JUDGMENT OF THE GENERAL COURT (Second Chamber)
8 October 2025 (*)
( EU trade mark – Opposition proceedings – Application for the EU word mark COLORATURA – Earlier national word mark COLORATURA – Priority claim – Concept of ‘first application’ – Article 34(1) and (4) of Regulation (EU) 2017/1001 – Obligation to state reasons – Article 94(1) of Regulation 2017/1001 – Legal certainty – Reasonable time )
In Case T‑562/24,
Capella EOOD, established in Sofia (Bulgaria), represented by A. Auer‑Reinsdorff, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Richemont International SA, established in Villars-sur-Glâne (Switzerland), represented by D. Marschollek, lawyer,
THE GENERAL COURT (Second Chamber),
composed, at the time of the deliberations, of A. Marcoulli (Rapporteur), President, W. Valasidis and L. Spangsberg Grønfeldt, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Capella EOOD, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2024 (Case R 1358/2022- 2) (‘the contested decision’).
Background to the dispute
2 On 28 March 2018, Verus EOOD, a predecessor in law to the applicant, filed an application for registration of an EU trade mark with EUIPO in respect of the word sign COLORATURA, claiming a date of priority of 28 September 2017, in connection with an application for a trade mark filed with the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office, Germany).
3 The mark applied for covered goods, following the restrictions made in the course of the proceedings before EUIPO, in Classes 3 and 14 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.
4 On 5 April 2019, Cartier International AG, the predecessor in law to the intervener, Richemont International SA, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5 The opposition was based on the German word mark COLORATURA, filed on 28 December 2017 and registered on 6 February 2018, for goods and services in Classes 14, 16, 18 and 35.
6 The grounds relied on in support of the opposition were those set out in Article 8(1) and (2) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7 By an interim decision of 25 May 2022, the Opposition Division found that the mark on which the opposition was based had the status of an earlier mark because the priority claim of the mark applied for on 28 September 2017 was not valid.
8 On 26 July 2022, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s interim decision.
9 By the contested decision, the Board of Appeal dismissed the appeal. It found that, given that the applicant filed an application for an identical German trade mark on 21 February 2017, the German trade mark application that it had filed on 28 September 2017 was not a first application within the meaning of Article 34(1) of Regulation 2017/1001. The Board of Appeal added that the applicant could not rely on Article 34(4) of that regulation, which provides that a subsequent application is considered to be a first application under certain conditions, since those conditions were not satisfied. It inferred from that that the applicant could not claim, for the purposes of the registration of the mark applied for, a right of priority from 28 September 2017.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– declare that the priority claim of 28 September 2017 of the mark applied for is valid;
– order EUIPO to pay the costs.
11 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that an oral hearing is convened.
12 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 The applicant relies on five pleas in law, alleging, in essence, first, infringement of primary law in so far as it institutes a system of undistorted competition and the proper functioning of the internal market, second, infringement of the right of priority as provided for by Article 34 of Regulation 2017/1001, third, failure to state reasons for the contested decision, fourth, breach of the principle of good faith and, fifth, infringement of Article 6(1) of the Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950, due to the excessive length of the proceedings before EUIPO and breach of the right to a fair trial.
14 The Court takes the view that it is appropriate to examine, first of all, the third and fifth pleas because they call into question the procedural legality of the contested decision. Next, the Court will examine the first and second pleas together, then the fourth plea.
The third plea in law, alleging failure to state reasons for the contested decision
15 The applicant claims, in essence, that the contested decision is inadequately reasoned because the Board of Appeal failed to state the reasons why it rejected the applicant’s main argument, alleging that the German trade mark application of 21 February 2017 could not be considered to be a first application within the meaning of Article 34(1) of Regulation 2017/1001, since the period of six months to claim a right of priority had expired.
16 EUIPO and the intervener dispute the applicant’s arguments.
17 In that regard, it must be recalled that, in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. According to the case-law, that obligation has the same scope as the obligation laid down in the second paragraph of Article 296 TFEU and its objective is to allow interested parties to know the reasons for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (see judgments of 6 September 2012, Storck v OHIM, C‑96/11 P, not published, EU:C:2012:537, paragraph 86, and of 15 December 2016, Intesa Sanpaolo v EUIPO (START UP INITIATIVE), T‑529/15, EU:T:2016:747, paragraph 14 and the case-law cited).
