This article first appeared on WTR Daily, part of World Trademark Review, in (April/2014). For further information, please go to

In Office for Harmonisation in the Interna! Market v Nationa! Lottery Commission (Case C-530/1 2 P, March 27 2014), the First Chamber of the Court of the Justice of the European Union (ECJ) has set aside a decision of the General Court and referred the case back to it for a ruling on the merits of the action.
On October 2 2007 the National Lottery Commission obtained a registration for the following stylised mark (Registration No 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 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 upon copyright – predating the application date of the trademark and owned by Giuseppe De Gregorio – in the sign depicted below and identified as ‘mano portafortuna’:

The Cancellation Division of OHIM, considering that the applicants for a declaration of invalidity had demonstrated the existence of a copyright protected by Italian legislation, granted the application for a declaration that the contested trademark was invalid.

The National Lottery Commission filed an appeal with OHIM. However, the First Board ofAppeal of OHIM dismissed the action and confirmed the existence of copyright protected by Italian law.

By application lodged at the Registry of the General Court, the National Lottery Commission brought an action for annulment of the Board of Appeal’s decision, arguing that the board 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” – namely, issues relating to the date of the copyright, as a post office stamp had been affixed to the agreement on a Sunday, when the Italian Post Office is notoriously closed. In addition, formal issues in connection with the notarisation of the signatures on the agreement were raised.

The General Court first set out the rules and principles that the Board of Appeal must apply for the purposes of determining whether proof of the existence of a copyright protected by a national regulation has been provided, underlining that OHIM must obtain information about the national law of the member state concerned in order to evaluate the accuracy of the facts adduced or the probative value of the documents submitted.

The General Court, in evaluating the interpretation of Articles 2702 and 2073 of the Italian Civil Code made by the Board of Appeal, argued that these articles had been interpreted by the Corte Suprema di Cassazione (the Italian Supreme Court of Cassation) in a judgment of June 14 2007 (No 13912) and that the board’s decision made no reference to the fact that, in accordance with the case law of the Corte Suprema di Cassazione, the National Lottery Commission could adduce proof that, in fact, the 1986 agreement had been drawn up on a date other than that shown on the post office stamp.

In view of the above, the General Court annulled the decision of the First Board ofAppeal, arguing that the latter had misinterpreted the national law applicable and had failed to assess accurately the scope of its own powers.

OHIM appealed against the decision, claiming that the ECJ should set aside the judgment based on three pleas in law:

1.    infringement of Article 76(1) of Regulation 207/2009 and of Rule 37 of the Community Trademark Implementation Regulation (2868/95);

2.    infringement of the right to be heard, insofar as OHIM’s right to be heard regarding the 2007 judgment was not observed; and

3.    manifest inconsistency and distortion of the facts which affected the reasoning followed and the conclusion reached by the General Court.

With regard to the first ground of appeal (which related to the procedures that are followed when applying national law and the various roles allocated to the applicant for a declaration of invalidity, OHIM and the General Court), the ECJ found, in essence, that the General Court had not made any error of law in finding that:

‘in circumstances in which OHIM may be called upon to take account, in particular, of the national law of the member state in which protection is given to the earlier mark on which the application for a declaration of invalidity is based, it must – of its own motion and by whatever means considered appropriate – obtain information about the national law of the member state concerned, where such information is necessary for the purposes of assessing the applicability of a ground for invalidity.”

The first ground of appeal was thus rejected.
With regard to the second ground of appeal (infringement of Article 76(1) of Regulation 207/2009), OHIM argued that it had not had the opportunity to make its point of view known with regard to the judgment of June 14 2007, which was not invoked by the parties during the administrative proceedings.

In this regard, the ECJ stated that the right to a fair trial is a fundamental principle of EU law, and that this principle also implied a right for the parties to be apprised of the matters raised by the courts of their own motion, on which they intend to base their decision, and to discuss them.

Considering that, in the present case, the judgment of June 14 2007 was not mentioned during the proceedings before OHIM or in the written pleadings before the General Court, it followed that the General Court had infringed the principle that the parties should be heard and, on this basis, the second ground of appeal was upheld. It was not appropriate, at the present stage of the proceedings, to examine OHIM’s third ground of appeal.
In view of the above, the ECJ set aside the judgment under appeal and referred the case back to the General Court for a ruling on the substance of the action.