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

JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

29 June 2016 (*)

(European Union trade mark — Opposition proceedings — Application for European Union figurative mark GROUP Company TOURISM & TRAVEL — Earlier, non-registered national figurative marks GROUP Company TOURISM & TRAVEL — Relative ground for refusal — Application of national law — Article 8(4) of Regulation (EC) No 207/2009 — Evidence establishing the content of the national right — Rule 19(2)(d) of Regulation (EC) No 2868/95 — Failure to take account of evidence adduced before the Board of Appeal — Discretion of the Board of Appeal — Article 76(2) of Regulation No 207/2009)

In Case T‑567/14,

Group OOD, established in Sofia (Bulgaria), represented by D. Dragiev and A. Andreev, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, P. Ivanov and D. Botis, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervening before the General Court, being

Kosta Iliev, residing in Sofia, represented by S. Ganeva, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 2 June 2014 (Case R 1587/2013‑4) relating to opposition proceedings between Group OOD and Mr Iliev,

THE GENERAL COURT (Fourth Chamber),

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

Registrar: M. Marescaux, Administrator,

having regard to the application lodged at the Registry of the General Court on 1 August 2014,

having regard to the response of EUIPO lodged at the Court Registry on 11 November 2014,

having regard to the response of the intervener lodged at the Court Registry on 7 November 2014,

having regard to the reply lodged at the Court Registry on 25 February 2015,

further to the hearing on 15 January 2016,

gives the following

Judgment

 Background to the dispute

1        On 13 February 2012, the intervener, Mr Kosta Iliev, filed an application for registration of a European Union trade mark at the European Union Intellectual Property Office (EUIPO), pursuant to Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2        The mark in respect of which registration was sought is the following figurative sign:

3        The services in respect of which registration was applied for are in Classes 35, 39 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

4        The European Union trade mark application was published in Community Trade Marks Bulletin No 72/2012 of 16 April 2012.

5        On 11 July 2012, the applicant, Group OOD, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in its entirety.

6        In support of its opposition, the applicant relied in an non-registered figurative mark, used in Bulgaria, in the Czech Republic, in Hungary, in Poland and in Slovakia for services in Class 39, as reproduced below:

7        In the notice of opposition, the applicant stated that it had used the non-registered mark since 2003 for transport services by bus in Bulgaria, the Czech Republic, Hungary and Slovakia. It stated that it held a government licence under which it operated a regular bus route between Sofia (Bulgaria) and Prague (Czech Republic) and produced numerous documents in support of its opposition.

8        By decision of 14 June 2013, the Opposition Division dismissed the opposition lodged by the applicant and ordered it to pay the costs. It observed, in particular, that the applicant had not specified or provided any evidence about the applicable national law on which it was relying and under which the use of the mark sought might have been prohibited in the Member States concerned.

9        On 16 August 2013, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10      By decision of 2 June 2014 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. It considered, in essence, that in the opposition proceedings the applicant had failed to make out proof of which national law was applicable. It observed that the applicant had the obligation to allege and prove that, in those Member States referred to in its notice of opposition, there was protection for non-registered marks and a right based on them which could be used to have a subsequent mark declared invalid or its use prohibited. The applicant also had the obligation to inform EUIPO of the applicable legal provisions so that it could assess the specific conditions provided for by each of those provisions.

11      As regards, in particular, the non-registered Bulgarian mark relied on, the Board of Appeal found that the conditions laid down in Rule 19(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) were not met, as the documents produced by the applicant during the opposition proceedings did not contain any reference to Bulgarian law. As to the references to three legal provisions in the statement of grounds of appeal, the Board of Appeal found that they were late, since the required reference to the legal bases must be made within the time limits granted during the opposition proceedings. The determination of the bases of the complaints could not be delayed until the stage of proceedings before it.

12      Regarding especially Article 12(6) of the Bulgarian Zakon za markite i gueografskite oznachenija (Law on trade marks and geographical indications), referred to by the applicant in its statement of grounds of appeal of 16 August 2013, the Board of Appeal found that the applicant had merely cited the text of Article 12(1) of that law, without providing the original Bulgarian version or proving that that text originated from an official and reliable source. It further observed that, as evidenced by the ‘Table on national rights that constitute “earlier rights” in the sense of Article 8(4) of [Regulation No 207/2009]’ annexed to the Guidelines for examination of European Union trade marks — EUIPO, non-registered marks were protected in Bulgaria only if well known and that, in the present case, the applicant had not alleged that the earlier mark was well known.

