ORDER OF THE GENERAL COURT (Ninth Chamber)
21 April 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark real — Earlier national figurative marks Real and Real mark — Rejection of the opposition — Rule 19(1) of Regulation (EC) No 2868/95 — Rule 20(1) of Regulation No 2868/95)
In Case T‑580/13,
Real Express SRL, established in Bucharest (Romania), represented by C. Anitoae, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs), represented by M. Rajh and J. Crespo Carrillo, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
MIP Metro Group Intellectual Property GmbH & Co. KG, established in Düsseldorf (Germany), represented by J.-C. Plate and R. Kaase, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 16 September 2013 (Case R 1519/2012-4) concerning opposition proceedings between Real Express SRL and MIP Metro Group Intellectual Property GmbH & Co. KG,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis, President, O. Czúcz and A. Popescu (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 4 November 2013,
having regard to the response of OHIM lodged at the Court Registry on 18 February 2014,
having regard to the response of the intervener lodged at the Court Registry on 17 February 2014,
having regard to the decision of 7 April 2014 not to allow the lodging of a reply,
makes the following
Order
Background to the dispute
1 On 26 October 2010, the intervener, MIP Metro Group Intellectual Property GmbH & Co. KG (‘MIP’), 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 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 The trade mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods and services in respect of which registration was sought are in, inter alia, Classes 3 and 35 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 those classes, to the following description:
– Class 3: ‘Washing preparations and laundry bleach; furbishing, polishing, degreasing and grinding preparations; soaps; scouring antistatic preparations for household purposes, polish for furniture and flooring, detergents other than for use in manufacturing operations and for medical purposes, scale removing preparations for household purposes, shining preparations (polish), lacquer removing preparations, leather preservatives (polishes), windscreen cleaning liquids, cleaning preparations, rust removing preparations, washing up liquid, cleaning preparations for cars, cleaning sprays mainly for use in dashboards and plastic surfaces, lacquer cleaning agent, car wax, car shampoo, car polishing preparations, toilet cleaning preparations’;
– Class 35: ‘Advertising; procurement services for others (purchasing goods and services for other businesses); professional business consultancy; compilation of various goods (except the transport thereof) for third parties, in order to make viewing and purchasing of the goods easier for the users; cleaning and washing products, namely chemical preparations for industrial purposes (chemical), laundry and bleach preparations, furbishing, polishing and degreasing preparations and abrasives, soaps (toiletries), detergents other than for use in manufacturing operations and for medical purposes, cleaning preparations, towel dispensers, machines and apparatus for cleaning, vacuum cleaners; towels of paper, handkerchiefs of paper, toilet paper; sponges, cleaning utensils, toilet brushes, gloves for household purposes, cleaning instruments, hand-operated, rags (cloth) for cleaning, carpet sweepers, toilet paper holders, toilet sponges’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 69/2011 of 8 April 2011.
5 On 24 June 2011, the applicant, Real Express SRL, pursuant to Article 41 of Regulation No 207/2009, filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6 The opposition was based on the following earlier marks:
– the figurative mark registered in Romania under No 38089 represented below:
– the figurative mark registered in Romania under No 80065 represented below:
7 The earlier marks designate, amongst others, the following goods and services:
– so far as the mark registered under No 38089 is concerned, the goods and services in Classes 3 and 35 and corresponding, for each of those classes, to the following description:
– Class 3: ‘Bleaching products and other washing chemicals, cleaning products, degreasing soaps, dish-washing and universal detergents’;
– Class 35: ‘Marketing, import, export, publicity and advertising’;
– so far as the mark registered under No 80065 is concerned, the goods in Class 3 corresponding to the following description: ‘Cleaning products (detergents)’.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
9 On 27 June 2011, Real Express sent OHIM a file in support of its opposition.
10 As regards the earlier mark registered under No 38089, it submitted, inter alia, the following documents together with English translations thereof:
– a copy of the registration certificate issued by the Oficiul de Stat pentru Invenţii şi Mărci (OSIM, State Office for Inventions and Trademarks) stating that the earlier mark had been filed in the name of SC Unimark Export Import SRL;
– a copy of OSIM’s decision No 561678 of 13 January 2009 approving the assignment of the earlier mark registered under No 38089 to SC Unibrand SRL;
– a copy of a letter that Real Express claimed to have sent to OSIM on 21 June 2011 informing it that the company Unibrand SRL had changed its name and had become Real Express SRL and requesting that OSIM amend its database accordingly in respect of the earlier marks.
