JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber)
15 May 2007 (*)
(Community trade mark – Opposition proceedings – Opposition period – Transmission by telecopier – Admissibility – Clear indentification of the earlier trade mark – Rule 18(1) of Regulation (EC) No 2868/95)
In Joined Cases T‑239/05, T‑240/05, T‑245/05 to T‑247/05, T‑255/05, T‑274/05 to T‑280/05,
The Black & Decker Corporation, established in Towson, Maryland (United States), represented by H. Carr QC, and P. Harris, Solicitor,
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 Court of First Instance, being
Atlas Copco AB, established in Stockholm (Sweden), represented by R. Meade, Barrister, and M. Gilbert, Solicitor,
THIRTEEN ACTIONS brought against the decisions of the First Board of Appeal of OHIM of 19 April 2005 (R 727/2004-1, R 729/2004-1, R 723/2004-1, R 730/2004-1 and R 724/2004-1), of 27 April 2005 (R 722/2004-1) and of 3 May 2005 (R 788/2004-1, R 789/2004-1, R 790/2004-1, R 791/2004-1, R 792/2004-1, R 793/2004-1 and R 794/2004-1), relating to opposition proceedings between Atlas Copco AB and The Black & Decker Corporation,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),
composed of J. Pirrung, President, N.J. Forwood and S. Papasavvas, Judges,
Registrar: C. Kristensen, Administrator,
further to the hearing on 12 December 2006,
gives the following
Judgment
Legal background
The Regulation on the Community trade mark
1 Article 8(4) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, provides:
‘Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the law of the Member State governing that sign:
(a) rights to that sign were acquired prior to the date of application for registration of the Community trade mark, or the date of the priority claimed for the application for registration of the Community trade mark;
(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.’
2 Under Article 42(1) of Regulation No 40/94:
‘Within a period of three months following the publication of a Community trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:
(a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5);
(b) by the proprietors of trade marks referred to in Article 8(3);
(c) by the proprietors of earlier marks or signs referred to in Article 8(4) and by persons authorised under the relevant national law to exercise these rights.’
The implementing regulation
3 Rule 18 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (‘the implementing regulation’) provides:
‘Rejection of opposition notice as inadmissible
1. If the Office finds that the notice of opposition does not comply with the provisions of Article 42 of the Regulation, or where the notice of opposition does not clearly identify the application against which opposition is entered or the earlier mark or the earlier right on the basis of which the opposition is being entered, the Office shall reject the notice of opposition as inadmissible unless those deficiencies have been remedied before expiry of the opposition period. If the opposition fee has not been paid within the opposition period, the notice of opposition shall be deemed not to have been entered. If the opposition fee has been paid after the expiry of the opposition period, it shall be refunded to the opposing party.
2. If the Office finds that the notice of opposition does not comply with other provisions of the Regulation or of these Rules, it shall inform the opposing party accordingly and shall call upon him to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time limit expires, the Office shall reject the notice of opposition as inadmissible.
3. Any decision to reject a notice of opposition as inadmissible under paragraphs 1 or 2 shall be communicated to the applicant.’
4 Under Rule 79 of the implementing regulation:
‘Communication in writing or by other means
Applications for the registration of a Community trade mark as well as any other application provided for in Regulation [No 40/1994] and all other communications addressed to the Office shall be submitted as follows:
(a) by submitting a signed original of the document in question at the Office, such as by post, personal delivery, or by any other means; annexes to documents submitted need not be signed;
(b) by transmitting a signed original by telecopier in accordance with Rule 80;
(c) by telex or telegram in accordance with Rule 81;
(d) by transmitting the contents of the communication by electronic means in accordance with Rule 82.’
5 Rule 80(1) of the implementing regulation provides as follows:
‘Where an application for registration of a trade mark is submitted to the Office by telecopier and the application contains a reproduction of the mark pursuant to Rule 3(2) which does not satisfy the requirements of that Rule, the required number of original reproductions shall be submitted to the Office in accordance with Rule 79(a). Where the reproductions are received by the Office within a period of one month from the date of the receipt of the telecopy by the Office, the application shall be deemed to have been received by the Office on the date on which the telecopy was received by the Office. Where the reproductions are received by the Office after the expiry of that period and the reproduction is necessary for the obtaining of a filing date, the application shall be deemed to have been received by the Office on the date on which the reproductions were received by the Office.’
