘the “mano portafortuna”’):

4        By decision of 16 July 2009, the Cancellation Division of OHIM granted the application for a declaration that the contested mark was invalid. In essence, the Cancellation Division found that (i) the applicants for a declaration of invalidity had demonstrated that Italian legislation offered copyright protection capable of applying to the ‘mano portafortuna’ and (ii) that copyright pre-dated the contested mark. Consequently, on the view that the ‘mano portafortuna’ and the contested mark were almost identical, the Cancellation Division declared the contested mark to be invalid, pursuant to Article 53(2)(c) of Regulation No 207/2009.

5        On 1 September 2009, the applicant filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

6        By decision of 9 June 2010 (‘the contested decision’), the First Board of Appeal dismissed the appeal. In particular, it found as follows:

–        the protection provided for under Article 2575 et seq. of the Codice civile (the Italian Civil Code) and under the Legge sul diritto d’autore (Italian Law on copyright) can apply to the humorous representation of a smiling hand, in that it has a minimum degree of creativity;

–        sufficient evidence of the existence of copyright is provided through the submission of the photocopy of an agreement, dated 16 September 1986, under which a third party purporting to be the author of the ‘mano portafortuna’ assigned to one of the applicants for a declaration of invalidity his rights to reproduce and use that work or to reproduce and use other drawings appended to the agreement (‘the 1986 Agreement’);

–        pursuant to Article 2702 of the Codice civile, the Board of Appeal is competent only to assess the content of that agreement and not to verify the provenance of the statements contained therein;

–        the anomalies referred to by the applicant (the mention of an incorrect date in relation to the maximum duration of the copyright protection, the error in the date of the post office stamp, the difference in artistic quality between 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;

–        the contested mark constitutes, under Italian law, an unauthorised reproduction of the ‘mano portafortuna’ and, accordingly, an infringement of copyright;

–        the evidence produced by the applicant does not adequately establish that the contested mark was created independently;

–        the author of the sign constituting the contested mark merely certified that it was original ‘so far as it [was] reasonably aware’;

–        given that, in 1988, the ‘mano portafortuna’ had been printed on 400 T-shirts in the Naples (Italy) region, it is more probable that the creators of the sign constituting the contested mark had been inspired by the ‘mano portafortuna’ than that the contested mark had been created independently;

–        one of the penalties provided for under Italian law is a ban on using the infringing work.

 Procedure before the General Court and the Court of Justice

7        By application lodged at the Registry of the General Court on 8 September 2010, the applicant brought an action for annulment of the contested decision on the basis of three pleas in law, respectively alleging: (i) infringement of Article 53(2)(c) of Regulation No 207/2009; (ii) illegality of the Board of Appeal’s refusal to open an oral procedure or to adopt any measures for the collection of evidence; and (iii) incorrect assessment by the Board of Appeal of its powers to determine whether the 1986 Agreement was authentic.

8        By judgment of 13 September 2012 in National Lottery Commission v OHIM — Mediatek Italia and De Gregorio (Representation of a hand) (T‑404/10, ‘the General Court judgment’, EU:T:2012:423), the General Court upheld the action, accepting the first and third pleas put forward by the applicant in support of its action. It also ordered OHIM to pay the costs, including those incurred by the applicant in the proceedings before the Board of Appeal.

9        The General Court first noted, in paragraphs 14 to 21 of its judgment, the rules and principles that the Board of Appeal must apply for the purposes of determining whether proof has been produced of the existence of a copyright protected by national law. In paragraph 18 of its judgment, the General Court held that an applicant for a declaration of invalidity was required to provide OHIM not only with particulars showing that, in accordance with the national law which it wishes to have applied, it satisfies the necessary conditions for having the use of a Community trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law.

10      The General Court went on to observe in paragraph 20 of its judgment that, according to its own case-law, OHIM had — of its own motion and by whatever means considered appropriate — to 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. The General Court also stated that the restriction of the factual basis of the examination by OHIM did not preclude it from taking into consideration, in addition to the facts which have been expressly put forward by the parties to the invalidity proceedings, facts which are well known, that is to say, facts that are likely to be known by anyone or that may be learnt from generally accessible sources.

11      Lastly, in the light of those principles, the General Court held in paragraphs 23 and 24 of the judgment 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 Codice civile, the 1986 Agreement constituted conclusive evidence regarding the provenance of the statements, that is to say that they were made by the parties to that agreement, pending the introduction of proceedings challenging it as a forgery.