11 As regards the earlier mark registered under No 80065, Real Express submitted, inter alia, the following documents together with English translations thereof:
– a copy of the registration certificate issued by OSIM stating that the earlier mark registered under No 80065 had been filed in the name of SC Unibrand;
– the abovementioned letter of 21 June 2011.
12 By a communication of 14 July 2011 addressed to SC Unibrand and received by Real Express, OHIM stated that the opposition had been found to be admissible. OHIM also stated, in accordance with Rule 19(2) 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), that it had set the time-limit for substantiating the earlier rights on which the opposition was based at 26 November 2011. The explanatory note attached to that communication stated that the registration certificate or any equivalent official document had to show all the formal and substantive particulars relating to the earlier registration and, in particular, the applicant’s ownership. That note also stated that OHIM would not inform the opponent whether evidence was missing and that the opposition would be rejected without any examination of its merits should the evidence not be filed within the prescribed period.
13 Following that communication, no documents designed to establish the existence of the earlier marks — other than those mentioned in paragraphs 10 and 11 above — were submitted before the expiry of the prescribed period.
14 By a communication of 2 December 2011 addressed to SC Unibrand and received by Real Express, OHIM stated that, in accordance with Rule 19(1) of Regulation No 2868/95, the opposition file had been forwarded to MIP.
15 On 13 February 2012, MIP submitted its observations in which, inter alia, it observed that an opponent had to be the proprietor of the earlier right and that, in the present case, the notice of opposition had been filed in the name of Real Express whereas the proprietor of the earlier marks was SC Unibrand. It added that, since Real Express had not adduced evidence of a transfer or a change of company name, the opposition had to be rejected as unfounded. Furthermore, MIP requested that Real Express furnish proof of use of the earlier marks.
16 On 22 February 2012, Real Express received a notification addressed to SC Unibrand, pursuant to Article 42(1) to (3) of Regulation No 207/2009, Rule 20(4), Rule 22 and Rule 79(a) of Regulation No 2868/95, requesting it to submit proof of use of the earlier marks.
17 By a notification of 27 March 2012 pursuant to Rule 20(7) and Rule 21(2) of Regulation No 2868/95, addressed to SC Unibrand and received by Real Express, OHIM stated that the opposition proceedings were suspended.
18 By a notification of 23 April 2012 pursuant to Rule 20(1) of Regulation No 2868/95, addressed to SC Unibrand and received by Real Express, OHIM stated that the opposition would be rejected since the existence of the earlier rights relied on in support of the opposition had not been proved.
19 By a notification of 20 June 2012 addressed to Real Express, OHIM forwarded the decision of the Opposition Division of the same date rejecting the opposition in its entirety (‘the decision of the Opposition Division’). As regards the earlier marks, the reason given by the Opposition Division for its decision was that the evidence produced by Real Express was not sufficient to prove the existence of the marks, since Real Express had not produced any evidence from the administration that had registered the marks, namely OSIM, or from any other official source, confirming either that the changes of name of the proprietor of the marks had in fact been registered or that OSIM had found the requests for a change of name in respect of the proprietor of the marks to be admissible. The Opposition Division concluded that, in accordance with Rule 20(1) of Regulation No 2868/95, read in conjunction with Rule 19 of that regulation, the opposition had to be rejected as unfounded, since the applicant had not submitted evidence to show that it was entitled to file the opposition.
20 On 16 July 2012, the President of OHIM received a fax from OSIM (‘the fax of 16 July 2012’) informing it that OSIM was writing to OHIM at the request of the representative of Real Express, and that Real Express, the proprietor of the marks registered under Numbers 38089 and 80065, had requested — on 21 June 2011 — that the name of the proprietor of the marks be changed from SC Unibrand SRL to Real Express SRL. OSIM confirmed, moreover, that the change requested had been entered into the Trademarks Register, that the proprietor of the marks was Real Express as from June 2011 and that, for technical reasons, the change of name had been published belatedly on OSIM’s website.
