Relative ground for refusal: ECJ rules on national law in Union law

The Group OOD opposed the application for a Union trade mark and claimed to be the owner of this trade mark of national importance with corresponding priority. The EUIPO rejected this. What is special about the case is that the disputed trademark of Group OOD is not a registered trademark and a relative ground for refusal.

The European Court of Justice (ECJ) ruled on the case last Thursday (C:2018:268). The focus was on the previous opposition proceedings against the Union trade mark applied for: a not registered trademark and therefore a relative ground for refusal. Unlike absolute grounds for refusal, relative grounds for refusal become relevant only when the holder of the earlier rights asserts his claim by means of opposition proceedings or an action for cancellation. Because the relative grounds for refusal are not examined by the trademark offices.
Above all, however, the question of how national law is applied in Union law and what evidence is required for the content of national law has now been clarified.

The background

Non registered national Trademark

The Bulgarian Group OOD opposed the application for the Union figurative trademark GROUP Company TOURISM & TRAVEL and referred to its own, earlier national trademark – which, however, is not a registered trademark. The Opposition Division and also the Board of Appeal of the European Union Intellectual Property Office (EUIPO) rejected the opposition of the Group OOD. In the opinion of the EUIPO, there was insufficient evidence of the national law applicable to its unregistered mark and was only submitted belatedly. However, the ECJ already annulled the decision of the Board of Appeal in 2016 (T-567/14, judgement of the Court of 29 June 2016) “because it did not exercise its discretion ex officio with regard to the examination of the content and scope of the national law asserted”, as stated in the current judgement. The Court also denied that the information provided by the Group OOD to the Board of Appeal was completely new. EUIPO appealed this judgement (appeal lodged on 2 September 2016, C-478/16 P).

Group OOD claimed that it had used the unregistered trademark since 2003 for interstate bus transport services between Sofia (Bulgaria) and Prague (Czech Republic). It supported its claim with numerous documents and invoked the priority of the earlier national non-registered trademark pursuant to Article 8(4) of Regulation (EC) No 207/2009.

In particular, the Opposition Division rejected the request of Group OOD “because it has not provided any details or evidence of national law on the basis of which the use of the mark applied for could have been prohibited in the Member States concerned”. The Bulgarian company contradicted this. In its statement of grounds of appeal to the Board of Appeal, the OOD Group referred to provisions of Bulgarian law, including Article 12(6) of the National Trade Mark Law.

Applied Union figurative trademark

Requirement of evidence for national law in Union law

The appeal procedure in this case now decided therefore focused on possible infringements of EU Regulations Article 76 (1) and (2) of Regulation No. 207/2009 in conjunction with Rule 50 (1) of Regulation No. 2868/95 and Article 8 (4). In principle, it is for the opponent to prove that the right on which the sign in question is based may justify a prohibition on the use of a later trademark. Not only this evidence must be provided, but also the content of the national legislation on which the opponent is based.

In this context, three main questions had to be clarified by the ECJ:

Was the opponent entitled to justify a prohibition on the use of the later mark, even though the earlier national mark was not a registered mark?
Do Regulation No 2868/95 or Regulation No 207/2009 determine the manner in which the content of national legislation must be demonstrated?
Do the references made by the opponent before the Board of Appeal to the Trade Mark Law constitute’additional’ evidence within the meaning of Rule 50(1) of Regulation No 2868/95 and were the evidence provided too late?

ECJ confirmed the Group OOD

The court in its judgement clarified that:

As regards the evidence required to support the opposition, the following applies: Opposition is possible not only against another registered trade mark (Rule 19(2a) of Regulation No 2868/95), but also against an earlier unregistered national trade mark (Rule 19(2b) of Regulation No 2868/95). It follows that the opponent is free to choose the form of the evidence. And the EUIPO is obliged “to analyse the evidence submitted by the opponent without being able to reject any kind of evidence on the basis of its form from the outset”.
Neither Regulation No 2868/95 nor Regulation No 207/2009 determine the manner in which the content of national legislation must be demonstrated.
The express reference to the trade mark law may be part of the proof of the acquisition, durability and scope of protection of the alleged earlier right.
Accordingly, the Board of Appeal could not require the Group OOD to submit an extract from Darzhaven vestnik (Bulgarian state newspaper) or the official Bulgarian text, in particular if the language of proceedings before the EUIPO is English. While the national legislation cited as evidence must enable the EUIPO to understand the scope of any national trade mark protection, the legal text from an official source is not absolutely necessary.
In recognition of evidence submitted late, the Court recalled that EUIPO may ignore facts which the parties have not invoked or evidence which they have not provided in time (Article 76(2) of Regulation 207/2009). At the same time, however, the EUIPO has a margin of discretion to still recognise such evidence.
In the present case, however, the late references to the trade mark law made by the group before the Board of Appeal are not entirely new elements and should therefore be regarded as part of the non-registered Bulgarian trade mark. Therefore, the EUIPO should have taken this evidence into account and made a legal error.

The ECJ dismissed the appeal of EUIPO, thus ending the proceedings. EUIPO shall bear the costs of the proceedings.