12      In that regard, the General Court examined, in paragraphs 25 to 32 of its judgment, the provisions of Italian law, in particular, Article 2704 of the Codice civile, 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’). After pointing out, in paragraph 33 of its judgment, that no mention is made of Article 2704 of the Codice civile in the contested decision, the General Court found in paragraph 35 of its judgment that, in accordance with the case-law of the Corte Suprema di Cassazione, it was open to the applicant, 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 accordingly 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 that the Board of Appeal failed to assess accurately the precise scope of its own powers.

13      After finding, in paragraph 40 of its judgment, 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 it being necessary to examine the second plea relied on by the applicant in support of its action.

14      By application lodged at the Registry of the Court of Justice on 21 November 2012, OHIM brought an appeal, claiming that the Court of Justice should set aside the judgment of the General Court. OHIM relied on three grounds of appeal, respectively alleging: (i) infringement of Article 76(1) of Regulation No 207/2009 and of Rule 37 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended; (ii) infringement of the right to be heard, in so far 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 affected the reasoning followed and the conclusion reached by the General Court.

15      In its judgment of 27 March 2014, OHIM v National Lottery Commission (C‑530/12 P, ECR, EU:C:2014:186, ‘the judgment of the Court of Justice’), the Court of Justice rejected OHIM’s first ground of appeal, but upheld the second. In that regard, the Court of Justice stated:

‘55 […] 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 Codice civile, 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 [National Lottery Commission] 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.’

 Procedure and forms of order sought by the parties following referral

16      By letter of 7 April 2014, the Registry of the General Court invited the parties to submit, within two months of service upon them of the judgment of the Court of Justice, their written observations, in accordance with Article 119(1) of the Rules of Procedure of the General Court, on the response to be given to that judgment in the present proceedings.

17      The applicant and OHIM lodged their observations at the Registry of the General Court within the time allowed for that purpose, that is to say, on 3 June 2014 and 13 August 2014 respectively.

18      In its observations, the applicant claims, in essence, that the General Court should annul the contested decision.

19      In its observations, OHIM contends that the General Court should:

–        dismiss the action and order the applicant to pay the costs;

–        in the alternative, refer the case back to the Board of Appeal for a new assessment in the light of the judgment of 14 June 2007 and order each of the parties to bear its own costs.

20      By way of measures of organisation of procedure, the Court requested the parties to submit their observations on the judgment of 14 June 2007. The parties complied with that request within the time allowed.

 Law

21      In support of its action, the Gambling Commission relies on three pleas in law, alleging: (i) infringement of Article 53(2)(c) of Regulation No 207/2009; (ii) illegality of the Board of Appeal’s refusal to open an oral procedure or to adopt any measures for the collection of evidence; and (iii) incorrect assessment by the Board of Appeal of its powers to determine whether the 1986 Agreement was authentic.

22      By its first plea in law, the Gambling Commission argues, essentially, that the Board of Appeal infringed Article 53(2)(c) of Regulation No 207/2009 by concluding that the applicants for a declaration of invalidity had shown that an earlier right existed as they contended. It is necessary to examine this plea in law in conjunction with the third plea, whereby the Gambling Commission claims that the Board of Appeal was wrong in finding that it was not competent to assess the authenticity of the 1986 Agreement.

23      The Gambling Commission claims, inter alia, that the Board of Appeal relied solely on its examination of the copy of an agreement transferring ownership of that copyright in 1986, without taking into account the plausibility of the arguments put forward by the parties. The Gambling Commission also argues that, since the Board of Appeal is empowered to decide on the validity of a Community trade mark, it must necessarily be entitled to appraise the authenticity of a document on which a party’s claims are based when that authenticity is disputed. In refusing to undertake such an examination, the Board of Appeal did not accurately assess the scope of its own powers.

