Case T-137/09

Nike International Ltd

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for Community word mark R10 – Non-registered national word mark R10 – Assignment of the national mark – Procedural defect)

Summary of the Judgment

1.      Community trade mark – Appeals procedure – Appeals before the Community judicature – Condition of admissibility – Grounds of appeal directed only against decisions of the Boards of Appeal

(Council Regulation No 40/94, Art. 63(1))

2.      Community trade mark – Appeals procedure – Appeal brought against a decision of the Opposition Division of the Office – Assignment of the earlier mark after the opposition was filed and before the adoption of the decision by the Office – Examination by the Board of Appeal of the assignee’s locus standi

3.      Community trade mark – Transfer of the intellectual property right – Evidence of the transfer of the earlier national right – Application of Rule 31(6) of Regulation No 2868/95 to the assignment of national trade marks

(Commission Regulation No 2868/95, Art. 1, Rule 31(6))

1.      By virtue of Article 63(1) of Regulation No 40/94 on the Community trade mark, actions may be brought before the Community judicature only against decisions of the Boards of Appeal. Accordingly, it is only pleas directed against the decision of the Board of Appeal itself which are admissible in such an action. Consequently, pleas in law alleging infringement of a regulatory provision by a decision of an Opposition Division must be rejected as inadmissible.

(see para. 13)

2.      Where, following an assignment after an opposition has been filed, the copy of the registration certificate of the trade mark on which the opposition is based mentions as owner a company other than that which brought an action against the decision of an Opposition Division rejecting the opposition, the action is not admissible on the basis of the assumption that the earlier mark was transferred to the applicant. Thus, the Board of Appeal is legally entitled to examine the applicant’s locus standi.

Unlike the situation in which an assignment occurred before the opposition was filed, if the assignment of the trade mark relied on occurred after the opposition was filed and before the adoption of the final decision of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), the Office must ensure that the rights of the party which originally filed the opposition or the trade mark application are protected, since the purpose of admitting the assignee of the trade mark is to conclude, so far as the aforementioned party is concerned, proceedings initiated by that party. Furthermore, the Board of Appeal is required to ensure that the person who brought the appeal has locus standi with regard to the Opposition Division’s decision.

(see para. 17)

3.      In the absence of a legal provision concerning evidence of the transfer of the earlier national right relied on in support of an opposition, the Guidelines of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) – with which the Office is, in principle, required to comply – are based in that respect on the provisions laid down by Rule 31(6) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark. Thus, in ‘Part 1: Procedural Matters’ in ‘Part C: Opposition’, those guidelines provide that if the new owner of the earlier national right ‘informs the Office of the transfer, but does not submit (sufficient) evidence thereof, the opposition proceedings have to be suspended while the new owner is given two months to provide evidence of the transfer’. The application of Rule 31(6) of Regulation No 2868/95 to the assignment of national trade marks cannot be challenged since, where national law makes no provision for a procedure for registration of transfers of ownership of registered marks, the examination carried out by the Opposition Division or the Board of Appeal in order to check that the transfer of the trade mark relied on in support of the opposition actually occurred is, in essence, the same as the examination carried out by the appropriate departments of the Office when examining transfer applications relating to Community trade marks. Furthermore, although that procedure specifically relates to registered national marks, it must be applied by analogy to the transfer of national non-registered marks, since the type of examination to be carried out by the Office is the same.

(see para. 24)