ORDER OF THE GENERAL COURT (Sixth Chamber)
26 May 2011(*)
(Community trade mark – Judicial proceedings – Substitution of a party to the proceedings – Transfer of the rights of the opposing party)
In Case T‑527/10,
Google, Inc., established in Wilmington (United States), represented by M. Kinkeldey and A. Bognár, lawyers,
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 of OHIM having been
Giersch Ventures LLC, established in Los Angeles (United States), represented by S. Eble, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 8 September 2010 (Case R 342/2010‑4) in relation to opposition proceedings between Google, Inc. and Giersch Ventures LLC,
THE GENERAL COURT (Sixth Chamber),
composed of E. Moavero Milanesi (Rapporteur), President, N. Wahl and S. Soldevila Fragoso, Judges,
Registrar: E. Coulon,
makes the following
Order
1 On 13 February 2007, the applicant, Google, Inc., 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 October 2007, Giersch Ventures LLC filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for, on the basis of two earlier German marks.
3 The Opposition Division having upheld the opposition by decision of 11 November 2009, Google lodged an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against that decision.
4 The appeal was dismissed by decision of the Fourth Board of Appeal of 8 September 2010.
5 By application lodged at the Court Registry on 12 November 2010, Google brought an action against the decision of the Board of Appeal.
6 On 17 February 2011, G‑mail GmbH lodged at the Court Registry a document by which it submitted a response to the application initiating proceedings and informed the Court that the earlier marks had been the subject of a series of transfers, as a result of which G-mail had become their owner. It produced as an annex a certificate from the Deutsches Patent- und Markenamt (German Patent and Trade Marks Office) of 8 February 2011 as evidence of some of those transfers.
7 By letter of 23 March 2011, G‑mail produced inter alia another certificate from the Deutsches Patent- und Markenamt, dated 9 March 2011, showing that it had become the owner of the earlier marks, with effect no later than 26 January 2011.
8 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.
9 In the present case, the response of 17 February 2011 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 the earlier marks.
10 Accordingly, the lodging of the response confers upon G‑mail the status of intervener before the Court in accordance with Article 134(1) of the Rules of Procedure only if the implicit application for substitution of the intervener, contained in that response, is granted.
11 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).
12 Moreover, in the absence of any provisions in the Statute of the Court of Justice and 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).
13 In the present case, by letter from the Registrar of the General Court of 7 April 2011, Google, OHIM and Giersch Ventures were informed inter alia of the fact that the Court held that the response of 17 February 2011 contained an implicit application for substitution of the intervener.
14 OHIM indicated its agreement to the substitution of the intervener in question by letter lodged at the Court Registry on 12 April 2011. Neither Google nor Giersch Ventures has submitted any observations in that connection.
15 In those circumstances, G‑mail should be allowed to substitute itself for Giersch Ventures as intervener in the present case, pursuant to Article 134(1) of the Rules of Procedure, consequent upon the lodging of the response of 17 February 2011.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby orders:
1. G‑mail GmbH is permitted to substitute itself for Giersch Ventures LLC as intervener.
2. The costs are reserved.
Luxembourg, 26 May 2011.
E. Coulon | | E. Moavero Milanesi |