ORDER OF THE GENERAL COURT (Ninth Chamber)
23 October 2013 (*)
(Community trade mark – Judicial proceedings – Substitution of a party to the action – Transfer of the rights of the applicant for a Community trade mark)
In Case T‑186/12,
Verus Eood, established in Sofia (Bulgaria), represented initially by S. Vykydal, and subsequently by F. Henkel, 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 of OHIM, intervener before the General Court, being
Maquet SAS, established in Ardon (France), represented by N. Hebeis, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 13 February 2012 (Case R 67/2011-4), concerning opposition proceedings between Verus Eood and Maquet SAS,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis, President, O. Czúcz (Rapporteur) and A. Popescu, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 26 April 2012,
having regard to the response of OHIM lodged at the Court Registry on 12 September 2012,
having regard to the response of the intervener lodged at the Court Registry on 7 August 2012,
having regard to the reply of the applicant lodged at the Court Registry on 22 January 2013,
having regard to the rejoinder of the intervener lodged at the Court Registry on 14 May 2013,
makes the following
Order
1 On 29 July 2009, the intervener in the present proceedings – Maquet SAS (‘Maquet’) – 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 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 On 12 November 2009, Capella Eood filed a notice of opposition against registration of the mark applied for. The opposition was based on Community registration No 8 554 974 of the mark LUCEO.
3 By decision of 8 November 2010, the Opposition Division found that there was a likelihood of confusion and upheld the opposition in its entirety.
4 On 4 January 2011, Maquet filed a notice of appeal at OHIM against that decision. By decision of 13 February 2012, the Fourth Board of Appeal of OHIM upheld the appeal.
5 On 6 September 2011, the applicant in the present proceedings – Verus Eood – was entered in the register of Community trade marks as the new proprietor of the right on which the opposition was based (‘the right at issue’).
6 By application lodged at the Court Registry on 26 April 2012, Verus brought an action against the decision of the Fourth Board of Appeal.
7 On 27 August 2012, Copernicus Trademarks Ltd was entered in the register of Community trade marks as the new proprietor of the right at issue.
8 The responses of OHIM and Maquet were lodged at the Court Registry on 12 September and 7 August 2012 respectively. Verus’s reply was lodged at the Court Registry on 22 January 2013. Maquet’s rejoinder was lodged at the Court Registry on 14 May 2013. In the rejoinder, Maquet challenged Verus’s interest in bringing proceedings on grounds of the transfer of the right at issue to Copernicus Trademarks.
9 By letter lodged at the Court Registry on 21 June 2013, Verus’s representative applied for Copernicus Trademarks to be substituted for Verus in the present proceedings. Verus’s representative also produced proof that it was authorised to act for Copernicus Trademarks.
10 The other parties to the proceedings were invited to submit their observations on the application for substitution.
11 By letters lodged at the Court Registry on 20 August 2013, OHIM stated that it had no objection to Copernicus Trademarks being substituted for Verus and Maquet indicated that it did not wish to submit observations. By letter of 30 August 2013, Verus informed the Court that it had no objection to its replacement in the present proceedings by Copernicus Trademarks.
12 It is settled case-law that, where an intellectual property right at issue in the dispute is transferred, the new proprietor 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 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 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).
13 Moreover, in the absence of any provisions in the Statute of the Court of Justice of the European Union or the Rules of Procedure of the General Court expressly governing the substitution of one party for another, Articles 115 and 116 of the Rules of Procedure fall to 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).
14 In the present case, the representative of Copernicus Trademarks, the new proprietor of the right at issue, applied for Copernicus Trademarks to be substituted for Verus, the applicant in the present proceedings. The representative of Verus, the former proprietor of the right at issue, stated that Verus agreed to being replaced by Copernicus Trademarks.
15 OHIM agreed with Copernicus Trademarks being substituted for Verus.
16 In those circumstances, Copernicus Trademarks should be authorised to substitute itself for Verus as applicant in the present proceedings.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby orders:
1. Copernicus Trademarks Ltd is authorised to substitute itself for Verus Eood as applicant.
2. Costs are reserved.
Luxembourg, 23 October 2013.
E. Coulon | G. Berardis
Registrar | President |