ORDER OF THE GENERAL COURT (First Chamber)
7 June 2012(*)
(Community trade mark – Judicial proceedings – Substitution of a party to the proceedings – Transfer of the rights of the opposing party)
In Case T‑569/11,
Gitana SA, established in Pregny‑Chambesy (Switzerland), represented by F. Benech, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHlM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Rosenruist – Gestão e serviços, Lda, established in Madeira (Portugal), represented by S. Rizzo, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 4 August 2011 (Case R 1825/2007‑1) in relation to opposition proceedings between Gitana SA and Rosenruist – Gestão e serviços, Lda,
THE GENERAL COURT (First Chamber),
composed of: J. Azizi (Rapporteur), President, S. Frimodt Nielsen and M. Kancheva, Judges,
Registrar: E. Coulon,
makes the following
Order
1 On 11 February 2003, the applicant – Gitana SA (‘Gitana’) – filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 On 15 December 2004, Rosenruist – Gestão e serviços, Lda (‘Rosenruist’) filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) regarding registration of the trade mark applied for, on the basis of three earlier trade marks, that is to say, one Community trade mark, one international trade mark and one Italian trade mark.
3 Since, by decision of 30 October 2007, the Opposition Division partially upheld the opposition, Gitana lodged an appeal with OHIM under Article 59 of Regulation No 40/94 (now Article 60 of Regulation No 207/2009).
4 The appeal was partially upheld by decision of the First Board of Appeal of 4 August 2011.
5 By application lodged at the Court Registry on 4 November 2011, Gitana brought an action against the decision of the Board of Appeal.
6 On 22 February 2012, Teddy SpA (‘Teddy’) lodged at the Court Registry a document by which it submitted a response to the application initiating proceedings and informed the Court that, as from 1 February 2012, and following a transfer from Rosenruist, it had become the owner of the Community trade mark which served as one of the bases for the opposition. Teddy produced a letter of OHIM dated 1 February 2012 confirming that the trade mark transfer had been recorded in the OHIM files, and provided an excerpt from the OHIM database (CTMonline) dated 20 February 2012 confirming that Teddy is the new owner of the Community trade mark in question. Teddy and Rosenruist are represented by the same counsel.
7 Under Article 134(1) of the Rules of Procedure of the General Court, the parties to the proceedings before the Board of Appeal, other than the applicant, may participate as interveners in the proceedings before that Court by responding to the application in the manner and within the period prescribed.
8 In the present case, the response of 22 February 2012 was not submitted by the company which had participated in the proceedings before the Board of Appeal, but by another company, which had in the meantime become the owner of one of the earlier marks which served as a basis for the opposition and which is concerned by the dispute before the Court.
9 Accordingly, the lodging of the response confers upon Teddy the status of intervener before the Court in accordance with Article 134(1) of the Rules of Procedure only if the application for substitution of the intervener, implied by that response, is granted.
10 In that regard, it should be borne in mind that, where an intellectual property right at issue in a dispute is transferred, the new owner of that right, claiming through the party before the Board of Appeal, may be authorised by order to substitute itself for the transferor in the proceedings before the General Court, where the former owner of the right has no objection and the Court, having heard the other parties to the action, considers it appropriate (see order of the General Court of 19 June 2009 in Case T‑361/08 Peek & Cloppenburg and van Graaf v OHIM – Queen Sirikit Institute of Sericulture (Thai Silk), not published in the ECR, paragraph 8 and the case-law cited).
11 Moreover, in the absence of any provisions in the Statute of the Court of Justice or the Rules of Procedure expressly governing the substitution of one party for another, the procedural provisions laid down in Articles 115 and 116 of the Rules of Procedure should be applied by analogy. In particular, the party claiming through the previous litigant must accept the dispute in the state in which it is at the time of the substitution (order in Thai Silk, paragraph 9).
12 In the present case, by letter from the Registrar of the General Court of 13 April 2012, Gitana, OHIM and Rosenruist were informed of the fact that, in the view of the Court, the response of 22 February 2012 submitted by Teddy contained an implied application for substitution of the intervener and they were asked to submit their observations in that regard by 4 May 2012.
13 OHIM confirmed the transfer of the earlier Community trade mark and indicated its agreement to the proposed substitution of the intervener by letter lodged at the Court Registry on 27 April 2012. Neither Gitana nor Rosenruist has submitted any observations in that connection.
14 In those circumstances, Teddy should be allowed to substitute itself for Rosenruist as intervener in the present case, pursuant to Article 134(1) of the Rules of Procedure, consequent upon the lodging of the response of 22 February 2012.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby orders:
1. Teddy SpA is permitted to substitute itself for Rosenruist – Gestão e serviços, Lda as intervener.
2. The costs are reserved.
Luxembourg, 7 June 2012.