ECJ Affirms Distinctive Character Of National Trade Marks In Opposition Proceedings

Author:Van Bael Bellis
Profession:Van Bael & Bellis

The Court of Justice of the European Union ("ECJ") overruled the General Court and OHIM in its judgment of 24 May 2012 by acknowledging the in se distinctiveness of the 'F1' sign because of the existence of an earlier national trade mark.

Formula One Licensing BV ("Formula One") appealed to the ECJ against the judgment of the General Court which had dismissed its trade mark claim against OHIM. Formula One challenged OHIM's decision to dismiss Formula One's opposition to an application for registration of a Community trade mark relating to the F1 sign. This application had been made in April 2004 by Racing-Live SAS ("Racing-Live"), which runs a car-racing website in France.

Formula One based its opposition on the existence of an international word mark, two national word marks for 'F1' (in the UK and Germany) and the following figurative Community Trade Mark ("CTM"):

The opposition was dismissed by the Board of Appeal of OHIM in 2008 for absence of likely confusion between the two signs. OHIM also held that the word 'F1' was a descriptive element in the trade mark. The General Court sided with OHIM, finding that Formula One's earlier 'F1' word marks were generic, descriptive and deprived of an intrinsic distinctive character.

Upon appeal, the ECJ reversed the General Court's judgment. The ECJ first emphasised that the registration of national trade marks, which coexist with the CTM system, is solely a matter for the Member States. As a result, neither OHIM nor the General Court can call into question the registration or validity of a national trade mark in opposition proceedings against the registration of a CTM. Instead, the validity of national trade marks can only be questioned...

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