IP case law Court of Justice

Order of 29 Mar 2012, C-334/11 (Lanc)



ORDER OF THE COURT (Fifth Chamber)

29 March 2012 (*)

(Appeal – Community trade mark – Word mark ACNO FOCUS – Opposition by the proprietor of the national word mark FOCUS – Refusal of registration – Article 43(2) and (3) of Regulation (EC) No 40/94 – Earlier mark registered for not less than five years)

In Case C-334/11 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 27 June 2011,

Lancôme parfums et beauté & Cie, established in Paris (France), represented by A. von Mühlendahl, Rechtsanwalt,

applicant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider, acting as Agent,

defendant at first instance,

Focus Magazin Verlag GmbH, established in Munich (Germany), represented by R. Schweizer and J. Berlinger, Rechtsanwälte,

intervener at first instance,

THE COURT (Fifth Chamber),

composed of M. Safjan, President of the Chamber, A. Borg Barthet (Rapporteur) and M. Berger, Judges,

Advocate General: P. Cruz Villalón,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

Order

1        By its appeal, Lancôme parfums et beauté & Cie (‘Lancôme’) asks the Court to set aside the judgment of the General Court of the European Union of 14 April 2011 in Case T-466/08 Lancôme v OHIM – Focus Magazin Verlag (ACNO FOCUS) [2011] ECR II-0000 (‘the judgment under appeal’), whereby that court dismissed Lancôme’s application for annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 29 July 2008 (Case R 1796/2007-1) concerning opposition proceedings between Focus Magazin Verlag GmbH and Lancôme parfums et beauté & Cie (‘the contested decision’).

 Legal context

2        Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. However, taking into account the date of filing of the application for registration of the mark, the present dispute remains governed by Regulation No 40/94, as amended by Council Regulation (EC) No 422/2004 of 19 February 2004 (OJ 2004 L 70, p. 1) (‘Regulation No 40/94’).

3        Article 43(2) and (3) of Regulation No 40/94 reads as follows:

‘2.      If the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, or that there are proper reasons for non-use, provided the earlier Community trade mark has at that date been registered for not less than five years. In the absence of proof to this effect, the opposition shall be rejected. ...

3.      Paragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community.’

4        Article 10(1) of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) provides:

‘If, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in this Directive, unless there are proper reasons for non-use.’

 Background to the dispute

5        On 23 July 2003 Lancôme filed an application with OHIM for registration of the word sign ‘ACNO FOCUS’ as a Community trade mark, under Regulation No 40/94.

6        The goods in respect of which registration was sought are in Class 3 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Cosmetic and make-up preparations’.

7        The Community trade mark application was published in Community Trade Marks Bulletin No 27/2004 of 5 July 2004.

8        On 16 September 2004 Focus Magazin Verlag GmbH (‘Focus Magazin’) brought opposition proceedings against the registration of the mark applied for under Article 42 of Regulation No 40/94.

9        The opposition was based on:

–        the existence of the word mark FOCUS, registered in Germany on 23 May 1996 under No 39407564, in respect of goods and services in Classes 3, 5 to 9, 14 to 16, 18, 20, 21, 24 to 26, 28 to 30, 33, 34, 36, 38, 39, 41 and 42; and

–        application No 453720 for registration of the Community word mark FOCUS, filed on 17 January 1997, to designate goods and services in Classes 3, 6, 7, 9, 14, 16, 21, 25, 28, 29, 32, 33, 35, 38, 39, 41 and 42.

10      The opposition was directed against all the goods covered by the application for Community trade mark ACNO FOCUS and was based on all the goods and services covered by the earlier national mark FOCUS and by the application for Community trade mark FOCUS.

11      The grounds relied on in support of the opposition were those in Article 8(1)(b) and Article 8(5) of Regulation No 40/94.

