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

JUDGMENT OF THE GENERAL COURT (First Chamber)

24 October 2018 (*)

(EU trade mark — Opposition proceedings — Application for the EU figurative mark 42 BELOW — Non-registered earlier national figurative mark VODKA 42 — Relative ground for refusal — Article 8(4) of Regulation (EC) No 207/2009 (now Article 8(4) of Regulation (EU) 2017/1001) — Use in the course of trade — Application of national law by EUIPO)

In Case T‑435/12,

Bacardi Co. Ltd, established in Vaduz (Liechtenstein), represented initially by M. Reinisch and subsequently by A. Parassina, L. Rigas and L. Lorenc, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented initially by P. Geroulakos, and subsequently by D. Gája and D. Walicka, acting as Agents,

defendant,

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

Palírna U Zeleného stromu a.s., formerly Granette & Starorežná Distilleries a.s., established in Ústí nad Labem (Czech Republic), represented by T. Chleboun, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 9 July 2012 (Case R 2100/2011-2), relating to opposition proceedings between Granette & Starorežná Distilleries and Bacardi,

THE GENERAL COURT (First Chamber),

composed of H. Kanninen (Rapporteur), President, I. Pelikánová and E. Buttigieg, Judges,

Registrar: X. Lopez Bancalari, Administrator,

having regard to the application lodged at the Court Registry on 24 September 2012,

having regard to the response of EUIPO lodged at the Court Registry on 5 February 2013,

having regard to the response of the intervener lodged at the Court Registry on 30 January 2013,

having regard to the reply lodged at the Court Registry on 12 March 2013,

having regard to the rejoinder of EUIPO lodged at the Court Registry on 2 August 2013,

having regard to the intervener’s rejoinder lodged at the Court Registry on 20 August 2013,

having regard to the written questions put by the Court to the parties and the answers of the applicant and EUIPO to those questions, lodged at the Court Registry on 13 and 20 May 2015 respectively,

having regard to the request to stay proceedings lodged at the Court Registry by the applicant on 29 April 2015 and the observations relating to that request lodged by EUIPO and the intervener on 6 and 13 May 2015 respectively,

Having regard to the Order of the President of the First Chamber (former composition) of 10 June 2015 to stay the proceedings,

having regard to the resumption of the proceedings on 10 November 2015,

having regard to the request to stay proceedings lodged at the Court Registry by the applicant on 11 December 2015 and the observations relating to that request lodged by EUIPO on 7 January 2016,

having regard to the decision of the President of the First Chamber (former composition) of 20 January 2016 to stay the proceedings,

having regard to the resumption of the proceedings on 20 June 2016,

having regard to the request to stay proceedings lodged at the Court Registry by the applicant on 22 August 2016 and the observations relating to that request lodged by EUIPO and the intervener on 26 August and 8 September 2016 respectively,

having regard to the decision of the President of the First Chamber (former composition) of 12 September 2016 to stay the proceedings,

having regard to the resumption of the proceedings on 13 March 2017,

having regard to the answers of the parties, lodged on 16 and 17 May 2017, to the questions put by the Court by way of measures of organisation of procedure,

further to the hearing on 7 November 2017,

gives the following

Judgment

 Background to the dispute

1        On 26 June 2009, the applicant, Bacardi Co. Ltd. filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was applied for are in Class 33 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, and correspond to the following description: ‘Alcoholic beverages (except beers), including vodka, vodka-based and vodka-flavoured beverages’.

4        The EU trade mark application was published in Community Trade Marks Bulletin No 59/2009 of 14 December 2009.

5        On 11 March 2010, the intervener, Granette & Starorežná Distilleries a.s., now Palírna U zeleného stromu a.s., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based, inter alia, on a non-registered mark used in the Czech Republic and Slovakia for ‘alcoholic beverages, namely vodka’ (‘the non-registered mark’), shown below:

7        The grounds put forward in support of the opposition were those set out in Article 8(1)(b) and Article 8(4) of Regulation No 207/2009 (now Article 8(1)(b) and Article 8(4) of Regulation 2017/1001).

8        On 12 August 2011, the Opposition Division rejected the opposition in its entirety on the basis of Article 8(1)(b) and Article 8(4) of Regulation No 207/2009 and ordered the intervener to bear the costs relating to the opposition proceedings.

9        On 10 October 2011, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10      By decision of 9 July 2012 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the intervener’s appeal.

11      In the first place, the Board of Appeal recalled the cumulative conditions set out in Article 8(4) of Regulation No 207/2009.

12      In the second place, the Board of Appeal observed that in the Czech Republic, under Article 7(1)(g) of Law No 441/2003 of 3 December 2003 (‘the Czech Law on trade marks’), proprietors of non-registered trade marks used in the course of trade, with more than mere local significance, prior to the filing of an application for registration, had the right to prohibit subsequent trade marks if the signs were identical or similar and covered similar goods or services.

13      In the third place, the Board of Appeal considered that, in the present case, the intervener had shown sufficiently, first, that the goods covered by the non-registered mark had been marketed in different places, at the very least in different parts of Czech territory, and, second, that the marketing had taken place before the date on which the application for registration of the mark in question was filed in the context of a commercial activity with a view to economic advantage.