13      In any event, according to the Board of Appeal, Article 76(2) of Regulation No 207/2009 was inapplicable to the present case, since merely citing some national provisions without specifying their source and without producing an official text of those provisions could not constitute facts and evidence for the purposes of that article.

 Forms of order sought by the parties

14      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

15      EUIPO and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Admissibility of the evidence adduced for the first time before the General Court

16      In paragraph 29 of the application, the applicant submitted to the Court a request that it examine of its own motion the evidence proffered by it, including the ‘additional’ evidence attached to the application.

17      EUIPO considers that the evidence concerning Bulgarian, Czech, Hungarian and Slovak national law (Annex A 12 to the application) constitutes new facts unrelated to the evidence adduced previously, which the Court should not take into account.

18      Regarding Decision No 3170 of the Administrativen sad Sofia-grad (Administrative Court, Sofia, Bulgaria) of 12 May 2014 (Annex A 13 to the application), EUIPO submits that, as it was put forward after the contested decision was delivered, it is unrelated to the subject matter of the present proceedings and is accordingly irrelevant.

19      In that regard, it should be borne in mind that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO as provided for in Article 65 of Regulation No 207/2009. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it (judgments of 19 November 2008 in Rautaruukki v OHIM (RAUTARUUKKI), T‑269/06, not published, EU:T:2008:512, paragraph 20, and of 25 June 2010 in MIP Metro v OHIM — CBT Comunicación Multimedia (Metromeet), T‑407/08, EU:T:2010:256, paragraph 16).

20      It is apparent from the case-law that neither the parties nor the Court itself can be precluded from drawing on national legislation, case-law or academic writing for the purposes of interpreting national law to which, as in the present case, EU law makes reference (see paragraph 26 below), where it is not alleged that the Board of Appeal failed to take the factual aspects of a specific national judgment into account, but rather reliance is placed on judgments or academic writing in support of a plea alleging that the Board of Appeal misapplied a provision of national law (judgment of 28 October 2015 in Rot Front v OHIM — Rakhat (Маска), T‑96/13, EU:T:2015:813, paragraph 15 and the case-law cited). The fact remains, however, that the documents containing the national legislative provisions produced in Annex A 12 to the application are not sources on which the Court can draw for the purposes of interpreting national law as set out in Rule 19(2)(d) of Regulation No 2868/95 (see, to that effect, judgment of 11 December 2014 in CEDC International v OHIM — Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 24).

21      In those circumstances, the documents submitted in Annex A 12 to the application, referred to in paragraph 17 above, which were not produced by the applicant in the course of the administrative proceedings, must be declared inadmissible. The review of the legality of the decision will therefore be carried out in the light solely of the evidence disclosed during the administrative proceedings and which appears in EUIPO’s case file (judgment of 15 July 2014 in Łaszkiewicz v OHIM — Capital Safety Group EMEA (PROTEKT), T‑576/12, not published, EU:T:2014:667, paragraph 25).

22      For the same reasons, the Court cannot take account of the information about the conditions of application of the Bulgarian legislation put forward in the reply. The reply contains information on the applicable Bulgarian law which was not submitted in the course of the administrative proceedings before EUIPO.

23      Annex A 13 to the application, containing Decision No 3170 of the Administrativen sad Sofia-grad (Administrative Court, Sofia) of 12 May 2014 must be declared admissible. That decision predates the date of adoption of the contested decision, but is subsequent to the submission of the applicant’s last pleadings to the Board of Appeal. Given the short time span between the adoption of that decision and the adoption of the contested decision, the possibility cannot be ruled out that the applicant was unaware of that decision before the adoption of the contested decision.

 Substance

24      In support of its action, the applicant raises three pleas in law, alleging respectively: (i) infringement of Article 76(1) of Regulation No 207/2009; (ii) infringement of Article 76(2) of that regulation; and (iii) infringement of Article 8(4) of that regulation.

25      As there is a fair amount of overlap between the arguments relied on by the applicant in its pleas, the Court considers it appropriate to examine them together.