21 On 15 August 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. In that notice of appeal, the applicant requested, inter alia, that the Board of Appeal annul that decision, remit the case to the Opposition Division for further prosecution, order reimbursement of the appeal fee pursuant to Rule 51(b) of Regulation No 2868/95 and reimbursement of the opposition fee. As regards proof of the existence of the earlier marks on which the opposition was based, the applicant claimed that, in the case of doubt as to the name of the company that had given notice of opposition, OHIM ought to have sent a notification with a view to having the deficiency corrected in order to render the opposition compliant with Rule 15(2)(h)(i) of Regulation No 2868/95. In addition, the applicant referred to the registration certificates issued by OSIM that it had produced before the Opposition Division and that, in its view, confirmed the abovementioned change of name, and to the fax of 16 July 2012.
22 By decision of 16 September 2013 (‘the contested decision’), the Board of Appeal of OHIM dismissed the appeal.
23 The Board of Appeal stated, inter alia, that the evidence submitted within the period prescribed for substantiating the opposition showed that SC Unibrand SRL was the name of the proprietor of the earlier marks, which was not the same as the name of the opponent, namely Real Express SRL. According to the Board of Appeal, the mere request made by Real Express to OSIM for registration of the change of name — the receipt of which had not been confirmed by OSIM within the period prescribed for substantiating the arguments relating to the proprietor of the earlier marks — did not correspond to the required documentation from the administration by which the marks had been registered. The Board of Appeal consequently found that, on the expiry of the period referred to in Rule 19(1) of Regulation No 2868/95, Real Express had failed to provide proof of the existence, validity and scope of protection of the earlier marks, and had failed to provide proof of its entitlement to file the opposition. The Board of Appeal concluded that the Opposition Division had correctly rejected the opposition as unfounded pursuant to Rule 20(1) of Regulation No 2868/95 (paragraph 16 of the contested decision).
24 The Board of Appeal found, furthermore, that the fax of 16 July 2012 had to be disregarded, stating as follows in paragraphs 18 to 20 of its decision:
‘18 This evidence was filed after the expiry of the time-limit specified [by OHIM] to substantiate the opposition and even after the contested decision was rendered. According to the case-law of the European Courts, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of [Regulation No 207/2009]. The possibility to submit facts and evidence after the expiry of the periods specified is therefore conditional upon there being no provision to the contrary. It is only if that condition is met that [OHIM] has the discretion, attributed to it by the Court of Justice when interpreting Article 76(2) [of Regulation No 207/2009], as regards the taking into account of facts and evidence submitted out of time …
19 Such an express provision to the contrary exists in the case at hand, namely Rule[s] 19(4) and 20(1) [of Regulation No 2868/95]. The wording “shall” in these provisions indicates that disregarding evidence which proves the existence, validity and scope of protection of the earlier mark, as well as the opponent’s entitlement to file the opposition which has not been filed within the relevant time-limit, and the rejection of the opposition as unfounded as a consequence of it, is mandatory and not merely an option for [OHIM] and the Board …
20 In addition, reference is made to the very late stage [at] which this evidence has been submitted (almost 8 months after the expiry of the time-limit to substantiate the opposition), the fact that the evidence could have been submitted before (in its letter OSIM confirms the request for the name change dated 21 June 2011 and the ownership of the opponent as from 31 June 2011, the opponent could have requested such a letter or any other pertinent document or confirmation from OSIM before the expiry of the substantiation period) and the fact that a proper reason for not filing the evidence in time was not provided. Acceptance of the relevant evidence would be in clear contradiction with the principle of legal certainty and the principles of sound administration; should parties have an automatic right to file evidence beyond the time-limits and [OHIM] an automatic obligation to take them into account, that would render time-limits, as such, as well as the rules on the extension of time-limits and restitutio in integrum, meaningless.’
Forms of order sought
25 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to reimburse the appeal fee;
– order OHIM and the intervener to pay the costs.
26 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs incurred by OHIM.
27 MIP contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
28 Under Article 111 of the Rules of Procedure of the General Court, where the action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, by reasoned order and without taking further steps in the proceedings, give a decision on the action.
