Opposition on ground of a sign used in the course of trade of more than mere local significance
General Court erred in holding:
• first, that the significance of the sign concerned, which cannot be merely local, must be evaluated exclusively by reference to the extent of the territory in which the sign is protected, without taking account of its use in that territory,
• second, that the relevant territory for the purpose of evaluating the use of that sign is not necessarily the territory in which the sign is protected and,
• finally, that the use of the sign does not necessarily have to occur before the date of the application for registration of the Community trade mark.
Possible validity prior rights
• that the Board of Appeal ought to have taken into account the claimed earlier rights without calling in question the actual classification of those rights.
• In those circumstances, although it is for OHIM, when it decides upon an opposition based on Article 8(4) of Regulation No 40/94, 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 40/94 does not confer on it.
“Used in the course of trade”
• the words ‘used in the course of trade’ are to be understood either as referring to use of an earlier right in a commercial activity with a view to economic advantage and not as a private matter, or as referring to genuine use
Function : use as a trade mark
• As regards the function to be performed by use of the sign, the latter must be used as a distinctive element in that it must serve to identify an economic activity engaged in by its proprietor, a matter which, in this instance, is not in dispute.
Opposition: signs which actually have a real presence
• A right of opposition reserved to signs which actually have a real presence on their relevant market.
• It follows that, in order to be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade and its geographical extent must not be merely local, which implies, where the territory in which that sign is protected may be regarded as other than local, that the sign must be used in a substantial part of that territory.
Use of sign in each territory for which protection is claimed
• an error of law in holding, at paragraph 167 of the judgment under appeal, that Article 8(4) of Regulation No 40/94 does not require that the sign concerned be used in the territory in which it is protected and that use in a territory other than that in which it is protected may suffice, even where there is no use at all in the territory of protection.
• The significance of the sign cannot therefore, in this case, be inferred from a cumulative assessment of the use of the sign in the two relevant territories, namely Austria so far as protection under the relevant bilateral treaties is concerned and France as regards protection under the Lisbon Agreement.
Use of sign prior to date of application for registration
• Necessary to apply to the requirement for use in the course of trade of the sign relied on in opposition the same temporal condition as that expressly laid down in Article 8(4)(a) of Regulation No 40/94 with regard to acquisition of the right to the sign, that is to say, that of the date of application for registration of the Community trade mark
Right to prohibit use of trade mark
• It follows that the General Court was correct in holding, at paragraph 195 of the judgment under appeal, that the opponent must establish only that he has available to him a right to prohibit use of a subsequent trade mark and that he cannot be required to establish that that right has been used, in other words that the opponent has actually been able to prohibit such use.
Determination of national law
• Noting that those decisions had not acquired the authority of res judicata, the General Court held, also at paragraph 192, that the Board of Appeal could not rely solely on those decisions as the basis for its conclusion and should also have taken account of the provisions of national law relied on by Budvar in the opposition proceedings in order to assess whether, under those provisions, Budvar had the right to prohibit a subsequent trade mark on the basis of the sign it relied on.