Article first appeared on WTR Daily, part of World Trademark Review, in September 2012. For further information, please go to www.worldtrademarkreview.com

In National Lottery Commission v Office for Harmonisation in the Internal Market (OHIM) (Case T-404/10, September 13 2012), the General Court (Seventh Chamber) has considered the issue of the application by OHIM of national law protecting earlier rights.
On October 2 2007 the National Lottery Commission obtained registration of the following stylised mark (Registration 4800399) in Classes 9, 16, 25, 28 and 41 of the Nice Classification:

On November 20 2007 Mediatek Italia Srl and Giuseppe De Gregorio filed an application for a declaration of invalidity of the mark pursuant to Article 52(2)(c) of the Community Trademark Regulation (40/94) (now Article 53(2)(c) of the Community Trademark Regulation (207/2009)) based on copyright – predating the application date of the mark and owned by De Gregorio – in the sign depicted below (identified as ‘mano portafortuna‘):

The Cancellation Division of OHIM ruled in favour of the applicants and granted the application for a declaration that the contested mark was invalid. The decision of the Cancellation Division was based on the following grounds:

•    the applicants had demonstrated that the Italian legislation provided copyright protection capable of applying to the ‘mano portafortuna’; and
•    the sign protected by copyright predated the contested mark.

On September 1 2009 the National Lottery Commission filed an appeal with OHIM pursuant to Articles 58 and 64 of the regulation.

The First Board of Appeal of OHIM dismissed the appeal finding, among other things, that the earlier sign was protected under Article 2575 et seq of the Italian Civil Code, in conjunction with the Italian Law on Copyright. In addition, one of the main points of the board’s decision was that sufficient evidence of the existence of copyright had been provided through the submission of the photocopy of a 1986 agreement, which concerned the assignment of the rights to reproduce and use the sign.

In the proceedings before the General Court, the National Lottery Commission argued that the Board of Appeal had ‘relied solely on its examination of the copy of an agreement transferring ownership of that copyright in 1986 without taking into account the plausibility of the arguments put forward by the parties’ (Paragraph 12) – namely, issues relating to the date of the copyright (a post office stamp was affixed to the agreement on a Sunday, when the Italian Post Office is notoriously closed). In addition, formal issues relating to the notarisation of the signatures on the agreement were raised. The National Lottery Commission maintained that, if the Board of Appeal is entrusted with deciding on the validity of a Community trademark, it must necessarily be entitled to appraise the authenticity of a document on which a party’s claims are based when such authenticity is disputed. According to the National Lottery Commission, ‘in refusing to undertake such an examination, the Board of Appeal did not accurately assess the scope of its own powers’ (Paragraph 12).

The General Court first held that, as it already had the occasion to point out, an applicant for a declaration of invalidity must provide OHIM ‘not only with particulars showing that, in accordance with the national law which it wishes to have applied, it satisfies the necessary conditions for having the use of a Community trademark prohibited by virtue of an earlier right, but also particulars establishing the content of that law (see Edwin v OH!M (Case C-263/09 P), Paragraph 50).

Therefore, it was clear from the case law of the court that, when OHIM is called to take into account the national law of a member state in which protection is given to an earlier mark, ‘it must – of its own motion and by whatever means considered appropriate – obtain information about the national law of the member state concerned’ (Paragraph 20), especially when such information is necessary for the purpose of assessing the applicability of a ground for invalidity. Consequently, the restriction of the factual basis of the examination by OHIM does not preclude it from taking into account facts which are well known – that is, facts which are likely to be known by anyone or may be learnt from generally accessible sources (see Tresplain Investment v OHIM (Case T-303/08), Paragraph 67).

The court held that, ‘without it being necessary to consider the merits of those findings by the Board of Appeal, it is sufficient to note that they have been affected by [a misrepresentation of the Italian law]… Arguably, the Board of Appeal would have attributed more weight to those factors if it had believed that it was legitimate for the National Lottery Commission to challenge before it the reliability of the date indicated on the post office stamp and that, accordingly, the 1986 agreement did not necessarily constitute proof of provenance of the statements made therein’ (Paragraph 39).

The court concluded that, in finding that the applicants for a declaration of invalidity had shown the existence of an earlier right, the board had based its decision on a misinterpretation of the national law governing copyright protection. That error might have had an effect on the content of the board’s decision.
The General Court thus annulled the decision of the Board of Appeal (Case R 102812009-1).