ECJ Affirms Distinctive Character of National Trade Marks in Opposition Proceedings

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 in national validity proceedings in the Member State of registration of the trade mark.

Moreover, the ECJ pointed out that, at the risk of eliminating the protection associated with national trade marks, it cannot be held in CTM opposition proceedings that a national trade mark is devoid of distinctive character. According to the ECJ, the EU court must acknowledge at least a degree of distinctiveness in an earlier registered national trade mark used as the basis for opposition against CTM application.

The ECJ held that the General Court had erred in law by finding that Formula One's "F1" national mark had no distinctive character. Indeed, the General Court could not question the validity of the national mark, which predates Racing-Live’s proposed trade mark. Therefore, the ECJ reversed the judgment under appeal and referred the case back to the General Court for a judgment on the merits, i.e. whether Racing-Live’s CTM application should be refused on the basis of the earlier ‘F1’ trade marks.

This case confirms the importance of national trade marks in oppositions against later CTM applications. In addition, it limits the competence of the European courts with regard to the validity of national trade marks.