14      The Board of Appeal therefore concluded that the rights to the non-registered mark had been acquired through the use made of it by the intervener for ‘alcoholic beverages, namely, vodka’ prior to the date on which the application for registration of the mark applied for was filed.

15      In the fourth place, the Board of Appeal considered whether the non-registered mark conferred on its proprietor the right to prohibit the use of the mark applied for and, in that context, verified whether the conditions set out in Article 7(1)(g) of the Czech Law on trade marks were satisfied.

16      In that respect, the Board of Appeal found, first of all, that the goods in question were directed at the general public residing in the territory of the Czech Republic.

17      Next, it considered, first, that the goods in question were identical or highly similar and, second, that the signs at issue were similar overall from a visual, phonetic and conceptual perspective.

18      Finally, the Board of Appeal considered that the non-registered mark had average inherent distinctive character.

19      In the light of the foregoing, the Board of Appeal concluded that, in the present case, there was a likelihood of confusion on the part of the relevant public.

20      Finally, the Board of Appeal considered, in essence, that EUIPO was not competent to decide upon the applicant’s argument that the use of the non-registered mark amounted to unfair competition and an infringement of its copyright, and could not, as such, call into question the existence and validity of that mark.

21      In conclusion, the Board of Appeal, first, allowed the appeal and, accordingly, upheld the opposition on the basis of the non-registered mark and, second, ordered the applicant to bear the costs incurred in the opposition and appeal proceedings under Article 85(1) of Regulation No 207/2009 (now Article 109(1) of Regulation 2017/1001).

 Forms of order sought

22      In its application, the applicant claims that the Court should:

–        annul the contested decision;

–        reject the opposition against the registration of the mark applied for;

–        send the judgment to be delivered to EUIPO;

–        order EUIPO and the intervener to pay the costs.

23      Having withdrawn the second and third heads of claim in the reply, the applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the intervener to pay the costs.

24      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

25      The intervener claims that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

 Admissibility

26      EUIPO claims, in essence, that the applicant’s head of claim seeking annulment of the contested decision is inadmissible on the ground that, apart from the claim that the Board of Appeal erred in considering that the evidence of the use of the non-registered mark was sufficient for the opposition to succeed, the applicant has not developed any argument or explained with sufficient clarity why the Board of Appeal’s assessment was incorrect.

27      The applicant maintains that it provided sufficient explanations in that respect in its application and that it demonstrated that, under Czech law, the Board of Appeal should have required the intervener to provide further evidence to establish continuous use of the non-registered mark.

28      At the outset, it must be noted that, in its objection of inadmissibility, EUIPO claims that the line of argument relied on is vague and general and that there are no other arguments in support of the complaint that, in essence, the requirement of use in the course of trade, referred to in Article 8(4) of Regulation No 207/2009, was not met in the present case.

29      It follows from settled case-law that, by virtue of Article 76(d) of the Rules of Procedure of the General Court, any application must state the subject matter of the proceedings, the pleas in law and arguments relied on, and a summary of those pleas in law. That statement must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any further information. In order to guarantee legal certainty and the sound administration of justice it is necessary, in order for an argument to be admissible, that the basic legal and factual particulars relied on be stated, at least in summary form, coherently and intelligibly in the application itself (see, to that effect, order of 25 July 2000, RJB Mining v Commission, T‑110/98, EU:T:2000:199, paragraph 23 and the case-law cited, and judgment of 10 April 2003, Travelex Global and Financial Services and Interpayment Services v Commission, T‑195/00, EU:T:2003:111, paragraph 26).

30      In the present case, the relevant facts and points of law on which the applicant’s argument is based, to the effect that the Board of Appeal found, wrongly, that the evidence of use of the non-registered mark was sufficient for the opposition to succeed, are clearly apparent in the application.

31      In point B. III of the application, the applicant claims, in essence, that the conditions relating to use in the course of trade, referred to in Article 8(4) of Regulation No 207/2009, were not satisfied as regards the non-registered mark, since the intervener did not adduce proof of continuous, uninterrupted and current use of that sign up to the date on which the decision of the Opposition Division was adopted, namely 12 August 2011.

32      Such an argument is sufficiently clear and precise to enable EUIPO to prepare its defence and the Court to exercise its power of review. The objection of inadmissibility raised by EUIPO must therefore be dismissed.

 Substance

33      The applicant relies, in essence, on two pleas in law. The first plea in law alleges infringement of Rule 50(2)(g) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1). The second plea in law alleges infringement of Article 8(4) of Regulation No 207/2009.

 The first plea in law alleges infringement of Rule 50(2)(g) of Regulation No 2868/95

34      The applicant claims that the Board of Appeal incorrectly summarised the facts of the case. According to the applicant, the Board of Appeal incorrectly summarised the arguments relied on by the applicant before the Opposition Division and before the Board of Appeal. First, the arguments concerning Czech law and, in particular, those relating to unfair competition and copyright were not reproduced. Next, the summary of the arguments, contained in point 14 of the contested decision, only concerned those relating to the Czech mark No 263350, filed on 10 September 2003, on which the intervener’s opposition was based, and did not reproduce any of the arguments relating to the non-registered mark. Finally, the applicant claims that the Board of Appeal failed to examine the arguments seeking to demonstrate that that mark did not enjoy any protection under Czech law, since it constituted an act of unfair competition and infringed the applicant’s copyright concerning the sign 42 BELOW. Consequently, the applicant claims that Article 50(2)(g) of Regulation No 2868/95 was infringed and that its arguments were insufficiently addressed and in part disregarded.

