The National Lottery Commission (“NLC”) obtained a CTM registration for the below logo on 2 October 2007 (“the contested mark”):
The Applicants, Mediatek Italia and De Gregorio, filed for a declaration of invalidity at OHIM on 20 November 2007, on the basis of Article 52(2)(c) of Regulation No 40/94. They requested a declaration that the contested mark was invalid due to the existence of an earlier copyright, owned by Mr De Gregorio, shown below (“the mano portafortuna”):
The Applicants filed a copyright assignment document, dated 16 September 1986, evidencing the creation of the mano portafortuna, and of their status as owners of the copyright (“the 1986 agreement”).
NLC claimed the evidence was fraudulent because the 1986 agreement referenced the maximum duration of copyright protection as 70 years (this duration has only existed since 1996), the date of the post office stamp on the 1986 agreement was a Sunday (post offices are closed on Sundays in Italy) and the difference of quality and design between the drawing of the mano portafortuna and the other drawings appended to the 1986 agreement suggested that the mano portafortuna had been added at a later date.
The Cancellation Division of OHIM granted the declaration of invalidity due to the earlier existence of a copyright, protected by Italian legislation, for a virtually identical sign to the contested mark.
The decision was appealed by NLC, but this appeal was dismissed by the First Board of Appeal of OHIM on the ground that all the conditions required by Article 53(2) of Regulation No 207/2009 were satisfied. The Board of Appeal found that the 1986 agreement demonstrated the Applicants status as owners of the mano portafortuna and the abnormalities referred to gave no grounds for doubting the authenticity of the agreement.
NLC bought an action for annulment, which the General Court granted on 13 September 2012.
OHIM filed an appeal against this decision, which leads us to the current appeal.
The appeal has been assessed with regard to the provisions of Regulation No 40/94, as Regulation No 207/2009 was not in force on 2 October 2007 (date of registration of the contested mark) or 20 November 2007 (date of the declaration of invalidity).
OHIM relied on three pleas in law to support its appeal:
1. infringement of Article 76(1) of Regulation No 207/2009 and of Rule 37 of the Implementing Regulation;
2. infringement of the right to be heard, insofar as OHIM’s right to be heard regarding the judgment of 14 June 2007 was not observed; and
3. manifest inconsistency and distortion of the facts which affect the reasoning followed and the conclusion reached by the General Court.
The first ground of appeal
This ground of appeal has two branches to it – OHIM argued that the General Court could not rely on either:
i. Article 2704 of the Italian Civil Code; or
ii. the judgment of 14 June 2007
as these two issues had not been invoked by the parties and therefore did not fall within the subject-matter of the dispute. OHIM also felt it was not clear whether the General Court regards applicable national law as a question of law or fact.
THE CJEU held that the burden of providing OHIM with particulars showing that the applicant satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a CTM prohibited by virtue of an earlier right applies here (Edwin v OHIM, paragraph 50).
OHIM is also required to assess the authority and scope of the particulars submitted in order to establish the content of the rule of national law that is relied on (Edwin v OHIM, paragraph 51).
The General Court has jurisdiction to conduct a full review of the legality of OHIM’s assessment of the particulars in order to establish the content of the national law (Edwin v OHIM, paragraph 52).
Despite OHIM’s claims, the CJEU felt that it is not clear from paragraphs 50 to 52 of Edwin v OHIM that a rule of national law should be treated as a purely factual matter and the existence of which OHIM and the Court merely establish on the basis of the evidence before them. Instead, the CJEU found that these paragraphs had intended to emphasise the scope of the review that is required.
Therefore, should OHIM and the General Court do no more than examine the documents submitted by the applicant in order to establish the content of the applicable national law or should they exercise a power of verification regarding the relevance of the law invoked that involves, if necessary, obtaining information of their own motion on the conditions of application and the scope of the rules of national law relied upon?
The CJEU held that, as the application of national law can lead to a finding that there is a ground for invalidation of a registered CTM, it seems necessary for OHIM and the General Court to be able to ascertain the relevance of the evidence produced by the applicant with regard to the taking of evidence concerning the content of that national law.
The CJEU also found that the General Court did not exceed the limits of its power to seek information of its own motion in order to ascertain the content, the conditions of application and the scope of the rules of national law relied upon by the applicant.
In view of the above, both branches of the first ground of appeal were rejected.
The second ground of appeal
The CJEU reiterated the fact that the right to a fair trial is a fundamental principle of EU law, laid down in Article 47 of the Charter of Fundamental Rights of the European Union. In order to satisfy the requirements relating to the right to a fair hearing, it is important for the parties to be apprised of, and to be able to debate and be heard on, the matters of fact and of law which will determine the outcome of the proceedings (Commission v Ireland and Others, paragraphs 55 and 56, and Case C 472/11 Banif Plus Bank  ECR, paragraph 30).
In this case, although the General Court invited the parties to put forward their point of view on the provisions of Article 2704 of the Italian Civil Code, via the letter of 7 February 2012, the parties were not put in a position to submit their observations on the judgment of 14 June 2007, as no reference was made to this judgment in those letters. As the content of the judgment of 14 June 2007 was crucial to the General Court’s line of reasoning in its decision, it follows that the General Court infringed the principle that the parties should be heard.
The CJEU held that the second ground of appeal should be upheld.
The third ground of appeal
The CJEU held that it is not appropriate, at the present stage of the proceedings, to examine OHIM’s third ground of appeal.
The CJEU has set aside the General Court’s judgement of 13 September 2012, meaning that the General Court will now be required to make a fresh ruling on the merits of the action.
Charlotte Blakey 29 August 2014
[Keltie LLP acts for Camelot UK Lotteries Limited, which conducted the appeal on behalf of the National Lottery Commission. On 1 October 2013, the National Lottery Commission merged with the Gambling Commission.]