ORDER OF THE GENERAL COURT (Third Chamber)
14 March 2013(*)
(Community trade mark – Judicial proceedings – Substitution of a party to the dispute – Transfer of the rights of the applicant for a Community trade mark)
In Case T‑139/12,
Wehmeyer GmbH & Co. KG, established in Aachen (Germany), represented by C. Weil, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Cluett, Peabody & Co. Inc., established in New York (United States of America), represented by V. Baxter and D. Rose, Solicitors,
ACTION brought against the decision of the First Board of Appeal of OHIM of 19 January 2012 (Case R 2509/2010‑1), relating to opposition proceedings between Wehmeyer GmbH & Co. KG and Cluett, Peabody & Co. Inc.,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz, President (Rapporteur), I. Labucka and D. Gratsias, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 28 March 2012,
having regard to the response of OHIM lodged at the Court Registry on 5 July 2012,
having regard to the response of the intervener lodged at the Court Registry on 2 July 2012,
makes the following
Order
1 On 11 September 2007 the applicant, Wehmeyer GmbH & Co. KG, 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 to 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 5 May 2008 the intervener, Cluett, Peabody & Co. Inc., filed a notice of opposition against registration of the trade mark applied for.
3 By decision of 21 October 2010 the Opposition Division refused, in part, the application for registration of the trade mark at issue. On 17 December 2010 the applicant lodged an appeal with OHIM against that decision. By decision of the First Board of Appeal of OHIM of 19 January 2012, the appeal was dismissed.
4 By application lodged at the Court Registry on 28 March 2012, the applicant brought an action against the decision of the First Board of Appeal. The response of OHIM was lodged at the Court Registry on 5 July 2012. The response of the intervener was lodged at the Court Registry on 2 July 2012.
5 By letter lodged at the Court Registry on 4 July 2012, the representative of Wehmeyer GmbH & Co. KG informed the Court of the transfer to Adler Mode GmbH of the trade mark applied for, and requested that Adler Mode GmbH be substituted for Wehmeyer GmbH & Co. KG in the present proceedings. The representative of Wehmeyer GmbH & Co. KG, who also provided proof of authority having been granted by Adler Mode GmbH, attached to his letter of 4 July 2012 a certificate from OHIM of 30 April 2012 confirming that the transfer to Adler Mode GmbH of the trade mark applied for had been entered in the register of Community trade marks.
6 The other parties to the proceedings were invited to submit their observations on the request for substitution.
7 By letter lodged at the Court Registry on 19 September 2012, OHIM stated that it had no objection to Adler Mode GmbH being substituted for Wehmeyer GmbH & Co. KG, since the transfer of the trade mark applied for had been recorded at OHIM.
8 The intervener did not submit observations within the prescribed period.
9 By order of 12 October 2012 the proceedings were stayed until 15 February 2013.
10 It has consistently been held 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 take the place of the transferor in the proceedings before the General Court, where the former owner of the right has no objection and the General 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).
11 Furthermore, in the absence of any provisions in the Statute of the Court of Justice of the European Union and the Rules of Procedure of the General Court expressly governing the substitution of one party for another, the provisions of Articles 115 and 116 of the Rules of Procedure should be applied by analogy. In particular, the party taking the place of another must accept the case as he finds it at the time of substitution (order in Thai Silk, paragraph 9).
12 In the present case, the representative of Wehmeyer GmbH & Co. KG, the former owner of the rights attached to the application for a Community trade mark against which the opposition was filed, informed the General Court of the transfer to Adler Mode GmbH of the trade mark applied for and, as the latter’s representative, requested that Adler Mode GmbH be substituted for Wehmeyer GmbH & Co. KG in these proceedings.
13 OHIM indicated its agreement to the substitution of Adler Mode GmbH for Wehmeyer GmbH & Co. KG by letter lodged at the Court Registry on 19 September 2012.
14 In those circumstances, Adler Mode GmbH should be authorised to take the place of Wehmeyer GmbH & Co. KG as applicant in the present case.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby orders:
1. Adler Mode GmbH is authorised to take the place of Wehmeyer GmbH & Co. KG as applicant.
2. Costs are reserved.
Luxembourg, 14 March 2013.