6 Rule 80(2) of the implementing regulation provides:
‘Where a communication received by telecopier is incomplete or illegible, or where the Office has reasonable doubts as to the accuracy of the transmission, the Office shall inform the sender accordingly and shall invite him, within a period to be specified by the Office, to retransmit the original by telecopy or to submit the original in accordance with Rule 79(a). Where this request is complied with within the period specified, the date of the receipt of the retransmission or of the original shall be deemed to be the date of the receipt of the original communication, provided that where the deficiency concerns the granting of a filing date for an application to register a trade mark, the provisions on the filing date shall apply. Where the request is not complied with within the period specified, the communication shall be deemed not to have been received.’
Background to the dispute
7 On 28 January (Case T‑276/05), 18 March (Cases T‑240/05, T‑245/05, T‑246/05 and T‑255/05), 9 May 1997 (Cases T‑239/05, T‑247/05, T‑277/05, T‑278/05 and T‑280/05) and 28 June 1999 (Cases T‑274/05, T‑275/05 and T‑279/05), the applicant filed applications under Regulation No 40/94 for the registration of 13 Community marks at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
8 The marks for which registration is sought are the following:
– in Cases T-240/05, T-245/05, T-246/05 and T-255/05: yellow and black figurative marks representing electric power tools;
– in Cases T-239/05 and T-247/05: three-dimensional representations of two yellow and black electric power tools;
– in Cases T-274/05 to T-280/05: a representation of the juxtaposition of the two colours yellow and black.
9 The goods for which the registrations were sought are in class 7 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond for each of the marks applied for to the following description: ‘manually operated portable electric power tools (excluding gardening tools)’.
10 The trade mark applications were published in Community Trade Marks Bulletin No 103/2001 of 3 December 2001 (Cases T-240/05 and T-245/05), No 109/2001 of 24 December 2001 (Cases T-239/05 and T-247/05), No 4/2002 of 14 January 2002 (Cases T-246/05 and T-255/05), and No 29/2003 of 7 April 2003 (Cases T‑274/05 to T-280/05).
11 Atlas Copco AB filed notices of opposition under Article 42(1)(c) of Regulation No 40/94 against the registration of the trade marks applied for.
12 Those oppositions are based on earlier non-registered marks and other signs used in the course of trade (‘the earlier trade marks and signs’), within the meaning of Article 8(4) of Regulation No 40/94, of which the intervener was the proprietor.
13 The notices of opposition were transmitted by telecopier (‘fax’) to OHIM. The faxes were received on 4 March (Cases T-240/05 and T-245/05), 25 March (Cases T-239/05 and T-247/05), 15 April 2002 (Cases T-246/05 and T-255/05) and 7 July 2003 (Cases T-274/05 to T-280/05).
14 The originals of the notices of opposition were sent by mail and received on 6 March (Cases T-240/05 and T-245/05), 27 March (Cases T-239/05 and T-247/05), 19 April 2002 (Cases T-246/05 and T-255/05) and 10 July 2003 (Cases T-274/05 to T-280/05).
15 The opposition period expired on 4 March (Cases T-240/05 and T-245/05), 25 March (Cases T-239/05 and T-247/05), 15 April 2002 (Cases T-246/05 and T-255/05), and 7 July 2003 (Cases T-274/05 to T-280/05).
16 The OHIM notice of opposition form used for the purpose of the various opposition proceedings contains, inter alia, a section relating to the representation of the earlier trade marks and signs on which the opposition is based. Thus, field 78 of the notice of opposition form, under the heading ‘Earlier non-registered mark’, states: ‘Indicate word mark; if other type of mark, provide representation on attachment’. Here, the intervener stated in each case: ‘See attachment A’. In the same way, field 82 of the notice of opposition form, under the heading ‘Earlier sign used in the course of trade’, states: ‘Indicate sign; if the sign is not of a word, provide representation on attachment’. Therefore, the intervener also stated: ‘See attachment A’.
17 In fields 80 and 84 of each notice of opposition form, the intervener stated that the opposition was based on electric power tools. In fields 81 and 86, concerning ‘Evidence of protection’, the intervener marked with a cross the box ‘to follow’. In field 83, concerning ‘nature of rights’, the intervener stated: ‘See attachment B’.
18 Each Attachment A to the notice of opposition forms contains colour representations of electric power tools included in the intervener’s catalogues. In each of Cases T-239/05, T-240/05 and T-255/05 Attachment A consists of three pages of colour images depicting electric power tools. The first two pages consist of images of models of various tools. The third page consists of an image of 15 different electric power tools with the logo ‘Atlas Copco’ at the top of the page. The first two pages also contain descriptions of the tools and specifications (including the reference numbers of certain models) in tabular form.
