JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
28 May 2020 (*)
(EU trade mark –– Revocation proceedings –– EU word mark LIBERTADOR –– Genuine use of the mark –– Article 58(1)(a) of Regulation (EU) 2017/1001 –– Right to be heard –– Article 94 of Regulation 2017/1001 –– Due notification –– Article 60 of Delegated Regulation (EU) 2017/1430 (now Article 60 of Delegated Regulation (EU) 2018/625) –– Failure to produce proof of genuine use of the mark within the time limit prescribed –– Article 19(1) of Delegated Regulation 2017/1430 (now Article 19(1) of Delegated Regulation 2018/625)
In Case T‑564/19,
Antonio Lozano Arana, residing in Cali (Colombia),
Daniel Simon Benmaor, residing in Marseilles (France),
Marion Esther Benmaor, residing in Marseilles,
Valérie Brigitte Danielle Servant, residing in Marrakesh (Morocco),
represented by M. Angelier, lawyer,
applicants,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Coltejer SA, established in Itagüí (Colombia),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 June 2019 (Case R 2482/2018-4), relating to revocation proceedings between Coltejer and Mr Albert Benmaor and Mr Lozano Arana,
THE GENERAL COURT (Fifth Chamber),
composed of D. Spielmann, President, O. Spineanu-Matei (Rapporteur) and R. Mastroianni, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 14 August 2019,
having regard to the response lodged at the Court Registry on 29 October 2019,
having regard to the designation of another Judge to complete the Chamber as one of its Members was prevented from acting,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 14 April 2010, Mr Albert Benmaor and Mr Antonio Lozano Arana (‘the trade mark proprietors’), represented by the former representative, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2 Registration as a trade mark was sought for the word sign LIBERTADOR.
3 The goods in respect of which registration was sought are in Classes 3, 14, 18, 19 and 25 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.
4 On 15 November 2010, the EU trade mark application was published in Community Trade Marks Bulletin No 2010/214. On 28 February 2011, the sign, referred to in paragraph 2 above, was registered as an EU trade mark under No 9067414 and the former representative was recorded as the representative of the proprietors thereof.
5 On 13 December 2017, Coltejer SA, lodged an application for revocation of the registered mark, pursuant to Article 58(1)(a) of Regulation 2017/1001, on the ground that genuine use had not been made of that mark for an uninterrupted period of five years in respect of all of the goods referred to in paragraph 3 above.
6 On 19 December 2017, the Cancellation Division of EUIPO notified the former representative of the application for revocation and requested that evidence of genuine use be produced as well as, if appropriate, observations in reply, by 19 February 2018 (‘the communication of 19 December 2017’).
7 The proprietors of the registered mark did not submit either evidence of genuine use of the registered mark or any observations in reply within the time limit prescribed.
8 By letter of 1 March 2018, the Cancellation Division informed the former representative that, in so far as no evidence of genuine use of the registered mark had been lodged within the time limit prescribed, EUIPO would have to give a decision on the application for revocation on the basis of the evidence available to it.
9 By letter of 27 April 2018, the new representative, first, informed EUIPO that she had lodged two oppositions based on the registered mark on behalf of the proprietors thereof and that it was in that context that she had become aware of the application for revocation lodged against that mark. Second, she argued that the former representative had failed to inform the proprietors of the registered mark either of the submission of such an application or of the time limit prescribed by the Cancellation Division. She therefore requested that the revocation proceedings be reopened.
10 On 29 June 2018, the new representative was recorded as the representative of the proprietors of the registered mark on the basis of her application received by EUIPO on 26 June 2018.
11 By letter of 5 July 2018, the new representative again requested that the revocation proceedings be reopened, in order that she might be permitted to submit comments and evidence of genuine use of the registered mark.