35      EUIPO and the intervener contend that the present plea in law is unfounded.

36      First, Rule 50(2)(g) of Regulation No 2868/95 states that Board of Appeal’s decisions must contain a summary of the facts.

37      The content of the contested decision must accordingly be examined in order to confirm whether it contains a summary of the facts, and in particular of the arguments put forward by the applicant during the administrative procedure.

38      First, as is apparent from point 7 of the contested decision, the Board of Appeal gave a very detailed summary of the arguments relied on by the applicant before the Opposition Division. In particular, in the seventh and eighth indents of point 7 of the contested decision, the Board of Appeal refers to the applicant’s arguments concerning Czech law relating to unfair competition and copyright. Moreover, in point 69 of the contested decision, it recalled the applicant’s argument that, in essence, use, by the intervener, of the non-registered mark was unlawful because it amounted to unfair competition and infringed the applicant’s copyright.

39      Second, as is apparent from point 14 of the contested decision, the Board of Appeal summarised the applicant’s arguments concerning, in essence, the dismissal of the intervener’s appeal against the decision of the Opposition Division. In particular, it recalled the applicant’s argument that, although the mark applied for and non-registered mark were considered by the intervener to be similar overall, it could not be argued that they were phonetically similar since the words ‘below’ and ‘vodka’ sounded completely different.

40      Accordingly, the Board of Appeal correctly summarised all the arguments put forward by the applicant.

41      Consequently, the first plea in law must be rejected.

 The second plea in law, alleging infringement of Article 8(4) of Regulation No 207/2009

42      The applicant claims, in essence, that the Board of Appeal infringed Article 8(4) of Regulation No 207/2009 in so far as it concluded that the non-registered mark fulfilled the conditions laid down in that article and, accordingly, was able to prevent the registration of the mark applied for.

43      By virtue of Article 8(4) of Regulation No 207/2009, the proprietor of a non-registered trade mark or of a sign other than a mark may oppose registration of an EU trade mark if that non-registered mark or that sign satisfies all of four conditions: (i) it must be used in the course of trade; (ii) it must be of more than mere local significance; (iii) the right to that mark or sign must have been acquired in accordance with EU law or the law of the Member State in which it 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. Those conditions are cumulative; thus, where a non-registered trade mark or 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 (see judgment of 12 October 2017, Moravia Consulting v EUIPO — Citizen Systems Europe(SDC‑888TII RU), T‑317/16, not published, EU:T:2017:718, paragraph 38 and the case-law cited).

44      The first two conditions, namely those concerning the use and significance of the sign or mark relied on, which must be more than merely local, arise from the wording itself of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. That regulation 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, Moreira da Fonseca v OHIM — General Óptica (GENERAL OPTICA), T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 33; of 4 July 2014, Construcción, Promociones e Instalaciones v OHIM — Copisa Proyectos y Mantenimientos Industriales (CPI COPISA INDUSTRIAL), T‑345/13, not published, EU:T:2014:614, paragraph 41; and of 12 October 2017, SDC‑888TII RU, T‑317/16, not published, EU:T:2017:718, paragraph 39).

45      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 justified, given that Regulation No 207/2009 allows signs which fall outside of the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law 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 (judgments of 24 March 2009, GENERAL OPTICA, T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 34; and of 12 October 2017, SDC‑888TII RU, T‑317/16, not published, EU:T:2017:718, paragraph 40).

46      In the present case, it is not disputed that the non-registered mark has significance that is not merely local. By contrast, the applicant considers that the Board of Appeal did not correctly assess whether the condition of use in the course of trade was satisfied. According to the applicant, the Board of Appeal should have established that that mark had been used continuously up to the date on which the Opposition Division issued the decision of 12 August 2011. Moreover, it complains that the Board of Appeal did not carry out an exhaustive examination of the Czech law and thus concluded, on the basis of the provisions of that law which were irrelevant in the present case, first, that the intervener had rights over that mark and, second, that that mark conferred on it the right to prohibit the use of the mark applied for. Finally, it criticises the Board of Appeal for having considered that it lacked competence to assess the validity of the same mark and, accordingly, for having upheld the opposition on the basis of an invalid sign.

47      In essence, the second plea in law is divided into three parts. The first part alleges that the Board of Appeal erred in assessing the condition relating to use in the course of trade of a non-registered sign laid down in Article 8(4) of Regulation No 207/2009. The second part alleges that the Board of Appeal erred in failing to examine the relevant provisions of Czech law for the purpose of applying that provision. The third part alleges that the Board of Appeal erred in declaring that it was not competent to assess the validity of the non-registered mark in the light of Czech provisions concerning unfair competition and copyright.