29 In the present case, having regard to the documents before it, the Court has decided, pursuant to that provision, to give a decision on the action by reasoned order without taking further steps in the proceedings, even though one of the parties has requested a hearing (order of 17 July 2012 in L’Oréal v OHIM — United Global Media Group (MyBeauty TV), T‑240/11, EU:T:2012:391, paragraph 10).
30 Under Article 44(1)(c) of the Rules of Procedure, which applies to intellectual property matters in accordance with Article 130(1) and Article 132(1) of those rules, all applications must state the subject-matter of the proceedings and a summary of the pleas in law on which the application is based. The information given must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (see judgment of 27 September 2005 in Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, ECR, EU:T:2005:340, paragraph 26 and the case-law cited). In order to ensure legal certainty and the sound administration of justice, if an action is to be admissible, the essential facts and law on which it is based must be apparent from the text of the application itself, even if only stated briefly, provided the statement is coherent and comprehensible (judgment of 14 May 1998 in Enso Española v Commission, T‑348/94, ECR, EU:T:1998:102, paragraph 143). Although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the lack of essential information in the application itself, even if those documents are attached to the application (see, to that effect, order of 29 November 1993 in Koelman v Commission, T‑56/92, ECR, EU:T:1993:105, paragraph 21).
31 Furthermore, the application must specify the grounds on which the action is based. Therefore, the mere abstract statement of the grounds does not satisfy the requirements of the Rules of Procedure (see judgment of 12 December 2002 in eCopy v OHIM (ECOPY), T‑247/01, ECR, EU:T:2002:319, paragraph 15 and the case-law cited). Lastly, it is for the applicant and its lawyer to set out the factual and legal grounds on which the action is based and not for the Court to do their work by trying to locate and identify, from all of the evidence to which the application makes general reference, the information which may support the claims formulated in the application (see, to that effect, order in Koelman v Commission, cited in paragraph 30 above, EU:T:1993:105, paragraph 23).
32 It is in the light of the foregoing considerations that the present action must be examined.
33 In the present case, under the heading ‘Pleas in Law’, the applicant raises a series of infringements, which concern, in part, essential procedural requirements and, in part, procedural rules.
34 The application contains, under the heading ‘Principal Arguments’, the arguments relied on by the applicant in support of the alleged infringements. The Court finds, however, that — for the most part — those arguments do not satisfy the minimum requirements in Article 44(1)(c) of the Rules of Procedure concerning the conditions for the admissibility of an action, on the ground that they are not sufficiently clear and coherent for the purposes of substantiating those infringements and of assessing whether the allegations are well founded.
35 Most of the applicant’s statements are extremely vague, fail to explain the breach of the principles and provisions relied on in the present case or merely refer to documents submitted before OHIM.
36 In those circumstances, the Court finds that most of the arguments raised by the applicant in support of the alleged infringements must be rejected as manifestly inadmissible on the ground that they lack clarity and coherence and that, consequently, they fail to satisfy the minimum requirements set out in Article 44(1)(c) of the Rules of Procedure.
37 As regards the applicant’s arguments that have been submitted in a form meeting those minimum requirements, the unavoidable conclusion is that they must be rejected as manifestly lacking any foundation in law.
38 That is so, first, in the case of the argument that — contrary to what the Board of Appeal found in paragraph 15 of the contested decision — the documents proving the change of name from SC Unibrand SRL to Real Express SRL were submitted before the expiry of the period for substantiating the opposition. That argument is based on an incorrect reading of paragraph 15 of the contested decision. Contrary to what the applicant claims, the Board of Appeal did not in any way find, in paragraph 15, that the applicant had submitted the documents out of time. It found merely that those documents did not correspond to the required documentation from the administration by which the marks had been registered, on the ground that they did not serve to confirm that the changes of name of the proprietor of the marks had in fact been registered or that OSIM had found the requests for a change of name in respect of the proprietor of the marks to be admissible.
39 Second, the argument, in essence, that OHIM had accepted the evidence of the change of name from SC Unibrand SRL to Real Express SRL, on the ground that it had accepted the opposition fee, must be rejected as being manifestly unfounded. As MIP has observed, the mere fact that OHIM accepted the fee is not, on its own, sufficient for a finding that OHIM accepted that Real Express was the proprietor of the earlier marks. Moreover, there is no basis whatsoever to be found in Regulation No 207/2009 or in Regulation No 2868/95 for such an argument.
