Judgment of the General Court (Eighth Chamber) of 14 January 2026. – Lisa Leone and Others v European Union Intellectual Property Office.

1

By their action under Article 263 TFEU, the applicants, Ms Lisa Leone, Mr Giorgio Leone and Leone & Leone OG, seek the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 November 2024 (Case R 971/2023-2) (‘the contested decision’).

2

On 19 January 2022, the applicants filed with EUIPO an application for a declaration of invalidity of the EU trade mark registered following an application filed on 26 February 2020 for the word mark Leone.

3

The goods covered by the contested mark, in respect of which a declaration of invalidity was sought, were in Class 30 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and consist essentially in ice creams and various ices.

4

The ground relied on in support of the application for a declaration of invalidity was that set out in Article 60(2)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), in conjunction with certain provisions of Austrian legislation, namely Paragraph 43 of the Allgemeines bürgerliches Gesetzbuch (Austrian General Civil Code), Paragraph 9 of the Gesetz gegen den unlauteren Wettbewerb (Law against Unfair Competition) of 22 November 1984 (BGB1. 448/1984) (‘the Austrian Federal Law against unfair competition’) and Paragraph 12 of the Markenschutzgesetz (Law on the Protection of Trade Marks) of 30 November 1970 (BGB1. 260/1970) (‘the Austrian Law on the protection of trade marks’).

5

The application for a declaration of invalidity was based on the following earlier rights protected under Austrian law:

6

On 9 March 2023, the Cancellation Division rejected the application for a declaration of invalidity in its entirety. It found, essentially, that the evidence produced by the applicants failed to show that the extent or scale of the use of the names to which they claimed a right in the context of their business activities in the ice cream sector, referred to in paragraph 5 above, was sufficient to establish that they held an ‘interest worthy of protection’ capable of being infringed, as was required under applicable Austrian law. The Cancellation Division therefore found that there could be no risk that the relevant public would associate the contested mark with the applicants, economically or otherwise.

7

On 8 May 2023, the applicants filed a notice of appeal with EUIPO against the decision of the Cancellation Division.

8

By the contested decision, the Board of Appeal dismissed the appeal on the ground that the earlier rights relied on by the applicants, referred to in paragraph 5 above, fell within the scope of Article 60(1)(c) of Regulation 2017/1001 and therefore fell outside the scope of Article 60(2)(a) of that regulation, with the result that the application for a declaration of invalidity, based on that latter provision, was unfounded.

9

The applicants claim that the Court should:

10

EUIPO contends that the Court should:

11

In support of their action, the applicants put forward two pleas in law, alleging, first, infringement of Article 94(1) of Regulation 2017/1001 and, secondly, infringement of Article 60(2)(a) of that regulation.

12

It is appropriate to examine the second plea in law first.

13

By their second plea, the applicants claim that the Board of Appeal infringed Article 60(2)(a) of Regulation 2017/1001 in that, first, it wrongly took the view that that provision was aimed at protecting names as an attribute of personality, but did not protect names in the context of their economic use, thus departing from the judgment of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452), and, secondly, it failed to take their explanations of the national law into consideration, failed to take account of the evidence concerning the extensive economic use made of the names to which they claimed a right, and wrongly concluded that the evidence which they had presented did not show that ‘[their] interests worthy of protection [had been] violated’.

14

EUIPO submits that the Board of Appeal was right in finding that the earlier rights relied on by the applicants did not fall within the scope of Article 60(2)(a) of Regulation 2017/1001. Those rights should have been relied on under Article 60(1)(c) of that regulation, read in conjunction with Article 8(4) thereof, which apply to non-registered trade marks and other signs used in the course of trade, essentially trade names, company names, domain names and other signs that can serve as business identifiers or to identify an economic activity engaged in by their proprietor. The approach adopted by the applicants would, by contrast, result in the circumvention of EU law. Indeed, that approach would enable them to claim a right to business identifiers without being subject to the requirements laid down in Article 8(4) of the regulation and, in particular, the requirement of demonstrating use of more than mere local significance.

