Advocate General Defends General Court’s Right To Make Own Investigations

Author:Mr Alistair Payne

In National Lottery Commission v Office for Harmonisation in the Internal Market (OHIM) (Case T-404/10, September 13 2012), the General Court had applied national legislation not specifically argued by the parties in order to decide the case. OHIM had appealed the decision.

Advocate General Bot's opinion on the appeal (Case C-530/12 P, November 28 2013) recommended that the judgment should be set aside, and the case referred back to the court. While he defended the right of the court to look at matters outside the parties' submissions, he opined that the parties must have the opportunity to be heard on those matters.

The National Lottery Commission (NLC) obtained a Community registration for the figurative mark depicted below.

Mediatek Italia Srl and Giuseppe De Gregorio sought to have the registration invalidated, on the basis that it infringed the copyright owned by De Gregorio in the mark depicted below, as protected by Italian national copyright law.

The application for invalidation was successful, and an initial appeal to the Board of Appeal by the NLC was unsuccessful. The General Court then annulled the decision of the Board of Appeal.

There were a number of anomalies regarding the 1986 agreement which set out De Gregorio's claim to copyright protection. Most notably, the date of the post office stamp on the agreement coincided with a date on which the relevant post office was closed. Further, the period of copyright protection referred to in the agreement was 70 years, despite the fact that, at the apparent date of the agreement, the relevant period of protection available was 50 years.

In determining that the Board of Appeal mis-applied the national law, the General Court applied Article 2704 of the Italian Civil Code and related case law (which deals with applying dated post stamps to documents), an article which had not been referred to by the NLC in its submissions.

OHIM appealed the decision of the General Court on the basis that the court had applied provisions beyond those invoked by the parties, on which OHIM had a right to be heard, and that appeal formed the subject matter of Advocate General Bot's opinion.

The advocate general submitted that, as the court must decide the case consistently with the relevant national law under which prior rights are claimed, it is appropriate that the court should examine, as necessary and of its own accord, "the...

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