From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 27 March 2014

The Court knows the law-- but perhaps lawyers don’t, says the CJEU

Today’s ruling by the Court of Justice of the European Union (CJEU) in Case C-530/12 P OHIM v National Lottery Commission (plus Advocate General Bot’s conclusions, hereis about a case with an challenging background of copyright anticipating famous trade marks, body language and gambling. The decisions provides guidelines about the extent to which national law should be investigated and discussed within an EU proceedings.

In October 2007 the UK National Lottery Commission (NLC) obtained the registration of the Community trade mark No 4800389 illustrated above, right. A few days later, the Neapolitan Mediatek Italia Srl and Mr Giuseppe De Gregorio lodged an application for invalidity under Article 52(2)(c) of Regulation 40/94 [now Article 53(2)(c) of Regulation 207/2009, the CTMR], claiming to own an earlier copyright in that sign. In support of the claims, they filed an agreement dated 1986 through which a designer assigned to Mr De Gregorio the copyright in the crossed fingers sign which appears on the left. Post office stamps on the contract were there to certify that the agreement was signed, and that the image was created in 1986, while some invoices allegedly demonstrated that they used it on over 400 t-shirts in 1988.

NLC bet that the assignment was utterly unauthentic and observed that the agreement contained two telling inconsistencies. First, the day shown on the post office stamps was a Sunday, when Italian post offices are closed. Secondly the agreement stated that the copyright would have lasted “70 years after” the designer’s death, while the duration in Italy in 1986 was 50 years [it became 70 years in 1996, by virtue of the Copyright Term Directive]. Instead of admiring this prophetic view of European copyright law, NLC asked the OHIM to open an investigation phase in order to verify the authenticity of the original 1986 contract.

The applicants for invalidity replied that those inconsistencies were nothing but irrelevant errors and that, in any case, the probative rules of Italian Civil Code [applicable under Article 53(2)(c) CTMR] would have prevented a public authority like OHIM from disregarding the content and the date of 1986 agreement unless it was challenged as a forgery before the Italian courts. On the basis of this submission, both the Opposition Division and the Board of Appeal ruled that, under Italian Law, the 1986 agreement constituted full proof of the provenance of the agreement and of the date thereof, pending a declaration of forgery. Further, they concluded that the anomalies referred to by NLC gave no grounds for doubting the veracity of the content of the 1986 agreement and that, therefore, the NLC’s  trade mark was to be annulled.

NLC's reaction, in the
language of the proceedings
The General Court (GC) however took a different view in Case T-404/10.  First, it stated that the Board of Appeal should have obtained information about the national law of the Member State concerned for the purposes of assessing the accuracy of the parties’ national law interpretation “of its own motion and by whatever means considered appropriate”, being such information ‘well-known facts’ [that is to say, “facts which are likely to be known by anyone or which may be learnt from generally accessible sources”]. That being said and done, the GC performed its own diligent research, finding out that Italian Civil Code allowed the 1986 agreement to be freely contested in court. Key to its conclusion was a 2007 Italian Supreme Court decision stating that dates reported on post office prints do not constitute full proof and can be disregarded even without instituting forgery proceedings. Accordingly, the GC set aside OHIM’s decisions.

OHIM and the Neapolitan guys appealed, claiming that GC’s ex officio investigations into Italian law and case law violated their right to be heard. In particular, they maintained that national law and case law were to be considered as “purely factual matter” and that the GC should have relied upon the parties’ allegation in this regard instead of performing its own searches.

National law is not just a matter of fact, the CJEU said in today’s decision, but the GC should have paid more attention to the parties’ right to be heard.

First, the CJEU stated that national law and its interpretation shall not be regarded as “a purely factual matter” to be merely established on the basis of the evidence produced by the parties. On one side, Rule 37 of the CTMR Implementing Regulation imposes on the claimant for invalidity the burden of providing "OHIM not only with particulars showing that he satisfies the necessary conditions ... in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right" under national law, "but also particulars establishing the content of that law". Both OHIM bodies and GC, however, have a duty to conduct a full review of the national law particulars submitted by parties, obtaining information about the national law of the Member State concerned on their own motion for the purposes of assessing the accuracy of the facts adduced or the probative value of the documents submitted [Edwin v OHIM, Case C‑263/09 P], as the GC did by looking through Italian law and case law on probative value of the 1986 agreement.

