In addition to relying upon registered trade marks, it is possible to attack a pending or registered Community trade mark (CTM) on the basis of non-registered trade marks, as provided by Article 8(4) of the CTMR. On 01 December 2014 the CTM Office revised its guidelines on the practice regarding Article 8(4)1. Coincidentally, the General Court (GC) recently considered an invalidity action based upon this ground in Szajner v OHIM (the Laguiole case).

Szajner v OHIM

Mr Gilbert Szajner had registered the trade mark LAGUIOLE in twenty classes of goods, and services in class 38. In 2005, the French company Forge de Laguiole SARL, applied to invalidate the registration under Article 8(4) on the basis of its business name.

In consideration of the ground of attack under Article 8(4) the court had to consider the four cumulative requirements of the said article:

  1. the sign is used in the course of trade.
  2. the sign has more than mere local significance.
  3. the rights to the sign were acquired prior to the CTM application being filed.
  4. the sign gives the proprietor the right to prohibit the use of a subsequent trade mark under the law of the member state governing that sign.

The court confirmed that the first two requirements are interpreted under Community law and the second two are interpreted under national law.

The parties agreed that the first three of the conditions were met but their views parted on whether the applicant for invalidity had the right, under national French law, to prohibit the use of the registered mark. French law allows a company's business name to be protected in relation to the activities listed in its Memorandum of Association (MoA) and the Board of Appeal had, at the earlier stage, ruled that the business of the applicant was the manufacture and sale of all cutlery.

On appeal, Mr Szajner bought to the attention of the GC a French Supreme Court judgment issued in 2012, after the decision of the Board of Appeal.

The 2012 decision confirmed that protection of business names in France was to be limited to the activities actually carried out by companies and not all those listed in the MoA.

The GC applied the decision of the French Supreme Court and therefore considered the rights of the applicant to be limited to the goods for which the LAGUIOLE sign had actually been used.

It was correct for Mr Szajner to have filed details of applicable national law, as is directed by the Implementing Regulation; Rule 19(2)(d) provides that if an opposition is based upon Article 8(4), the opponent shall provide evidence of its acquisition, continued existence and scope of protection. Mr Szajner enabled the court to exercise 'an effective review' 2 of the facts. It is worth noting that decisions and changes in national law should be brought to the attention of the court even if they occurred after the commencement of proceedings.

The recent revision to the opposition guidelines has clearly set out what proof should be filed by an opponent (or an applicant for invalidity) when relying upon local law under Article 8(4). The office clarifies that an opposition (or invalidity action) will be rejected if the following are not clearly filed to support this ground:

  • Reference to the specific national law or legal provision including the text of that law/provision, the aforementioned text to be not only in the language of the proceedings but in the original language of the relevant law.
  • Reference not only to the acquisition of the relevant local right but to the scope of that right.
  • Arguments and evidence to show why the opponent/applicant for invalidity fulfils the conditions of the local law/legal provision.

The office has certainly made it clear that simply referring to the "Table on National rights that constitute 'earlier rights' in the sense of Article 8(4)" that is provided within the guidelines is for information purposes only.

In short

  • Article 8(4) is a useful tool in oppositions and invalidity proceedings but the ground should be fully supported with reference to the actual local law, its scope and how that law applies to the specific case. Without detailed supporting argument and evidence, the ground is likely to fail.
  • Experience has shown that supporting the 8(4) ground with reference to relevant case law proves persuasive.

Case details at a glance

  • Jurisdiction: European Union
  • Court: General Court
  • Parties: Gilbert Szajner v OHIM
  • Citation: T-453/11
  • Date: 21 October 2014
  • Full decision: http://dycip.com/laguiole1014