Simon Bennett & Sarah Redmond explain how when it comes to OHIM invalidating a Community trademark, sometimes it’s a gamble

November 28, 2012

This article was originally written for and published in Intellectual Property Magazine.

The General Court has overturned the Board of Appeal’s decision in relation to the National Lottery Commission’s appeal against the invalidation of the Community trademark for (the “CTM”) on the basis of an earlier Italian copyright for (the “mano portafotuna”), in the name of Giuseppe De Gregorio.

On 7 December 2005, the National Lottery Commission (the “National Lottery”) applied for the Community trademark (“CTM”) for goods in Class 9 (computer games, computer software, electronic number generators), Class 16 (printed matter, tickets, tokens), Class 25 (clothing, footwear, headgear), Class 28 (toys, games, scratch cards) and services in Class 41 (entertainment services, lottery services, quizzes).

The application (No. 4800389 – incorrectly referred to in the decision as 4800399), proceeded to registration on 2 October 2007.

On 20 November 2007, Mediatek Italia Srl and Giuseppe De Gregorio (“the applicants”) filed an application for a declaration of invalidity against the registration on the basis of an earlier Italian copyright owned by Giuseppe De Gregorio.

On 16 July 2009, the Cancellation Division granted the invalidity application under Article 52(2)(c) of Community trademark regulation No. 40/94 (now Article 53(2)(c) of 207/2009). This decision was on the basis that the applicants had demonstrated that the Italian copyright for the ‘mano portafotuna’ predated the CTM, that the copyright work was protectable under Italian legislation, and that the CTM was almost identical to the copyright work.

On 1 September 2009, the National Lottery filed an appeal against the decision. This was dismissed by the First Board of Appeal on 9 June 2010, on the basis that Italian copyright could apply to the humorous representation of a hand as it had a minimum degree of creativity. The evidence provided by the applicants, namely an agreement dated 16 September 1986 (the “agreement”), was sufficient to show that the copyright had been assigned to one of the applicants and that they therefore had the rights to use and reproduce that work. Further, given that the ‘mano portafortuna’ had been printed on 400 T-shirts in the Naples region in 1988, rather improbably, the Office for Harmonization in the Internal Market (“OHIM”) held that it was more probable that the National Lottery had been inspired by the ‘mano portafortuna’, than had created the mark independently.

The National Lottery had claimed that the agreement contained a number of anomalies that put it into doubt. For example, the incorrect date in relation to the term of copyright (70 years instead of 50), the error in the date of the post office stamp (the post office was not open on this day), and the difference in artistic quality of the ‘mano portafortuna’ to the drawings appended to the agreement.

However, the Board of Appeal held that they were only competent to assess the content of the agreement and not to verify the facts within it. Therefore, the fact that the document contained a number of anomalies was not grounds for doubting it.

Decision of the General Court

The National Lottery appealed this decision on the basis of (i) infringement of Article 53(2)(c) of Community trademark regulation 207/2009; (ii) illegality of the Board of Appeal’s refusal to open an oral procedure or to adopt any measures for the collection of evidence; and (iii) incorrect assessment by the Board of Appeal of its powers to determine whether the 1986 agreement was authentic.

In relation to the first and third plea, the National Lottery claimed that the Board of Appeal was wrong to find that they were not competent to assess the authenticity of the agreement. They claimed that the Board of Appeal accepted the agreement as proof of the existence of copyright without taking into consideration the arguments of the parties. One of the National Lottery’s arguments was that OHIM is empowered to decide on the validity of a Community trademark and therefore, it must be entitled to review the validity of an alternative earlier right when such validity is disputed. OHIM argued that this plea should be rejected on the basis that the Board of Appeal should be bound by the rules and principles of Italian law and as the document had been authenticated by a notary, this was sufficient to prove the validity. It would be necessary for the Italian Courts to have declared the document as a forgery (and for the National Lottery to bring such a claim). As no such declaration had been made, the Board of Appeal could only assess whether it showed the earlier right as claimed existed. Further, the anomalies (if they are such) were not sufficient to show that the agreement is a forgery in any event.

Under Article 53(2)(c) of regulation No. 207/2009, a registration can be declared invalid on the basis of an earlier national law, in particular copyright. Therefore, did the Board of Appeal infringe this article by finding that the ‘mano portafortuna’ existed prior to the CTM? There is a clear distinction under Article 53(2)(c) namely where the right is protected under Community legalisation and where it is protected under national law. In order to rely on an earlier national right, the applicant must provide evidence showing their entitlement under the applicable national law. The court stated that the rules provide that not only does the applicant have to display evidence proving the earlier right, but also the law pertaining to the right. In this case, the Board of Appeal should have assessed whether the evidence provided satisfied this, and if necessary, by its own motion and by whatever means possible, obtain information of the national law to confirm that the evidence provided was sufficient.

The Board of Appeal claimed that the information provided by the applicants was sufficient and that it was competent only to examine the contents of the agreement and the document was proof under Italian law.
However, the General Court opposed the findings of the Board of Appeal and held that it cannot be that an ‘agreement confirming assignment’, which had been signed in the presence of a notary in August 2008, confirming the clauses from the 1986 agreement, be sufficient under Italian law in order to authenticate the signatures of the parties of the agreement. If this was correct in law, it would mean that an agreement signed in 1986 was enforceable against third parties by virtue of the intervention of a notary almost 22 years later, and contradicts Italian law in which authentication consists of attestation by a public official that the signature has been written in his presence.

As the agreement could not be authenticated in this way, it was then necessary to consider that under Italian national law, it is possible to enforce documents merely signed under a private signature if the occurrence of any event establishes that the document had been drawn up beforehand. In the circumstances, under Italian National law, it was not necessary for forgery proceedings to be brought and therefore, it was for the National Lottery to merely provide evidence that the agreement was not drawn up on the date as claimed. Given that the post office was not open on the date that it was claimed that the stamp was made, the General Court confirmed that this, and the other anomalies referred to by the National Lottery (the incorrect date in relation to the maximum duration of the copyright protection, the difference in artistic quality between the ‘mano portafortuna’ and the other drawings appended to the 1986 agreement), gave grounds for doubting the veracity of the agreement.

The General Court therefore held that the Board of Appeal had based its approach on a misrepresentation of the national law governing copyright. As a result therefore, the first plea alleging infringement of Article 53(2)(c) of Community trademark regulation 207/2009 should be upheld.

Comments

This case highlights the importance of the law in relation to national rights and why it should not be taken for granted that the other party has valid national rights just because OHIM has accepted it. If there is any doubt in relation to whether the information is true or has been provided in the accepted form, then this should be carefully analysed. If there are issues that suggest that the rights are not valid then they should be disputed. It is also imperative that advice is taken from local lawyers in relation to the potential impact of any national laws in relation to Community trademark proceedings. In this case, it is hard to understand how, given the factual circumstances, it was not until the appeal to the General Court that it was determined that the evidence put forward by the applicants was in effect unreliable. It is also questionable on what basis OHIM was in a position to rule that the existence of the design on a limited amount of t-shirts in Naples in the 1980’s, could have led to its conclusion that the National Lottery had actually used such design as inspiration for its design.


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