Case T‑135/14

(publication by extracts)

Kicktipp GmbH

v

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

(Community trade mark — Opposition proceedings — Application for Community word mark kicktipp — Earlier national word mark KICKERS — Rule 19 of Regulation (EC) No 2868/95 — Rule 98(1) of Regulation No 2868/95 — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Summary — Judgment of the General Court (Fifth Chamber), 5 February 2016

1.      Community trade mark — Observations of third parties and opposition — Facts, evidence and observations submitted in support of the opposition — Proof of the existence, validity and scope of the protection of an earlier registered trade mark — Purposive interpretation — Renewal certificate sufficient as proof — Conditions

(Commission Regulation No 2868/95, Art. 1, Rule 19(2)(a)(ii))

2.      Community trade mark — OHIM languages — Obligation to produce a translation in the language of the case within a month of lodging the original document — No need to identify the original document expressly

(Commission Regulation No 2868/95, Art. 1, Rule 98(1))

3.      Community trade mark — Observations of third parties and opposition — Facts, evidence and observations submitted in support of the opposition — Proof of the existence, validity and scope of the protection of an earlier registered trade mark — Proof of renewal of the earlier mark — Scope

(Commission Regulation No 2868/95, Art. 1, Rule 19(2)(a))

1.      According to the first sentence of Rule 19(2) of Regulation No 2868/95, the opposing party must provide ‘proof of the existence, validity and scope of protection of his earlier mark’. The second sentence of Rule 19(2) of Regulation No 2868/95 indicates the evidence which the opposing party must provide ‘in particular’. According to the wording of the first part of Rule 19(2)(a)(ii) of Regulation No 2868/95, an opposing party is required to provide the registration certificate ‘et’ (and), as the case may be, the latest renewal certificate for an earlier registered trade mark which is not a Community trade mark. According to the last part of Rule 19(2)(a)(ii) of Regulation No 2868/95, it is also possible for the opposing party to produce ‘equivalent documents emanating from the administration by which the trade mark was registered’.

It is necessary to interpret that provision as meaning that the possibility of providing an equivalent document does not relate only to the renewal certificate, but to both the registration certificate and the renewal certificate. The requirement to produce the registration certificate is not an end in itself, but is intended to ensure that the Office for Harmonisation in the Internal Market (Trade Marks and Designs) has available to it reliable proof of the existence of the mark on which the opposition is based. It is therefore possible to provide an ‘equivalent’ document which serves just as well as a replacement for the registration certificate as it does for the renewal certificate.

It is also possible that the second item mentioned in Rule 19(2)(a)(ii) of Regulation No 2868/95 (the renewal certificate) may at the same time constitute a document ‘equivalent’ to the first item (the registration certificate). Where the renewal certificate contains all the information necessary to assess the existence, validity and scope of protection of the mark on which the opposition is based, the submission of that document constitutes ‘proof of the existence, validity and scope of protection of his earlier mark’ as referred to in the first sentence of Rule 19(2) of Regulation No 2868/95. It should be borne in mind that, according to a teleological interpretation of Rule 19(2) of Regulation No 2868/95, the content of the document is what counts, together with the fact that it emanates from the competent authority.

It follows from the foregoing that the submission of a renewal certificate is sufficient to establish the existence, validity and scope of protection of the mark on which the opposition is based, if it contains all the information necessary for that purpose.

(see paras 57, 58, 60, 62, 64, 65)

2.      Under Rule 98(1) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark, when a translation of a document is to be filed, the translation is to identify the document to which it refers and reproduce the structure and contents of the original document. However, when the original document and the translation are produced together, there is no need for an explicit reference of that kind in order to identify the document to which the translation refers. Where the translation appears directly after the original document, there is no doubt as regards the original document to which the translation refers.

(see paras 71, 72)

3.      Where the application for renewal has been made in good time but the competent authority has not yet reached a decision regarding that application, it is sufficient to produce a certificate providing evidence of the application, if that certificate emanates from the competent authority and contains all the necessary information relating to the registration of the mark, such as would be included in a registration certificate. As long as the mark on which the opposition is based has not been renewed, it is impossible for the proprietor of the mark to produce a renewal certificate, and he cannot be penalised for the time taken by a competent authority to reach a decision regarding his application. The same idea is also expressed in Rule 19(2)(a)(i) of Regulation No 2868/95, pursuant to which, if the trade mark is not yet registered, it is sufficient to produce a copy of the filing certificate.

By contrast, where the mark on which an opposition is based is registered, it is no longer sufficient under Rule 19(2)(a)(ii) of Regulation No 2868/95 to submit the filing certificate. It is then necessary to produce the registration certificate or an equivalent document. Following that same line of thought, it is not sufficient to produce a certificate providing evidence of an application for renewal where the renewal has taken place.

(see paras 74, 75)