19 In each of Cases T-245/05, T-246/05 and T-247/05, Attachment A consists of six pages of colour images of electric power tools. The first five pages consist of images of models of various tools. The last page consists of an image of 15 different electric power tools with the logo ‘Atlas Copco’ at the top of the page. Some pages also contain descriptions of the tools and specifications (including the reference numbers of certain models) in tabular form.
20 In each of Cases T-274/05 to T-280/05 Attachment A consists of three pages of colour images of electric power tools. The first page is entitled ‘industrial power tools’ and consists of an image of a number of different models of power tools. The second page is entitled ‘dust extraction’ and consists of an image of various models of dust extraction kits and a description of the tools. The last page contains an image of four models of chipping hammers and a description of the tools and specifications (including the reference numbers of certain models) in tabular form.
21 Each Attachment B to the notice of opposition forms contains the following information: ‘Due to the use which it has made of the sign, the opponent has the right to prohibit the use of the opposed Community trade mark in the United Kingdom under the common law tort of passing off and in the other European jurisdictions under national unfair competition law’.
22 The faxed notices of opposition were received by OHIM in black and white on the dates referred to in paragraph 13 above. The originals sent by mail were received by OHIM in colour on the dates referred to in paragraph 14 above.
23 By decisions of 15 June 2004 (No 1963/2004 in Case T-255/05, No 1958/2004 in Case T-247/05, No 1964/2004 in Case T-246/05, No 1962/2004 in Case T-239/05, No 1957/2004 in Case T-240/05, and No 1956/2004 in Case T-245/05) and 6 July 2004 (No 2219/2004 in Case T-274/05, No 2216/2004 in Case T-275/05, No 2214/2004 in Case T-276/05, No 2212/2004 in Case T-277/05, No 2215/2004 in Case T-278/05, No 2218/2004 in Case T-279/05 and No 2217/2004 in Case T-280/05) the Opposition Division of OHIM rejected the oppositions.
24 In substance, in each of the cases the Opposition Division held that the documents lodged by the opponent within the period laid down by Article 42(1)(c) of Regulation No 40/94 were insufficient to clearly identify the earlier marks and signs used in the course of trade on which the opposition was based. The Opposition Division found that the documents filed as Attachment A and intended to identify the representation of the marks and the signs did not provide clear information as to what had to be considered the marks and signs on which the opposition was based. As a result, the Opposition Division decided that the opposition was inadmissible because it did not clearly identify the earlier trade marks and signs on which it was based. In conclusion, the Opposition Division declared that the notices of opposition did not comply with the requirements of Article 42(1)(c) of Regulation No 40/94 and Rule 18(1) of the implementing regulation.
25 On 16 August (in Cases T-239/05, T-240/05, T-245/05 to T-247/05 and T-255/05) and 6 September 2004 (in Cases T-274/05 to T-280/05), the intervener lodged appeals against the respective decisions of the Opposition Division.
26 By decisions of 19 April (in Cases T-239/05, T-240/05, T-245/05 to T-247/05), 27 April (in Case T-255/05) and 3 May 2005 (in Cases T-274/05 to T-280/05), the First Board of Appeal of OHIM set aside the decisions of the Opposition Division and remitted the cases back to it for further prosecution, within the meaning of Article 62(1) of Regulation No 40/94.
27 In substance, the Board of Appeal considered the appeals to be well founded, since the earlier trade marks and signs on which the oppositions were based were well identified in Attachment A. It held that each of the different models of electric power tools depicted in Attachments A ‘was clearly identified since the representations faxed in black and white, confirmed by mail in colour, were perfectly clear and precise’. The Board of Appeal also pointed out that a number of models were identified by their reference number and by their specifications shown in tabular form. Therefore, the Board of Appeal held that the signs were clearly identified for the purpose of Rule 18(1) of the implementing regulation.
Procedure
28 By applications lodged at the Registry of the Court of First Instance on 1 July in Cases T-239/05 and T-240/05, 4 July in Cases T-245/05, T-246/05 and T-247/05, 8 July in Case T-255/05 and 20 July 2005 in Cases T-274/05 to T-280/05, the applicant instituted these proceedings in English.
29 By application lodged at the Registry on 20 July 2005, the applicant brought an action, registered under number T-273/05, against the decision of the First Board of Appeal of OHIM of 3 May 2005 (R 786/2004-1) relating to the 14th opposition proceedings between Atlas Copco and The Black & Decker Corporation.
30 By order of the President of the Second Chamber of the Court of First Instance of 24 November 2005, the 14 cases were joined for the purposes of the hearing and the judgment.