18 In the present case, it must be noted that, in paragraphs 24 to 26 of the contested decision, the Board of Appeal held, as the Opposition Division had done, that the German trade mark application filed on 28 September 2017 could not be considered to be a first application within the meaning of Article 34(1) of Regulation 2017/1001 because the applicant had filed the same trade mark application in Germany on 21 February 2017 for corresponding goods. It adds that, even if the application of 21 February 2017 were to be regarded as having been withdrawn, it was accorded a filing date and, therefore, it was a ‘valid priority application’.
19 Next, in paragraph 27 of the contested decision, the Board of Appeal rejected the applicant’s argument alleging that, on the day that the German trade mark application was filed, on 28 September 2017, the period of six months for claiming priority in respect of the application filed on 21 February 2017 had expired. The Board of Appeal explained, in paragraph 28 of that decision, that the grant of a right of priority was only for the first application and the period of six months, during which such a right could be claimed, would become ineffective if a new period were to start to run for each subsequent application.
20 Consequently, the applicant is not justified in claiming that the Board of Appeal failed to state the reasons why it rejected the applicant’s main argument.
21 As regards the applicant’s argument that the case-law referred to in paragraph 28 of the contested decision supports the opposite position to that upheld by the Board of Appeal, it concerns the merits of the statement of reasons and not its existence. The fact that a statement of reasons may be incorrect does not mean that there is no statement of reasons (see judgment of 30 September 2016, Alpex Pharma v EUIPO – Astex Pharmaceuticals (ASTEX), T‑355/15, not published, EU:T:2016:591, paragraph 45 and the case-law cited). That argument will therefore be examined in the context of the second plea, to which it relates.
22 It follows that the third plea must be dismissed in so far as it concerns a failure to state reasons for the contested decision.
The fifth plea in law, alleging excessive length of the proceedings
23 The applicant claims that, for reasons attributable to EUIPO, the length of the proceedings brought before it, that is to say more than five years, is unreasonable.
24 EUIPO and the intervener dispute the applicant’s arguments.
25 In that regard, it must be borne in mind that the principle that decisions must be adopted within a reasonable time, set out, as a component of the principle of good administration, in Article 41(1) of the Charter of Fundamental Rights of the European Union is mandatory in any administrative proceedings of the European Union, inter alia in proceedings before the various adjudicating bodies of EUIPO, including the Boards of Appeal (judgments of 13 July 2005, Sunrider v OHIM (TOP), T‑242/02, EU:T:2005:284, paragraphs 51 and 52, and of 17 January 2024, Athlet v EUIPO – Heuver Banden Groothandel (ATHLET), T‑650/22, not published, EU:T:2024:11, paragraph 85).
26 However, breach of the principle that administrative proceedings must be conducted within a reasonable time, assuming it is established, justifies the annulment of the decision adopted at the end of that procedure only to the extent that its duration, in so far as it affected the applicant’s rights of defence, could have had an effect on the outcome of the dispute (see, to that effect, judgment of 17 January 2024, ATHLET, T‑650/22, not published, EU:T:2024:11, paragraph 86 and the case-law cited).
27 Where the failure to conduct proceedings within a reasonable time has no effect on the outcome of the dispute, the annulment of the contested decision would not remedy the infringement of the right to effective legal protection. Such an annulment would merely delay the adoption of a final decision by EUIPO (see judgment of 17 January 2024, ATHLET, T‑650/22, not published, EU:T:2024:11, paragraph 87 and the case-law cited.)
28 In the present case, the applicant does not establish, or even claim, that the duration of the proceedings before EUIPO may have had an effect on the outcome of the dispute by affecting its ability to defend itself. Therefore, even assuming that that significant duration must be regarded as unreasonable, it cannot result in the annulment of the contested decision.
29 Consequently, the fifth plea must be dismissed.
The first and second pleas in law, based on an infringement of the right of priority
30 By the second plea, the applicant claims that the Board of Appeal failed to have regard to the right of priority that it acquired following the filing of the German trade mark application on 28 September 2017. By the first plea, the applicant submits that the unlawful deprivation of that right led to distorted competition in the European Union in breach of the provisions of the FEU Treaty.
