Application of national law in EUTM proceedings Philipp von Kapff

Presentation of the Panellists Philipp von Kapff Member of BoA Moderator and Introduction Dominik Hanf ICLAD, legal affairs area „The decision takers – rights and obligations“ Verena von Bomhard Rechtsanwalt, Founding Partner Bomhad IP „The parties/representatives – rights and obligations“ Imre Gonda Head of IP Department Gedeon Richter Plc „The global player‘s perspective“

Presentation of the topic National non-harmonized law must be applied in EUIPO procedure What is everybody‘s role? How to balance the conflicting interests?

Case law „national law is a fact“ „the opponent has to provide particulars of the national law“ „the Office has the obligation to verify the content of national law“

Reference to national law Relative grounds of refusal Rel. grounds of invalidity Art. 8(4) EUTMR earlier sign used in the course of trade that confers under national law the right to prohibit the use of a younger trade mark. Art. 53(2) EUTMR Right to a name Right to a personal portrayal Copyright Another industrial property right that confers under national law the right to prohibit the use of a younger trade mark

The provisions do not fit well … Art. 8(4) EUTMR confers the right to „prohibit use“ of the trade mark applied for, However: in Office proceedings, there is no use of the contested trade mark, only an EUTM application.

However, mostly same principles The oponent has established good-will The applicant may harm this good-will. But the national law is not harmonized (even if it may decide to refer to principles of harmonized trade mark law).

Further application of national law EUIPO, e.g. who is the proprietor of a trade mark according to the law of a particular member state how to interpret a distribution contract under the applicable law in the context of an illoyal agent‘s case Even in absolute grounds cases CJEU, e.g. Called to apply national law in contracts involving the institutions

Terminology Allegation of Facts  proof by evidence, burden on the parties Allegation of Law  ? Da mihi factum, dabo tibi ius? Iura novit curia ? Iura aliena non novit curia?

Balance of three main issues Smooth and efficient proceedings (different stakeholders). Rights of the parties involved (right of defence, neutrality, fairness etc.), Principle of legality (Legal solution as correct as possible),

Cases Identity of signs Identity of branch Case A Allegation of national law Case B Interpretation of national law Identity of signs Identity of branch But: indication of the legal basis only by its number and by the translation of the provision into the language of proceedings Use is clear, both parties argue extensively with legal provisions, legal question under national law is heavily debated, but no Supreme Court interpretation yet

Thank you for your Attention