31 OHIM lodged its response at the Registry on 31 January 2006. The intervener lodged its response at the Registry on 31 January 2006.
32 Upon hearing the Report of the Judge-Rapporteur, the Court of First Instance (Second Chamber) decided to open the oral procedure.
33 By way of measures of organisation of procedure under Article 64 of the Rules of Procedure of the Court of First Instance, the Court put a written question to the parties and asked them to reply to it in writing before the hearing. The parties complied with this request within the period prescribed.
34 The parties presented oral argument and answered the questions put to them by the Court at the hearing on 12 December 2006.
35 At the hearing, the President of the Second Chamber of the Court of First Instance ordered Case T-273/05 to be separated from the 13 other cases, on account to the applicant’s intention to withdraw its application in that case.
36 This judgment therefore concerns only the 13 cases T-239/05, T-240/05, T-245/05 to T-247/05, T-255/05 and T-274/05 to T-280/05.
Forms of order sought by the parties
37 The applicant claims that in each of the cases the Court should:
– set aside the contested decision;
– declare the opposition proceedings inadmissible;
– order OHIM to pay the costs.
38 OHIM contends that in each case the Court should:
– reject the application;
– order the applicant to pay the costs.
39 The intervener contends that in each case the Court should:
– uphold the decision of the Board of Appeal;
– declare the opposition admissible and remit the case to the Opposition Division of OHIM for further prosecution in accordance with Article 62(1) of Regulation No 40/94;
– declare that the colour versions of the earlier rights on which the opposition is founded were filed before the expiry of the opposition period;
– order the applicant to pay the costs.
Law
40 The applicant raises, essentially, a single plea alleging infringement of Rule 18(1) of the implementing regulation. By that plea, the applicant claims that the Board of Appeal erred in law, in each of the cases concerned, by declaring admissible notices of opposition which did not identify clearly enough the earlier trade marks and signs on which they were based and which consequently did not meet one of the conditions for admissibility laid down by Rule 18(1) of the implementing regulation.
41 The single plea in the action is subdivided into four grounds of challenge, only two of which are common to all the cases. Those four grounds of challenge are based on four errors of assessment made by the Board of Appeal. By the first ground of challenge, the applicant claims that the Board of Appeal incorrectly based its decisions on the colour images of the opponent’s trade marks, even though those images had been transmitted after the expiry of the opposition period. By the second ground of challenge, the applicant claims that the Board of Appeal erred in holding that the earlier trade marks and signs were clearly identified. By the third ground of challenge, the applicant claims that the Board of Appeal incorrectly based its decisions on the 15 representations of tools, even though the opponent had stated, after the expiry of the opposition period, that only one was relevant. By the fourth ground of challenge, the applicant claims that the earlier trade marks and signs were not sufficiently identifiable because the documents provided were in black and white.
42 At the hearing, the applicant stated that the scope of its third and fourth grounds of challenge was not independent of the first two grounds of challenge and that they should regarded as being subsumed within them.
43 It is appropriate, first of all, to examine the first ground of challenge and then the second, third and fourth grounds of challenge all together.
The first ground of challenge: infringement of Rule 18(1) of the implementing regulation, in that the Board of Appeal took account of the colour images filed after the expiry of the opposition period
Arguments of the parties
44 By the first ground of challenge, which is common to all the cases, the applicant submits that the Board of Appeal committed an error of law in holding that the substitution of the colour images, filed out of time, for the black and white images did not infringe Rule 18(1) of the implementing regulation. According to the applicant, the Board of Appeal accepted that the only images filed before the expiry of the opposition period were the black and white images. It follows, in the applicant’s opinion, that the Board of Appeal erred in basing its decision on the colour images filed after the expiry of that period. The applicant submits that, by using the colour images, the Board of Appeal either accepted that the black and white images did not clearly identify the earlier trade marks and signs, or allowed the intervener an extension of time in order to identify the earlier signs clearly. In both cases, the Board of Appeal infringed Rule 18(1) of the implementing regulation.
45 OHIM contends that the Board of Appeal was correct to have regard to the colour images in Attachment A, even though those documents were received after the expiry of the opposition period.
46 OHIM submits that, in accordance with Rule 79 of the implementing regulation, a communication addressed to OHIM by telecopier has as much legal value as communication of an original by post or by personal delivery. According to OHIM, since colours cannot be transmitted by telecopier, an application is deemed to be received by OHIM on the date on which the fax is received provided the original reproductions are sent promptly. OHIM points out that, otherwise, senders of colour documents would be subject to a more severe regime than the senders of black and white documents.