26      Under Article 8(4) of Regulation No 207/2009, the proprietor of a sign other than a registered mark may oppose registration of a European Union trade mark if that sign satisfies all of four conditions: (i) the sign must be used in the course of trade; (ii) it must be of more than mere local significance; (iii) the right to that sign must have been acquired in accordance with EU law or the law of the Member State in which the sign was used prior to the date of application for registration of the EU trade mark; and (iv) the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark (judgment of 21 January 2016 in BR IP Holder v OHIM — Greyleg Investments (HOKEY POKEY), T‑62/14, EU:T:2016:23, paragraph 19 and the case-law cited). These conditions are cumulative. Thus, where a sign does not satisfy one of those conditions, the opposition based on the existence of a non-registered trade mark or of other signs used in the course of trade within the meaning of Article 8(4) of Regulation No 207/2009 cannot succeed (judgment of 30 June 2009 in Danjaq v OHIM — Mission Productions (Dr. No), T‑435/05, EU:T:2009:226, paragraph 35).

27      The first two conditions, namely those concerning the use and scope of the sign relied on, the latter having to be not merely local, arise from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (judgment of 24 March 2009 in Moreira da Fonseca v OHIM — General Óptica (GENERAL OPTICA), T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 33).

28      By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to the law of the Member State governing that sign’, that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is entirely justified, given that Regulation No 207/2009 makes it possible for signs which fall outside of the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law of the Member State which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark (judgment of 24 March 2009 in GENERAL OPTICA, T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 34). In accordance with Article 76(1) of Regulation No 207/2009, the burden of proving that that condition is met lies with the opponent before EUIPO (judgment of 29 March 2011 in Anheuser-Busch/Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 189).

29      With regard to the application of Article 8(4)(b) of Regulation No 207/2009, regard must be had, in particular, to the national rules relied on and to the judicial decisions delivered in the Member State concerned. On that basis, the opponent must establish that the sign in question falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited (see, to that effect, judgment of 29 March 2011 in Anheuser-Busch/Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 190).

 The obligation to adduce proof of the applicable national law

30      The applicant submits that the Board of Appeal ought to have noted the applicable national provisions, in addition to Article 12(6) of the Law on trade marks and geographical indications.

31      EUIPO takes the view that the Board of Appeal correctly focused its analysis on the infringement of the obligation provided for in Rule 19 of Regulation No 2868/95, under which, in opposition proceedings based on the existence of an earlier right within the meaning of Article 8(4) of Regulation No 207/2009, the opponent must provide proof of acquisition of that right, its permanent nature and the scope of the protection of that right. Failure to comply with that obligation will lead to the opposition being dismissed as unfounded under Rule 20(1) of Regulation No 2868/95.

32      Rule 19 of Regulation No 2868/95 states:

‘1      [EUIPO] shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time limit specified by it and which shall be at least [two] months starting on the date on which the opposition proceedings shall be deemed to commence …

2.       Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right … In particular, the opposing party shall provide the following evidence:

…

(d)       if the opposition is based on an earlier right within the meaning of Article 8(4) of [Regulation No 207/2009], evidence of its acquisition, continued existence and scope of protection of that right;

…

3.       The information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.

4.       [EUIPO] shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by [EUIPO].’

33      Thus, Rule 19(2)(d) of Regulation No 2868/95 places on the opponent the burden of providing EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law which he is seeking to have applied, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, but also with particulars establishing the content of that law (see, to that effect, judgment of 28 October 2015 in Маска, T‑96/13, EU:T:2015:813, paragraph 30 and the case-law cited).

34      It follows that it was precisely for the applicant, in its capacity as opponent, to provide EUIPO with particulars establishing the content of the national law. Consequently, and contrary to the applicant’s assertions, in the absence of any allegation or evidence to that effect submitted by the parties, EUIPO is under no obligation to gather of its own motion particulars about the applicable national law.

35      In support of its opposition, the applicant relied on a figurative sign used as a non-registered mark in Bulgaria, the Czech Republic, Hungary, Poland and Slovakia and, as evidenced by paragraph 7 of the contested decision, produced abundant evidence on the use of the non-registered mark. It did not, however, provide any proof whatsoever of the applicable national legislation.

36      This is the reason why the opposition was dismissed by the Opposition Division, which referred to the opponent’s obligation to provide EUIPO with the particulars establishing the content of the national law enabling it to oppose the registration of the EU mark.

