Judgment of the General Court Third Chamber of 2 June 2021, Franz Schröder v EUIPO – RDS Design MONTANA, T-854/19

• Date: 02 June 2021
• Year: 2021

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In its judgment, the Court holds, for the first time, that an application for a declaration of invalidity of

an EU trade mark based on Article 52(2) of Regulation No 40/94 must be rejected if the conditions for

prohibiting the use of that mark are no longer fulfilled on the date on which EUIPO decides on that

application. It therefore dismisses the action.

Findings of the Court

First of all, the Court recalls that the provisions of Regulation N o 40/94 must be interpreted in the light

of the priority principle, pursuant to which the earlier right takes precedence over later registered

trade marks.

Next, the Court notes that the use of the present tense in Article 52 of Regulation No 40/94 suggests

that EUIPO must verify that the conditions for declaring an EU trade mark invalid under that provision

are met on the date on w hich it decides on the application for a declaration of invalidity. In addition,

the Court emphasises that it is apparent from the scheme of the other provisions of Regulation

No 40/94, relating to relative grounds for invalidity, and in particular from Article 56(2) thereof, that an

application for a declaration of invalidity must be rejected wher e it is established with certainty that

the conflict with the earlier EU trade mark has ceased at the end of the invalidity proceedings.

Consequently, the Court considers that the proprietor of an earlier industrial property right referred

to by Article 52(2)(d) of Regulation No 40/94 must establish that he or she may prohibit the use of the

EU trade mark at issue not only on the date of filing or priority of that mark, but also on the date on

which EUIPO decides on the application for a declaration of invalidity. In the present case, the Court

states that Style & Taste neither claimed nor, a fortiori, demonstrated that, in accordance with

Spanish law, it was possible to prohibit the use of an EU trade mark by virtue of a Spanish design

whose registration expire d. Consequently, it considers that the use of the contested mark could no

longer be prohibited by virtue of the earlier design relied on by Style & Taste at the date of the

contested decision.

Judgment of the General Court (Third Chamber) of 2 June 2021, Franz Schröder v EUIPO –

RDS Design (MONTANA), T-854/19

Link to the complete text of the judgment

EU trade mark – Invalidity proceedings – EU word mark MONTANA – Absolute ground for refusal –

Descriptiveness – Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU)

2017/1001) – Right to be heard – Article 94(1) of Regulation 2017/1001 – Examination of the facts by

EUIPO of its own motion – Admission of evidence submitted for the first time before the Board of

Appeal – Article 95(1) and (2) of Regulation 2017/1001

The intervener, RDS Design ApS, is the proprietor of the EU word mark MONTANA. The applicant,

Franz Schröder GmbH & Co. KG, filed with the European Union Intellectual Property Office (EUIPO) an

application for a declaration that that mark was invalid on the ground that it had been registered in

breach of Article 7(1)(c) of Regulation No 207/2009.

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The Cancellation Division of EUIPO upheld the application for a declaration of invalidity. As a result of

an appeal on the part of the intervener, the Board of Appeal of EUIPO annulled that decision and

rejected the application for a declaration of invalidity. It allowed the evidence which the parties had

submitted for the first time before it and took the view that it could examine ‘of its own motion’

whether the absolute ground relied on in support of the application for a declaration of invalidity was

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Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1).