ORDER OF THE PRESIDENT OF THE SIXTH CHAMBER OF THE GENERAL COURT
10 September 2015(*)
(Community trade mark — Judicial proceedings — Replacement of a party in the proceedings — Transfer of the opponent’s rights)
In Case T‑517/14,
Pelikan Vertriebsgesellschaft mbH & Co. KG, established in Hanover (Germany), represented by A. Nordemann and A. Nordemann-Schiffel, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by P. Geroulakos, acting as Agent, and by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Hachette Filipacchi Presse SA, established in Levallois Perret (France), represented by C. Joly, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 3 April 2014 (Case R 1192/2013-1) relating to opposition proceedings between Herlitz PBS Aktiengesellschaft Papier-, Büro- und Schreibwaren and Hachette Filipacchi Presse SA,
THE PRESIDENT OF THE SIXTH CHAMBER OF THE GENERAL COURT OF THE EUROPEAN UNION
makes the following
Order
1 On 9 March 2011, Herlitz PBS Aktiengesellschaft Papier-, Büro- und Schreibwaren (‘Herlitz’) filed an application for international registration of a word mark designating the European Union (‘the international registration’). That mark was registered on the same day by the World Intellectual Property Organisation (WIPO) under No 1073949. The international registration was published by WIPO on 12 May 2011 and by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on 10 May 2011.
2 On 8 August 2011, Hachette Filipacchi Presse SA (‘Hachette’) filed a notice of opposition to the international registration, pursuant to Article 41 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). That opposition was based on an earlier Community trade mark and an earlier national trade mark and covered all goods designated by the international registration.
3 By decision of 13 May 2013, the Opposition Division upheld the opposition in its entirety.
4 On 25 June 2013, Herlitz filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
5 By decision of 3 April 2014, the First Board of Appeal decided, first, to refuse protection of the international registration for some of the goods covered by it and, secondly, to stay the proceedings in so far as they concern protection of the international registration for the remaining goods covered by it pending the outcome of an application for revocation of the earlier national mark.
6 On 1 March 2014, the applicant, Pelikan Vertriebsgesellschaft mbH & Co. KG, acquired the operational business of Herlitz. In that context, the international registration was transferred to the applicant and the change of proprietor was recorded by WIPO.
7 By application lodged at the Court Registry on 7 July 2014, the applicant brought an action against the decision of the Board of Appeal.
8 By order of 19 December 2014, at the joint request of the applicant and Hachette, the President of the Sixth Chamber of the General Court stayed the proceedings in the present case until 19 March 2015.
9 When the proceedings were resumed, the Registrar of the Court informed Hachette, by letter of 23 March 2015, that the time-limit for lodging a response was 5 June 2015.
10 On 29 May 2015, RMP, a single-member simplified limited company established in Boulogne-Billancourt (France), lodged an application at the Court Registry for replacement of the intervener. In that application, RMP stated that, following a total transfer of ownership, it had become the exclusive owner of the earlier marks. RMP also annexed documents to its application showing that it had been registered as the proprietor of those marks.
11 On 5 June 2015, RMP lodged a response at the Court Registry, which, inter alia, repeated the information set out in paragraph 10 above with regard to the transfer of Hachette’s rights.
12 As provided in Article 134(1) of the Rules of Procedure of the General Court of 2 May 1991, the parties to the proceedings before the Board of Appeal other than the applicant may participate, as interveners, in the proceedings before the General Court by responding to the application in the manner and within the period prescribed.
13 Moreover, as provided in Article 176(3) of the Rules of Procedure of the General Court, which entered into force on 1 July 2015, the decision on the application for replacement is to take the form of a reasoned order of the President or be included in the decision closing the proceedings.
14 In the present case, RMP is not the other party to the proceedings before the Board of Appeal but a company which subsequently became the proprietor of the earlier marks.
15 Accordingly, the lodging of a response confers on RMP the status of intervener before the Court, in accordance with Article 134(1) of the Rules of Procedure of 2 May 1991, only if the application for replacement of the intervener submitted on 29 May 2015 and referred to in the pleading in question is granted.
16 In that respect, it must be noted that, where an intellectual property right affected by the proceedings has been transferred, the new proprietor of that right, claiming through the party before the Board of Appeal, may be authorised by order to replace the transferor in the proceedings before the Court, where the former proprietor of the right has no objection and the Court, having heard the other parties to the action, considers it appropriate (see order of 19 June 2009 in Peek & Cloppenburg and van Graaf v OHIM — Queen Sirikit Institute of Sericulture (Thai Silk), T‑361/08, EU:T:2009:545, paragraph 8 and the case-law cited; see also, from the entry into force of the Rules of Procedure on 1 July 2015, Articles 174 to176 of those Rules).
17 Furthermore, the successor to the party who is replaced must accept the case as he finds it at the time of that replacement (order in Thai Silk, cited in paragraph 16 above, EU:T:2009:545, paragraph 9; see also, from the entry into force of the Rules of Procedure on 1 July 2015, Article 176(5) of those Rules).
18 In the present case, by letter of 16 June 2015, the Registrar of the Court informed the applicant, OHIM and Hachette that the Court considered that RMP had made an application for replacement of the intervener.
19 In its reply, lodged at the Court Registry on 19 June 2015, OHIM stated that it had no objection to the replacement and confirmed that RMP was registered as the new proprietor of the earlier Community trade mark. The applicant and Hachette did not lodge any observations within the time limit prescribed.
20 In those circumstances, RMP must be authorised to replace Hachette as intervener in the present proceedings in accordance with Article 134(1) of the Rules of Procedure of 2 May 1991.
On those grounds,
THE PRESIDENT OF THE SIXTH CHAMBER OF THE GENERAL COURT
hereby orders:
1. RMP is authorised to replace Hachette Filipacchi Presse SA as intervener.
2. Costs are reserved.
Luxembourg, 10 September 2015.
E. Coulon | S. Frimodt Nielsen
Registrar | President |