37      As regards the earlier rights within the meaning of Article 8(4) of Regulation No 207/2009, based on non-registered Czech, Hungarian, Polish and Slovak marks, suffice it to observe that, in the course of the administrative proceedings, the applicant did not refer to any provision of national law of those Member States. The Board of Appeal was therefore correct in finding, in paragraphs 28 to 32 of the contested decision, that, in essence, the applicant had not made out proof of the content of the legislation of those States and in dismissing the opposition based on those rights.

38      By contrast, as regards the earlier right within the meaning of Article 8(4) of Regulation No 207/2009, based on the non-registered Bulgarian mark, it should be observed that, in its statement of grounds of appeal before the Board of Appeal of 16 August 2013, the applicant referred to three provisions of Bulgarian law, including Article 12(6) of the Law on trade marks and geographical indications, as amended, under which an opposition may be based on a non-registered mark used in business in Bulgaria.

39      Before determining whether the applicant complied with its obligation under Rule 19(2)(d) of Regulation No 2868/95 to establish the content of the Bulgarian legislation, it must be considered whether the Board of Appeal could take account of that evidence, adduced for the first time before it.

 Whether the Board of Appeal could take account of evidence of national law adduced for the first time before it

40      As observed in paragraph 38 above, it is in the statement of grounds of appeal that the applicant refers, for the first time, to three provisions of Bulgarian law, including Article 12(6) of the Law on trade marks and geographical indications.

41      Under its second plea in law, the applicant states that there was nothing preventing the Board of Appeal from taking account of Article 12(6) of the Law on trade marks and geographical indications, relied on before it, adding that the Board of Appeal can take account of facts and evidence adduced late.

42      EUIPO submits that the Board of Appeal can accept evidence adduced late only if the ‘surrounding circumstances’ can justify the applicant’s tardiness in submitting that evidence. In the present case, however, there are no circumstances preventing the applicant from adducing the necessary evidence concerning the applicable national legislation. Similarly, the legal question to be ruled on by EUIPO as to whether to take account of evidence submitted out of time arises only where additional evidence serves solely to substantiate or clarify evidence presented within the time allowed.

43      Article 76(2) of Regulation No 207/2009 provides that ‘[EUIPO] may disregard facts or evidence which are not submitted in due time by the parties concerned’.

44      According to settled case-law, it is clear from the wording of Article 76(2) of Regulation No 207/2009 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 to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are invoked or produced out of time, that is to say, after the time limit set by the Opposition Division and, as the case may be, for the first time before the Board of Appeal (judgment of 18 July 2013 in New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 30; see also judgment of 11 December 2014 in Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraph 44 and the case-law cited).

45      In stating that the latter ‘may’, in such a case, decide to disregard evidence, Article 76(2) grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such information into account (judgments of 13 March 2007 in OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 43, and of 18 July 2013 in New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 23).

46      Rule 20(1) of Regulation No 2868/95 provides that ‘if until expiry of the period referred to in Rule 19(1) the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well his entitlement to file the opposition, the opposition shall be rejected as unfounded’.

47      However, under the third subparagraph of Rule 50(1) of Regulation No 2868/95, where the appeal is directed against a decision of an Opposition Division, the Board of Appeal shall limit its examination of the appeal to facts and evidence presented within the time limits set in or specified by the Opposition Division, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 76(2) of Regulation No 207/2009 (see, to that effect, judgment of 3 October 2013 in Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 31).

48      In that regard, the Court has held, inter alia, that where EUIPO is called upon to give judgment in the context of opposition proceedings, taking into account facts or evidence produced late is particularly likely to be justified where EUIPO considers, first, that the material which has been produced late is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (see judgment of 3 October 2013 in Rintisch v OHIM, C‑120/12 P, EU:C:2013:638, paragraph 38 and the case-law cited).

49      In the present case, in paragraph 22 of the contested decision, the Board of Appeal considered that the references made to three Bulgarian legal provisions, in the statement of grounds of appeal, were late, since the required mention of legal bases must be made within the time periods granted during the opposition proceedings. The Board of Appeal takes the view that leaving the determination of the bases for the complaints until the stage of the appeal before it was not possible.

50      The time limit provided for by Rule 19(1) of Regulation No 2868/95 for submitting the information required under Rule 19(2)(d) of that same regulation expired on 13 December 2012.

51      As to Article 76(2) of Regulation No 207/2009, the Board of Appeal considered, in paragraph 25 of the contested decision, that it was in any event inapplicable, as there were no ‘facts [and] evidence’ within the meaning of that provision.

