Judgment_paragraph 45 · Bacardi Co. Ltd v European Union Intellectual Property Office (T-435/12)

45By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to the law of the Member State governing that sign’ that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is justified, given that Regulation No 207/2009 allows signs which fall outside of the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark (judgments of 24 March 2009, GENERAL OPTICA, T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 34; and of 12 October 2017, SDC‑888TII RU, T‑317/16, not published, EU:T:2017:718, paragraph 40).