1. Application of national law in EUTM proceedings
Philipp von Kapff

2. 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“

3. 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?

4. 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“

5. 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

6. 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.

7. 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).

8. 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

9. 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?

10. 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),

11. 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

12. Thank you for your Attention