12 On 24 July 2018, the Cancellation Division informed the new representative that (i) the communications of 19 December 2017 and of 1 March 2018, referred to in paragraphs 6 and 8 above, had been duly notified to the former representative, since notice of the appointment of the new representative had been received by EUIPO on 26 June 2018, and (ii) since the time limit for submitting evidence of the genuine use of the registered mark had expired without any evidence being lodged, EUIPO would have to give a decision on the application for revocation on that basis.
13 By decision of 31 October 2018, the Cancellation Division made an order for revocation of the registered mark as of 13 December 2017 in respect of all of the goods referred to in paragraph 3 above, and ordered the proprietors of the registered mark to pay the costs.
14 On 10 December 2018, the heirs of Mr Albert Benmaor — namely, Mr Daniel Simon Benmaor, Ms Marion Esther Benmaor and Ms Valérie Brigitte Danielle Servant — became the proprietors of the registered mark, together with Mr Lozano Arana, on the basis of an application made to that end by the new representative.
15 On 17 December 2018, the applicants, Mr Benmaor, Mr Lozano Arana, Ms Benmaor and Ms Servant, lodged a notice of appeal with EUIPO, on the basis of Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division, which notice was supplemented by a memorandum setting out the grounds of appeal lodged on 28 February 2019.
16 By decision of 20 June 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In essence, first, it observed that the former representative had been appointed as the representative of the trade mark proprietors when the application for registration had been lodged and had been duly registered as such when the mark had been registered. Consequently, according to the Board of Appeal, the former representative remained authorised to represent the trade mark proprietors until such time as EUIPO had been informed that that authorisation had been terminated, which event occurred at the earliest on 27 April 2018, when the new representative had requested that the revocation proceedings be reopened. The Board of Appeal therefore concluded that the communications prior to that date had been validly notified to the former representative and that the proprietors of the registered mark had had the opportunity to be heard in the context of the application for revocation. Next, the Board of Appeal noted that (i) no evidence of genuine use of the registered mark had been produced before the Cancellation Division within the time limit prescribed, with the result that the evidence submitted for the first time in the appeal proceedings could not be taken into consideration, and (ii) neither the appointment of the new representative nor the lodging of a notice of appeal would have entailed the reopening of the proceedings. Lastly, for the sake of completeness, the Board of Appeal found that none of the documents filed on appeal proved genuine use of the registered mark. The documents bearing a date prior to that of the submission of the application for revocation demonstrated preparations for such use, whereas genuine use means actual sales or at least actual availability for sale on the market of the products concerned by the registered mark before the application for revocation is lodged.
Forms of order sought
17 The applicants claim that the Court should annul the contested decision.
18 EUIPO contends that the Court should:
– dismiss the action;
– order the applicants to pay the costs.
Law
19 The applicants rely on two pleas in law, alleging (i) infringement of essential procedural requirements and (ii) infringement of Article 58(1)(a) of Regulation 2017/1001.
The first plea in law: infringement of essential procedural requirements
20 The applicants claim that the contested decision must be annulled on grounds of infringement of essential procedural requirements, in that it constitutes the culmination of an infringement committed by the Cancellation Division, wrongly upheld by the Board of Appeal, of Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950 (‘ECHR’).
21 In particular, the applicants argue, first, that the proprietors of the registered mark were not afforded the opportunity to produce evidence of genuine use of that mark before the Cancellation Division. The former representative in fact failed to alert them to the application for revocation lodged by Coltejer or to the time limit prescribed by the Cancellation Division for lodging observations and evidence of genuine use of the registered mark. It is claimed that although it had been informed of that circumstance once that time limit had expired, EUIPO did not allow the proprietors of the registered mark to lodge observations and evidence thereafter. EUIPO thus infringed the rights of defence of the proprietors of the registered mark and, in particular, their right to be heard prior to the adoption of the Cancellation Division’s decision ordering the revocation of the registered mark.
22 Second, the applicants take the view that their right to be heard was infringed in so far as the proceedings laid down in Articles 104 and 105 of Regulation 2017/1001 could not be opened on account of the failure on the part of the former representative, of which EUIPO was aware.