52      Regarding, first of all, EUIPO’s argument that the Board of Appeal may allow the late submission of evidence only if ‘surrounding circumstances’ are likely to justify the lateness, it should be observed that the Court, in its judgment of 3 October 2013 in Rintisch v OHIM (C‑120/12 P, EU:C:2013:638, paragraph 39), in effect held that, in those circumstances, the Board of Appeal had to exercise its discretion restrictively and could allow the late submission of such evidence only if the surrounding circumstances were likely to justify the appellant’s delay in the submission of proof required of him. The Court applied as the criterion for a restrictive application of the Board of Appeal’s discretion the fact that the applicant was deemed to be aware of the precise documents which he had to produce in support of his opposition, given that they were listed, specifically and exhaustively, in Rule 19(2)(a)(ii) of Regulation No 2868/95.

53      In the present case, however, unlike Rule 19(2)(a)(ii) of Regulation No 2868/95, Rule 19(2)(d) of the same regulation does not list, specifically and exhaustively, which documents are to be produced in support of an opposition based on Article 8(4) of Regulation No 207/2009, which latter provision refers merely to the obligation to provide proof of the acquisition, permanence and scope of the protection of the earlier right within the meaning of Article 8(4) of Regulation No 207/2009, without providing any further specifics.

54      Similarly, as is apparent from the case file, the Annex to EUIPO’s letter of 1 August 2012, stating inter alia that the time limit for proving the existence of the earlier rights expired on 13 December 2012, merely clarified that, in the event of an opposition based on Article 8(4) of Regulation No 207/2009, it was necessary inter alia to prove the content of the relevant national law.

55      Thus, contrary to the facts referred to in the judgment of 3 October 2013 in Rintisch v OHIM (C‑120/12 P, EU:C:2013:638, paragraph 39), in the present case the applicant was not deemed to be aware of the precise documents which it had to produce in support of its opposition.

56      Therefore, the conclusion is that the conditions arising from the judgment of 3 October 2013 in Rintisch v OHIM (C‑120/12 P, EU:C:2013:638) do not apply in the present case and that the Board of Appeal’s discretion in taking into account facts and evidence adduced late laid down in Article 76(2) of Regulation No 207/2009 did not need to be exercised in a restrictive manner.

57      Turning, next, to EUIPO’s argument that the issue of taking account of evidence submitted out of time arises only in the case of additional evidence aimed at supporting or clarifying evidence submitted on time, it should be observed that, in any event, the references to the three provisions of the Bulgarian legislation provided by the applicant in its statement of grounds of appeal before the Board of Appeal, do not constitute entirely new evidence; rather, they must be regarded as forming part of the evidence used to prove the acquisition, permanence and the scope of the protection of the non-registered Bulgarian mark. As held in paragraph 35 above, certain evidence aimed at establishing the existence, validity and scope of the protection of the earlier non-registered mark was adduced in the course of the proceedings before the Opposition Division (see paragraph 7 of the contested decision).

58      It should be borne in mind in that regard that Rule 19(2)(d) of Regulation No 2868/95 does not list, specifically and exhaustively, the evidence establishing the existence, validity and scope of the protection of an earlier right within the meaning of Article 8(4) of Regulation No 207/2009 that an opponent relying on such a right might provide before EUIPO. Therefore, the relevant national legislation may be regarded as one piece of evidence proving the acquisition, permanence and the scope of the protection of an earlier right within the meaning of Article 8(4) of Regulation No 207/2009.

59      Lastly, as is apparent from the contested decision, the Board of Appeal in any event did not exercise its discretion, not even in a restrictive manner. It merely stated that the references to the Bulgarian provisions had been made out of time and that the determination of the basis of the complaints could not be put off until the proceedings stage.

60      As to the Board of Appeal’s position, expressed in paragraph 25 of the contested decision and maintained by EUIPO before the Court, to the effect that the applicant’s reference to the Bulgarian legislative provisions, without a specific indication of their source, without an official text citation and without the production of evidence as to their existence, does not amount to facts and evidence within the meaning of Article 76(2) of Regulation No 207/2009, the conclusion is that that position — which is, furthermore, unsubstantiated — is clearly incorrect. Article 76(2) of Regulation No 207/2009 allows EUIPO to disregard facts or evidence which are not submitted in due time by the parties. The reference to the Bulgarian legislative provisions is indisputably covered by that provision, on which the applicant relied before the Board of Appeal. Even if that reference were held to be insufficient to comply with the applicant’s evidentiary obligations with respect to national legislation, the fact remains that the Board of Appeal had to exercise its discretion.

