General Court offers guidance on unregistered signs protected under national law

In macros consult GmbH – Unternehmensberatung für Wirtschafts- und Finanztechnologie v Office for Harmonisation in the Internal Market (OHIM) (Case T-579/10, May 7 2013), the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had found that the applicant had failed to prove the existence of an earlier right. 

MIP Metro Group Intellectual Property GmbH & Co KG obtained a Community trademark (CTM) registration for MAKRO in stylised form in Classes 9, 35, 36 and 41 of the Nice Classification, with a filing date of March 23 1998.

macros consult GmbH filed a CTM application for the word mark MACROS in respect of services in Class 35, 36 and 41 on November 7 2003. MIP opposed this application on the basis of its CTM MAKRO. The opposition proceedings were then suspended as macros consult filed an application for a declaration of invalidity of the CTM MAKRO based on its German company name macros consult. It argued that its company name enjoys protection pursuant to §5 of the German Trademark Act and could be enforced against MIP's CTM MAKRO under German law. The grounds relied on in support of the application for a declaration of invalidity were Article 53(1)(c) of the Community Trademark Regulation (207/2009), in combination with Article 8(4).

The Cancellation Division of OHIM rejected the application for a declaration of invalidity and the Fourth Board of Appeal of OHIM rejected the appeal, holding that macros consult has not properly shown that it had a prior right in the company name macros consult in Germany which could have been enforced against the CTM MAKRO.

In its action before the General Court, macros consult based its complaint only on the alleged infringement of Article 53(1)(c) of the regulation.

Before the court, macros consult submitted some evidence of its alleged prior use of the company name macros consult. In particular, it submitted evidence that it had filed:

• an application for registration with the German Commercial Register in February 1998, which was registered on March 5 1998; and
• a trademark application for MACROS CONSULT with the German Patent and Trademark Office on March 14 1998.

Further, macros consult referred to its turnover in the year 2006, its annual reports in 2005 and 2006, as well as its attendance at specific fairs in 2005, 2006 and 2008. In the course of the proceedings, macros consult also submitted other annual reports dating from between 1998 and 2005, and submitted copies of decisions of the German Federal Supreme Court and German commentaries concerning the interpretation of §5 of the German Trademark Act. However, this additional evidence was submitted only once the complaint was pending before the General Court. Both OHIM and MIP argued that most of this evidence was not admissible, as it had not been submitted to OHIM or the Board of Appeal.

The General Court first pointed out that a successful motion for a declaration of invalidity based on Article 53(1)(c) of the regulation must satisfy the following cumulative conditions:

• the sign must be used in the course of trade;
• the sign must be of more than mere local significance;
• the right to that sign must have been acquired in accordance with the law of the member state in which the sign was used prior to the date of application for registration of the CTM; and
• the sign must confer on its proprietor the right to prohibit the use of the subsequent trademark under the law of that member state.

The first two conditions must be interpreted in light of EU law, whereas the other two conditions clearly refer to the law of the member states and must thus be interpreted in light of the relevant national law.

The General Court then referred to the burden of proof and the submission of evidence with respect to the existence of an earlier national right, and emphasised that an applicant in invalidity proceedings must provide details showing that it is entitled to claim rights under the relevant national law. Whether or not this national right exists is therefore a question of fact which must be proven by the applicant. Hence, macros consult not only had to submit evidence that it used its company name before March 23 1998, but it also had to show that German law gives it the right to block the CTM MAKRO based on its company name.

Further, the General Court emphasised that it cannot carry out an autonomous assessment of whether the applicant may rely on a sign protected by §5 of the German Trademark Act. The General Court is not allowed to substitute its own interpretation of German Law for that carried out by the Board of Appeal; it may only review whether the Board of Appeal properly determined the issues of German Law. Hence, all the evidence submitted by macros consult in the course of the action before the General Court had to be disregarded, as it was not the subject of the decision of the Board of Appeal.

The General Court then considered the evidence that had been submitted to the Cancellation Division and the Board of Appeal, and noted that the evidence relating to the use between 2006 to 2008 was not relevant, because the national right on which an application for a declaration for invalidity is based must have been acquired prior to the date of the application for the CTM at issue. Hence, all the evidence concerning the period subsequent to March 23 1998 was irrelevant in this case and could not be taken into account. Therefore, the court could refer only to the application with the Commercial Register and the application with the German Patent and Trademark Office, as both were made prior to March 23 1998 and were the only admissible evidence which could theoretically be relevant.

With respect to the application for registration in the Commercial Register, the Board of Appeal claimed that the complete company name differred from the shorter name macros consult, and that macros consult had addressed this legal issue for the first time before the General Court; therefore, this argument was no longer admissible. The General Court also agreed with the board that, although a registration in the Commercial Register would allow the applicant to use the company name macros consult in the course of trade, it did not in itself demonstrate the lasting nature of the use of that designation.

The General Court further agreed with the Board of Appeal that a mere application for registration of a word mark with the German Patent and Trademark Office is not sufficient to prove use of that sign in the course of trade. The General Court pointed out that an application does not imply use in the course of trade, and agreed with the board that §5 of the German Trademark Act would require a certain degree of effectiveness and a sufficiently habitual character, so that mere isolated correspondence with a trademark office is not sufficient to establish a right pursuant to §5 of the act. As macros consult had failed to submit evidence to the contrary, the action was rejected in its entirety.

This decision shows once again that it is mandatory to submit all the evidence that is available at a very early stage, and that late submissions of facts and evidence will not be taken into account by the General Court. With respect to signs used in the course of trade of more than mere local significance, the decision also shows that questions of law under the law of the member states are considered as questions of fact in proceedings under the regulation; therefore, a party relying on such rights must not only prove the facts which would justify such a right, but also submit sufficient evidence of how the right is established under local law and whether it is enforceable.

Finally, the decision shows that correspondence with official bodies, such as the Commercial Register or the local patent and trademark office, is an indication of use of a sign in the course of the trade, but is not sufficient to prove use. Therefore, it is advisable to collect other types of evidence, such as business correspondence with customers and potential customers, attendance at fairs and exhibitions, and invoices sent to customers, in order to show use of the sign in the course of trade.

Carsten Albrecht, FPS Rechtsanwälte & Notare, Hamburg