23 EUIPO disputes the applicants’ arguments.
24 It should be recalled from the outset that, as regards the infringement of Article 6 ECHR on which the applicants expressly rely, the General Court has excluded the application of the right to a fair ‘hearing’, enshrined in Article 6 ECHR, to the Boards of Appeal of EUIPO since proceedings before the Boards of Appeal are administrative and not judicial in nature (see judgment of 11 July 2013, Metropolis Inmobiliarias y Restauraciones v OHIM — MIP Metro (METRO), T‑197/12, not published, EU:T:2013:375, paragraph 54 and the case-law cited).
25 In so far as the applicants claim that EUIPO infringed their rights of defence and, in particular, their right to be heard prior to the adoption of the Cancellation Division’s decision ordering the revocation of the registered mark, it is clear, however, that they must be regarded as actually relying on an infringement of the second sentence of Article 94(1) of Regulation 2017/1001.
26 In that connection, it should be recalled that, under the second sentence of Article 94(1) of Regulation 2017/1001, EUIPO decisions are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision enshrines the general principle of protection of the rights of the defence in the law of trade marks. That principle includes the right to be heard, which is set out in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union. In accordance with that principle, any person who has been adversely affected by a decision of a public authority must have been afforded the opportunity effectively to make known his or her views before the adoption of that decision (see judgment of 11 April 2019, Adapta Color v EUIPO — Coatings Foreign IP (Bio proof ADAPTA), T‑224/17, not published, EU:T:2019:242, paragraph 28 and the case-law cited).
27 In revocation matters, the parties have the opportunity to be heard prior to the adoption of a decision by EUIPO, in compliance with the procedural framework established, in particular, by Regulation 2017/1001 and Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1), as amended (replaced by Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)).
28 In particular, Article 64(1) of Regulation 2017/1001 provides that, on the examination of the application for revocation of rights, EUIPO is to invite the parties, as often as necessary, to file observations, within a period to be fixed by EUIPO, on communications from the other parties or issued by itself. Article 14 of Delegated Regulation 2017/1430 (now Article 14 of Delegated Regulation 2018/625) states that the application for revocation and any document submitted by the applicant is to be sent by EUIPO to the other party for the purposes of informing it of the introduction of an application for revocation. Under Article 17(1) of Delegated Regulation 2017/1430 (now Article 17(1) of Delegated Regulation 2018/625), where the application is found admissible, EUIPO is to invite the proprietor of the EU trade mark to file observations within a specified period.
29 In accordance with the first sentence of Article 19(1) of Delegated Regulation 2017/1430 (now Article 19(1) of Delegated Regulation 2018/625), in the case of an application for revocation based on Article 58(1)(a) of Regulation 2017/1001, EUIPO is to invite the proprietor of the EU trade mark to provide proof of genuine use of that mark or of proper reasons for non-use, within such period as it is to specify.
30 As regards notifications addressed to the parties by EUIPO, in accordance with Article 60(1) and (3) of Delegated Regulation 2017/1430 (now Article 60(1) and (3) of Delegated Regulation 2018/625), where a representative has been appointed, notifications are to be addressed to that appointed representative. A notification or other communication addressed by EUIPO to the duly authorised representative is to have the same effect as if it had been addressed to the represented person.
