The Court of First Instance of the European Communities gave judgment today in Joined Cases T-318/06 to 321/06 Alberto Jorge Moreira da Fonseca, Lda v OHIM, General Óptica, SA, intervening. In short, General Óptica owned Community and international registrations for various figurative signs containing the words GENERAL OPTICA for optician services in Class 42. Fonseca applied for cancellation of the Community trade marks, citing its earlier registration as a business name of the word Generalóptica for the import and retail sale of optical, precision and photographic apparatus. Fonseca also applied to a Portuguese court for invalidation of the extension of General Óptica's international registration to Portugal. A Supreme Court decision, upholding the decisions of the lower courts, ruled in Fonseca's favour; this was added to the OHIM case file and formal notice was taken of it in the minutes of the hearing.

Applying the relevant provisions of the CTM Regulation, the Cancellation Division however dismissed Fonseca's application for cancellation on the ground that it had proved neither genuine use of the sign relied on nor use of more than local significance. The Board of Appeal affirmed this decision, whereupon Fonseca appealed to the Court of First Instance (CFI).

The CFI also dismissed Fonseca's application, affirming the bases upon which the Board of Appeal based its substantive ground of decision. Additionally, according to Fonseca, a Community decision which is contrary to the decision given by the Portuguese courts would undermine the principle of the unity of the Community trade mark system, under which that mark must produce its effects in all the Member States of the Union, and that that system does not have absolute autonomy with respect to the various national laws. Consequently, the applicant claims that the proceedings must be stayed until the decision given by the Portuguese courts becomes final. Said the CFI on this point:

"20 ... following the decision of the Supremo Tribunal de Justiça ... which makes final the decisions of the Portuguese courts ..., the applicant’s request for the proceedings to be stayed until the decision given by the Portuguese courts becomes final has become devoid of purpose.

21 In any event, the decision of the Portuguese courts concerns only the extension to Portugal of the international registration of the trade mark GENERAL OPTICA and the intervener’s company name. As the decision of the Portuguese courts does not contain any general prohibition against the use in Portugal of a mark including the words ‘general optica’, the Community trade marks GENERAL OPTICA are not affected by it. Therefore ... a decision of the Court of First Instance upholding the registration of the Community trade marks GENERAL OPTICA does not make it possible for the intervener to circumvent the decision of the Portuguese courts. In particular, the confirmation of the validity of the Community trade marks GENERAL OPTICA has no bearing at all on the obligation arising from the decision of the Supremo Tribunal de Justiça to refrain from using in Portugal the international trade mark GENERAL OPTICA and the intervener’s company name.

22 ... the unitary character of the Community trade mark system cannot be called into question by a contradiction between the decision of the Portuguese courts and the decision of the Court of First Instance. The unitary character of the Community trade mark constitutes a principle which is not absolute, but permits exceptions, such as those provided for in Article 106 of Regulation No 40/94, relating to the prohibition of use of Community trade marks, and Article 107 of Regulation No 40/94, relating to prior rights applicable to particular localities ...".