24      OHIM contends that this plea should be rejected. It points out, inter alia, that the Board of Appeal was required to take its decision in accordance with the rules and principles of Italian law. According to OHIM, the 1986 Agreement constitutes a document under private signature authenticated by a notary and, in consequence, has the same probative value as a document executed before a notary. That agreement constitutes proof as regards its provenance. It can be inferred from Articles 2702 and 2703 of the Codice civile that a public authority cannot disregard an authentic document unless it has been challenged as a forgery before the Italian courts, pursuant to Article 221 of the Codice di procedura civile (Italian Code of Civil Procedure). Accordingly, all the Board of Appeal was entitled to do was to examine the content of the 1986 Agreement to assess whether it showed that the earlier right existed. OHIM infers from this that, instead of claiming that the Board of Appeal should disregard the evidence submitted by the applicants for a declaration of invalidity, the Gambling Commission should have brought proceedings before the Italian courts for a declaration of forgery, while requesting that the proceedings for cancellation of the contested mark be stayed. OHIM argues, moreover, that the ‘anomalies’ to which the Gambling Commission refers, are either not anomalies, or are not sufficiently anomalous to show that the 1986 Agreement is, wholly or in part, a forgery.

25      Under Article 53(2)(c) of Regulation No 207/2009 ‘[the contested 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 under the Community legislation or national law governing its protection, and in particular: … a copyright’.

26      It is necessary, therefore, to determine whether the Board of Appeal infringed Article 53(2)(c) of Regulation No 207/2009 in finding that the applicants for a declaration of invalidity had adduced proof that copyright in the ‘mano portafortuna’ existed prior to the contested mark.

27      It is apparent from the wording of Article 53(2) of Regulation No 207/2009 that, when that provision refers to the situation in which the existence of an earlier right makes it possible to prohibit the use of a Community trade mark, it distinguishes clearly between two situations: the situation where the earlier right is protected under Community legislation and the situation where it is protected under national law.

28      As regards the procedural arrangements laid down by Regulation No 2868/95 in the case of an application pursuant to Article 53(2) of Regulation No 207/2009, based on an earlier right protected under national law, Rule 37 of Regulation No 2868/95 provides, in a situation such as that in the present case, that the applicant must provide particulars showing that he is entitled under the national law applicable to lay claim to that right.

29      As the Court of Justice has had occasion to point out, that rule requires the applicant for a declaration of invalidity to provide OHIM not only with particulars showing that, in accordance with the national law which it wishes to have applied, it satisfies the necessary conditions for having the use of a Community trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law (judgment of 5 July 2011 in Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraph 50).

30      Where, as in the present case, an application for a declaration that a Community trade mark is invalid is based on an earlier right protected by a rule of national law, the competent OHIM adjudicatory bodies must assess the weight and scope to be attributed to the particulars submitted by the applicant in order to establish the content of that rule. The General Court undertakes a full review of that assessment (judgment in Edwin v OHIM, cited in paragraph 29 above, EU:C:2011:452, paragraphs 51 and 52).

31      Moreover, it is apparent from the case-law of the General Court 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 an earlier right 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. The restriction of the factual basis of the examination by OHIM does not preclude it from taking into consideration, in addition to the facts which have been expressly put forward by the parties to the invalidity proceedings, facts which are well known, that is to say, facts which are likely to be known by anyone or which may be learnt from generally accessible sources (see, by analogy, judgment of 9 December 2010, Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, ECR, EU:T:2010:505, paragraph 67 and the case-law cited).

32      In the first place, the rules and principles which the Board of Appeal had to apply for the purposes of verifying whether proof had been provided of the existence of the copyright claimed must be determined in the light of those principles.

33      The Gambling Commission relies on the theory of the balance of probabilities, arguing that the version of events which it postulates is more probable than that argued for by the applicants for a declaration of invalidity and that they have therefore failed to discharge their burden of proof. By contrast, the Board of Appeal refers — as does OHIM in its written pleadings — to the probative value attributed to the 1986 Agreement by the Codice civile. They argue that it follows from the application of those provisions that the 1986 Agreement constitutes proof of the provenance of the statements of the parties to that agreement pending proceedings before the Italian courts, pursuant to Article 221 of the Codice civile, challenging it as a forgery (paragraph 30 of the contested decision). On that basis, the Board of Appeal found that it was competent only to examine the content of the 1986 Agreement and that the existence of copyright in the ‘mano portafortuna’ prior to the contested mark could reasonably be inferred from that.

34      Pursuant to the case-law referred to in paragraphs 18 to 20 above, in so far as the question on which the Board of Appeal had to decide concerned the point whether, under Italian law, the applicants for a declaration of invalidity are actually copyright owners, the Board of Appeal was right to rely on the rules of Italian law in determining the probative value of the 1986 Agreement.