31 As regards the validity of the notification of documents, the case-law makes a distinction between, first, the transmission of a document to its addressee, which is required for due notification, and, secondly, effective knowledge of that document, which is not required for the notification to be regarded as a due notification (see judgment of 4 May 2017, Kasztantowicz v EUIPO — Gbb Group (GEOTEK), T‑97/16, not published, EU:T:2017:298, paragraph 39 and the case-law cited). In that context, the notifier is under an obligation to establish that he or she created the conditions necessary for the document to be notified to come within the addressee’s sphere of influence, so as to allow the latter effectively to take cognisance of the notification. However, the notifier is not required to establish that the addressee actually took cognisance thereof. The notifier thus has neither the obligation nor, as a general rule, the possibility of interfering in the internal functioning of the entity addressed in order to guarantee that such cognisance is taken. In particular, the notifier cannot be held responsible for the fact that, by virtue of any lack of diligence on the part of the addressee, the latter has not taken cognisance of a document that has duly come within his or her sphere of influence (see judgment of 4 May 2017, GEOTEK, T‑97/16, not published, EU:T:2017:298, paragraph 41 and the case-law cited).
32 It is in the light of these clarifications that it is appropriate to examine whether the Cancellation Division rightly notified the former representative of the communication of 19 December 2017 and whether the right of the proprietors of the registered mark to be heard prior to the adoption of the Cancellation Division’s decision ordering the revocation of the registered mark was respected.
33 In the present case, in the first place, it should be observed that the applicants do not dispute the fact that the former representative had been appointed as the representative of the trade mark proprietors when the application for registration was lodged, and had been duly recorded as such when the mark was registered. Nor do they dispute the fact that EUIPO did indeed send the communication of 19 December 2017 to the former representative, nor that the former representative did indeed receive it. The applicants claim, however, that the proprietors of the registered mark were not informed of the existence of an application for revocation and were not in a position to lodge evidence of genuine use of that mark within the time limit prescribed on account of a lack of diligence on the part of the former representative.
34 In that connection, it should be noted, as EUIPO did, that the communication of 19 December 2017 was rightly notified by the Cancellation Division to the former representative, who had been appointed as the representative of the trade mark proprietors when the application for registration was lodged and who had been duly recorded as such when the mark was registered. It was not for EUIPO to seek information as to whether that appointment remained current when the application for revocation was notified to the applicants.
35 Furthermore, as the Board of Appeal observes in paragraphs 29 to 31 of the contested decision, within the meaning of the case-law recalled in paragraph 31 above, EUIPO cannot be held responsible for that fact that, owing to an alleged lack of diligence on the part of the former representative, the proprietors of the registered mark were not aware that an application for revocation had been filed or of the time limit prescribed to them.
36 It follows that, in so far as it created the conditions necessary for the communication of 19 December 2017 to come within the sphere of influence of the proprietors of the registered mark, EUIPO duly informed the latter of the submission of an application for revocation and the time limit prescribed for the production of evidence of genuine use of the registered mark, for the purposes of Article 64(1) of Regulation 2017/1001 and of Article 14, Article 17(1) and the first sentence of Article 19(1) of Delegated Regulation 2017/1430, read in conjunction with Article 60(1) and (3) of the latter, and put the trade mark proprietors in a position to exercise their right to be heard before the adoption of the Cancellation Division’s decision declaring the revocation of the registered mark, in accordance with the second sentence of Article 94(1) of Regulation 2017/1001.
37 Accordingly, the right of the proprietors of the registered mark to be heard prior the adoption of the Cancellation Division’s decision ordering the revocation of the registered mark has been respected.
38 In the second place, it should be observed that, as regards the production of evidence of genuine use of a mark in revocation proceedings brought on the basis of Article 58(1)(a) of Regulation 2017/1001, that regulation does not contain any provisions stipulating the time frame in which such evidence is to be adduced. To that end, Article 19(1) of Delegated Regulation 2017/1430 provides that EUIPO is to invite the proprietor of the EU trade mark to provide evidence of genuine use of the mark within such period as it is to specify. That provision also states, in its second sentence, that if evidence of genuine use of the mark is not provided before the time limit set by EUIPO expires, the trade mark is to be revoked.
39 In the present case, the applicants do not dispute that the proprietors of the registered mark failed to produce evidence of genuine use of the mark within the time limit prescribed by the Cancellation Division. However, they claim that, owing to a lack of diligence on the part of the former representative — of which EUIPO was informed — the latter ought to have allowed them to file the evidence once that time limit had expired.