15

In particular, first, as regards the company name Leone & Leone OG and the name Leones, which respectively identify a company and a business, EUIPO maintains that they are ‘typical’ rights falling within the scope of Article 60(1)(c) of Regulation 2017/1001, read in conjunction with Article 8(4) of that regulation. It submits that that conclusion is corroborated, in particular, by Paragraph 9 of the Austrian Federal Law against unfair competition and by Paragraphs 12 and 32 of the Austrian Law on the protection of trade marks, inasmuch as those provisions expressly refer to the protection of ‘business identifiers’. Moreover, the fact that the applicants themselves claim protection against a ‘confusion of assignment’, which is to say a situation in which the relevant public would be misled as to the commercial origin of the relevant goods, means, according to EUIPO, that the earlier rights claimed actually have the function of ‘signs invoked as business identifiers’. Secondly, as regards the surname Leone, the applicants have not relied on that name for its function of identifying a specific person, but have, in reality, claimed protection of the sign consisting in that name when used in the course of trade.

16

Article 60(2) of Regulation 2017/1001 provides as follows:

‘An EU trade mark shall … be declared invalid on application to [EUIPO] or on the basis of a counterclaim in infringement proceedings where the use of such trade mark may be prohibited pursuant to another earlier right under the Union legislation or national law governing its protection, and in particular:

17

It is clear from Article 16(1)(c) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing [Regulation (EU) 2017/1001], and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), that, in the case of an application for a declaration of invalidity pursuant to Article 60(2) of Regulation 2017/1001, the applicant must provide, in particular, the following: evidence of acquisition, continued existence and scope of protection of the relevant earlier right as well as evidence proving that the applicant is entitled to file the application, including, where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

18

The applicant is required to provide EUIPO not only with particulars showing that he or she satisfies the necessary conditions, in accordance with the national law of which he or she is seeking application, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law (judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 50, and of 30 June 2015, Gambling Commission v OHIM – Mediatek Italia and De Gregorio (Representation of a hand), T‑404/10 RENV, not published, EU:T:2015:445, paragraph 29).

19

Where an application for a declaration that an EU trade mark is invalid is based on an earlier right protected by a rule of national law, the competent EUIPO adjudicatory bodies must assess the weight and scope to be attributed to the particulars submitted by the applicant in order to establish the content of that rule. The General Court undertakes a full review of that assessment (judgment of 30 June 2015, Gambling Commission v OHIM, T‑404/10 RENV, not published, EU:T:2015:445, paragraph 30; see also, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraphs 51 and 52).

20

Moreover, in circumstances in which EUIPO may be called upon to take account, in particular, of the national law of the Member State in which protection is given to an earlier right on which the application for a declaration of invalidity is based, it must – of its own motion and by whatever means considered appropriate – obtain information about the national law of the Member State concerned, where such information is necessary for the purposes of assessing the applicability of a ground for invalidity relied on before it and, in particular, for the purposes of assessing the accuracy of the facts adduced or the probative value of the documents submitted (judgment of 20 January 2021, Jareš Procházková and Jareš v EUIPO – Elton Hodinářská (MANUFACTURE PRIM 1949), T‑656/18, not published, EU:T:2021:17, paragraph 27 and the case-law cited). That obligation to obtain of its own motion information about national law rests, as the case may be, upon EUIPO where it already has information relating to national law, either in the form of claims as to its meaning, or in the form of evidence submitted the probative value of which has been alleged (judgment of 20 March 2013, El Corte Inglés v OHIM – Chez Gerard (CLUB GOURMET), T‑571/11, EU:T:2013:145, paragraph 41; see also judgment of 2 December 2020, Monster Energy v EUIPO – Nanjing aisiyou Clothing (Representation of a scratch), T‑35/20, not published, EU:T:2020:579, paragraph 83 and the case-law cited).

21

In the present case, it is important to state at the outset that the Board of Appeal decided, in paragraph 20 of the contested decision and for reasons of procedural economy, not to express a position on the individual entitlement of each of the applicants to claim each of the earlier rights at issue. It expressed the view, in paragraphs 47 to 50 of the contested decision, that, in so far as all the earlier rights claimed by the applicants fell within the scope of Article 60(1)(c) of Regulation 2017/1001 and therefore fell outside the scope of Article 60(2)(a) of that regulation, the application for a declaration of invalidity, based on that latter provision, had to be rejected in its entirety. Thus, the entitlement of the applicants to submit the application for a declaration of invalidity is not the subject of the present dispute. Consequently, the applicants’ arguments to show that they are so entitled are irrelevant.