47 OHIM relies, to that effect, on Rule 80(2) of the implementing regulation (see paragraph 6 above).
48 OHIM observes, first, that the scope of that rule extends to the transmission of colour documents by telecopier, since faxes are not ‘accurate’ within the meaning of that rule.
49 Secondly, OHIM submits that the sender of a faxed document, the accuracy of whose transmission it does not question, cannot be treated more severely than the sender of a faxed document to which OHIM raises objections. Where OHIM does not invite the sender to send the original of the copies in colour, the sender should, according to OHIM, be allowed a reasonable period in order to submit this original.
50 In the present case, OHIM maintains that the intervener took all due care required by the circumstances and promptly filed the originals of the documents, those originals having been received by OHIM less than four days after the expiry of the opposition period.
51 The intervener contends that, on a correct construction of Regulation No 40/94, the colour copies were admissible as part of the notice of opposition.
52 The intervener observes that Rule 80(1) and Rule 3(2) of the implementing regulation provide that, where an application for registration of a trade mark is faxed to OHIM and the reproduction is inadequate for the purpose of publication in the Community Trade Marks Bulletin, the applicant has a period of one month from the date of the receipt of the fax in order to lodge reproductions by post. It would be a curious result, it submits, if the faxing of a notice of opposition were to be treated more severely. The intervener also relies on Rule 80(2) of the implementing regulation to show that notices of opposition are not treated more severely. It submits that the effect of that rule is that when OHIM receives a faxed opposition but technical features of the fax render it unsuitable for its purpose, OHIM is obliged to invite the sender to resubmit the opposition by more suitable means. According to the intervener, therefore, if the Opposition Division did consider the faxed documents to be inadequate, it should have informed the intervener and given it further time.
53 The intervener also relies on Commission Regulation (EC) No 1041/2005 of 29 June 2005 amending the implementing regulation (OJ 2005 L 172, p. 4), which has been in force in part since 25 July 2005. Rule 15(2)(e) of Regulation No 2868/95, as amended, provides that if the earlier mark on which a notice of opposition is based is in colour, the representation is also to be in colour. Rule 17(4) of that regulation, also as amended by Regulation No 1041/2005 provides that, if the notice of opposition does not comply with that requirement, OHIM is to inform the opposing party accordingly and invite him to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time-limit expires, OHIM is to reject the opposition as inadmissible, in accordance with Rule 17(4). The intervener contends that, where there is doubt as to the interpretation of the implementing regulation, it must be read in accordance with the new regulation.
Findings of the Court
54 In the first place, it must be recalled that, according to Article 42(1) of Regulation No 40/94, within a period of three months following the publication of a Community trade mark application, notice of opposition to registration of the trade mark may be given.
55 Furthermore, it is clear from Rule 18(1) of the implementing regulation that an opposition is inadmissible if it is not brought before the expiry of the three-month period prescribed by Article 42(1) of Regulation No 40/94.
56 In this case, it is common ground that the 13 notices of opposition concerned were sent to OHIM by fax and received in black and white before the expiry of the opposition period thus laid down, and that the original colour versions of the notices of opposition were transmitted by post and that they were received by OHIM after the expiry of the opposition period (see paragraph 14 above).
57 The applicant’s argument that the Board of Appeal has infringed Rule 18(1) of the implementing regulation by taking into consideration the original colour versions lodged out of time, must be rejected.
58 Under Rule 80(2) of the implementing regulation, where a communication received by fax is incomplete or illegible, or where OHIM has reasonable doubts as to the accuracy of the transmission, OHIM is to inform the sender accordingly and is to invite him, within a period to be specified by OHIM, to retransmit the original by fax or to submit the original in accordance with Rule 79(a).
59 The Court finds that the scope of that rule extends to communication by fax of colour documents since the versions received by the addressee are printed only in black and white and are, therefore, incomplete within the meaning of that rule.
60 In that connection, it must be observed that the purpose of Rule 80(2) of the implementing regulation is to allow persons sending communications to OHIM by fax to retransmit their documents or to provide the originals to OHIM after the expiry of the opposition period, in one of the situations mentioned by the rules, so that they are able to remedy deficiencies resulting from such situations.
61 That provision specifically governs situations in which OHIM invites the sender to retransmit the documents to it. However, situations in which the sender takes the initiative to retransmit the documents by fax or to provide the originals without waiting for such an invitation are not explicitly covered.
62 It must be held that it would be contrary to the objective pursued by that rule for the sender of a document transmitted by fax which is incomplete and who therefore submits the originals without waiting for the invitation from OHIM, to be treated more severely than the sender of a document by fax who communicates the originals only after an invitation from OHIM.
