Repsol YPF, SA v European Union Intellectual Property Office (T-609/15)

Judgment of 21 Sept 2017

law://eu/cjeu/2015/t-609-15/para_27@2026-11-13

27By 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 entirely justified, given that Regulation No 207/2009 makes it possible for signs which fall outside the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law of the Member State 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 (judgment of 24 March 2009 in GENERAL OPTICA, T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 34). On that basis, the invalidity applicant must establish that the sign in question falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited (see, to that effect, judgments of 29 March 2011, Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 190, and 10 February 2015, Infocit v OHIM — DIN (DINKOOL), T‑85/14, not published, EU:T:2015:82, paragraph 63 and the case-law cited).

Repsol YPF, SA v European Union Intellectual Property Office (T-609/15)

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