12      By letter of 10 September 2005 Lancôme requested, pursuant to Article 43(2) and (3) of Regulation No 40/94, that Focus Magazin furnish proof that the earlier national trade mark FOCUS had been put to genuine use during the period of five years preceding the date of publication of the application for Community trade mark ACNO FOCUS.

13      By letter of 20 December 2005, Focus Magazin claimed, in essence, that after its registration the earlier national trade mark FOCUS, of which it was the proprietor, had been the subject of several sets of opposition proceedings in Germany, all of which were concluded on 13 January 2004, and that the period of five years should begin to run from that date, so that the requirement in Article 43(2) of Regulation No 40/94 that the earlier mark must have been registered for not less than five years could not be relied upon against it.

14      By letter of 4 September 2006, Lancôme argued, in essence, that the earlier national trade mark FOCUS had been registered in Germany on 23 May 1996, and that that was the date which should be taken into account for the purposes of the registration requirement laid down in Article 43(2) of Regulation No 40/94.

15      By decision of 19 September 2007, the Opposition Division of OHIM upheld the opposition and accordingly refused the application for Community trade mark ACNO FOCUS. In support of its decision it accepted inter alia Focus Magazin’s plea that it was not obliged to furnish proof of use of the earlier national mark FOCUS since that mark had been subject to opposition proceedings in Germany which had not ended until 13 January 2004, so that, contrary to the requirement laid down in Article 43(2) of Regulation No 40/94, that mark had not been registered for not less than five years.

16      On 16 November 2007 Lancôme brought an appeal before OHIM against the Opposition Division’s decision, pursuant to Articles 57 to 62 of Regulation No 40/94.

17      By the contested decision, the First Board of Appeal of OHIM dismissed Lancôme’s appeal and, upholding the Opposition Division’s decision, held inter alia that 13 January 2004 should be taken as the point from which the five-year period of registration of the earlier national mark started to run.

 Proceedings before the General Court and the judgment under appeal

18      By application lodged at the Registry of the General Court on 21 October 2008, Lancôme brought an action for annulment of the contested decision.

19      In support of its action, the applicant relied on two pleas, alleging, first, infringement of Article 43(2) and (3) of Regulation No 40/94 and, secondly, infringement of Article 8(1)(b) of that regulation.

20      Since the appeal relates only to the findings of the General Court, in so far as they concern infringement of Article 43(2) and (3) of that regulation, it is only necessary to consider those findings, which are contained in paragraphs 26 to 42 of the judgment under appeal.

21      The General Court decided, first, that since it was clear from a reading of Article 43(2) in conjunction with Article 43(3) that the proprietor of an earlier Community trade mark who has given notice of opposition is required to prove use of that mark only in so far as, at the date of publication of the Community trade mark application, the earlier national trade mark has been registered for not less than five years, it was therefore necessary to ascertain whether the Board of Appeal erred in finding that the date on which the earlier national trade mark was registered, and hence the date on which that five-year period started to run, was 13 January 2004.

22      In that regard, the General Court held first of all, in paragraph 30 of the judgment under appeal, that Regulation No 40/94 did not enable the date on which the earlier national trade marks were considered to be registered in each of the Member States to be determined.

23      Next, in paragraph 31 of the judgment under appeal, the General Court held that although national trade mark law was harmonised by Directive 89/104, it was none the less clear from paragraphs 26 to 31 of the judgment in Case C-246/05 Häupl [2007] ECR I-4673 that that directive did not harmonise the procedural aspect of trade mark registration, and it was thus for the Member State for which the registration application had been filed to determine, in accordance with its own procedural rules, the time at which the registration procedure came to an end.

24      The General Court therefore considered that reference ought to be made to the national law of the Member State concerned in order to determine the date on which an earlier national trade mark was registered. In its view, since in the present case the earlier national trade mark FOCUS had been registered in Germany it was necessary to refer to the German legislation, as Lancôme had moreover acknowledged at the hearing.