63 To deprive the sender who acts without OHIM’s invitation of the benefit of Rule 80(2) of the implementing regulation would amount to penalising the latter for his diligence. Such an interpretation of the rule must be regarded as contrary to the intention of the legislature.
64 Therefore, it is appropriate to adopt a less restrictive interpretation of that rule so that at least where a sender is aware that his communication is incomplete and that, therefore, he resends the original by fax or submits the original in accordance with Rule 79(a), promptly and without waiting for an invitation from OHIM within the meaning of Rule 80(2) of the implementing regulation, the date of reception of the second attempt at communication is deemed to be the date of the first communication.
65 In this case, the intervener was aware that its transmissions by fax were in black and white and, therefore, incomplete. Subsequently, it provided the original colour versions by post without waiting for an invitation from OHIM, under Rule 80(2) of the implementing regulation. Those original documents were received by OHIM two days (Cases T-239/05, T-240/05, T-245/05 and T-247/05), three days (T-274/05 to T-280/05) and four days (T-246/05 and T-255/05) after the expiry of the opposition period.
66 Since the documents were received between two and four days after the expiry of the opposition period, it must be held that the intervener acted promptly as regards the second attempt at communication for the purpose of Rule 80(2) of the implementing regulation.
67 It follows from all of the foregoing, that the original versions of the notices of opposition must be deemed to have arrived on the dates they were faxed as set out in paragraph 13 above. Therefore, they are deemed to have been received at OHIM before the expiry of the opposition period and are thus admissible.
68 The applicant’s first ground of challenge must therefore be rejected.
The second, third and fourth grounds of challenge: infringement of Rule 18(1) of the implementing regulation
Arguments of the parties
69 By the second ground of challenge, which is also common to all of the cases, the applicant submits that the Board of Appeal incorrectly considered the earlier trade marks and signs on which the intervener’s opposition was based to be clearly identified. In particular, the Board of Appeal wrongly held that the fact that a number of models were identified by their reference number and also by their specifications, in tabular form, was an aid to the applicant in identifying the earlier rights.
70 The applicant puts forward two arguments in that connection. First, it submits that the specifications appearing in tabular form are irrelevant to the aspects on which the intervener seems to be relying, namely the external appearance of the goods. Second, the Board of Appeal failed to take into account the fact that the goods were depicted in a catalogue belonging to the intervener to which the applicant did not have access. The situation here can thus be distinguished from that in Case T-186/04 Spa Monopole v OHIM – Spaform (SPAFORM) [2005] ECR II-2333, where a representation of the mark could be obtained by an on-line search of the Benelux Trade Marks Register.
71 OHIM states that Rule 18(1) of the implementing regulation must be interpreted as imposing on the opponent the obligation to give a sufficiently clear indication of the earlier mark on which the opposition is based to enable it to be identified, before expiry of the opposition period (SPAFORM, paragraph 70 above, paragraph 47).
72 In the present case, the earlier marks and signs used in the course of trade were set out in Attachment A to the notice of opposition. According to OHIM, the colour images of the electric power tools are sufficiently clear to show with certainty that the intervener relied on rights acquired in respect of complex signs made up of a shape and a combination of colours.
73 According to the intervener, it is clear from the documents relating to the opposition that it based its opposition on the external appearance of the electric power tools depicted in Attachment A. It also clearly identified in Attachment B, in combination with the representations of electric power tools in Attachment A, the earlier rights on which the opposition was based.
74 Lastly, the intervener states that it relies solely on the pages of its catalogues which are included in the notices of opposition.
75 By the third ground of challenge, which concerns only Cases T-239/05, T-240/05, T-245/05 to T-247/05 and T-255/05, the applicant relies on a failure to identify the goods relevant to the opposition, which is revealed by the restriction, after the end of the opposition period, of the number of tools on which the opposition was based. It points out that the last page of Attachment A consists of an image representing 15 electric power tools. However, it was only after the expiry of the opposition period that the intervener mentioned, through the witness statement of Mr F. (one of the intervener’s employees), that only one of the 15 electric power tools represented was relevant for the purpose of the opposition. The applicant infers from that fact that the intervener attempted to clearly identify the earlier trade marks and signs after the date laid down by Rule 18(1) of the implementing regulation. Therefore, those marks and signs were not clearly identified before the expiry of the opposition period. The Board of Appeal itself fell into error when it took into account all 15 images instead of the single image and concluded on that basis that the earlier trade marks and signs were sufficiently clearly identified.