40 Third, the arguments that the communication of 2 December 2011 and the notifications of 22 February and 27 March 2012 show that OHIM accepted that the opposition was substantiated by evidence and that the obligation to prove the change of name had been satisfied must be rejected for the same reasons. There is no basis to be found in Regulation No 207/2009 or in Regulation No 2868/95 for such arguments.
41 Fourth, as regards the argument that the proceedings were suspended without the applicant being given the opportunity to make its views known, suffice it to point out, as MIP has done, that OHIM suspended the proceedings, in accordance with Rule 20(7) and Rule 21(2) of Regulation No 2868/95, on account of national proceedings against the opposition marks in Romania. Neither of those rules imposes an obligation on OHIM to hear the parties before suspending the proceedings.
42 Fifth, the argument that the decision of the Opposition Division was given while the proceedings were suspended must also be rejected as manifestly lacking any foundation. Quite apart from the fact that that unsubstantiated claim was not raised before the Board of Appeal, the notification of 23 April 2012, by which Real Express was informed that the opposition would be rejected since it had failed to prove use of the earlier marks relied on in support of its opposition, necessarily implied that the proceedings had been resumed.
43 Sixth, and lastly, as regards the argument, in essence, that OHIM had to take into consideration all the facts, circumstances and evidence, that argument cannot but be rejected as manifestly unfounded. That mere assertion is supposed to establish an infringement of Article 63(2) and Article 64(1) and (2) of Regulation No 207/2009. However, as OHIM correctly states, first, the applicant did have the opportunity to present, before both the Opposition Division and the Board of Appeal, the facts and evidence concerning its entitlement to file the opposition, in accordance with the first provision, and, secondly, it is apparent from paragraphs 15 to 21 of the contested decision that the Board of Appeal did examine the entitlement issue, in accordance with the second provision.
44 For the sake of completeness, the Court points out that, even if that mere assertion ought to have been interpreted as a complaint by the applicant that the Board of Appeal failed to take the fax of 16 July 2012 into account, in disregard of Article 76(2) of Regulation No 207/2009 and Rule 20(1) of Regulation No 2868/95, it would have had to be dismissed for the same reasons as those upheld in the case that gave rise to the judgment of 3 October 2013 in Rintisch v OHIM (C‑120/12 P, ECR, EU:C:2013:638).
45 As was the case in Rintisch v OHIM, cited in paragraph 44 above (EU:C:2013:638), it is true that the Board of Appeal in essence took the view, in paragraphs 18 and 19 of the contested decision, that Rule 20(1) of Regulation No 2868/95 constituted a provision to the contrary for the purposes of Article 76(2) of Regulation No 207/2009 and that, consequently, it had no discretion to take the fax of 16 July 2012 — submitted by the applicant in order to establish ownership of the earlier marks — into account. In so doing, contrary to what OHIM contends for the sake of completeness in its response, the Board of Appeal erred in law. Nevertheless, for the same reasons as those upheld in paragraphs 36 to 41 of the judgment in Rintisch v OHIM, cited in paragraph 44 above (EU:C:2013:638), the Court finds that the grounds set out by the Board of Appeal in paragraph 20 of the contested decision are, in any event, capable of remedying the defect vitiating the contested decision, inasmuch as they permit the inference that the Board of Appeal actually exercised its discretion under Article 76(2) of Regulation No 207/2009, for the purposes of deciding, in a reasoned manner and having regard to all the relevant circumstances, whether it was necessary to take into account the evidence submitted to it late, in order to give its decision.
46 Having regard to all of the foregoing considerations, the action must be dismissed in its entirety as being, in part, manifestly inadmissible and, in part, manifestly lacking any foundation in law, and there is no need to rule on the admissibility of the form of order sought by the applicant that OHIM be ordered to reimburse the appeal fee.
Costs
47 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
48 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 MIP.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby orders:
1. The action is dismissed as being, in part, manifestly inadmissible and, in part, manifestly lacking any foundation in law.
2. Real Express SRL shall pay the costs.
Luxembourg 21 April 2015.
E. Coulon | G. Berardis
Registrar | President |