31 Since the first plea is based on the premiss that the contested decision is unlawful, in so far as the Board of Appeal failed to have regard to the right of priority, it is appropriate to examine, first of all, the second plea. The second plea is based, in essence, on two complaints, alleging errors made by the Board of Appeal in so far as, first, it considered the German trade mark application filed on 21 February 2017 to be the first application within the meaning of Article 34(1) and (4) of Regulation 2017/1001 and, second, that it incorrectly called into question the right of priority claimed at the time of the examination of the opposition.
32 The Court considers that it is necessary, first, to examine the second complaint.
The second complaint, alleging an error of law made by the Board of Appeal in so far as it called into question, in the examination of the opposition, the right of priority claimed
33 The applicant submits, in essence, that the Board of Appeal made an error of law by examining the issue of the right of priority in the opposition proceedings. It claims that that right is a constituent element of the mark applied for and not a declaratory element and that, consequently, it should have been dealt with first, that is to say ‘at the application stage’.
34 EUIPO and the intervener dispute the applicant’s arguments.
35 In essence, the applicant must be regarded as claiming that it was for EUIPO to verify the priority claim when the mark applied for was filed and that it could not call into question the date of priority during the examination of the opposition.
36 In that regard, the date of priority set out in the publication of the mark applied for is deemed to have been subjected to an examination in which EUIPO considers whether all the requirements, both substantive and formal, have been satisfied (see, to that effect, judgment of 15 November 2001, Signal Communications v OHIM (TELEYE), T‑128/99, EU:T:2001:266, paragraph 44). However, in opposition proceedings, the existence of relative grounds for refusal within the meaning of Article 8 of Regulation 2017/1001 presupposes that the mark on which the opposition is based exists and predates the mark applied for. These are factors which must be examined by EUIPO of its own motion (see, to that effect, judgment of 25 June 2015, Copernicus-Trademarks v OHIM – Maquet (LUCEA LED), T‑186/12, EU:T:2015:436, paragraph 39 and the case-law cited). It follows that, in opposition proceedings, the Board of Appeal may call into question a priority date entered in the register (see, to that effect, judgment of 25 June 2015, LUCEA LED, T‑186/12, EU:T:2015:436, paragraph 56).
37 In the present case, as the Opposition Division found, the question as to whether the intervener’s mark, filed on 28 December 2017, is an earlier trade mark within the meaning of Article 8(2) of Regulation 2017/1001, on which an opposition to the registration of the mark applied for on 28 March 2018 may be based, depends on the validity of the priority claim of that mark on 28 September 2017, which was contested by the opponent, who had provided evidence to that effect.
38 The Opposition Division, and then the Board of Appeal, was therefore correct to examine the question of the validity of the right of priority claimed by the applicant.
39 That finding is not called into question by the economic interests which, according to the applicant, mean that the date of priority cannot be challenged after the trade mark application is filed. It is sufficient, in that regard, to note that the economic interests of the beneficiary of a right of priority that is incorrectly claimed and referred to in the publication of the EU trade mark application cannot prevail over the economic interests of third parties legitimately to oppose the registration of a mark.
40 Consequently, the second complaint is unfounded and must be rejected on that ground.
The first complaint, alleging infringement of Article 34 of Regulation 2017/1001
41 The applicant claims that it has a right of priority linked to the German mark filed on 28 September 2017. It submits that it filed an EU trade mark application, for the first time, on 28 March 2018, claiming, for the first time, the priority linked to a German trade mark application that it filed. It states that it never used the German trade mark application that it filed on 21 February 2017 to claim a priority and that the Board of Appeal was therefore wrong to refer to an earlier priority application. It adds that the German trade mark application filed on 21 February 2017 was never made public in so far as the exact list of goods was never published and that the right of priority based on that application irretrievably expired on 21 August 2017, on the expiry of the period of six months. The applicant draws the conclusion that it cannot be alleged that there is a chain of priority claims and, therefore, that the German trade mark application filed on 21 February 2017 cannot be considered to be a first application within the meaning of Article 34(1) of Regulation 2017/1001 or a previous application within the meaning of Article 34(4) of that regulation. It submits that the German trade mark application filed on 28 September 2017 must be regarded, therefore, as a first application.