76 OHIM reiterates its line of argument that the goods were correctly identified by the intervener.
77 The fact that the intervener restricted, at a later stage, the earlier rights on which it based its oppositions is irrelevant. It is clear that an opponent can restrict the number of earlier rights on which its opposition is based, although it cannot add new rights.
78 The intervener submits that, under Rule 16 of the implementing regulation, the opponent may submit facts, evidence and arguments in support of the opposition and that, under Rule 16(3), they may be submitted within such period after commencement of the opposition proceedings as OHIM may specify pursuant to Rule 20(2) of the implementing regulation. For each of the six oppositions concerned, OHIM specified a period of four months and the intervener submitted an explanation of grounds for its opposition and a witness statement from its employee Mr F. before that period expired. The intervener submits that the applicant is not entitled to dispute the admissibility of the opposition by relying on evidence and arguments (in this case, Mr F.’s witness statements) validly submitted in the course of the examination of the substance of the opposition, after the admissibility has been determined.
79 Furthermore, since the intervener clearly identified its earlier trade marks and signs in the notice of opposition, it is irrelevant if it then relied on only a subset of those earlier trade marks and signs (quod non).
80 Finally, the Board of Appeal merely described the content of Attachment A as including ‘some 15 different power tools’. On the other hand, there is no indication that the Board of Appeal attached importance to that fact or used it as a basis for its decision.
81 By the fourth ground of challenge, which only concerns Cases T-239/05, T‑240/05, T-245/05 to T-247/05 and T-255/05, the applicant claims that, in any event, the earlier marks could not be sufficiently identified because the documents provided were in black and white. It states that the last page of Attachment A depicted electric power tools whose colours were only revealed (as blue and white, according to the applicant) once the colour images were received after the expiry of the time-limit. It was impossible, according to the applicant, to guess the colours of those tools on the basis of the black and white images. Consequently, the conditions laid down by Rule 18(1) of the implementing regulation and by the Court of First Instance in SPAFORM, cited in paragraph 70 above, were not fulfilled. The Board of Appeal therefore erred in holding the opposition to be admissible.
82 OHIM reiterates its line of argument that the goods were correctly identified by the intervener (paragraphs 71 and 72 above).
83 The intervener contends that, since the colour copies were validly filed, the fourth ground of challenge is based on an incorrect premiss. Even on the assumption that the colour copies were not validly filed, there was still no error committed by the Board of Appeal since the applicant had already seen the colour copies and it was therefore fully aware of the nature of the earlier trade marks on which the intervener based its opposition. Furthermore, that argument was not even considered by the Board of Appeal.
Findings of the Court
84 It must be observed, at the outset, that it follows from Article 42 of Regulation No 40/94, read in conjunction with Rules 16, 17, 18 and 20 of the implementing regulation, that the legislature makes a distinction between, on the one hand, the conditions which the notice of opposition must satisfy, which are laid down as conditions of admissibility of the opposition, and, on the other hand, the submission of the facts, evidence and arguments and of the documents supporting the opposition, which are matters falling within the scope of the examination of the opposition (Case T-232/00 Chef Revival v OHIM – Massagué Marín (Chef) [2002] ECR II‑2749, paragraph 31).
85 Amongst the conditions of admissibility of the opposition, set out in Article 42 of Regulation No 40/94 and in Rule 18 of the implementing regulation are, in particular, the period of three months within which notice of the opposition must be given, the opponent’s interest in initiating the opposition proceedings, and the formal and procedural conditions, the statement of grounds and the minimum information which the notice of opposition must contain (Chef, paragraph 84 above, paragraph 32).
86 In that connection, it must be noted that the clear identification of the earlier mark or sign in the notice of opposition, laid down by Rule 18(1) of the implementing regulation, is a condition of admissibility of the opposition.
87 According to the case-law, Rule 18(1) of the implementing regulation must be interpreted as requiring a sufficiently clear indication of the earlier mark on which the opposition is based to enable it to be identified, before expiry of the opposition period (SPAFORM, paragraph 70 above, paragraph 47).
88 It should also be observed that the aim of Rule 18 of the implementing regulation is that the indication of the earlier mark on which the opposition is based should be sufficiently clear for OHIM and the other party to the proceedings to be able to identify it (SPAFORM, paragraph 70 above, paragraph 44).
89 In each of the cases, it is not disputed that the notice of opposition specifies the countries in which the earlier marks and signs at issue were subject to protection, the goods on which the opposition was based and the nature of the earlier rights. Thus, it was stated in each notice of opposition that the rights were protected in each of the 15 Member States of the European Community, that the oppositions were based on electric power tools and that, as regards the earlier signs alone, the opponent was entitled to prohibit the use of the Community marks, the subject-matter of the opposition, in the United Kingdom on the basis of the common law tort of passing off and, in the other European legal systems on the basis of national law on unfair competition.
