ORDER OF THE GENERAL COURT (Second Chamber)
19 June 2014 (*)
(Community trade mark – Court procedure – Replacement of one party to the proceedings – Transfer of the rights of the applicant)
In Case T-567/12,
Kaatsu International Co. Ltd, established in Morningside Drive (United States), represented by M. Edenborough, QC,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,
defendant,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 9 October 2012 (Case R 435/2012-2), relating to an application for registration of the word mark KAATSU as a Community trade mark,
THE GENERAL COURT (Second Chamber),
composed of M. E. Martins Ribeiro (Rapporteur), President, S. Gervasoni and L. Madise, Judges,
Registrar: E. Coulon,
makes the following
Order
1 On 5 August 2011, Sato Sports Plaza Co. Ltd, the predecessor of the applicant, Kaatsu International Co. 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) pursuant Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 By decision of 11 January 2012, the examiner rejected the application for registration because the mark applied for was caught by the ground for refusal set out in Article 7(1)(c) and Article 7(2) of Regulation No 207/2009. By decision of 9 October 2012 (‘the contested decision’), the Second Board of Appeal dismissed the appeal.
3 By application lodged at the Registry of the General Court on 21 December 2012, the applicant brought an action against the contested decision. OHIM lodged its response on 15 April 2013. On 3 July 2013, the applicant lodged its reply at the Court Registry.
4 By letter of 7 April 2014, the applicant and Kaatsu Japan Co. Ltd informed the General Court of the assignment to Kaatsu Japan Co. Ltd of the Community trade mark application. They requested that Kaatsu Japan Co. Ltd be authorised to replace Kaatsu International Co. Ltd as the applicant in the present proceedings.
5 The parties to the proceedings were invited to submit observations on the replacement of the applicant.
6 By letter of 12 May 2014, OHIM raised no objections to the said substitution.
7 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.
8 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).
9 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).
10 In the present case, Kaatsu International Co. Ltd, the former owner of the mark at issue and the original applicant in these proceedings, and Kaatsu Japan Co. Ltd, the new owner of the mark at issue following an assignment of rights, have stated that they agree on the replacement. OHIM has not raised any objections. In those circumstances, it is appropriate to allow Kaatsu Japan Co. Ltd to replace Kaatsu International Co. Ltd as the applicant.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby orders:
1) Kaatsu Japan Co. Ltd is admitted as the applicant in place of Kaatsu International Co. Ltd.
2) The costs are reserved.
Luxembourg, 19 June 2014.
E. Coulon | | M. E. Martins Ribeiro |