25      In that regard, the General Court held that it was common ground that, in Germany, a registered trade mark could, after its registration, be the subject of opposition proceedings and that, in those circumstances, it was appropriate to refer to Paragraph 26(5) of the Trade Mark Law (Markengesetz) of 25 October 1994 (BGBl. 1994 I, p. 3082; ‘the MarkenG’), which provides that ‘[w]here use of a mark is required within five years from the date of registration thereof, the date of registration shall be replaced by the date of completion of opposition proceedings in cases where notice of opposition has been given to registration’.

26      The General Court held lastly, in paragraph 35 of the judgment under appeal, that, in the present case, since the earlier national trade mark FOCUS had been the subject of several sets of opposition proceedings in Germany, the date on which it was registered must be replaced by the date on which the opposition proceedings were concluded, namely 13 January 2004, for the purposes of determining the point from which the five-year period of registration started to run.

27      Secondly, the General Court rejected, in paragraphs 36 to 38 of the judgment under appeal, Lancôme’s argument that the date of 13 January 2004 should apply only to the goods and services covered by the earlier national trade mark FOCUS in respect of which opposition proceedings had been initiated in Germany.

28      In that regard, the General Court held first that Paragraph 26(5) of the MarkenG did not draw a distinction depending on whether the national opposition proceedings did or did not relate to certain goods or services covered by the earlier national trade mark.

29      The General Court next based its reasoning on decisions of the German courts, referred to in the contested decision and relied on by OHIM in its response, whereby Paragraph 26(5) of the MarkenG is interpreted as meaning that the fact that the national opposition proceedings relate to certain goods or services covered by the earlier trade mark has no bearing on determining the point from which the five year period of registration starts to run, which is in all circumstances the date on which the national opposition proceedings directed against the earlier mark are concluded. The General Court added that German courts had held that the earlier trade mark registered in Germany, together with the goods and services covered by it, constituted a ‘single commercial concept’ and that its proprietor could not therefore be required to furnish proof that the mark had been put to genuine use solely in respect of certain goods and services covered by the earlier trade mark.

30      The General Court held, in paragraph 39 of the judgment under appeal, that the Board of Appeal was fully entitled to decide that the five-year period of registration of the earlier national trade mark FOCUS had started to run only on 13 January 2004, with the result that Focus Magazin was not required to furnish proof that that mark had been put to genuine use.

31      In those circumstances, the General Court rejected as irrelevant Lancôme’s argument that, even if the opposition filed in the context of the national proceedings constituted a proper reason for non-use, that reason would be valid only for the goods and services which were actually the subject of the opposition.

32      Likewise, the General Court rejected Lancôme’s argument that Focus Magazin had resorted to delaying tactics in order not to have to prove that its trade mark had been put to genuine use, since that argument was based on assertions not substantiated by evidence.

 Forms of order sought before the Court of Justice

33      By its appeal, Lancôme claims that the Court should:

–        set aside the judgment under appeal and annul the contested decision; and

–        order OHIM and Focus Magazin to pay the costs incurred both in the appeal proceedings and in the proceedings before the General Court and before the Board of Appeal.

34      OHIM and Focus Magazin contend that the Court should dismiss the appeal and order Lancôme to pay the costs.

 The appeal

35      Under Article 119 of its Rules of Procedure, where an appeal is, in whole or in part, clearly inadmissible or clearly unfounded, the Court may at any time, acting on a report from the Judge-Rapporteur and after hearing the Advocate General, by reasoned order dismiss the appeal in whole or in part, without opening the oral procedure.

 Arguments of the parties

36      In support of its appeal, Lancôme relies on a single ground, alleging infringement of Article 43(2) and (3) of Regulation No 40/94 and comprising two parts, one raised as the main claim and the other as the alternative claim.

37      Lancôme’s main claim is that the General Court erred in law in its application of Article 43(2) and (3) of Regulation No 40/94 by taking, as the registration date of the earlier mark in order to calculate the five- year period referred to in that article within which genuine use must have begun, not the date on which the earlier national mark FOCUS was registered in Germany, namely 23 May 1996, but the date on which the opposition proceedings concerning that earlier mark were concluded, namely 13 January 2004.

