In 1998, MIP Metro Group Intellectual Property GmbH & Co. KG filed an application for registration of a Community trade mark, consisting in the figurative sign reproduced on the right, in relation to Classes 9, 35, 36 and 41 of the Nice Agreement. The trade mark was registered on 21 April 2005. Meanwhile, in 2003, macros consult GmbH - Unternehmensberatung für Wirtschafts - und Finanztechnologie had filed an application for registration of the word sign 'macros', in relation to Classes 35, 36 and 41 of the Nice Agreement. MIP filed a notice of opposition ex Article 42 of Regulation 40/94 (Article 41 CTMR), relying on Article 8(1)(b) of the same Regulation. macros consult GmbH, on the other hand, submitted an application for a declaration of invalidity of MIP's figurative sign, under Articles 52(1)(c) and 55 of Regulation 40/94 (Articles 53(1)(c) and 56 CTMR).The 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. On appeal, the Fourth Board of Appeal confirmed the Cancellation Division's decision. It found that 'in making a general reference to Section 5 of the Markengesetz [the German Act on the Protection of Trade Marks and other Symbols], which protects several types of different rights, and invoking the company name macros consult GmbH, the applicant had not indicated with sufficient precision what earlier right it relied on'. The Board of Appeal also noted that the evidence submitted by the applicant (copy of an application for a national mark of 14 March 1998, documents relating to the participation in a specialised fair and accounting records for the years 2006 and 2008) was insufficient to establish the existence of an earlier right. Further, the application for registration of the company name 'macros consult GmbH - Unternehmensberatung für Wirtschafts - und Finanztechnologie' differed from the name the company relied on to challenge the validity of MIP's figurative sign.
The applicant challenged the Board of Appeal's judgment before the General Court, alleging infringement of Articles 53(1)(c) and 8(4) CTMR. macros consult GmbH argued that, at the date of MIP's application for registration of the conflicting mark, it was already using the sign 'macros consult' as a name, company name and trade sign. It added that Section 5 of the Markengesetz protected 'the company name of a pre-incorporation legal person ..., subject to the condition that the future company has operated in relation to third parties and that the commercial activity thus carried out suggests a lasting economic activity', producing a scholarly article and several judicial decisions to support this interpretation. To prove the use of the sign in the course of trade, it relied on an application for registration of the company name in the commercial register (and its registration, both in 1998), and on the use of the sign in correspondence with the German patent and trade mark office (where the company had filed, in 1998, an application for registration of the word sign 'macros'). The applicant stated that the terms 'macros' and 'consult' had a distinctive character and were protected, even when used in isolation, under Section 5 of the Markengesetz. Finally, it contested the OHIM's assessment of the accounting records and other documents related to the years 2006-2008, and produced, in annex to the reply, its annual accounts for the years 1998-2005.
The General Court recited previous case law (Joined Cases T-318/06 to T-321/06, Moreira da Fonseca v OHIM - General Optica), noting that the four requisites set out by Article 8(4) are cumulative. The first two requisites (1- the sign must be used in the course of trade; 2- the sign must be of more than mere local significance) must be interpreted in light of the CTMR itself, while the other two conditions (3- right acquired in accordance with [the Community legislation or] the law of the Member State in which the sign was used; 4- the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark) 'must be assessed in the light of the criteria set by the law governing the sign relied on' [Do: make sure that each of these requisites is satisfied; Don't: forget any!]. The judges added that Rule 37 of Regulation 2868/95, which establishes that 'the applicant must provide particulars showing that he is allowed under the applicable national law to lay claim to that right', comprising details on the content of that law (Case C-263/09 P, Edwin v OHIM), is applicable to Article 53(1)(c) CTMR [Do: tell the OHIM which national law your right is based upon, what its content and interpretation is, how your sign qualifies for the protection offered by it; Don't: expect the General Court to re-consider the OHIM's interpretation of national law on the basis of evidence you did not submit before the latter]. Further, the General Court observed that its assessment does not extend to factual circumstances, in light of evidence produced for the first time before it, as stated by Article 65 CTMR [Do: fill the OHIM's drawers with all the evidence you need to support your case; Don't: save some new evidence for the General Court's drawers]. The court clarified that:I[t] follows from the foregoing that the issue of the existence of a national right such as that relied on in the present case by the applicant is a question of fact. It is therefore for the party which alleges the existence of a right fulfilling the conditions set out in Article 8(4) of Regulation No 207/2009, to establish, before OHIM, not only that this right arises under the national law, but also the scope of that law. Accordingly, [the OHIM was right] in finding [here] that the national law applicable under Article 8(4) of Regulation No 207/2009 would be considered in the same manner as a factual issue and that it was not in a position to automatically determine, with precision, the law of all of the Member States concerning the rights within the scope of Article 8(4) [Do: ask the EU to harmonize the national laws which protect signs used in the course of trade; Don't: expect OHIM to become an expert of national laws without your (compulsory) help].
The Court concluded that it 'cannot substitute its own interpretation of German law for that carried out by the Board of Appeal'; its review is limited to analysing whether the Board of Appeal correctly assessed the evidence which had been submitted to it.
Applying these principles, the General Court found that the applicant could not rely on the judicial decisions and the scholarly article produced for the first time before it, to challenge the interpretation of Section 5 of the Markengesetz rendered by the OHIM in the administrative proceedings, where these documents had not been submitted. Similarly, the annual accounts for the years 1998-2005, produced for the first time before the Court, were deemed inadmissible [Don't: expect the General Court to buy the 'I submitted new evidence only to address OHIM's remarks' argument]. The judges also held that the applicant should have provided evidence that it had acquired the right on which it relies prior to the date of application for registration of the conflicting sign, which, in this case, was 1998 [Do: provide evidence that you acquired the right before the date of the application or the date of the priority claimed; Don't: rely on evidence that proves that you used the sign years later]. Thus, the Board of Appeal had correctly rejected evidence concerning the applicant's activity between 2006 and 2008.
Concerning the differences between the registered company name and the name relied upon to challenge MIP's figurative sign, the Court noted that no evidence had been produced before the Board of Appeal to establish 'that, in German law, the company name whose protection is invoked on the basis of Article 5 of the Markengesetz can differ from the designation in the evidence put forward to prove the existence of that protection' (in any case, no proof of the lasting nature of the use of that designation had been submitted) [Do: if the national law affords protection to a sign, or part of it, used in the course of business, explain why and how, and provide evidence of its lasting nature; Don't: merely state it does!]. The use of the sign in correspondence between the applicant and the German patent and trade mark office, in relation to an application for registration of the word sign 'macros', was deemed insufficient to prove use in the course of trade. The Board of Appeal was also right in finding that 'the application for registration of a mark neither presupposes nor implies the use of that mark and it is undisputed that the registration procedure was not pursued by the applicant' [Don't: rely on an application for registration of a sign to prove its use in the course of trade - especially if you abandoned it]. Accordingly, since Article 5 of the Markengesetz requires proof of the use of the name with a certain degree of effectiveness and a sufficiently habitual character, mere isolated correspondence could not satisfy such requirement [Do: provide proof that the sign is worthy of protection because it was consistently used to identify your company or services, in front of third parties or the public; Don't: expect that mere sporadic use could constitute sufficient evidence].
Apart from the humorous list of dos and don'ts, this case certainly offers a useful recap of the burden of proof surrounding Article 8(4) CTMR. In particular, applicants should provide sufficient evidence concerning the content and interpretation of the national law on which they rely, and the reasons why their sign benefits from its protection. Further, 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 usually insufficient to trigger the applicability of Articles 53(1)(c) and 8(4) CTMR.
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