–       The first part of the second plea in law

48      The applicant considers that the Board of Appeal erred in considering that, in the present case, the condition relating to the use of a non-registered trade mark in the course of trade, referred to in Article 8(4) of Regulation No 207/2009, was satisfied. It maintains, first, that that condition should have been assessed when the Opposition Division adopted its decision, that is to say on 12 August 2011, and, second, that the intervener should have demonstrated continuous, uninterrupted and current use of the non-registered mark up to that date. In this respect, the applicant maintains, in essence, that, since the question whether the non-registered mark exists depends on national law, in this case Czech law, the continuous existence of the mark in question should also have been established. In that regard, the applicant submits that the intervener ceased using the non-registered mark around January 2011, when it was replaced by the logo VODKA 42 BLENDED.

49      EUIPO contends that this part of the plea must be rejected. First, it maintains that, under EU law, the date to be taken into account for the purposes of assessing the use of a non-registered mark is the date on which the application for registration of the trade mark in question was filed, namely, in this case, 26 June 2009. Second, it submits that the condition relating to continuous use of a non-registered sign laid down in Czech law is not relevant for the purposes of determining the relevant point in time for assessing the use of an earlier non-registered mark.

50      The intervener considers that, since the argument alleging that the non-registered mark was not used as from 2011 was not raised in the opposition proceedings, it could not be taken into consideration by EUIPO under Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001). Furthermore, the intervener maintains that the only essential issue is whether it was using that mark on the date its opposition was filed or, at the latest, at the time of the deadline for submission of evidence to EUIPO.

51      First, it should be noted that the applicant claimed that the evidence of use of the non-registered mark communicated by the intervener in annex to its response was inadmissible. The applicant maintained that that evidence had been adduced for the first time before the Court. In reply to a question raised at the hearing by the Court, EUIPO, in the same way as the applicant, stated that the evidence adduced by the intervener in its reply was inadmissible. By contrast, the intervener claimed that the evidence that it adduced before the Court was admissible and, in any event, left the matter to the discretion of the Court.

52      In that regard, it is settled case-law that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001). It follows from that provision that facts not relied on by the parties before the bodies of EUIPO may not be relied on at the stage of the action before the General Court and that the General Court may not re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (judgments of 18 July 2006, Rossi v OHIM, C‑214/05 P, EU:C:2006:494, paragraphs 50 to 52; of 18 December 2008, Les Éditions Albert René v OHIM, C‑16/06 P, EU:C:2008:739, paragraphs 136 to 138; and of 16 January 2014, Optilingua v OHIM — Esposito (ALPHATRAD), T‑538/12, not published, EU:T:2014:9, paragraph 19).

53      In the present case, the intervener adduced, in annex to its response, invoices to show continuous use of its mark in Czech territory from 2007 until the date of the decision of the Opposition Division, or beyond that date.

54      It is not disputed that the evidence was adduced for the first time before the Court. Having regard to the case-law referred to in paragraph 52 above, it must therefore be declared inadmissible.

55      Next, it must be noted that the Board of Appeal found, in point 31 of the contested decision, that the relevant period to which the evidence of use of the non-registered mark should mainly have related was ‘equal [to] or earlier than the date of filing of the contested application, [namely] 26 June 2009’. In addition, the Board of Appeal concluded in point 39 of the contested decision that the right to that mark had been acquired by the intervener ‘prior to the filing date of the [EU] trade mark application’.

56      It must be noted that, in the present case, the applicant does not dispute that the non-registered mark was used in the course of trade in the Czech Republic between 2008 and 2009, that is to say before the date of filing of the application for registration of the mark applied for.

57      By contrast, the applicant maintains that the Board of Appeal should have required the intervener to adduce proof of continuous, uninterrupted and current use of the non-registered mark up to the date of the decision of the Opposition Division, namely 12 August 2011. In that regard, it submits that the intervener failed to produce any proof of use of the non-registered mark for 2010 and 2011. In addition, it claims that the intervener ceased to use that mark around January 2011.

58      The arguments raised by the applicant serve to determine the date on which the Board of Appeal should have assessed the requirement of use in the course of trade laid down in Article 8(4) of Regulation No 207/2009.

59      It follows from the case-law cited in paragraphs 43 and 44 above that the first condition laid down in Article 8(4) of Regulation No 207/2009, namely the condition relating to the use of the non-registered sign in the course of trade, must be interpreted in the light of EU law.

60      In addition, it is necessary to apply to the condition for use in the course of trade of the sign relied on in opposition the same temporal criterion as that expressly laid down in Article 8(4)(a) of Regulation No 207/2009 with regard to acquisition of the right to that sign, that is to say, that of the date of application for registration of the EU trade mark (judgments of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 166, and of 4 July 2014, CPI COPISA INDUSTRIAL, T‑345/13, not published, EU:T:2014:614, paragraph 47).

61      Thus, the Board of Appeal did not err in its assessment of the requirement relating to use of the non-registered mark on the date of filing of the application for registration of the mark applied for.

62      Finally, it must be held that the applicant’s arguments do not invalidate that conclusion.

63      The applicant claims, in essence, that the Board of Appeal should have required the intervener to establish continuous use of the non-registered mark, since it was a requirement under Czech law, in particular the decision of the Nejvyšší soud (Supreme Court, Czech Republic) of 19 April 2012 (No 23 Cdo 3412/2010).

