National law applicable to an ownership claim regarding an EU trade mark provided that the situation concerned does not fall within those covered by Article 18 of the Community Trade Mark Regulation.
Request for a preliminary ruling by the Tribunal Supremo (Supreme Court, Spain). On 24 January 2011, Mr Benjumea Bravo de Laguna filed an application for registration of the figurative sign “SHOWER GREEN”, which was registered on 29 August 2011 as an EU figurative mark. Since Mr Torras Ferrazzuolo considered that he was the lawful proprietor of that trade mark, he brought an action to recover ownership of that trade mark on the basis of Article 18 of the EU Trade Mark Regulation. The claim was dismissed at first instance, but was granted on appeal. The Provincial Court held that since the regime for the recovery of ownership provided for in Article 18 of the Community Trade Mark Regulation was concerned only with the case of the disloyal agent or representative, it was appropriate to apply, in the present case, the rules relating to the action for the recovery of ownership of a trade mark laid down in Article 2 of the Spanish national trade mark law. The Tribunal Supremo decided to refer a question regarding the compatibility of this approach with EU law. The Court of Justice rules that this approach is allowed under EU law.
The Court of Justice answers as follows:
"Articles 16 and 18 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark must be interpreted as not precluding the application to an EU trade mark of a national provision, such as that at issue in the main proceedings, under which a person harmed, by the trade mark registration which was applied for in fraud of his rights or in breach of a legal or contractual obligation, is entitled to claim ownership of that trade mark, provided that the situation concerned does not fall within those covered by Article 18 of that regulation."