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Don’t judge substantiation by its cover: CJEU clarifies benchmark for EUTM oppositions

Background

By judgment of 19 April 2018 (C‑478/16 P in French here and here), the CJEU rejected an appeal filed by the company Group OOD who had opposed an EUTM application for a figurative mark based on unregistered trade mark rights for bus transport services in Bulgaria, the Czech Republic, Hungary and Slovakia.

The case raised the question of whether an opposition based on Art. 8 (4) EUTMR can only be substantiated by submitting an extract of the pertinent provisions of the national law from the official law gazette in the respective Member State in the original language (and a translation into the language of the proceedings). The Opposition Division took the position that the opponent had to provide extracts from the official source of the legislation at issue, the national provisions of Bulgarian law. The Board of Appeal confirmed this view, however, the General Court made clear that this is not the case. It stated at paragraph 71 of its decision T-567/14 (emphasis added):

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.”

CJEU Judgment

The CJEU took the same view and held at paragraph 58 of its decision that:

It follows that, first, the opponent is free to choose the form of evidence which he considers is useful to submit to EUIPO in the context of an opposition based on an earlier right, in the meaning of Article 8 (4) of Regulation No 207/2009, and on the other hand, EUIPO is obliged to analyze the elements presented by the opponent, without being able to refuse a type of evidence from the outset because of its sole form.

These decisions are correct as they are based on the old EU trade mark law, namely Rule 19(2)(d) Community Trade Mark Implementing Regulation (CTMIR), applicable to cases which reached the adversarial stage of the proceedings before the latest changes to EU trade mark law came into force on 1 October 2017 (as per 82(2)(b) EUTMDR).

Rule 19(2)(d) CTMIR stated the following (emphasis added):

(d) if the opposition is based on an earlier right within the meaning of Article 8(4) of the Regulation, evidence of its acquisition, continued existence and scope of protection of that right;

Group OOD had submitted evidence of the pertinent provision from Bulgarian law before the Board of Appeal. Taking into account that the table in the annex to the old Guidelines on Art. 8(4) EUTMR mentioned that provision and that both parties were based in Bulgaria and represented by Bulgarian lawyers the CJEU rightly held that the opponent did not have the obligation to produce the national text from an official source. Furthermore, according to the Court, the evidence was belated but admissible as it merely supplemented evidence of use of the alleged unregistered trade mark which the opponent had submitted before the Opposition Division.

The Court did not compare Rule 19(2)(d) to the new Art. 7(2)(d) EU Trade Mark Delegated Regulation (EUTMDR), which came into force on 1 October 2017 and replaces Rule 19(2)(d), nor did it even mention the new law (and neither did the Advocate General in its opinion of 5 December 2017).

Art. 7(2)(d) EUTMDR now states (emphasis added):

where the opposition is based on an earlier right within the meaning of Article 8(4) of Regulation (EU) 2017/1001, evidence showing use of that right in the course of trade of more than mere local significance, as well as evidence of its acquisition, continued existence and scope of protection including, where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Summary

This new rule clarifies that the opponent has to submit some evidence as to the content of the particular provision. It is not entirely clear what “publications of the relevant provisions” means. The English and German versions of the provision suggest that this does not have to be an excerpt from the official Law Gazette but that any publication of the text of the provision suffices (the French version, however, suggests otherwise).

However, the decision makes clear that in cases to which the new rule of Art. 7(2)(d) EUTMDR does not apply the Office cannot force the opponent to submit excerpts from the law gazette of the respective Member States. The decisions handed down by the Oppositions Division and the Board of Appeal do not make fully clear why both bodies of the EUIPO held the opponent to such a strict standard.  The Court’s decision is a helpful guidance as there will still be a high number of cases from the past to which the reformed law will not be applicable. For the older cases it is sufficient to make a clear reference to the national provisions as well as to explain the application and scope of them in the individual case.