ORDER OF THE COURT OF FIRST INSTANCE (Sixth Chamber)
30 March 2009 (*)
(Community trade mark – Court procedure – Replacement of one party to the proceedings – Transfer of the rights of the opponent)
In Case T-63/07,
Mülhens GmbH & Co. KG, established in Cologne (Germany), represented by D. Eickemeier, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal having been,
Exportaciones Aceiteras Fedeoliva, A.I.E., established in Jaen (Spain),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 18 December 2006 (Case R 761/2006-2), relating to opposition proceedings between Mülhens GmbH & Co. KG and Exportaciones Aceiteras Fedeoliva, A.I.E.,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Sixth Chamber),
composed of A.W.H. Meij (Rapporteur), President, V. Vadapalas and T. Tchipev, Judges,
Registrar: E. Coulon,
makes the following
Order
1 On 29 October 2003, Exportaciones Aceiteras Fedeoliva, A.I.E., filed an application for a Community trade mark at 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.
2 On 7 January 2005, the applicant gave notice of opposition under Article 42 of Regulation No 40/94 to registration of the trade mark applied for. The opposition was rejected by decision of OHIM’s Opposition Division of 10 April 2006 and the appeal against that decision was also dismissed by decision of the Second Board of Appeal of OHIM on 18 December 2006.
3 By application lodged at the Registry of the Court of First Instance on 1 March 2007, the applicant brought an action against the decision of the Board of Appeal.
4 OHIM lodged its response on 20 June 2007. Exportaciones Aceiteras Fedeoliva, A.I.E., has not lodged a response.
5 By letter of 19 January 2009, the applicant and Maurer + Wirtz GmbH & Co. KG (Maurer + Wirtz) informed the Court of the assignment to Maurer + Wirtz of earlier trade mark rights on which the opposition before OHIM was based. They requested that Maurer + Wirtz be authorised to replace Mühlens GmbH & Co. KG (Mühlens) as the applicant in the present proceedings.
6 The parties to the proceedings were invited to submit observations on the replacement of the applicant.
7 By letter of 18 February 2009, OHIM stated that it had no objections to that replacement.
8 Exportaciones Aceiteras Fedeoliva, A.I.E., did not lodge any observations.
9 Under Article 63(4) of Regulation (EC) No 40/94, an action under Article 63 thereof is to be open to any party before the Board of Appeal adversely affected by its decision.
10 Neither the Statute of the Court of Justice nor the Rules of Procedure of the Court of First Instance contain any provisions expressly governing the situation in which a party to the proceedings before the Board of Appeal transfers the intellectual property right affected by the proceedings after the decision of the Board of Appeal. In particular, there is no provision for the possibility, for the new owner of the right, to replace the transferor for the purposes of the proceedings before the Court of First of Instance (order in Case T-94/02 Hugo Boss v OHIM – Delta Biomichania Pagatou (BOSS) [2004] ECR II-813, paragraph 15).
11 The Court of First Instance has nevertheless accepted that the person claiming under the former owner, a party before the Board of Appeal, may replace that party for the purposes of the proceedings before the Court of First Instance. Such replacement, according to the Court, does not occur automatically as a result of the registration with a competent authority of the individual transfer of an intellectual property right at issue but needs to be allowed by an order of the Court of First Instance under the condition that all parties to the proceedings have been heard (order in BOSS, paragraphs 20, 24, 25 and 27).
12 In the present case, Mühlens, the former owner of the trade marks relied on in opposition and the original applicant in these proceedings, and Maurer + Wirtz, the new owner of the trade marks relied on in opposition following an assignment of rights, have stated that they agree on the replacement. OHIM has not raised any objections. Exportaciones Aceiteras Fedeoliva, A.I.E., has not submitted any observations within the prescribed period. In those circumstances, it is appropriate to allow Maurer + Wirtz to replace Mühlens as the applicant.
On those grounds,
THE COURT OF FIRST INSTANCE (Sixth Chamber)
hereby orders:
1. Maurer + Wirtz GmbH & Co. KG is admitted as the applicant in place of Mülhens GmbH & Co. KG.
2. The costs are reserved.
Luxembourg, 30 March 2009.