22

Furthermore, it should be noted that the earlier rights referred to in paragraph 5 above are, first, the surname Leone, which coincides with the name of the undertaking that produces and sells ice cream and is owned by Lisa and Giorgio Leone as natural persons of Austrian nationality, secondly, Leone & Leone OG, which is the company name of the Austrian company of which Lisa and Giorgio Leone are the owners and the company object of which is the production and sale of ice cream, and, thirdly, Leones, which is the business name displayed at the applicants’ outlets in Vienna (Austria) for the sale of ice cream.

23

That having been clarified, the Court must examine the applicants’ arguments by which they essentially dispute, first, the Board of Appeal’s interpretation of Article 60(2)(a) of Regulation 2017/1001 and, secondly, the Board of Appeal’s assessments of the national law.

24

In paragraph 30 of the contested decision, the Board of Appeal noted that the applicants had based their application for a declaration of invalidity on the three earlier rights under Austrian law referred to in paragraph 5 above and had relied on the ground for invalidity referred to in Article 60(2)(a) of Regulation 2017/1001, read in conjunction with the Austrian legislation referred to in paragraph 4 above.

25

In paragraphs 31, 32 and 47 to 49 of the contested decision, after citing Article 5(4) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1), the Board of Appeal pointed out that Article 5(4)(a) of that directive covered ‘rights used in the course of trade’, while Article 5(4)(b) of the same directive covered ‘rights other than earlier rights used in the course of trade’, such as the ‘right to a name’. It added that that distinction was also made by Article 60(1)(c) of Regulation 2017/1001, which referred to Article 8(4) of that regulation, and by Article 60(2)(a) of that regulation respectively. It took the view that, since the same distinction was made in Regulation 2017/1001, the classification under national law of the right relied on was not decisive. Accordingly, since Article 60(2)(a) of Regulation 2017/1001 related to names as a right of ‘personality’, the applicants’ claim for a declaration of invalidity based on that provision was unfounded.

26

The applicants dispute that premiss on which the contested decision is principally based and according to which, essentially, an application for a declaration of invalidity claiming a ‘right to a name’ used in the ‘course of trade’ cannot be based on Article 60(2)(a) of Regulation 2017/1001.

27

According to the case-law, in interpreting a provision of EU law, it is necessary to consider not only its wording but also the context in which it occurs and the objectives pursued by the rules of which it is part (see judgment of 10 July 2014, D. and G., C‑358/13 and C‑181/14, EU:C:2014:2060, paragraph 32 and the case-law cited).

28

In the first place, as regards the wording of Article 60(2)(a) of Regulation 2017/1001, set out in paragraph 16 above, it must be noted that the Court of Justice has already held that the words ‘right to a name’ do not provide any support for a restrictive interpretation to the effect that that provision concerns only that right as an attribute of personality and does not cover commercial exploitation of a name (see, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 33).

29

Furthermore, neither Article 60(2)(a) of Regulation 2017/1001 nor any other provision of EU law defines the meaning of the ‘right to a name’ or the conditions under which it is possible to have the use of an EU trade mark prohibited on that basis. Article 60(2)(a) of the regulation does, however, make a reference to national law for that purpose, as is clearly apparent from the wording ‘another earlier right under the … national law governing its protection’.

30

Accordingly, EUIPO may declare an EU mark invalid, upon the application of the person concerned, where the use of that trade mark may be prohibited pursuant to, inter alia, the right to a name protected by national law (judgments of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 41, and of 29 June 2017, Cipriani v EUIPO – Hotel Cipriani (CIPRIANI), T‑343/14, EU:T:2017:458, paragraph 73).

31

Moreover, the form of words ‘right to a name’ in Article 60(2)(a) of Regulation 2017/1001 does not, a priori, exclude the possibility that such a right may lie, under national law, not only in a surname but also in a trade name, such as the name of a company or other legal person, or the name under which an undertaking presents itself, regardless of the entity’s legal status, or moreover a business name. That finding is all the more valid in view of the fact that, in the absence of harmonisation at EU level, the protection of trade names is a matter for national law (judgment of 10 July 2025, Purefun Group, C‑365/24, EU:C:2025:558, paragraph 31).