40 That argument cannot succeed. It is clear from the wording itself of that provision that the time limit set by EUIPO under Article 19(1) of Delegated Regulation 2017/1430 is a strict time limit, which means EUIPO cannot take account of evidence that is submitted late (see judgment of 15 March 2011, Ifemy’s v OHIM — Dada & Co Kids (Dada & Co. kids), T‑50/09, EU:T:2011:90, paragraph 63 and the case-law cited).
41 The time limit prescribed by EUIPO under Article 19(1) of Delegated Regulation 2017/1430, like the periods for lodging complaints and bringing actions, is a matter of public policy and cannot be left to the discretion of the parties. That time limit meets the requirement of legal certainty and the need to avoid any discrimination or arbitrary treatment in the administration of justice (see judgment of 15 March 2011, Dada & Co. kids, T‑50/09, EU:T:2011:90, paragraph 64 and the case-law cited).
42 Consequently, by finding that, in the absence of evidence of genuine use of the registered mark produced by the proprietors of that mark within the time limit prescribed, the mark at issue should be revoked, the Cancellation Division based the contested decision on a correct interpretation of Article 19(1) of Delegated Regulation 2017/1430 (see, to that effect, judgment of 4 May 2018, Skyleader v EUIPO — Sky International (SKYLEADER), T‑34/17, not published, EU:T:2018:256, paragraph 32), which, accordingly, the Board of Appeal rightly upheld.
43 As EUIPO contends, the consequences of the application of a strict time limit pursuant to Article 19(1) of Delegated Regulation 2017/1430 are counter-balanced by the possibility of lodging an application for restitutio in integrum, in accordance with Article 104 of Regulation 2017/1001, within two months of the removal of the obstacle to compliance with a time limit, or an application for continuation of proceedings, in accordance with Article 105 of that regulation, within two months of the expiry of an unobserved time limit.
44 Assuming that the alleged lack of diligence on the part of the former representative constitutes, as the applicants claim, a reason justifying the filing of an application for restitutio in integrum, in accordance with Article 104 of Regulation 2017/1001, or an application for the continuation of proceedings, in accordance with Article 105 of that regulation, it is clear that no such application has been lodged by the proprietors of the registered mark despite the fact, as EUIPO points out, that when the proprietors became aware of the application for revocation — namely 27 April 2018 at the latest (see paragraph 9 above) — it was still possible to lodge an application for restitutio in integrum at the very least.
45 In the light of the foregoing, the first plea in law must be rejected.
The second plea in law: infringement of Article 58(1)(a) of Regulation 2017/1001
46 First, the applicants claim that, before the Board of Appeal, they explained the reasons for which the proprietors of the registered mark had not been able to produce evidence before the Cancellation Division. The Board of Appeal therefore ought to have taken the evidence produced before it into consideration. Second, the applicants take the view that the Board of Appeal wrongly refused to recognise the value of the documents produced before it demonstrating the preparations for the launch of the registered mark as evidence of genuine use of that mark during the relevant period. Accordingly, the contested decision should be annulled, in so far as it was adopted in breach of Article 58(1)(a) of Regulation 2017/1001.
47 EUIPO contends that the plea alleging infringement of Article 58(1)(a) of Regulation 2017/1001 is manifestly inadmissible. First, the Board of Appeal’s findings that none of the documents lodged before it proved genuine use of the registered mark, are not included in the operative part of the contested decision, with the result that the applicants cannot challenge them. Secondly, the applicants are asking the Court to carry out an assessment on which the Board of Appeal did not take a position, in so far as it was unable, within the time limit prescribed in Article 19(1) of Regulation 2017/1001, to carry out an assessment of the evidence of genuine use of the registered mark that was lodged out of time.