42 Thus, in essence, first, the applicant disputes the Board of Appeal’s interpretation of the concept of ‘first application’ contained in Article 34(1) of Regulation 2017/1001. Second, it claims that the Board of Appeal should have applied Article 34(4) of that regulation.
43 EUIPO and the intervener dispute the applicant’s arguments.
– Preliminary observations
44 The right of priority provided for in Article 34 of Regulation 2017/1001 has its origin in Article 4 of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (‘the Paris Convention’), to which all the EU Member States are party.
45 Article 4 of the Paris Convention provides:
‘A. –
(1) Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union [for the protection of industrial property], or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.
(2) Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union [for the protection of industrial property] or under bilateral or multilateral treaties concluded between countries of the Union [for the protection of industrial property] shall be recognised as giving rise to the right of priority.
…
C. –
(1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and [trade marks].
(2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period.
…
(4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union [for the protection of industrial property] shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.
…’
46 It must be borne in mind that the European Union is party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (OJ 1994 L 336, p. 214; ‘the TRIPs Agreement’), as set out in Annex 1 C to the Agreement establishing the World Trade Organization (WTO) (OJ 1994 L 336, p. 1). Article 2(1) of the TRIPs Agreement provides that, in respect of Part II thereof, which contains the provisions relating to trade marks, Members are to comply, in particular, with Articles 1 to 12 of the Paris Convention.
47 In those circumstances, the rules set out in Article 4 of the Paris Convention must be regarded as producing the same effects as those produced by the TRIPs Agreement (see judgment of 27 February 2024, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2024:172, paragraph 62 and the case-law cited).
48 It is settled case-law that, having regard to the nature and structure of the TRIPs Agreement, the provisions of that agreement do not have direct effect (judgments of 16 November 2004, Anheuser-Busch, C‑245/02, EU:C:2004:717, paragraph 54, and of 27 February 2024, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2024:172, paragraph 63). The same applies to the rules set out in Article 4 of the Paris Convention (judgment of 27 February 2024, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2024:172, paragraph 68). Accordingly, those rules are not, in principle, among the rules in the light of which the Courts of the European Union are to review the legality of measures of the EU institutions, bodies, offices and agencies and are not such as to create rights upon which individuals may rely directly before the courts by virtue of EU law.
49 Consequently, the right of priority to file an application for an EU trade mark is governed by Article 34 of Regulation 2017/1001, without economic operators being able to rely directly on Article 4 of the Paris Convention (see, by analogy, judgment of 27 February 2024, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2024:172, paragraph 69).
50 That said, since the TRIPs Agreement is binding on the European Union and, accordingly, takes precedence over EU secondary legislation, the latter must be interpreted, as far as is possible, in accordance with the provisions of that agreement. It follows that Regulation 2017/1001 must be interpreted, as far as is possible, in accordance with the TRIPs Agreement and, as a consequence, with the rules set out, inter alia, in Article 4 of the Paris Convention, which are incorporated into that agreement (see, to that effect, judgment of 11 November 2020, EUIPO v John Mills, C‑809/18 P, EU:C:2020:902, paragraphs 64 and 65).
– The alleged misinterpretation of the concept of ‘first application’ contained in Article 34(1) of Regulation 2017/1001
51 The applicant claims that the Board of Appeal incorrectly interpreted Article 34(1) of Regulation 2017/1001 by finding that the fact that the period of six months for claiming a right of priority in respect of the German trade mark application filed on 21 February 2017 had expired on the date that the German trade mark application was filed, on 28 September 2017, was irrelevant in order to consider it to be a ‘first application’.
52 In that regard, it must be borne in mind that, according to settled case-law, the interpretation of a provision of EU law requires account to be taken not only of its wording, but also of its context, and of the objectives and purpose pursued by the act of which it forms part (judgment of 17 November 1983, Merck, 292/82, EU:C:1983:335, paragraph 12; see also, to that effect, judgment of 6 October 2021, Daw v EUIPO (Muresko), T‑32/21, EU:T:2021:643, paragraph 22 and the case-law cited).