On the other hand, however, the CJEU observed that the parties did not have the opportunity to be heard on the 2007 Italian Supreme Court decision that was crucial to the GC’s reasoning. Accordingly, the Court remitted the case to the CG for a ruling on the merits of the action in light of fair trial principles.

Now, this Kat is utterly confused. Since when he was a young student, he has been told that, as reflection of the “iura novit curia” principle [“the court knows the law", as explained here], judges are perfectly free to search and select law and case law to be mentioned in their decisions, no matter if they were discussed with lawyers during the proceedings [they should know the law as well!]. Since this is not apparently so, the IPKat suggests that both parties to these proceedings hire an Italian consultant for the next phase before the GC [Merpel has got some valuable names up her sleeve, if they want them ...].


Ron said...

This seems to be consistent with the advice I was given by an old hand many years ago, which was to avoid IP litigation in Italy at all costs!

Alberto Bellan said...

"Avoid litigation in Europe", you mean...

Anonymous said...

I think that OHIM and the CJEU should have simply referred to another authority, Ian Fleming:

"Once is an accident. Twice is coincidence. Three times is an enemy action."

To get the wrong day on the stamp may have been an accident. To draw virtually the same very distinctive logo years before, a coincidence. But to anticipate a legal change ten years in advance, in that context, yes, that looks like enemy action.

It is unfortunate that OHIM and the CJEU are sticking to such a formulaic approach, because if it walks like a forgery and quacks like a forgery, then it probably is a forgery. Has NLC considered a criminal complaint against these jokers? (And, in that case, has it considered the country where it could be filed? Most jurisdictions take a very dim view of parties filing forgeries in court...)

Alberto Bellan said...

I would tend to agree with you, Anonymous. In its decision, however, the Board of Appeal considers the "unlikely but not impossible" possibility that the designer who created the sign for NLC travelled to Naples during the eighties and got "inspired" by the t-shirts of the claimants. Really.

The decision is available in Italian only, here:*

Anonymous said...

As to "the court knows the law": the court knows its own law, so an EU court knows EU law ion teh same way as a NL court knows NL law. An EU court does not necessarily know non-EU law like national law. Foreign law is not law that is deemed known to a court, but a matter of fact, so that a court may not simple assume such a "fact" without allowing the parties to provide evidence.

Darren Smyth said...

In the UK, I have heard certain barristers get quite upset when judges refer in their judgments to cases that were not discussed at trial, without having heard submissions from the parties on those cases. But that of course means that it does happen. I was not aware of the maxim Iura novit curia but i see that it is "applied principally in civil law systems". Such as Italy, presumably.

Anonymous said...

"In its decision, however, the Board of Appeal considers the "unlikely but not impossible" possibility that the designer who created the sign for NLC travelled to Naples during the eighties and got "inspired" by the t-shirts of the claimants. Really. "

OK. I'm definitely citing this the next time one of my clients complains about the "up to the hilt" standard of proof applied by the EPO to evidence of public prior use...

Alberto Bellan said...

Anonymous @13.48:

Thank you for your comment.

As far as I know, however, it is not infrequent that national judges are called to apply foreign law. Think about a contract where parties agreed to apply a certain law, which is then litigated in a country where such law does not apply. I have no clue as to how things would work in the NL, but in Italy judges would apply foreign law, likely after hiring an expert of the relevant jurisdiction. Why shouldn't this happen at OHIM?

Darren, yes, I guess it is a civil law peculiarity... But since judges are called to make justice, don't you think that they should be free to mention whatever case they find more appropriate?

Anonymous @ 8:50: I beg you to tell us how it will go with that!

Darren Smyth said...

Dear Alberto
I suppose the thing is that the legal point that one may extract from an earlier case may not be clear and unambiguous. So there is a danger that if the judge just reads it privately, they may discern something from it different from if they had heard argument from both sides as to what the case is supposed to mean. At least I think that is why barristers dislike the practice.

I quite agree as to when foreign law is relevant. Potentially it can happen quite a lot.


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