Judgments nº T-726/14 of The General Court, February 17, 2017

Resolution DateFebruary 17, 2017
Issuing OrganizationThe General Court
Decision NumberT-726/14

(Non-contractual liability - Proof of the existence, validity and scope of protection of the earlier mark - International registration designating the European Union - Decision rejecting the opposition in the absence of proof of the earlier right - Rule 19(2)(a) of Regulation (EC) No 2868/95 - Revision of the decision - Article 62(2) of Regulation (EC) No 207/2009 - Damage consisting in the lawyers’ fees - Causal link)

In Case T-726/14,

Novar GmbH, established in Albstadt (Germany), represented by R. Weede, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by S. Hanne, acting as Agent,

defendant,

APPLICATION pursuant to Article 268 TFEU seeking compensation for material damage which the applicant allegedly sustained on account of lawyers’ fees that it incurred in an appeal against a decision of the Opposition Division allegedly adopted in breach of Rule 19(2)(a) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark and of general legal principles,

THE GENERAL COURT (First Chamber),

composed of H. Kanninen (President), E. Buttigieg (Rapporteur) and L. Calvo-Sotelo Ibáñez-Martín, Judges,

Registrar: S. Bukšek Tomac, Administrator,

having regard to the written part of the procedure and further to the hearing on 30 September 2016,

gives the following

Judgment

Background to the dispute

1 The applicant, Novar GMbH, is the proprietor of an international registration designating the European Union in respect of the trade mark FlexES.

2 On 15 June 2012, the applicant brought opposition proceedings before the European Union Intellectual Property Office (EUIPO) based on that trade mark against the application for the EU trade mark FLEXPS. The language of the opposition proceedings was English.

3 By letter of 22 June 2012, EUIPO informed the applicant that its opposition had been found admissible and fixed a period, pursuant to Article 41(3), second sentence, of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) and Rule 19 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), for it to submit the facts, evidence and arguments in support of its opposition, inter alia, the evidence substantiating the earlier right relied on in support of that opposition.

4 The following information, inter alia, was communicated in that letter concerning proof of the existence, validity and scope of protection of the earlier rights relied on in support of the opposition:

‘As far as an opposition is based on earlier [EU trade mark] applications or registrations, the opponent does not need to submit any evidence concerning these marks as the Office has the relevant information available in its database and will forward a link to that database (CTM-Online) to the other party. Furthermore, please note that the same applies if the earlier mark is an international Registration … designating the [European Union], however only if the language of the proceedings is English, French or Spanish, which are the three official languages of [the World Intellectual Property Organisation] (WIPO) and the data is available in these three languages.’

5 With effect from 1 July 2012, EUIPO changed its practice regarding the application of Rule 19(2)(a) of Regulation No 2868/95, deciding that extracts from the EUIPO database, CTM-Online and TM View were no longer sufficient to prove the existence of an earlier mark where the opposition was based on an international registration designating the European Union. That new practice applied to all opposition proceedings filed after 1 July 2012.

6 On 26 October 2012, the applicant lodged a statement of written observations in support of the opposition without attaching to that statement any supporting documents concerning the existence, validity and scope of protection of the earlier mark.

7 By decision of 14 May 2013, the Opposition Division rejected the opposition on the basis of Rule 20(1) of Regulation No 2868/95 on the ground that the existence, validity and scope of protection of the earlier mark and not been proved by the applicant.

8 On 21 May 2013, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, presenting extracts from the register of EUIPO and the World Intellectual Property Organisation (WIPO). In the alternative, it presented an application for restitutio in integrum in respect of the time limit for adducing evidence concerning the earlier mark.

9 On the 27 June 2013, the Opposition Division informed the applicant and the applicant for the contested EU...

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