38      It contends that, even if the General Court was right to hold that as the earlier trade mark FOCUS was a German mark it was necessary to determine the registration date pursuant to German trade mark law, the concept of registration as referred to in Article 43(2) of Regulation No 40/94 should not be interpreted in accordance with the law of each Member State since Article 43(2) of that regulation makes no such provision. Reference must be made merely to the date on which the mark was registered in Germany. It is undisputed in that regard that 23 May 1996 should be accepted as the registration date. Lancôme infers from this that the trade mark FOCUS had been registered for not less than five years, within the meaning of Article 43(2) of Regulation No 40/94, and that under that same provision Focus Magazin should have been obliged to prove that it had put its trade mark to genuine use for a period of five years, which it would have been unable to do.

39      Lancôme’s alternative claim is that if, however, it was necessary to interpret the concept of registration in accordance with the law applying in each Member State, in so doing the General Court should still have interpreted the German rules in accordance with Article 43(2) and (3) of Regulation No 40/94 and Article 10(1) of Directive 89/104. The General Court should therefore have held that the registration date of a national trade mark forming the subject of opposition proceedings should be replaced by the date on which those proceedings are concluded only in respect of the particular goods or services against which the opposition is directed and not in respect of goods or services covered by that trade mark which are not the subject of opposition proceedings and for which the registration procedure has therefore been completed by registration. In Lancôme’s submission, Paragraph 26(5) of the MarkenG, while not requiring expressly such an interpretation, certainly allows such an interpretation.

40      OHIM and Focus Magazin contend that the single ground must be rejected as unfounded.

41      In the first place, with regard to the part of Lancôme’s single ground that is its main claim, OHIM and Focus Magazin contend that it is apparent from Häupl that the date of the completion of the registration procedure within the meaning of Article 10(1) of Directive 89/104 must be determined in each Member State in accordance with the procedural rules on registration in force in that State. Consequently, the Member States are free to organise their own registration procedure and to decide inter alia the date on which that procedure is to be regarded as having been completed.

42      They contend that a specific feature of German trade mark law lies in the fact that opposition proceedings can only be instituted once a trade mark is registered. This particular feature is accompanied by Paragraph 26(5) of the MarkenG, which provides that, for the purposes of the use requirement, the date of registration is replaced by the date on which opposition proceedings are concluded, in cases where opposition is brought against the registration.

43      Secondly, as regards the part of Lancôme’s single ground that is its subsidiary claim, OHIM and Focus Magazin contend that according to the very wording of Paragraph 26(5) of the MarkenG, in cases where opposition is brought against the registration, the registration date is replaced by the date on which opposition proceedings are concluded for all goods and services covered by the trade mark, whether or not they have been the subject of opposition proceedings. That interpretation is shared widely by the German courts and legal literature.

44      OHIM and Focus Magazin explain that the reasoning of the German legislature is that a trade mark owner should not be required to use and invest in the trade mark applied for before he knows whether the latter does actually enjoy the protection sought in the territory concerned.

45      Moreover, according to OHIM, Lancôme’s interpretation of the MarkenG would lead to ‘positive discrimination’ for the Community trade mark vis-à-vis national trade marks, which would conflict with the principle of coexistence of Community and national trade marks. The proprietor of a German trade mark is allowed under German law to oppose any subsequent German registration during a period of up to five years after the completion of opposition proceedings against the trade mark which he owns without having to prove genuine use. Lancôme’s interpretation of the German legislation would result in the proprietor of the same German trade mark having to prove genuine use of it vis-à-vis a Community application at an earlier stage, which would entail the existence of ‘grace periods’ for national trade marks and for Community trade marks that were different.