53 In the present case, first, as regards the wording of Article 34(1) of Regulation 2017/1001, it must be stated that that provision does not define the concept of ‘first application’. It merely states that it is from the first application for a mark in any State party to the Paris Convention or to the Agreement establishing the WTO that the period of six months runs, during which the person who filed the application enjoys a right of priority for the purpose of filing an application for an identical EU mark. Thus, the wording of that provision does not fix any limit in time to the concept of first application and suggests that only a trade mark application filed for the first time gives rise to a right of priority for six months. That wording does not support the applicant’s interpretation to the effect that a first application refers to any first application filed during a period of six months and therefore excludes only an application filed less than six months after a previous application.
54 Second, the literal interpretation of Article 34(1) of Regulation 2017/1001 is supported by a reading of Article 34 as a whole. It is apparent from Article 34(4) of that regulation that a subsequent application filed for an identical mark may be regarded as a first application only exceptionally, namely in the specific case where the previous application has been withdrawn, abandoned or refused, without being open to public inspection, without leaving any rights outstanding and without having served as a basis for claiming a right of priority. In that regard, it must be noted that the fact that the treatment of a subsequent application as a first application is exceptional is difficult to reconcile with the applicant’s theory which, in fine, leads to applications for a national mark which are filed every six months being recognised as having the status of first application. Moreover, one of the conditions laid down in Article 34(4) of Regulation 2017/1001 is that the previous application has not left any rights outstanding and, therefore, at the very least, that it is no longer possible to claim a right of priority in respect of that application. The fact that the application of that provision requires other conditions to be satisfied necessarily invalidates the applicant’s theory.
55 Third, as regards the purpose of the right of priority provided for in Article 34 of Regulation 2017/1001, it must be borne in mind that the origin of that right is in Article 4 of the Paris Convention, of which it is one of the main pillars.
56 Thus, the authors of the Paris Convention wished to enable holders of a right in one of the States Parties to the Convention, who are faced with the impossibility of simultaneously filing applications for a given trade mark in all those States, to apply for it successively in the other States Parties to that convention, thereby giving an international dimension to the protection obtained in any one of the States without a multiplicity of formalities needing to be accomplished. For that purpose, the Paris Convention lays down a period of six months within which a person applying for registration of a trade mark in one of the States Parties may apply for the same mark in the other States Parties, without any subsequent application or applications made by that person being affected by applications for registration of the same mark made by third parties. The right of priority thus confers upon the applicant for a limited period of time immunity from the effects of any other applications for registration of the same trade mark that may be made by third parties during the priority period (judgment of 15 November 2001, TELEYE, T‑128/99, EU:T:2001:266, paragraphs 38 to 40).
57 The rules contained in Articles 34 to 36 of Regulation 2017/1001 follow the system laid down in the Paris Convention by establishing a right of priority that includes applications for registration made in one of the States Parties to that convention or to the Agreement establishing the WTO. Thus, applications made or rights arising during the period between the application for the national mark and the application for the EU mark cannot be raised in opposition to the applicant or the future rights holder (judgment of 15 November 2001, TELEYE, T‑128/99, EU:T:2001:266, paragraphs 41 and 42).
58 The purpose of the right of priority is thus to commence a period, which is in principle a single period, of six months during which a person who has filed a trade mark application in a State party to the Paris Convention or the Agreement establishing the WTO, may file an identical EU trade mark application, without it being possible to raise in opposition any claims or rights which may have arisen between the two applications.
59 Consequently, the literal and contextual interpretation of Article 34(1) of Regulation 2017/1001, referred to above, is consistent with the purpose of the right of priority.
60 That is not the case with the interpretation put forward by the applicant. It has previously been held that a strategy consisting of a chain of applications for registration of national trade marks for the same sign, with the aim of obtaining a blocking position for a period exceeding the duration of the six-month period of reflection provided for in Article 34(1) of Regulation 2017/1001, by monopolising the sign applied for, was contrary to the objectives of that regulation (see judgment of 17 January 2024, ATHLET, T‑650/22, not published, EU:T:2024:11, paragraph 50 and the case-law cited). If it were accepted, the applicant’s interpretation would make such a strategy possible by providing a new period of six months to claim a right of priority for each application for a mark filed in a State party to the Paris Convention or to the Agreement establishing the WTO, which occurs more than six months after a previous application.
