ORDER OF THE COURT OF FIRST INSTANCE (First Chamber)
4 June 2009 (*)
(Community trade mark – Court procedure – Replacement of a party to the proceedings – Transfer of the rights of the applicant)
In Case T-139/08,
Franklin Loufrani, residing in London (United Kingdom), represented by A. Deutsch, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 7 February 2008 (R 958/2007-4) concerning the international registration, designating the European Community, of the figurative mark representing half a smiley smile,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),
composed of: V. Tiili, President, F. Dehousse and I. Wiszniewska-Białecka (Rapporteur), Judges,
Registrar: E. Coulon,
makes the following
Order
1 On 14 April 2006, Mr Franklin Loufrani, the applicant, obtained the international registration, designating inter alia the European Community, of a figurative mark representing half a smiley smile, the mark at issue.
2 On 14 September 2006, the international registration of the mark at issue was notified to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
3 On 1 February 2007, the examiner issued a notification of ex officio provisional refusal of protection in the European Community of the mark at issue. Since there was no reply to that notification within the time limit, by decision of 23 April 2007, the examiner refused protection of the mark at issue in the European Community.
4 On 22 June 2007, the applicant filed a notice of appeal with OHIM against that decision. By decision of 7 February 2008, the Fourth Board of Appeal of OHIM dismissed the appeal (”the contested decision”). By application lodged at the Registry of the Court of First Instance on 11 April 2008, the applicant brought an action against the contested decision. OHIM lodged its response on 31 July 2008.
5 In reply to a question by the Court, The Smiley Company SPRL, by letter of 15 April 2009, informed the Court of the assignment of the mark at issue which occurred between the applicant and The Smiley Company SPRL. It therefore requested that it should replace the applicant in the proceedings before the Court. In answering the same question put by the Court, OHIM, by letter of 8 April 2009, informed the Court that the assignment of the international registration of the mark at issue was notified only to the World Intellectual Property Organisation, which in turn notified OHIM of such transfer through an automatic link. It concluded that it is for the applicant and the new owner to advise the Court as to their intentions with regard to the appeal against the contested decision.
6 The parties to the proceedings were invited to submit observations on the replacement of the applicant.
7 By letter lodged at the Registry of the Court on 30 April 2009, the applicant stated that the transfer of rights had been duly notified to OHIM and that a direct notification by the applicant was further not necessary. It requested that The Smiley Company SPRL replace Mr Franklin Loufrani as the applicant before the Court. OHIM did not submit observations.
8 Under Article 63(4) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994, L 11, p. 1) (which became Article 65(4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009, L 78, p. 1), an action under Article 63 (which became Article 65 of Council Regulation No 207/2009) thereof is to be open to any party to the proceedings before the Board of Appeal adversely affected by its decision.
9 Neither the Statute of the Court of Justice nor the Rules of Procedure of the Court of First Instance 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 Court of First of Instance (order in Case T-94/02 Hugo Boss v OHIM – Delta Biomichania Pagatou (BOSS) [2004] ECR II-813, paragraph 15).
10 The Court of First Instance 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 Court of First Instance. 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 Court of First Instance under the condition that all parties to the proceedings have been heard (order in BOSS, paragraphs 20, 24, 25 and 27).
11 In the present case, Mr Franklin Loufrani, the former owner of the mark at issue and the original applicant in these proceedings, and The Smiley Company SPRL, the new owner of the mark at issue following an assignment of rights, have stated that they agree on the replacement. OHIM informed the Court that it has been indirectly notified of the assignment of the international registration of the mark at issue and that it is for the applicant and the new owner to advise the Court as to their intentions with regard to the appeal against the contested decision. In those circumstances, it is appropriate to allow The Smiley Company SPRL to replace Mr Franklin Loufrani as the applicant.
On those grounds,
THE COURT OF FIRST INSTANCE (First Chamber)
hereby orders:
1. The Smiley Company SPRL is admitted as the applicant in place of Franklin Loufrani.
2. The costs are reserved.
Luxembourg, 4 June 2009.