32

In the second place, as regards the contextual interpretation, it must be noted that the structure of Article 60(2) of Regulation 2017/1001 militates against the interpretation adopted by the Board of Appeal in the contested decision.

33

Indeed, according to the case-law of the Court of Justice, under Article 60(2) of Regulation 2017/1001, an EU trade mark may be declared invalid upon the application of a person concerned claiming ‘another earlier right’. In order to clarify the nature of such an earlier right, that provision lists four rights, while indicating, by the use of the adverb ‘in particular’, that that list is not exhaustive. The examples given include, besides the right to a name and the right of personal portrayal, a copyright and an industrial property right (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 34).

34

It is apparent from that non-exhaustive list that the rights cited by way of examples are intended to protect interests of different types. For some of them, such as copyright and industrial property rights, the economic aspects are protected, both under the national legal systems and under EU law, against commercial infringements (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 35).

35

It follows that the wording and structure of Article 60(2)(a) of Regulation 2017/1001 do not, where a right to a name is asserted, allow application of that provision to be restricted merely to situations where the registration of an EU trade mark conflicts with a right intended exclusively to protect a name as an attribute of the personality of the person concerned (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 36).

36

Moreover, the expression ‘another earlier right’, which appears in Article 60(2) of Regulation 2017/1001, draws a distinction between the rights listed in that paragraph, which include the ‘right to a name’, and the rights referred to in Article 60(1) of the regulation, including that referred to in Article 60(1)(c) by means of the reference to Article 8(4) of the regulation, namely ‘a non-registered trade mark or … another sign used in the course of trade’.

37

First, Article 8(4) of Regulation 2017/1001 refers to ‘a non-registered trade mark’. That expression, read in the light of Article 4 of that regulation, which describes the signs of which an EU trade mark may consist, and in particular in the light of Article 4(a) of the regulation, must be understood as designating a sign the function of which is to distinguish the goods or services of one undertaking from those of other undertakings and thus to guarantee the commercial origin of the goods or services.

38

Even though Article 4 of Regulation 2017/1001 provides that ‘personal names’ can constitute trade marks, the fact remains that, as an indication of the commercial origin of the goods or services covered by it, a mark consisting of a personal name has a different function than a personal name as such, which identifies a specific person (see, to that effect, judgment of 14 May 2009, ELIO FIORUCCI, T‑165/06, EU:T:2009:157, paragraphs 47 and 48; see also, to that effect and by analogy, judgment of 30 March 2006, Emanuel, C‑259/04, EU:C:2006:215, paragraph 48).

39

Secondly, Article 8(4) of Regulation 2017/1001 also refers to ‘another sign used in the course of trade’. In this connection, a company name, trade name or shop name may also, under certain conditions, constitute signs whose function is to distinguish the goods or services of one undertaking from those of other undertakings. However, according to the case-law, the purpose of a company, trade or shop name is not, of itself, to distinguish goods or services. The purpose of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a business. Accordingly, where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being run, such use cannot be considered as being ‘in relation to goods or services’, for the purposes of Article 4 of Regulation 2017/1001 (judgment of 18 July 2017, Savant Systems v EUIPO – Savant Group (SAVANT), T‑110/16, not published, EU:T:2017:521, paragraph 25 and the case-law cited). However, the sign which constitutes the company name could be used in such a manner that a link is established between the sign and the goods marketed or the services provided. To the extent that that condition is satisfied, the fact that a word element is used as the company’s trade name does not preclude its use as a mark and fulfilment of its essential function to designate goods or services, or as a sign conferring on its proprietor the right to prohibit the use of a mark, within the meaning of Article 8(4) of Regulation 2017/1001 (judgment of 26 July 2023, Guma Holdings v EUIPO – XTB (XTRADE), T‑67/22, not published, EU:T:2023:436, paragraph 54).

40

It follows that names, including trade names, can be covered by the expression ‘non-registered trade mark or [other] sign used in the course of trade’ within the meaning of Article 60(1)(c) of Regulation 2017/1001, read in conjunction with Article 8(4) of that regulation, where they are used in the course of trade as signs intended to designate goods or services and so to guarantee the commercial origin of those goods or services.

41

By contrast, such names, when used, in particular, in the course of trade in order to identify a person or an undertaking as such, do not fall within that definition and may fall within the scope of the ‘right to a name’ under Article 60(2)(a) of Regulation 2017/1001, the precise content of which and the conditions for the protection of which are defined solely in applicable national law.

