ORDER OF THE GENERAL COURT (Eight Chamber)
30 June 2014 (*)
(Community trade mark – Court procedure – Replacement of one party to the proceedings – Transfer of the rights of the applicant)
In Case T-10/09 RENV,
Formula One Licensing BV, established in Rotterdam (Netherlands), represented by B. Klingberg and K. Sandberg, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal (OHIM), intervener before the General Court, being
Global Sports Media Ltd, established in Hamilton (Bermuda), represented by T. de Haan, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 16 October 2008 (Case R 7/2008‑1), concerning opposition proceedings between Racing-Live SAS and Formula One Licensing BV,
THE GENERAL COURT (Eight Chamber),
composed of M. D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: E. Coulon,
makes the following
Order
1 On 13 April 2004, Racing-Live SAS, subsequently replaced by Global Sports Media Ltd as proprietor of the mark in respect of which registration is sought and the predecessor of the intervener, ESPN Sports Media Ltd, filed an application for registration of 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 (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 2 May 2005, the applicant filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for, alleging a likelihood of confusion within the meaning of Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009).
3 By decision of 17 October 2007, the Opposition Division of OHIM rejected the application for a Community trademark. It found that the goods and services designated by the two marks were similar or identical, and that the signs at issue were similar to a medium degree, with the consequence that there was a likelihood of confusion between those marks within the meaning of Article 8(1)(b) of Regulation No 40/94. By decision of 16 October 2008 (‘the contested decision’), the First Board of Appeal annulled the Opposition Division’s decision.
4 By application lodged at the Registry of the General Court on 14 January 2009, the applicant brought an action against the contested decision, based on pleas in law alleging infringements of Article 8(1)(b) and 8(5) of Regulation No 40/94.
5 The parties presented oral argument and replied to the questions put by the Court at the hearing on 10 June 2010.
6 By judgment of 17 February 2011 in Formula One Licensing BV v OHIM — Global Sports Media Ltd, the Court dismissed the action and ordered the applicant to pay the costs.
7 By notice of appeal filed at the Registry of the Court of Justice on 29 April 2011, the applicant brought an appeal under Article 56 of the Statute of the Court of Justice against the judgment of the General Court, by which it asked the Court of Justice to annul that judgment.
8 By judgment of 24 May 2012 in Case C-196/11 P Formula One Licensing BV v OHIM — Global Sports Media Ltd, the Court of Justice annulled the judgment of the General Court and referred the case back to the General Court in order for it to rule anew on the application which had been brought before it by the applicant.
9 Following the judgment on appeal, and in accordance with Article 118(1) of the Rules of Procedure, the case was assigned to the Sixth Chamber. Subsequently, following a change in the composition of the Chambers of the Court, the Judge-Rapporteur was allocated to the Eighth Chamber, to which the present case was, consequently, assigned.
10 The parties were invited to submit their observations in accordance with Article 119(1) of the Rules of Procedure. The applicant and OHIM submitted their observations within the periods laid down.
11 By letter of 11 June 2014, ESPN Sports Media Ltd informed the General Court that it was the new proprietor of the Community trade mark application, that Global Sports Media Ltd has been dissolved and asked for replacement.
12 The parties to the proceedings were invited to submit observations on the replacement of the intervener.
13 By letter of 17 June 2014, OHIM raised no objections to the said replacement.
14 Under Article 65(4) of Council Regulation (EC) No 207/2009, an action under Article 65 thereof is to be open to any party before the Board of Appeal adversely affected by its decision.
15 Neither the Statute of the Court of Justice nor the Rules of Procedure of the General Court 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 General Court (order in Case T-94/02 Hugo Boss v OHIM – Delta Biomichania Pagatou (BOSS) [2004] ECR II-813, paragraph 15).
16 The General Court 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 General Court. 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 General Court under the condition that all parties to the proceedings have been heard (order in BOSS, paragraphs 20, 24, 25 and 27).
17 In the present case, Global Sports Media Ltd, the former owner of the mark at issue in these proceedings, was dissolved on 24 June 2013 and ESPN Sports Media Ltd is the new owner of the mark at issue following an assignment of rights. OHIM has not raised any objections. In those circumstances, it is appropriate to allow ESPN Sports Media Ltd to replace Global Sports Media Ltd as the intervener.
On those grounds,
THE GENERAL COURT (Eight Chamber)
hereby orders:
1) ESPN Sports Media Ltd is admitted as intervener in place of Global Sports Media Ltd.
2) The costs are reserved.
Luxembourg, 30 June 2014.