Judgement of the General Court (Fourth Chamber), of 29 June 2016, in case T-567/17. Group OOD vs EUIPO and Kosta Iliev.

On 13 February 2012, Mr Kosta Iliev, filed an application for registration of a European Union trade mark before EUIPO, pursuant to Regulation (EC) Nº 207/2009 of 26 February 2009, in Classes 35, 39 and 43 of the Nice Agreement.

On 11 July 2012, the applicant, Group OOD, filed a notice of opposition against registration of the mark applied for.  The applicant relied on a non-registered figurative mark, used in Bulgaria, in the Czech Republic, in Hungary, in Poland and in Slovakia for services covered in Class 39.

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.

The Opposition Division dismissed the opposition lodged and the applicant filed an appeal with EUIPO.

By decision of 2 June 2014, the Fourth Board of Appeal of EUIPO dismissed the appeal; in essence it considered that in the opposition proceedings the applicant had failed to make out proof of which national law was applicable.

The applicant raised 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.

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.  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 cannot succeed.

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.  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.

In this Judgement, the General Court understood that 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.

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.

The Board of Appeal further erred when 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.

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.

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.

In the light of the case-law referred to, 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.

Consequently, in the light of all the foregoing 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 and, accordingly, the General Court considered that the present action must be upheld.