42

Therefore, contrary to the Board of Appeal’s conclusion, the distinction between the earlier rights referred to respectively in Article 60(1)(c) of Regulation 2017/1001, read in conjunction with Article 8(4) of that regulation, and in Article 60(2)(a) of that regulation is not based on the use or lack of use of the earlier rights in the course of trade or in business dealings, but on the difference in nature that characterises the respective grounds for invalidity referred to in those provisions.

43

In addition, inasmuch as the Board of Appeal based its conclusion that Article 60(2) of Regulation 2017/1001 did not cover earlier rights where they are used in the course of trade on Article 5(4)(a) and (b) of Directive 2015/2436, it should be noted that Article 5(4) of that directive reads as follows:

‘Any Member State may provide that a trade mark is not to be registered or, if registered, is liable to be declared invalid where, and to the extent that:

44

Thus, in addition to the optional nature – which results from the use of the word ‘may’ in Article 5(4) of Directive 2015/2436 – of those grounds for invalidity for the Member States, which should, therefore, be able to maintain them in or introduce them into their legislation, that article draws a similar distinction to that set out in paragraph 36 above.

45

By contrast, the interpretation adopted by the Board of Appeal, referred to in paragraph 25 above, according to which Article 5(4)(b) of Directive 2015/2436 covers ‘rights other than earlier rights used in the course of trade’, does not correspond to the wording of that provision, which, like Article 60(2)(a) of Regulation 2017/1001, goes no further than actually excluding ‘non-registered trade mark[s] or [other] sign[s] used in the course of trade’, referred to in Article 5(4)(a) of Directive 2015/2436.

46

In the third place, as regards the interpretation based on the objectives pursued by the legislation, it should be observed that the conclusion reached in paragraphs 42 and 44 above is borne out by the objective and general scheme of Regulation 2017/1001. Indeed, the rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin (see judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO, C‑104/18 P, EU:C:2019:724, paragraph 45 and the case-law cited).

47

Therefore, Article 60(1)(c) of Regulation 2017/1001, read in conjunction with Article 8(4) of that regulation, addresses the situation of a conflict between a non-registered trade mark or other sign used in the course of trade and an EU trade mark. Such a conflict therefore involves signs that are of the same nature and have the same essential function, which is to distinguish the goods and services of one undertaking from those of other undertakings. Such a conflict is not regarded as liable to distort competition in the internal market, in particular, where the non-registered trade mark or other sign is not used in the course of trade or where it is of merely local significance, a condition the observance of which must be examined in accordance with the uniform standards that are established by Regulation 2017/1001 and consistent with the principles underlying the system established by that regulation.

48

In contrast, as was pointed out in paragraphs 32 to 34 above, Article 60(2) of Regulation 2017/1001 addresses cases of conflict between an EU trade mark and other rights of a different nature whose function is other than that of distinguishing the goods and services of one undertaking from those of other undertakings. Accordingly, Article 60(2)(a) of the regulation addresses, in particular, the case where the ‘right to a name’, possibly used in the course of trade to identify a person or an undertaking, as such, is protected against potential commercial infringements caused by the existence of an EU trade mark. In such a case, the content of and the conditions for asserting such a right against a later EU trade mark flow, by virtue of the reference made in that provision, from the national law governing its protection.

49

In this connection, EUIPO’s arguments, based on Article 14(1)(a) of Regulation 2017/1001 and purporting to limit the scope of the ‘right to a name’, must be rejected. Admittedly, Article 14(1)(a) of the regulation provides that an EU trade mark ‘shall not entitle the proprietor to prohibit a third party from using, in the course of trade … the name or address of the third party, where that third party is a natural person’. Article 14(2) of the regulation provides that such use must be ‘in accordance with honest practices in industrial or commercial matters’. That provision is specifically intended to ensure that a trade mark cannot serve as a basis for prohibiting a natural person from using his or her name (judgment of 26 July 2023, Rada Perfumery v EUIPO – Prada (RADA PERFUMES), T‑439/22, not published, EU:T:2023:441, paragraph 68). Nevertheless, first of all, as was stated in paragraph 31 above, Article 60(2)(a) of Regulation 2017/1001 does not refer solely to the right to a name of ‘natural persons’, but contains a neutral formulation of the content of the ‘right to a name’, while at the same time making a reference, in that regard, to national law.

