Brussels, 24/05/2012 (Agence Europe) - Neither the Community Trade Mark Office nor the EU General Court have the power to question the validity of national trade marks likely to be opposed to registration of a Community trade mark. That, in essence, is the Thursday 24 May ruling of the Court of Justice of the EU in Case C-196/11P. The Court annuls an earlier ruling of the General Court confirming the decision of the OHIM (Community trade marks office) to register the figurative sign “F1-Live” as a Community trade mark at the request of the company, Racing-Live SAS.
The company Formula One Licensing BV had opposed the request, claiming risk of confusion with an international word mark and two national word marks for “F1”, and a Community figurative mark for the F1 Formula 1 logotype, relating to the same products and services as those indicated in the request for registration of Racing-Live SAS. Opposition had been refused by the OHIM in 2008 and by the General Court in 2011 (Case T-10/09). The company therefore called on the Court to annul the ruling.
In its decision, the Court points out that the Community trade mark is not an alternative to national trade marks and that these two kinds of trade mark co-exist within the EU. As a consequence, the OHIM and the General Court are not competent either to register or to state invalidity of the trade marks. Under these circumstances, the validity of a national trade mark can be questioned only within the framework of action for annulment begun in the member state where the national trade mark was registered, and not in the context of procedure opposing a request for registration of a Community trade mark. Considering that the sign “F1”, which is identical to the national Formula One Licensing signs, did not have a distinctive character, the General Court has questioned the validity of the trade marks in the context of a procedure for registering a Community trade mark and is thus in breach of the regulation on Community trade marks (Council Regulation 40/94). In consequence, the Court annuls the General Court's ruling and, given that it is not able to come to a decision, refers the matter back to the latter. (FG/transl.jl)