46      Focus Magazin states that neither German trade mark law nor European Union law contains a rule that the proprietor of a trade mark that is the subject of partial opposition must prove genuine use of that mark from different points in time according to whether the goods and services have or have not been the subject of such opposition.

 Findings of the Court

47      As regards the part of Lancôme’s single plea which it relies on as its main claim, it should be noted, first, that although it is apparent from a reading of Article 43(2) in conjunction with Article 43(3) of Regulation No 40/94 that registration of an earlier national trade mark is the starting point for the five-year period of registration within which genuine use of that mark must be proved, Regulation No 40/94 does not determine the date on which the earlier national trade marks are considered to be registered in each of the Member States, as the General Court rightly held in paragraph 30 of the judgment under appeal.

48      Secondly, although national trade mark law was harmonised by Directive 89/104, the Court held in paragraph 29 of Häupl that the ‘date of the completion of the registration procedure’ within the meaning of Article 10(1) of Directive 89/104 must be determined in each Member State in accordance with the procedural rules on registration in force in that State. It is thus for the Member State in which the registration application has been filed to determine the time at which the registration procedure comes to an end in accordance with its own procedural rules (see also, to that effect, the order of 16 September 2010 in Case C-559/08 P Rajani v OHIM [2010] ECR I-0000, paragraph 43).

49      In those circumstances, the General Court cannot be criticised for referring to the German legislation in order to determine the date on which the earlier national trade mark FOCUS was to be regarded as having been registered for the purposes of Article 43(2) and (3) of Regulation No 40/94, namely, in accordance with the procedural rules applying in Germany, 13 January 2004.

50      It follows that the part of the single ground relied on as the main claim must be dismissed as clearly unfounded.

51      As regards the second part of Lancôme’s single ground, relied on as its alternative claim, it should be noted that Article 10(1) of Directive 89/104 provides that if, within a period of five years following the date of the completion of the registration procedure, the proprietor has not put the trade mark to genuine use in the Member State in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trade mark shall be subject to the sanctions provided for in that directive, unless there are proper reasons for non-use.

52      It is apparent from that provision that the period of five years in respect of which genuine use of a trade mark must be proved begins on the ‘date of the completion of the registration procedure’ and that it is not stated whether that procedure must be completed in respect of all the goods or services covered by that mark.

53      In those circumstances, it cannot be claimed that the General Court infringed Article 10(1) of Directive 89/104 by holding that Paragraph 26(5) of the MarkenG does not draw a distinction depending on whether the national opposition proceedings do or do not relate to all of the goods or services covered by the earlier national trade mark.

54      Lancôme’s argument that the General Court, by relying on the wording of Paragraph 26(5) of the MarkenG and on the interpretation of that provision by two lower German courts, infringed Article 43(2) and (3) of Regulation No 40/94, read in conjunction with Article 10 of Directive 89/104, cannot be accepted.

55      The fact remains that Lancôme merely calls into question the General Court’s interpretation of Paragraph 26(5) of the MarkenG, without putting forward any legal argument whatsoever in support of its own interpretation, namely that the registration date of a trade mark forming the subject of opposition proceedings should be replaced by the date on which those opposition proceedings are concluded only in respect of the particular goods and services against which the opposition is directed. Lancôme indeed states that Paragraph 26(5) of that law does not expressly require such an interpretation.

56      It follows from the foregoing that the part of the single ground relied on as the alternative claim must be rejected as clearly unfounded.

57      It follows that the single ground relied on by Lancôme in support of its appeal cannot be accepted and hence the appeal must be dismissed.

 Costs

58      Under Article 69(2) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 118 thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM and Focus Magazin have applied for Lancôme to pay the costs and Lancôme has been unsuccessful, it must be ordered to pay the costs.

On those grounds, the Court (Fifth Chamber) hereby:

1.      Dismisses the appeal;

2.      Orders Lancôme parfums et beauté & Cie to pay the costs.

[Signatures]

* Language of the case: English.



Disclaimer