90 As regards the identification of the earlier marks and signs on which the intervener based its action, the notice of opposition in each of the cases stated that the earlier marks and signs were depicted in Attachment A. Attachment A in each of the cases consisted of several colour images of various power tools, most of which were in a combination of yellow and black. Certain images were accompanied by a description of the tool and, for the most part, specifications (including reference numbers for certain models) in tabular form.
91 It must be held that it is sufficiently clear from the information contained in the notice of opposition in each of the cases that the oppositions were based on the overall external appearance of the electric power tools specifically identified in Attachment A, the shapes and models of which were varied and the colours of which were mainly a combination of yellow and black, but also combinations of yellow and metallic grey, brown and metallic grey, and blue and metallic grey.
92 As far as the applicant’s argument relating to the reference numbers of the electric power tools is concerned, it must be observed that, in paragraph 17 of each of the decisions of the Board of Appeal, the latter held that ‘each of the different models of electric power tools depicted [was] clearly identified in Attachments A since the representations provided in black and white, which were sent by fax and confirmed by mail in colour, [were] perfectly clear and precise’. It added that ‘[f]urthermore, several models are identified by their reference number and additionally by their specifications which appear in a tabular form’.
93 Therefore, it is apparent from paragraph 17 of each of the Board of Appeal’s decisions and from the use of the expression ‘furthermore’, that the reference to reference numbers and the specifications of the tools constituted an additional factor that the Board of Appeal took into account in concluding that the earlier trade marks and signs were identified sufficiently clearly.
94 It must be held that the reference numbers and the specifications in tabular form serve to specify the electric power tools concerned. By that specification, the intervener indicated which tools were relevant and, therefore, facilitated the identification of the earlier trade marks and signs at issue. Therefore, the applicant’s arguments in that regard must be rejected.
95 As regards the applicant’s argument that the Board of Appeal omitted to take account of the fact that the intervener’s goods in Attachment A were depicted in a catalogue belonging to the intervener to which the applicant did not have access, it must be observed, as the intervener stated in its pleadings, that the notices of opposition must be read as meaning that the intervener relied only on the pages of its catalogues which were included in the notices of opposition. It follows from that that the applicant had access to the depictions relevant to the oppositions. Its arguments in that regard must, therefore, be rejected.
96 As far as the applicant’s arguments in support of the third ground of challenge are concerned, according to which the Board of Appeal failed to take account of the restriction on the number of earlier rights, it is appropriate to make the following remarks.
97 First, as has already been stated in paragraph 84 above, a distinction should be made between the conditions which the notice of opposition must satisfy, laid down as conditions of admissibility of the opposition and the submission of the facts, evidence and arguments and of the documents supporting the opposition, which are matters falling within the scope of the examination of the opposition.
98 Second, the issue of admissibility of the opposition must be determined by reference to the documents filed at the stage of admissibility, since the evidence and arguments put forward at a later stage of the examination of the merits has no effect on the preliminary issue of admissibility. Since the issue of whether the earlier trade marks and signs were clearly identified is part of the admissibility of the opposition, it must therefore be treated separately from questions on the merits.
99 In this case, in the course of its arguments concerning the admissibility of the opposition, the applicant relies on a witness statement submitted by the intervener at the stage of the examination of the merits of the oppositions. Since that statement was not relevant to the issue of admissibility of the oppositions, the applicant’s arguments in that connection must be rejected as unfounded.
100 It follows that the Board of Appeal was correct to take account of all the documents validly submitted at the stage of admissibility, such as the images in Attachment A.
101 As far as the fourth ground of challenge put forward by the applicant is concerned, it must be held that it presupposes that the first ground of challenge is well founded, that is to say that the original colour versions of the oppositions are not admissible. Since the first ground of challenge was rejected as unfounded, the fourth ground of challenge must also be rejected as unfounded.
102 It follows from all of the foregoing that, for the purposes of Rule 18(1) of the implementing regulation as a condition of admissibility for the oppositions, the information contained in the notices of opposition and, in particular, the depiction of electric power tools in colour, accompanied in certain cases by the reference numbers of the models, constitute a sufficiently clear identification of the earlier trade marks and signs on which the oppositions are based.
103 Therefore, the applications must be dismissed.
Costs
104 Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber)
hereby:
1. Dismisses the actions;
2. Orders the applicant to pay the costs.
Delivered in open court in Luxembourg on 15 May 2007.