The matter at hand

Szajner is the proprietor of an EU trade mark for the word mark LAGUIOLE. Forge de Laguiole filed an application for a declaration of partial invalidity in respect of this mark on the basis of its older business name ‘Forge de Laguiole’ ex  Articles 53(1)(c) and 8(4) of Trade mark Regulation 207/2009.

The Cancellation Division of EUIPO rejected the application for a declaration of invalidity. However, the First Board of Appeal of EUIPO declared that the mark was partly invalid. In the appeal brought before it, the General Court annulled the decision at issue in so far as the Board of Appeal of EUIPO had found that there was a likelihood of confusion between the business name ‘Forge de Laguiole’ and the trade mark LAGUIOLE in respect of goods other than those which corresponded to the activities actually pursued under that business name as on the date of the application for registration of the contested mark. In support of this finding, the General Court referred to a judgment of the French court of cassation rendered after the date of the Board of Appeal's decision, according to which a business name enjoys protection only for 'business activities actually pursued by the company and not those listed in its articles of association’.

EUIPO and Forge de Laguiole appealed this decision before the ECJ, mainly alleging that the General Court disregarded the scope of its review of the legality of the decisions of the Board of Appeal of EUIPO, by carrying out an assessment of the judgment of the French Court of Cassation, despite the fact that that judgment was later in time than the Board of Appeal’s decision.

The judgment of the ECJ

The ECJ rejects this plea, pointing out, with reference to its judgments Edwin (C‑263/09 P) and National Lottery Commision (C‑530/12 P), that “in accordance with Article 65(1) and (2) of the [Trade mark Regulation 207/2009], the General Court has jurisdiction to conduct a full review of the legality of EUIPO’s assessment of the particulars submitted by an applicant in order to establish the content of the national law whose protection he claims.” (paragraph 37)

The ECJ continues by stating that “in assessing the protection granted by national law, the General Court must apply a rule of national law as interpreted by the national courts at the time at which it issues its decision. It must therefore also be able to take into consideration a decision originating from a national court, issued after the adoption of the decision of the Board of Appeal of EUIPO.” (paragraph 42).

The General Court must therefore take account of '' an evolution in the interpretation, by the national courts, of the rule of national law examined by the Board of Appeal of EUIPO. That rule of national law was one of the particulars subject to assessment by that Board of Appeal and the application of that rule by the same Board of Appeal is subject, pursuant to Article 65(2) of that regulation, to a full review of legality by the General Court” (paragraph 45).

Accordingly, as the other pleas are rejected as well, the ECJ dismisses the appeal.