Validity of national trade marks not to be questioned during opposition proceedings Community trade mark.
"40. It follows from the coexistence of Community trade marks and national trade marks, and from the fact that the registration of the latter does not fall within the sphere of competence of OHIM, and that judicial review in respect of them does not fall within the jurisdiction of the General Court, that in proceedings opposing the registration of a Community trade mark, the validity of national trade marks may not be called into question.
41. Therefore, in such opposition proceedings, it is not possible to find, with regard to a sign identical to a trade mark protected in a Member State, an absolute ground for refusal, such as the lack of distinctive character, provided by Article 7(1)(b) of Regulation No 40/94 and Article 3(1)(b) of Directives 89/104 and 2008/95. In this respect, it should be noted that the characterisation of a sign as descriptive or generic is equivalent to denying its distinctive character."
Distinctive character national trade mark is presumed.
"44. Their verification may not culminate in a finding of the lack of distinctive character of a sign identical to a registered and protected national trade mark, since such a finding would not be compatible with the coexistence of Community trade marks and national trade marks or with Article 8(1)(b) of Regulation 40/94, read in conjunction with Article 8(2)(a)(ii).
47. It follows that, in order to avoid infringing Article 8(1)(b) of Regulation No 40/94, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of a Community trade mark is based."
General Court has incorrectly ruled in opposition proceedings that ‘F1’ element in national trademark is generic, descriptive and devoid of any distinctive character.
"51. Although the findings set out in paragraphs 44, 49, 51, 57, 61 and 67 of the judgment under appeal are made with regard to the sign in the earlier trade mark or with regard to the ‘F1’ element in the trade mark applied for, given that the General Court considered, in paragraph 54 of the judgment, that that sign and that element are the same, by doing so the General Court thus held that the sign is generic, descriptive and devoid of any distinctive character.
52. Hence, the General Court called into question the validity of those earlier trade marks in proceedings for registration of a Community trade mark and therefore infringed Article 8(1) (b) of Regulation No 40/94."
C-196/11 P - ECLI:EU:C:2012:314