61 In that regard, it must be noted that such a blocking strategy, authorised by Article 34(1) of Regulation 2017/1001, as interpreted by the applicant, could be adopted independently of the filing of an EU trade mark application with a claim to a right of priority. As EUIPO states, a person using such a strategy would gain a blocking position in respect of a mark for successive periods of six months, and only where a third party files an application for an identical or similar mark would that person seek registration of an EU trade mark by claiming that right in order not to lose the benefit of the right of priority.
62 Consequently, the applicant is not justified in claiming that the Board of Appeal erred in law in the interpretation of Article 34(1) of Regulation 2017/1001.
– The alleged error of assessment made in the application of Article 34(4) of Regulation 2017/1001
63 Article 34(4) of Regulation 2017/1001 states:
‘A subsequent application for a trade mark which was the subject of a previous first application in respect of the same goods or services and which is filed in or in respect of the same State shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing of the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.’
64 The Board of Appeal found that the German trade mark application filed on 28 September 2017 could not be regarded as a first application under Article 34(4) of Regulation 2017/1001 because the previous application of 21 February 2017 did not satisfy the conditions laid down in that provision concerning the previous first application. First, the application of 21 February 2017 had been published and, second, that application had left rights outstanding as it could have been revived by an application to reinstate rights.
65 The applicant disputes the Board of Appeal’s finding concerning the failure to comply with the conditions laid down in Article 34(4) of Regulation 2017/1001. It submits that in the absence of the payment of the application fees, the previous application of 21 February 2017 was never published with the exact list of goods covered and that the right of priority based on that trade mark application had irretrievably expired.
66 In that regard, it must be noted at the outset that the fact, relied on by the applicant, that the German trade mark application of 21 February 2017 did not serve, and can no longer serve, as a basis for the claim to a right of priority does not mean that any subsequent application filed for the same mark may be regarded as a first application within the meaning of Article 34(4) of Regulation 2017/1001. In order to be considered as such, a subsequent application must have been filed after a previous application that satisfies certain conditions. It is only where those conditions are satisfied that a subsequent application, in the present case the application filed on 28 September 2017, may be considered a first application.
67 As regards whether the German trade mark application of 21 February 2017 was withdrawn, abandoned or refused, without being open to public inspection, it must be stated that the applicant does not dispute that that application was published per se. It is also apparent from the contested decision that the intervener produced the extract from the German trade mark register in which that application was published. The applicant merely submits that that publication did not contain the exact list of goods. It is sufficient, however, to point out that that circumstance arises from the application of Article 23 of the Verordnung zur Ausführung des Markengesetzes (Regulation implementing the Law on the protection of trade marks and other distinctive signs), according to which the publication of the application for registration of a mark includes, inter alia, the main class and, where appropriate, the other classes of the list of goods and services covered. As the applicant acknowledges, third parties who wished to know the exact list of goods covered by the trade mark application of 21 February 2017 could request it from the German Patent and Trade Mark Office.
68 It follows that the German trade mark application of 21 February 2017 was in fact open to public inspection, by publication. Accordingly, one of the conditions laid down in Article 34(4) of Regulation 2017/1001 was not satisfied.
69 In addition, it must be stated that the applicant does not dispute the Board of Appeal’s statement that it would have been possible, on 28 September 2017, the date on which the subsequent German trade mark application was filed, to revive the German trade mark application filed on 21 February 2017, by means of an application for reinstatement of rights under Article 91 of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Law on the protection of trade marks and other distinctive signs) of 25 October 1994 (BGBl. 1994 I, p. 3082). The applicant merely claims that the German trade mark application of 21 February 2017 could no longer form the basis for the claim to a right of priority. That circumstance has no bearing, however, on the fact that the application of 21 February 2017, in so far as it left rights outstanding, did not satisfy one of the conditions laid down in Article 34(4) of Regulation 2017/1001.
70 It follows that the applicant is not entitled to claim that the German trade mark application filed on 28 September 2017 was a subsequent application which could be considered to be a first application under Article 34(4) of Regulation 2017/1001.
71 The first complaint must therefore be rejected as unfounded and, consequently, the second plea must be dismissed in its entirety, as must the applicant’s argument set out in paragraph 21 above, which relates to that plea. Furthermore, since the first plea is based on the premiss that the Board of Appeal infringed the right of priority (see paragraph 31 above), that plea must therefore be dismissed.