35      In the second place, however, the General Court must determine whether the Board of Appeal construed the relevant Italian law correctly in finding that, pursuant to Articles 2702 and 2703 of the Codice civile, the 1986 Agreement constituted conclusive evidence of the provenance of the statements of the parties to that agreement, pending the introduction of proceedings challenging it as a forgery.

36      Under Article 2702 of the Codice civile, a document under private signature constitutes proof, pending proceedings challenging it as a forgery, of the provenance of the statements made therein, namely that they were made by the signatory, if the person against whom it is relied upon recognises the signature or if the signature is considered to be lawfully recognised.

37      Article 2703 of the Codice civile provides that a signature which has been certified as genuine (‘authenticated’) by a notary or by another public official with the requisite authority is to be treated as having been recognised. ‘Authentication’ is defined as consisting in the certification by the official that the signature was written in his presence. Additionally, under that provision, the official must verify at the outset the identity of the signatory.

38      Article 2704 of the Codice civile specifies that the date of a document under private signature, in respect of which the signature has not been authenticated, is not certain and cannot be relied upon against third parties until after the day on which the document is registered; or after the day of the death, or the onset of physical incapacity, of the signatory or one of the signatories; or after the day on which the content of the document is reproduced in public documents; or, lastly, after the day on which another fact is determined which establishes in an equally certain manner that the document under private signature had been drawn up beforehand.

39      In paragraph 30 of the contested decision, the Board of Appeal found that the 1986 Agreement ‘[was] a document under private signature and therefore [constituted] proof of the statements of the parties to that agreement, pending proceedings under Article 2702 of the Codice civile challenging it as a forgery’.

40      However, it is clear from Articles 2702 to 2704 of the Codice civile that, in the circumstances of the present case, such an assertion will be correct only if the signatures of the parties to the 1986 Agreement can be regarded as lawfully recognised, in that they have been authenticated in accordance with Article 2703 of the Codice civile, or if one of the exceptions provided for under Article 2704 of that code applies.

41      However, it cannot validly be found that the fact asserted in paragraph 5 of the contested decision — that an ‘agreement confirming assignment’ had been signed in the presence of a notary on 4 August 2008, confirming the clauses laid down in the 1986 Agreement — is capable of authenticating the signatures of the parties to the 1986 Agreement for the purposes of Article 2703 of the Codice civile. Such a finding, which would mean that an agreement signed in 1986 was enforceable against third parties by virtue of the intervention of a notary almost 22 years later, is in direct contradiction with the terms of Article 2703, under which authentication consists in attestation by a public official that the signature has been written in his presence.

42      Moreover, as regards the application of Article 2704 of the Codice civile, it should be noted that this makes it possible to enforce against third parties a document under private signature, in respect of which the signature has not been authenticated, as from the day following its registration or the occurrence of an event which establishes in an equally certain manner that the document under private signature had been drawn up beforehand.

43      Pursuant to the case-law of the Corte suprema di cassazione, as set out in the judgment of 14 June 2007, the affixing of a post office stamp to a document under private signature constitutes a fact establishing the exact date of that document for the purposes of Article 2704 of the Civil Code, provided that the stamp appears in the body of the document. It is also apparent from that case-law that proof may be adduced that the date of a post office stamp is not genuine, without it being necessary for proceedings to be brought for a declaration of forgery.

44      In the present case, it should be noted that, although no mention is made in the contested decision of Article 2704 of the Codice civile, reference is made to the presence of a post office stamp dated 21 September 1986. According to the file for the proceedings before OHIM, that post office stamp appears on the first page of the agreement, as well as on the annex where the drawing of the ‘mano portafortuna’ appears. The inference can therefore be made that, through the affixing of that post office stamp, the conditions laid down by the case-law of the Italian Supreme Court of Cassation have been satisfied.

45      Accordingly, the presence of the post office stamp is a factor which enables it to be established that the 1986 Agreement has a definite date as from 21 September 1986 and that in consequence, pursuant to Articles 2702 to 2704 of the Codice civile, read in conjunction, it constitutes proof of the provenance of the statements made therein, including as regards third parties, as from 22 September 1986.

46      However, pursuant to the case-law referred to in paragraph 43 above, it was open to the Gambling Commission, 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.