50

Moreover, Article 60(2)(a) of Regulation 2017/1001 addresses the situation of a conflict between an earlier right to a name and a later EU trade mark, whereas Article 14(1) of that regulation clarifies the scope of the exclusive rights conferred by an EU trade mark, in the sense that an EU trade mark will not entitle the proprietor thereof to prohibit a natural person from using his or her name in the course of trade. Those two provisions therefore have different fields of application.

51

Lastly, it should be observed that, contrary to what EUIPO suggests, the Board of Appeal did not specifically assess the evidence presented by the applicants concerning the particular manner in which the names on which they based the application for a declaration of invalidity were used before finding that those names were used exclusively as signs whose function was to distinguish the goods which the applicants sold, rather than to identify any natural or legal person or any undertaking as such. Therefore, additional reasoning or a substitution of grounds cannot successfully be put before the Court in order to perfect potentially inadequate reasoning in the contested decision. If the Board of Appeal had intended to base the contested decision on such considerations, it should have done so expressly (see, to that effect, judgment of 5 October 2022, Puma v EUIPO – CMS (CMS Italy), T‑711/20, not published, EU:T:2022:604, paragraph 134 and the case-law cited).

52

It follows from the foregoing that the Board of Appeal erred in law in finding that the protection under Article 60(2)(a) of Regulation 2017/1001 could not extend to the ‘right to a name’ on the sole ground that the names claimed had been used, inter alia, in the course of trade, without considering, in accordance with the case-law cited in paragraphs 17 to 20 above, inter alia, the accuracy of the facts adduced, so as to actually establish the nature of the earlier rights relied on as the basis of the application for a declaration of invalidity, or the content of those rights and the conditions, arising from the national law the application of which was sought, in order to be able to have the use of an EU trade mark prohibited.

53

It is also appropriate to examine the applicants’ objections to the grounds of the contested decision according to which the information about the national law which they presented cannot, in any event, be interpreted as meaning that the earlier rights relied on could be protected as a ‘right to a name’ under Article 60(2)(a) of Regulation 2017/1001 read in conjunction with the Austrian law referred to.

54

The Board of Appeal found, essentially, in paragraphs 37 to 42 of the contested decision, that Paragraph 43 of the Austrian General Civil Code addressed cases in which the personal use of a name was impeded. However, where ‘individuals’ enter into business dealings under their own name, that name acquires a ‘secondary meaning’ and is no longer considered ‘merely a surname’. Thus, according to the Board of Appeal, the protection of names and other signs used in the course of trade is governed by Paragraphs 12 and 32 of the Austrian Law on the protection of trade marks and by Paragraph 9(1) of the Austrian Federal Law against unfair competition, those provisions of national law being relevant to the application of Article 8(4) of Regulation 2017/1001. Therefore, according to the Board of Appeal, first, Paragraph 43 of the Austrian General Civil Code may be relied on to assert the ‘right to a name’ solely if and to the extent that there is no special protection of the name under trade mark law and if the proprietor of the name does not use it in the course of trade. Secondly, according to the Board of Appeal the other provisions of Austrian law referred to above cannot be relied upon for the purposes of protecting a name in accordance with Article 60(2)(a) of Regulation 2017/1001 because they expressly refer to the protection of ‘business identifiers’ in the ‘course of trade’, which corresponds to rights under Article 8(4) of Regulation 2017/1001.

55

However, it must be held that those findings of the Board of Appeal were based on the same mistaken premiss as was established in paragraph 52 above, according to which the use of a name in the course of trade is sufficient to exclude its protection under Article 60(2) of Regulation 2017/1001.

56

Accordingly, the Board of Appeal’s assessment of the national law in the contested decision does not support the conclusion that the right to a name under Austrian law does not fall within the scope of Article 60(2)(a) of Regulation 2017/1001.

57

Therefore, in the light of all of the foregoing, the second plea in law must be upheld and, without it being necessary to rule on the first plea in law, the contested decision must be annulled.

58

Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO has been unsuccessful, it must be ordered to bear the costs, in accordance with the form of order sought by the applicants.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby: