Case T‑519/22
Société des produits Nestlé SA
v
European Union Intellectual Property Office
Judgment of the General Court (Sixth Chamber), 7 June 2023
(EU trade mark – Procedure for the revocation of decisions or the cancellation of entries – Revocation of a decision containing an obvious error attributable to EUIPO – Article 103(1) of Regulation (EU) 2017/1001 – No obvious error)
1. EU trade mark – Procedural provisions – Cancellation or revocation – Condition – Manifest error – Concept – Citation of a provision relating to opposition proceedings in the context of invalidity proceedings – Irrelevant – Precluded – Application by analogy of case-law relating to opposition proceedings in the context of invalidity proceedings – Precluded
(European Parliament and Council Regulation 2017/1001, Art 103(1); Commission Regulation No 2868/95, Art. 1, Rules 22(2) and 50(1))
(see paragraphs 34, 35, 38, 39, 44, 49-52, 54)
2. Acts of the institutions – Statement of reasons – Obligation – Scope – Correction of an error of reasoning during the proceedings before the Court – Not permissible
(Art. 296 TFEU)
(see paragraph 55)
Résumé
Société des Produits Nestlé SA has, since 20 November 2001, been the proprietor of the EU word mark FITNESS, registered with the European Union Intellectual Property Office (EUIPO) in respect of various goods. (1) On 2 September 2011, the company European Food SA filed an application for a declaration of invalidity of that mark, (2) which was rejected.
During the appeal proceedings, European Food submitted further evidence in support of its claim. However, the Fourth Board of Appeal of EUIPO rejected that evidence as belated, without taking it into consideration. The General Court, before which an action was brought, (3) went on to annul that decision and referred the case back to the Second Board of Appeal of EUIPO which, taking that evidence into account, considered that the contested mark was descriptive. Nevertheless, that decision was also annulled by a second judgment of the Court. (4) The case was therefore referred back to the First Board of Appeal of EUIPO, which, after having exercised its discretion, found that European Food had not adequately justified the late submission of the evidence and, consequently, dismissed the action.
That last decision was revoked (‘the revoked decision’) by the decision of 27 June 2022 (‘the contested decision’) of the First Board of Appeal of EUIPO on account of several errors of law.
In the present judgment, the Court examines the application of Article 103(1) of Regulation 2017/1001 relating to EUIPO’s power to revoke its decisions, and implements the criteria previously set out in the case-law. (5)
Findings of the Court
As a first step, the Court examines the Board of Appeal’s finding that it was clearly erroneous to rely on Rule 50(1) of Regulation No 2868/95, (6) relating to opposition proceedings, and to apply it by analogy in the context of invalidity proceedings. In that connection, it notes that, although it is common ground that that rule is not applicable in the context of invalidity proceedings based on absolute grounds for invalidity, neither the contested decision nor the revoked decision shows that the reference to that rule may have had an influence on the findings of the Board of Appeal as regards the possibility of accepting the newly submitted evidence to the extent that the error committed did not allow the operative part of the revoked decision to be maintained without a new analysis.
The conclusion reached by the Board of Appeal in the revoked decision that, in the absence of any acceptable justification for the late submission of the evidence, it was obliged to exercise its discretion negatively and not accept the additional evidence flows from the second annulment judgment of the Court. (7) In order to reach that conclusion, the Board of Appeal referred first of all to that judgment, from which it was apparent that evidence submitted late was not automatically admissible, and that it was for the party presenting that evidence to justify why it had been submitted at that stage of the proceedings and demonstrate that submission during the proceedings before the Cancellation Division was impossible. Next, it found that, although evidence submitted for the first time at the appeal stage was prima facie pertinent, there was nothing to demonstrate that it was not possible to submit it before the Cancellation Division. Last, it considered that the Cancellation Division’s finding that the evidence presented initially was insufficient could not be regarded as a new factor justifying the submission of additional evidence.
It is apparent from those considerations that it has not been shown that the incorrect reference to Rule 50(1) of Regulation No 2868/95 had an impact on the reasoning followed by the Board of Appeal in the revoked decision or on its finding.
As a second step, the Court examines the Board of Appeal’s assessment in the revoked decision that it was erroneous to refer to the judgment in Cesea Group v OHIM – Mangini & C. (Mangiami), (8) concerning the application of Rule 22(2) of Regulation No 2868/95, which applied to proof of use, and to consider that that case-law was fully transposable to the invalidity context at issue. On that point, the Court recalls that the Board of Appeal took the view that the principles laid down in that judgment were fully transposable to the invalidity context and that, consequently, allowing supplementary evidence submitted for the first time at the appeal stage without sound justification would deprive Rule 37(b)(iv) and Rule 39(3) of Regulation No 2868/95 of their effect. The Board of Appeal also referred to that judgment when it stated that it had to examine whether the cancellation applicant had justified the late submission of additional evidence and when it considered that the Cancellation Division’s decision could not be regarded as a new factor justifying the submission of such evidence.
However, the Court considers that, assuming that it is not possible to transpose considerations related to justifying the submission of additional evidence in the context of the application of Rule 22(2) of Regulation No 2868/95 to invalidity proceedings, the possible error made by the Board of Appeal in the revoked decision cannot be categorised as obvious within the meaning of Article 103(1) of Regulation 2017/1001. First, in the revoked decision, the Board of Appeal did not apply that rule; rather, it referred, by analogy, to case-law on the application of that provision. Second, Rule 22(2) of Regulation No 2868/95, on the one hand, and Rule 37(b)(iv) and Rule 39(3) of that regulation, on the other hand, are comparable procedural contexts, given that in both cases EUIPO establishes a time limit for the submission of evidence and is to reject the applications where that evidence is not submitted. Accordingly, the fact that they are different procedures cannot, by itself, constitute sufficient reason to consider that it is manifestly not possible to transpose the case-law relating to proof of use to invalidity proceedings.
Consequently, the Court finds that the mere application by analogy of the case-law relating to the interpretation of Rule 22(2) of Regulation No 2868/95 in the present case cannot constitute an obvious error within the meaning of Article 103(1) of Regulation 2017/1001.