47      Accordingly, by finding in paragraph 30 of the contested decision that the 1986 Agreement ‘[was] a document under private signature and therefore [constituted] full proof of the provenance of the statements made by the signatories, pending a declaration of forgery in accordance with Article 2702 of the Codice civile’, when it was not necessary to bring proceedings for a declaration of forgery in the circumstances, the Board of Appeal based its approach on a misinterpretation of the national law applicable pursuant to Article 53(2) of Regulation No 207/2009 and therefore misconstrued the precise scope of its own powers.

48      Moreover, it should be noted that, during the proceedings before the Board of Appeal, the Gambling Commission drew attention to certain factors, which it referred to as ‘anomalies’ and which allegedly showed that it was unlikely that the 1986 Agreement had been drafted in that way on the date claimed. Those factors include, in particular, the facts that the date of the post office stamp (21 September 1986) corresponds to a day on which post offices were closed and that the 70-year copyright protection provided for under the 1986 Agreement corresponds to the term of copyright protection applicable after 1996, whereas, at the time when the 1986 Agreement was purportedly drafted, copyright protection lasted for only 50 years.

49      In paragraphs 26 and 27 of the contested decision, the Board of Appeal attributed those anomalies to possible errors on the part of the clerk who had affixed the post office stamp and the lawyer who had drafted the 1986 Agreement.

50      Without it being necessary to consider the merits of those findings by the Board of Appeal, it is sufficient to point out that they could have been affected by the misinterpretation of Italian law referred to in paragraph 47 above. Arguably, the Board of Appeal would have attributed more weight to those factors if it had believed that it was legitimate for the Gambling Commission to challenge before it the reliability of the date indicated on the post office stamp and that, accordingly, the 1986 Agreement did not necessarily constitute proof of the provenance of statements made therein.

51      That conclusion is not affected by OHIM’s argument, made in its observations under Article 119(1) of the Rules of Procedure, alleging that the applicant has not adduced evidence demonstrating that the date of the post office stamp on the 1986 Agreement was not reliable. In essence, OHIM contends that the mere probability that the date stamped on the 1986 Agreement has been forged or tampered with is insufficient and that it was necessary for the Gambling Commission to prove that it had been forged or tampered with. OHIM also argues that the Board of Appeal took into account those ‘anomalies’ and found that they did not cast doubt on the statements contained in the 1986 Agreement.

52      On the one hand, it should be noted that, in so far as the judgment of 14 June 2007, interpreting Article 2704 of the Codice civile, states that evidence that the date of a postal stamp is not authentic may be adduced without the need to introduce proceedings challenging it as a forgery, it necessarily implies greater freedom in the taking of that evidence in rebuttal.

53      On the other hand, although it is true, as has already been pointed out in paragraph 49 above, that the Board of Appeal responded to the applicant’s argument based on the existence of certain anomalies in the 1986 Agreement, the fact remains that that analysis of the Board of Appeal was based on the false premiss that the 1986 Agreement constituted ‘conclusive evidence of the provenance of the statements of the parties to it, pending the introduction of proceedings challenging it as a fraud’ (paragraph 30 of the contested decision) and that its assessment could relate only to the content of that agreement. Therefore, it cannot be excluded that the Board of Appeal would have reached a different conclusion if it had favoured a broader interpretation of its powers.

54      In the light of the above, it must be concluded that, in finding that the applicants for a declaration of invalidity had shown the existence of an earlier right, the Board of Appeal based its approach on a misinterpretation of the national law governing its protection and that that error may have had an effect on the content of the contested decision.

55      Consequently, the first and third pleas must be upheld and the contested decision must be annulled, without it being necessary to examine the second plea.

 Costs

56      In the judgment on appeal, the Court of Justice reserved the costs. It is therefore for this Court to rule in this judgment on all the costs relating to the various proceedings, in accordance with Article 121 of the Rules of Procedure.

57      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

58      In the present case, since OHIM has been unsuccessful, it must be ordered to pay the costs incurred by the Gambling Commission in the proceedings before the General Court, in accordance with the form of order sought by the Gambling Commission.

59      The Gambling Commission also applied for OHIM to be ordered to pay the costs incurred by it for the purposes of the proceedings before the Board of Appeal. In that regard, it must be borne in mind that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 9 June 2010 (Case R 1028/2009-1);

2.      Orders OHIM to pay the costs.

Delivered in open court in Luxembourg on 30 June 2015.

[Signatures]

* Language of the case: English.

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