61      It follows from all the foregoing that, in the present case, the Board of Appeal was incorrect in finding, in paragraph 22 of the contested decision, that the references to the three provisions of national law had been made out of time, without exercising its discretion. The Board of Appeal was therefore incorrect in failing to exercise the discretion with which it was vested and use that discretion to refuse to take account of the references to Bulgarian law produced before it. In so doing, the Board of Appeal infringed Article 76(2) of Regulation No 207/2009 and the third subparagraph of Rule 50(1) of Regulation No 2868/95.

 Whether the applicant fulfilled its obligation to produce elements of national law under Rule 19(2)(d) of Regulation No 2868/95

62      The applicant submits that the contested decision fails to provide reasons showing why Article 8(4) of Regulation No 207/2009 cannot be relied on against the mark sought, even though it provided evidence of use of an identical sign and relied on Article 12(6) of the Law on trade marks and geographical indications.

63      In its submission, the Board of Appeal considered, incorrectly, that the national provision on which it relied, namely Article 12(6) of the Law on trade marks and geographical indications, applied to well-known marks and related to Article 8(5) of Regulation No 207/2009.

64      In examining the national law of its own motion, the Board of Appeal drew incorrect conclusions as to their content, thereby infringing the obligation to make findings of its own motion and to apply strictly the law of the Member States, laid down in Article 76(1) of Regulation No 207/2009 and in the Court’s case-law.

65      EUIPO takes the view that the Board of Appeal correctly focused on the infringement of the obligation laid down in Rule 19 of Regulation No 2868/95, under which, in the case of an opposition based on the existence of an earlier right within the meaning of Article 8(4) of Regulation No 207/2009, the opponent must make out proof of the acquisition of that right, its permanence and the scope of the protection of that right. Infringement of that obligation will result in the opposition being dismissed as unfounded under Rule 20(1) of Regulation No 2868/95.

66      Like the Board of Appeal, EUIPO criticises the applicant for having relied on legislative rules without specifying their exact source or referring to the official text in Bulgarian, and for having failed to provide an extract from the Darzhaven vestnik (Bulgarian Official Journal), official reports of legislation, commentaries or national case-law.

67      As observed in paragraph 38 above, the applicant, in its statement of grounds of appeal before the Board of Appeal, referred inter alia to Article 12(6) of the Law on trade marks and geographical indications, as amended. That citation also contains the publication reference to the Darzhaven vestnik and the date of entry into force of that provision, namely 3 October 2011. It is apparent from that provision that, in the case of opposition proceedings filed by an actual holder of a non-registered trademark used in the commercial activity on the territory of the Republic of Bulgaria, no mark is to be registered whose filing date is later than the date of the actual commercial use of the non-registered mark.

68      With regards to the information referred to in paragraph 67 above, it must be borne in mind that the Board of Appeal considered that the applicant had referred only to the text of Article 12(1) of the Law on trade marks and geographical indications, without providing the original Bulgarian version or proving that that text originated from an official and reliable source, and that that provision was supposed to have been implemented recently. Referring to the table annexed to EUIPO’s Guidelines (see paragraph 12 above), the Board of Appeal found that non-registered marks were protected in Bulgaria only if well known and that, in the present case, the applicant had not alleged that the earlier mark was well known.

69      Firstly, it is clear that Regulations Nos 207/2009 and 2868/95 and the case-law do not identify the manner in which the content of national legislation must be proven. Therefore, the Board of Appeal could not require the applicant to produce an extract from the Darzhaven vestnik or the official Bulgarian text, especially since the language of the case before EUIPO is English.

70      It should be observed in that regard that the elements of national law which the applicant must produce must enable EUIPO to identify correctly and unequivocally the applicable law. That information about the applicable legislation must enable EUIPO to understand and apply the content of that legislation, the conditions for obtaining the protection and the scope thereof, and enable the applicant to exercise his rights of defence. In order to achieve those objectives, the text of the legislation emanating from an official source is not indispensable.

71      Secondly, the Board of Appeal was incorrect in identifying, in paragraph 6 of the contested decision, the provision referred to by the applicant as Article 12(1) of the Law on trade marks and geographical indications. As is clear from the statement of grounds of appeal before the Board of Appeal, the applicant referred to Article 12(6) of that law, stating that it offered ‘another’ possibility for opposing a trade mark registration application other than the one provided for under Article 12(1) of that law.

