Macros’ appeal fails to register

Case T‑579/10: macros consult GmbH – Unternehmensberatung für Wirtschafts- und Finanztechnologie, (applicant) v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (respondent), MIP Metro Group Intellectual Property GmbH & Co. KG (intervener)

shopping trolley

The unitary nature of the Community trade mark, as set out in Article 1(2) of Regulation 207/2009 (the Regulation), is fundamental to the proper functioning of the European Union’s harmonised system.  Without it, free movement of goods and services would remain fragmented along historic political boundaries and the “progressive abolition of restrictions on international trade” set out in the preamble to the Treaty on the Functioning of the European Union (C-83/47) would be go unfulfilled.

But the acquis communautaire does afford one indulgence to localised rights owners in the form of Article 8(4) of the Regulation.  That states:

Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Community legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Those conditions are cumulative and it is sufficient if only one of those conditions is not satisfied for an application for a declaration of invalidity of Community trade marks to be rejected (Joined Cases T‑318/06 to T‑321/06 Moreira da Fonseca v OHIM – General Óptica (GENERAL OPTICA) [2009] ECR II‑649).  In alliance with the unitary character provision, owners of unregistered rights under national law can effectively torpedo a Community trade mark application.  If they prove their rights that is.

In Case T‑579/10 the sesquipedalian “macros consult GmbH – Unternehmensberatung für Wirtschafts- und Finanztechnologie” (Macros), unsuccessfully opposed the registration of MIP Metro Group Intellectual Property GmbH & Co. KG’s application for makro. The trade mark was filed on 23 march 1998 and registered on 21 April 2005.

Macros sought a declaration of invalidity under Article 53(1)(c) on the basis of its unregistered rights in Germany.  To succeed, Macros needed to show, pursuant to Rule 37(b)(ii) of Commission Regulation 2868/95:

particulars of the right on which the application for a declaration of invalidity is based and if necessary particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity”.

OHIM’s Cancellation Division rejected the application, stating that the applicant had failed to demonstrate that the name was used in the course of trade at the date of application for registration of the conflicting mark. The Board of Appeal found:

i) the existence of an earlier right at the date of the application had not been established

ii) a general reference to section 5 of the Markengesetz (an article in German law which protects several different types of rights) was insufficiently precise

iii) the evidence submitted was insufficient to prove the existence of an earlier right

Macros had filed evidence of an application for a German national mark dated 14 March 1998 as well as an application for registration of a company name (macros consult GmbH – Unternehmensberatung für Wirtschafts – und Finanztechnologie).  However, neither was found to prove that there was economic activity at the relevant time and the abandonment of the application and, indeed, the difference between the company name registered and the name Macros relied on to challenge the validity of the right, assisted in that conclusion.

The Court noted that its authority under Article 65 of the Regulation did not allow it to consider new evidence nor carry out an autonomous assessment of whether the applicant may rely on the sign protected by Article 5 of the Markengesetz.  It could not therefore substitute its own interpretation of German law for that carried out by the Board of Appeal; its review extends only to the question of whether the Board of Appeal correctly assessed the evidence which had been submitted to it prior to the contested decision.

Citing Case C‑263/09 P Edwin v OHIM [2011], ECR I‑0000, the General court noted that it was the applicant’s burden to establish the content of the law and to prove that he is entitled under the applicable national law to lay claim to a particular right.  Taking into account the paucity of the evidence filed before OHIM, the Board of Appeal was found to have reached the correct conclusion.

Comment

This case is a useful reminder of the consequences of a failure to properly particularise and substantiate a claim under Article 8(4) and is consistent with the principle under English law that a court will not “make an untutored examination of exhibits” (ABC! v. fifT [1996] 1 Lloyd’s Rep. 48).

Parties should provide evidence concerning the content and interpretation of the national law and the reasons why their sign benefits from its protection.  Proof of use in the course of trade should be clearly demonstrated, as vague or inconsistent evidence, as well as evidence of mere isolated use, is unlikely to be sufficient.

First published in the ITMA Review, September 2013

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