48 It should be noted, in the first place, that, for the reasons set out in paragraphs 38 to 42 above and contrary to the applicants’ claims, the Board of Appeal was not required to take into consideration the documents submitted for the first time before it, as it found in paragraph 38 of the contested decision, and could only uphold the findings of the Cancellation Division ordering the revocation of the registered mark, since the proprietors of that mark had failed to lodge evidence of genuine use thereof within the time limit prescribed.
49 It cannot be considered that the applicants had already adduced evidence of genuine use of the registered mark during the proceedings before the Cancellation Division. Consequently, that produced for the first time before the Board of Appeal does not constitute additional or supplementary evidence relative to the evidence produced before the Cancellation Division. Accordingly, the Board of Appeal did not err in finding, in paragraph 38 of the contested decision, that, since no evidence of genuine use of the registered mark had been produced before the Cancellation Division within the time limit prescribed, it had no discretion to accept the evidence produced for the first time before it (see, to that effect, judgment of 3 October 2019, 6Minutes Media v EUIPO — ad pepper media International (ADPepper), T‑668/18, not published, EU:T:2019:719, paragraph 21).
50 In the second place, contrary to EUIPO’s contention, it should be noted that the Board of Appeal did express its view on the evidence of genuine use of the registered mark produced before it. In fact, in paragraph 36 of the contested decision, it found that the proprietors of the registered mark had to show genuine use of their registered mark within the period of five years preceding the filing of the application for revocation, that is, from 13 December 2012 to 12 December 2017 inclusive. In paragraph 41 of the contested decision, the Board of Appeal noted that (i) all of the documents lodged before it bearing a date prior to the date on which the application for revocation was lodged established preparations for use, (ii) the first invoice was dated two months after the latter date, and (iii) a further document produced before it presented the ‘Spring Summer 2018 collection’ as the ‘first collection’ of goods covered by the registered mark, whereas genuine use also means actual sales or at least actual availability for sale on the market for those goods.
51 Consequently, contrary to EUIPO’s argument, the applicants’ second plea is not manifestly inadmissible.
52 It should, however, be observed that, having rightly found, in paragraphs 35 to 40 of the contested decision, that the proprietors of the registered mark had failed to adduce evidence of genuine use of the registered mark within the time limit prescribed, with the result that the Cancellation Division had correctly ordered the revocation that mark, the Board of Appeal added, obiter dictum, in paragraph 41 of the contested decision, that the documents lodged in the proceedings did not, in any event, prove genuine use of the registered mark but were, in essence, evidence only of preparations for the use thereof.
53 Consequently, even if, by their second plea, the applicants put forward a specific and detailed argument seeking to call into question the findings of the Board of Appeal in that they infringe Article 58(1)(a) of Regulation 2017/1001, as EUIPO rightly contends, it is clear from the wording used by the Board of Appeal, in paragraph 41 of the contested decision, that those findings were set out for the sake of completeness and do not constitute the necessary support for the operative part of the contested decision. The latter is based, to the requisite legal standard, on the other findings in that decision, which have been examined above and found to be correct. Accordingly, the applicants’ second plea in law, alleging infringement of Article 58(1)(a) of Regulation 2017/1001, is ineffective (see, to that effect, judgment of 15 January 2013, Welte-Wenu v OHIM — Commission (EUROPEAN DRIVESHAFT SERVICES), T‑413/11, not published, EU:T:2013:12, paragraph 70 and the case-law cited).
54 In the light of the foregoing, the second plea in law must be rejected and, accordingly, the action dismissed in its entirety.
Costs
55 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
56 Since the applicants have been unsuccessful, they must be ordered to pay the costs in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Mr Antonio Lozano Arana, Mr Daniel Simon Benmaor, Ms Marion Esther Benmaor and Ms Valérie Brigitte Danielle Servant to pay the costs.
Spielmann | Spineanu-Matei | Mastroianni |
Delivered in open court in Luxembourg on 28 May 2020.
E. Coulon | | M. van der Woude |