64      In that regard, it is necessary to distinguish the condition for use in the course of trade, which must be assessed in the light of EU law, as noted in paragraph 44 above, from that referred to in Article 8(4)(a) of Regulation 207/2009 concerning the acquisition of the right to a non-registered sign, which must be assessed in the light of the law of the Member State in which the sign was used before the date of filing of the EU trade mark application, as pointed out in paragraph 45 above.

65      In the present case, the fact that Czech law provides for proof of use as a condition for the existence of a non-registered sign has no effect on the date on which the use of the non-registered sign must be assessed, which, in accordance with the case-law cited in paragraph 60 above, is the date of filing of the EU trade mark application.

66      The applicant’s argument must therefore be rejected.

67      In the light of the foregoing, the first part of the second plea in law must be rejected, without there being any need to examine the other arguments put forward by the applicant relating to the lack of continuous use of the non-registered mark, in so far as the non-registered mark was amended in January 2011 with the addition of the word ‘blended’ at the end of the sign. Nor is it necessary to rule on the intervener’s arguments seeking to challenge the admissibility of the claim alleging the lack of proof of use of that mark as from 2011.

–       The second part of the second plea in law

68      In the opposition, the intervener indicated, in essence, that the non-registered mark conferred on it the right to oppose the use of the mark applied for on the basis of Article 7(1)(g) of the Czech Law on trade marks and Articles 44, 46, 47 and 53 of the Czech Commercial Code, as established by the Czech Law No 513/1991 Sb.

69      Article 7(1)(g) of the Czech Law on trade marks provides as follows:

‘The sign applied for shall not be included in the register upon opposition to the registration of the mark in the register (“the opposition”) filed with the Office by

…

(g)      the proprietor of a non-registered sign or of another sign used in the course of trade of more than mere local significance for identical or similar goods and services, if such sign is identical or similar to the sign applied for, if the rights to that sign were acquired prior to the date of the application for registration.’

70      Article 44 of the Czech Commercial Code stated:

‘Unfair competition is conduct in commercial competition or in commercial relations, which is in conflict with good morals of competition and is capable of causing harm to other competitors, consumers or other customers. Unfair competition is prohibited.’

71      Article 46 of the Czech Commercial Code provided as follows:

‘Misleading Marking of Goods and Services

(1)      Misleading marking of goods and services means the marking of goods and services in such a way as to create an erroneous impression in the market about the country, region or location where the goods or services so marked originated or are made by a certain producer, or the special characteristics or quality of such goods or services …

…’

72      Article 47 of the Czech Commercial Code provided for cases involving a likelihood of confusion, on account, in particular, of the use of a special sign.

73      Article 53 of the Czech Commercial Code stated:

‘Persons whose rights have been infringed or threatened through unfair competition, may, vis-à-vis the infringer, demand that the infringer refrains from such conduct and that the infringing state of affairs is removed.’

74      The applicant submits that the Board of Appeal erred in so far as, when ascertaining whether the conditions laid down in Article 8(4)(a) and (b) of Regulation No 207/2009 were satisfied, it did not fully examine the provisions of Czech law relevant in the present case, although it was under an obligation to do so. According to the applicant, the Board of Appeal based its assessment of whether the non-registered mark conferred on the proprietor the right to prohibit the use of a subsequent mark on Article 7(1)(g) of the Czech Law on trade marks only, when it should have carried out that assessment in the light of the conditions laid down in Article 44 et seq. of the Czech Commercial Code, which concern unfair competition.

75      EUIPO and the intervener dispute the applicant’s arguments.

76      In that regard, it should be noted that, in the present case, the Board of Appeal did not examine whether the non-registered mark enjoyed protection under Article 44 et seq. of the Czech Commercial Code, even though, first, the intervener had based its opposition in particular on those provisions and, second, the applicant had expressly stated that the provisions of the Czech Law on trade marks were not irrelevant.

77      For the applicant, that lack of examination affects the legality of the contested decision on the ground that, in essence, EUIPO was required to examine the Czech law on a broad basis in order to determine whether the non-registered mark entitled the intervener to prohibit a subsequent trade mark and, accordingly whether the conditions laid down in Article 8(4)(a) and (b) of Regulation No 207/2009 were satisfied in the present case. According to the applicant, that obligation is clear from Article 8(4) of Regulation No 207/2009, the guidelines concerning procedures before EUIPO in the version applicable on the date of the contested decision (‘the EUIPO guidelines’) and the judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar (C‑96/09 P, EU:C:2011:189).

78      First, it is appropriate to point out that, as regards applications for a declaration of invalidity based on an earlier right acquired under national law, it has previously been held, as regards the allocation of roles between the applicant for a declaration of invalidity, the competent bodies of EUIPO and the General Court, that Rule 37 of Regulation No 2868/95 states that the applicant must provide particulars showing that he is entitled under the national law applicable to lay claim to an earlier right protected under national law. That rule requires the applicant, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, to provide EUIPO with, not only particulars showing that he satisfies the necessary conditions under the national law which he seeks to have applied, but also particulars establishing the content of that law (see, to that effect, judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraphs 49 and 50; of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 34; and of 5 April 2017, EUIPO v Szajner, C‑598/14 P, EU:C:2017:265, paragraph 35).

79      Second, as regards, more specifically, EUIPO’s obligations, the Court held that, where an application for an EU trade mark to be declared invalid was based on an earlier right protected by a rule of national law, the competent bodies of EUIPO must first assess the authority and scope of the particulars submitted by the applicant in order to establish the content of that rule. In addition, since the decision of the competent EUIPO bodies may have the effect of depriving the proprietor of the mark of a right that has been granted to him, the scope of such a decision necessarily implies that the authority which takes it is not limited to the role of mere validation of the national law as submitted by the applicant for a declaration of invalidity (see, to that effect, judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 51; of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraphs 35 and 43; and of 5 April 2017, EUIPO v Szajner, C‑598/14 P, EU:C:2017:265, paragraph 36).

80      Third, in accordance with Article 65(1) and (2) of Regulation No 207/2009, the General Court has jurisdiction to conduct a full review of the legality of EUIPO’s assessment of the particulars submitted by an applicant in order to establish the content of the national law whose protection he claims (see, to that effect, judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 52; of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 36; and of 5 April 2017, EUIPO v Szajner, C‑598/14 P, EU:C:2017:265, paragraph 37).

81      Furthermore, in so far as the application of national law, in the procedural context in question, may have the effect of depriving the proprietor of an EU trade mark of his right, it is essential that the General Court is not deprived, notwithstanding possible lacunae in the documents submitted as evidence of the applicable national law, of the real possibility of carrying out an effective review. To that end, it must therefore be able to confirm, beyond the documents submitted, the content, the conditions of application and the scope of the rules of law relied upon by the applicant for a declaration of invalidity. Consequently, the judicial review conducted by the General Court must meet the requirements of the principle of effective judicial protection (judgments of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 44, and of 5 April 2017, EUIPO v Szajner, C‑598/14 P, EU:C:2017:265, paragraph 38).

82      It is important to stress that the review by EUIPO and by the General Court must be conducted in the light of the need to ensure the practical effect of Regulation No 207/2009, which is to protect the EU trade mark (judgments of 27 March 2014, OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 40, and of 5 April 2017, EUIPO v Szajner, C‑598/14 P, EU:C:2017:265, paragraph 39).

83      As regards oppositions based on an earlier right based on national law, it must be noted that similar considerations to those set out in paragraphs 78 to 82 above may be taken into account concerning the burden of proof and the allocation of roles between the parties, the competent bodies of EUIPO and the General Court.

84      It follows from the case-law that it is for the opponent to establish that the sign concerned 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 (judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 190; see also, to that effect, judgment of 20 April 2005, Atomic Austria v OHIM — Fabricas Agrupadas de Muñecas de Onil (ATOMIC BLITZ), T‑318/03, EU:T:2005:136, paragraph 33).

85      Furthermore, it is for EUIPO to examine whether, in the context of opposition proceedings, the conditions for the application of the ground for refusal of registration which has been pleaded have been fulfilled. In that context, it is necessary to assess the correctness of the facts pleaded, and the probative value of the evidence submitted by the parties. EUIPO may be called upon to take account, in particular, of the national law of the Member State in which the earlier sign on which the opposition is based is protected. In that case, 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 to assess the applicability of the ground for refusal of registration in question and, in particular, the correctness of the facts pleaded or the probative value of the documents lodged (judgment of 20 April 2005, ATOMIC BLITZ, T‑318/03, EU:T:2005:136, paragraphs 34 and 35).

86      It is appropriate to note that it is apparent from Part C ‘Opposition procedure’, Section 4 ‘Rights under Article 8(4), point 5.3.6 of Regulation No 207/2009’ of the EUIPO guidelines, referred to by the applicant that:

‘this requires a finding that under the applicable national law [non-registered signs], in the abstract, are exclusive rights enforceable by means of an injunction vis-à-vis later marks and a finding that in the actual case under consideration the conditions for obtaining such injunctive relief, if the mark that is the subject of the opposed [EU trade mark] application would be used in the territory in question, are present (scope of protection).

As regards the first issue — protection in the abstract — this will generally be answered by using the list in the Annex, where the applicable earlier rights are listed.

As regards the second question, this will also have to be answered according to the applicable national law ...’

87      According to point 5.3.6. of the EUIPO guidelines, it is therefore necessary, for the purposes of applying Article 8(4) of Regulation No 207/2009, first, to prove that the law of the Member State concerned confers protection on non-registered signs and, second, that the conditions laid down for that purpose by the national legislation have been met.

88      It should be added that point 5.4 of the same Section 4 of Part C of the EUIPO guidelines states that:

‘... it is for the party relying on a particular proposition or consequence to provide the Office with the necessary allegations, facts, and arguments which are necessary to support the conclusions sought.

…

As regards the facts necessary to establish the legal consequences, for example actual use or reputation, the general principle of Article 74[(1) of Regulation No 207/2009] is applicable from the beginning.

These facts relate to such items as

–        …

–        the scope of protection (similarity of signs and goods or services, likelihood of confusion) (national standard).

–        As regards the law of the Member States applicable by virtue of Article 8(4), the Office will treat this also as an issue of fact. The Office is not in a position to determine with sufficient accuracy on its own motion what the law relating to Article 8(4) rights is in all the Member States. Treating this as an issue of fact, subject to proof by the party alleging such right, is in accordance with the approach of the courts in the Member States with respect to foreign law under their private international law principles.

–        Thus, as regards questions of law, i.e. the rules and norms of the respective national law applicable to the specific case, the Office will generally require the opponent to provide the necessary elements for the Office to take a decision.

–        It is only when such elements have already been previously established by the Office, such as through the inclusion in the list in the Annex, that such proof will not be necessary. The parties to the procedure are, however, free to provide evidence that the information contained in the list or otherwise established by the Office is no longer correct or up to date.

–        …’

89      In the present case, it must therefore be ascertained whether, in the light of what the parties have communicated to the Court, the Board of Appeal took into account the relevant national provisions and whether it properly examined the conditions for the application of Article 8(4) of Regulation No 207/2009 in the light of those provisions.

90      As regards the burden of proof of the earlier right and the significance of such a right, it is apparent from the application that, for the non-registered mark, the applicant claims that the Board of Appeal merely examined Article 7(1)(g) of the Czech Law on trade marks and, accordingly, failed to examine whether that mark fulfilled the conditions for protection on the basis of Article 44 et seq. of the Czech Commercial Code. According to the applicant, the Board of Appeal failed to confirm whether, under those provisions, the intervener was indeed the proprietor of a non-registered right conferring on it the right to prohibit the use of a subsequent trade mark.

91      In that regard, it must first of all be noted that the list annexed to Section 4 of Part C of the EUIPO guidelines includes, among the national rights which constitute earlier rights within the meaning of Article 8(4) of Regulation No 207/2009, Article 7(1)(g) of the Czech Law on trade marks. Article 44 et seq. of the Czech Commercial Code are, by contrast, not referred to in that annex.

92      The burden of proof lay with the applicant since it sought to dispute that Article 7(1)(g) of the Czech Law on trade marks could create a right to non-registered marks. The applicant was also required to show, since it sought to rely on it, that the right to non-registered marks was laid down in Czech law in provisions other than Article 7(1)(g) of the Czech Law on trade marks, in particular, Article 44 et seq. of the Czech Commercial Code, which relates to unfair competition and breach of copyright.

93      It must be added that, in so far as the Court was required, of its own motion and by whatever means considered appropriate, to obtain information about the national law of the Member State concerned in order to ascertain whether such information was necessary to assess the applicability of the ground for refusal of registration in question and, in particular, the correctness of the facts pleaded or the probative value of the documents lodged, measures of organisation of procedure were addressed, in particular, to the applicant in order to obtain information relating to the provisions of Czech law on which it relied and, in particular, the whole of the commentary on Article 7(1)(g) of the Czech Law on trade marks (Horáček, R. a kol. Práva na označení (zákon o ochranných známkách a zákon o ochraně označení původu a zeměpisnych označení) Komentář — Prague, C.H. Beck, 2004), of which the applicant quoted an extract in its application, as well as the complete version of the judgments of several national rulings also referred to in the application.

94      It is not evident from the case file or the replies of the parties that the Board of Appeal committed any error in finding, with regard to the application of Article 8(4) of Regulation No 207/2009 that, first, in accordance with Article 7(1)(g) of the Czech Law on trade marks, proprietors of non-registered marks used in the course of trade of more than mere local significance may oppose the registration of new marks if the signs are identical or similar and if they cover identical or similar goods or services and, second, the provisions of the Czech Commercial Code relied on in the present case were irrelevant because the issues of unfair competition and breach of copyright to which they related did not fall within the sphere of competence of EUIPO.

95      In the first place, under Article 7(1)(g) of the Czech Law on trade marks, the registration of a Czech mark may be opposed by ‘the proprietor of a non-registered mark or other sign used in the course of trade of more than mere local significance, for goods and services which are identical or similar, if that sign is identical or similar to the sign applied for, if the rights to that sign were acquired before the date of filing of the application for registration’.

96      Article 7(1)(g) of the Czech Law on trade marks therefore sets out the conditions under which a non-registered mark may preclude the registration of a subsequent mark.

97      As regards the question whether, in paragraphs 25 and 30 of the contested decision, the Board of Appeal was entitled to consider that the non-registered marks should have been acquired through use in the course of trade prior to the date of application for registration and whether, in paragraph 39 of that decision, it was entitled to analyse the evidence to determine whether the right to the non-registered mark had been acquired following the use made by the intervener, it should be noted that, according to the annex to Section 4 of Part C of the EUIPO guidelines, the basis of protection of a non-registered mark is, as regards the law of the Czech Republic, Article 7(1)(g) of the Czech Law on trade marks.

98      Although, in the application, the applicant maintained that the EUIPO guidelines were not binding, that cannot call into question the fact that Article 7(1)(g) of the Czech Law on trade marks confers protection on non-registered signs in that it expressly enshrines the right of their proprietors to oppose the registration of a later mark, or the fact that, in the Czech Republic, use in the course of trade is a condition for the acquisition of rights over a non-registered sign, which derives from that provision.

99      In the light of the documents and replies submitted by the parties, it does not follow that the Board of Appeal erred in finding that Article 7(1)(g) of the Czech Law on trade marks conferred protection on non-registered signs and that it followed from that provision that the acquisition of the right to a non-registered sign of more than mere local significance was acquired through use in the course of trade, before the filing of the application for registration of a subsequent mark.