The fourth plea in law, alleging breach of the principles of good faith and legal certainty
72 The applicant submits that EUIPO acted contrary to good faith and legal certainty by informing it that the opposition filed by the intervener would be declared inadmissible then, after a long period, deciding that it did not benefit from a right earlier than that of the intervener because it could not claim a right of priority.
73 EUIPO and the intervener dispute the applicant’s line of argument.
74 In that regard, it must be recalled that the fundamental requirement of legal certainty, in its various forms, seeks to ensure that situations and legal relationships governed by EU law remain foreseeable. The right to rely on the principle of the protection of legitimate expectations, which is the corollary thereof, is conferred on any individual whom an institution, body, office or agency of the European Union has caused, by giving him or her precise assurances, to entertain justified expectations (see, to that effect, judgment of 16 December 2020, Council v K. Chrysostomides & Co. and Others, C‑597/18 P, C‑598/18 P, C‑603/18 P and C‑604/18 P, EU:C:2020:1028, paragraph 178 and the case-law cited).
75 The right to rely on the principle of the protection of legitimate expectations presupposes that three cumulative conditions are satisfied. First, precise, unconditional and consistent assurances originating from authorised and reliable sources must have been given to the person concerned by the EU institution, body, office or agency concerned. Second, those assurances must be such as to give rise to a legitimate expectation on the part of the person to whom they are addressed. Third, the assurances given must comply with the applicable rules (see judgment of 6 December 2018, Deichmann v EUIPO – Vans (Representation of lines on a shoe), T‑638/16, not published, EU:T:2018:883, paragraph 113 and the case-law cited).
76 In the present case, it is apparent from the documents in the file that, before the Opposition Division, the parties to the proceedings did not agree on the validity of the applicant’s priority claim. They filed several sets of observations, following which the Opposition Division found, in essence, that the right of priority was valid and that, consequently, since the opposition was not based on an earlier mark within the meaning of Article 8(2) of Regulation 2017/1001, it would be declared inadmissible. It informed those parties of that finding by letter of 5 November 2020. Subsequently, the Opposition Division found that the adversarial principle had not been respected because the intervener had not been provided with the documents relating to the right of priority submitted by the applicant on 17 April 2019. It informed the parties to the proceedings of that finding by letter of 25 February 2021 and invited the intervener to submit its observations on those documents. After a further series of observations by the parties, the Opposition Division adopted the provisional decision of 25 May 2022, which was confirmed by the contested decision.
77 The applicant thus calls into question the proceedings which took place before the Opposition Division by claiming, in essence, that the letter of 5 November 2020 may have given rise to a legitimate expectation that the right of priority as at 28 September 2017 was valid.
78 In that regard, it must be stated that, even supposing that the letter of 5 November 2020 were capable of giving rise to a legitimate expectation that the Opposition Division considered that the right of priority was validly claimed, that legitimate expectation cannot extend to the position of the Board of Appeal. By virtue of the devolutive effect of the appeal proceedings, the Board of Appeal, in the event of referral, could carry out a fresh assessment of the matter decided by the Opposition Division in its entirety.
79 In any event, the applicant is not justified in claiming the protection of legitimate expectations on the basis of the letter of 5 November 2020 since the information provided at that stage of the proceedings before the Opposition Division was based on evidence submitted by the applicant which had not been subject to the adversarial principle, because EUIPO had not given the intervener the opportunity to put forward its view on that evidence. The information contained in the letter of 5 November 2020 did not therefore comply with the applicable rules within the meaning of the case-law referred to in paragraph 75 above.
80 Consequently, the complaint alleging breach of the principle of legal certainty must be rejected as unfounded. In so far as the complaint alleging breach of the principle of good faith is based on the same arguments, that complaint must be rejected as a result, and, accordingly, the fourth plea must be dismissed in its entirety.
81 It follows from all the grounds set out above that the action must be dismissed in its entirety.
Costs
82 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
83 Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as such a hearing has not been organised, bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber),
hereby:
1. Dismisses the action;
2. Orders Capella EOOD to bear its own costs and to pay those incurred by Richemont International SA;
3. Declares that the European Union Intellectual Property Office (EUIPO) is to bear its own costs.
Marcoulli | Valasidis | Spangsberg Grønfeldt |
Delivered in open court in Luxembourg on 8 October 2025.
V. Di Bucci | | S. Papasavvas |