72      Thirdly, the Board of Appeal further erred in paragraph 8 of the contested decision, where it found that the applicant had relied, for the first time, on Article 12(6) of the Law on trade marks and geographical indications in a supplementary communication of 25 March 2014.

73      As observed in paragraph 38 above, the applicant relied on the abovementioned provision in its statement of grounds of appeal before the Board of Appeal of 16 August 2013.

74      Moreover, as evidenced by the case file and inter alia paragraph 24 of the contested decision, the supplementary communication is dated 16 April and not 25 March 2014.

75      Fourthly, it should be noted that the Board of Appeal, in paragraph 23 of the contested decision, in the light of the evidence submitted to it by the applicant, was incorrect in concluding that non-registered marks were protected in Bulgaria only if they were well known, whilst referring only to a table of national rights annexed to EUIPO’s Guidelines. The text of Article 12(6) of the Law on trade marks and geographical indications, as submitted by the applicant, does not state that a non-registered mark must be well known in order for the holder of such a mark to be able to oppose registration of a new mark. Nor was this question examined by the Board of Appeal.

76      Similarly, whilst in its written pleadings EUIPO submits that the table annexed to its Guidelines is not a ‘legal source’ and is not necessarily up to date, the Board of Appeal nevertheless referred to that in order to state that non-registered marks were protected in Bulgaria only if they were well known. It made that finding even though the provision relied on by the applicant had been implemented only recently, which it observed itself in paragraph 23 of the contested decision.

77      It should be borne in mind in that regard, with regard to the competent EUIPO bodies, that the Court has 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 (see, to that effect, judgment of 27 March 2014 in OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 35 and the case-law cited).

78      Since the application of national law can lead to a finding that there is a ground for refusing registration of a European Union trade mark, it seems necessary for EUIPO to be able, before upholding the opposition to registration 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 (see, to that effect, judgment of 27 March 2014 in OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 41).

79      Thus, in circumstances in which EUIPO 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 opposition proceedings are 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 relative ground for refusal 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 (see, to that effect, judgment of 27 March 2014 in OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 45). This requirement to obtain of its own motion information about national law applies, if necessary, where EUIPO already has information relating to national law, either in the form of claims as to its meaning, or in the form of evidence submitted and whose probative value has been adduced (judgment of 20 March 2013 in El Corte Inglés v OHIM — Chez Gerard (CLUB GOURMET), T‑571/11, EU:T:2013:145, paragraph 41).

80      In the present case, however, the Board of Appeal not only failed to ascertain the relevance of the evidence about the national law adduced by the applicant, it also disregarded the evidence, referring to a source of information that turned out to be inaccurate in the present case.

81      If the Board of Appeal had doubts about faithful reproduction, applicability or interpretation of Article 12(6) of the Law on trade marks and geographical indications relied on by the applicant, it was required to exercise its powers of verification.

82      In those circumstances, in the light of the case-law referred to in paragraph 79 above, EUIPO should have used all the means available to it in connection with its power to verify in order to obtain information about the applicable national law and to carry out further research into the wording and scope of the provisions of national law relied on, in the light of the arguments submitted by the applicant, either of its own motion or by inviting the applicant to corroborate its claims concerning the definition of the relevant public for the purposes of the Bulgarian law submitted before it (see, to that effect, judgment of 28 October 2015 in Маска, T‑96/13, EU:T:2015:813, paragraph 35).

83      In the light of all the foregoing, for the reasons set out in paragraph 23 of the contested decision, the Board of Appeal was incorrect to disregard the applicant’s reference to Article 12(6) of the Law on trade marks and geographical indications in its statement of grounds of appeal, without having exercised its powers of verification.

84      Accordingly, the present action must be upheld and the contested decision must be annulled, without its being necessary to examine the other complaints put forward by the applicant.

 Costs

85      Under Article 134(1) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

86      Since EUIPO and the intervener have been unsuccessful, they must be ordered to pay the costs, in accordance with the form of order sought by the applicant.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 June 2014 (Case R 1587/2013‑4).

2.      Orders EUIPO and Mr Kosta Iliev to bear their own costs and to pay those incurred by Group OOD.

Delivered in open court in Luxembourg on 29 June 2016.

[Signatures]

* Language of the case: Bulgarian.

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