100    It must be added that, by opposing the registration of a subsequent mark, the proprietors of rights over earlier signs seek effective protection against any future use of that mark.

101    As the applicant correctly maintained, in the application, Article 7(1)(g) of the Czech Law on trade marks enables the holder of a valid prior right to challenge a trade mark application before its registration, rather than having to go to court to have the use of the mark declared illegal and have the trade mark cancelled under Article 31(2) of that law.

102    The right to oppose the registration of a subsequent mark under Article 7(1)(g) of the Czech Law on trade marks implicitly but necessarily includes the right to oppose the use of that mark.

103    In the second place, as regards the question whether there are provisions other than those of Article 7(1) g) of the Czech Law on trade marks, which allow the proprietors of a non-registered sign to prohibit the use of a subsequent mark after it has been registered, such as Article 44 et seq. of the Czech Commercial Code, and whether the Board of Appeal erred in failing to consider whether the conditions for acquiring a right over the non-registered mark, which are laid down in those articles, were met in the present case, it should be noted that the evidence adduced by the parties cannot show that the Board of Appeal erred in finding that those articles related to questions outside the sphere of competence of EUIPO.

104    Article 44 et seq. of the Czech Commercial Code relate to unfair competition, misleading marks and copyright infringement and it does not follow from the documents submitted relating to Article 7(1)(g) of the Czech Law on trade marks that that provision should be read in conjunction with those provisions, notwithstanding the fact that Article 47 of that commercial code concerns scenarios relating to the creation of a likelihood of confusion.

105    It follows from all of the foregoing that the Board of Appeal did not err in its assessment of the conditions for the application of Article 8(4) of Regulation No 207/2009 in the light of the provisions of Czech law.

–       Third part of the second plea in law

106    The applicant maintains that the sign which is the subject of the mark applied for was used in the Czech Republic before the intervener’s non-registered mark which, accordingly, constitutes an act of unfair competition committed to its detriment and infringement of its copyright, and, accordingly, is invalid under Czech law. In that context, it criticises the Board of Appeal, in essence, for upholding the opposition and declaring that it was not competent to examine, as it was called upon to do, whether that non-registered mark was valid under Czech law. In this respect, the applicant complains that the Board of Appeal declared that it was up to the applicant to prove that the intervener’s right was not valid or could not be relied on against it. The applicant claims that it is for the intervener to establish that it has rights based on national law and for EUIPO to assess their validity.

107    EUIPO and the intervener dispute the applicant’s arguments.

108    It follows from the case-law that, if an opponent is to be able, on the basis of Article 8(4) of Regulation No 207/2009, to prevent registration of an EU trade mark, it is necessary — and sufficient — that, at the date on which EUIPO determines whether all the conditions for opposition are met, an earlier right may be claimed which has not been declared invalid by a judicial decision that has become final (judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 94).

109    In those circumstances, although it is for EUIPO, when it decides upon an opposition based on Article 8(4) of Regulation No 207/2009, to take into account decisions of the courts of the relevant Member States concerning the validity or classification of the earlier rights claimed to ensure that those rights continue to produce the effects required by that provision, it is not for it to substitute its assessment for that of the competent national courts — a power which, in any event, Regulation No 207/2009 does not confer on it (judgment of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 95).

110    Moreover, the validity of a national trade mark, in this case the intervener’s, may not be called in question in proceedings for registration of an EU trade mark, but only in cancellation proceedings brought in the Member State concerned (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 36 and the case-law cited). Furthermore, although it is for EUIPO to ascertain, on the basis of evidence which it is up to the opponent to produce, the existence of the national mark relied on in support of the opposition, it is not for it to rule on a conflict between that mark and another mark at national level, such a conflict falling within the competence of the national authorities (judgment of 21 April 2005, PepsiCo v OHIM — Intersnack Knabber-Gebäck (RUFFLES), T‑269/02, EU:T:2005:138 paragraph 26, and of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 36).

111    Therefore, as long as the earlier national mark is in fact protected, the existence of a national registration or another right predating that former mark will be irrelevant in the context of opposition to an EU trade mark application, even if the EU trade mark applied for is the same as a national trade mark held by the company applying for registration or another right predating the national mark on which the opposition is based (see, to that effect, judgment of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 37 and the case-law cited).

112    There is nothing to permit the view that such considerations would not apply in circumstances such as those in the present case where the opposition is based on an earlier non-registered national mark.

113    In that context, the Board of Appeal did not err in stating, in point 69 of the contested decision, that it was not competent to assess the validity of the non-registered mark and, accordingly, to rule on the existence of any infringement, by the intervener, of the applicant’s copyright or any act of unfair competition committed to its detriment.

114    Consequently, the Board of Appeal did not err in finding, in essence, that it was for the applicant to demonstrate that the non-registered mark was invalid by producing, as the case may be, definitive administrative or judicial decisions to that effect.

115    In view of all the foregoing, the action must be dismissed in its entirety.

 Costs

116    Under Article 134(1) 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.

117    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Bacardi Co. Ltd to pay the costs.

Delivered in open court in Luxembourg on 24 October 2018.

*      Language of the case: English.

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