Judgments nº T-137/09 of The General Court, November 24, 2010

• Resolution Date: November 24, 2010
• Issuing Organization: The General Court
• Decision Number: T-137/09

In Case T‑137/09,

Nike International Ltd, established in Beaverton, Oregon (United States), represented by M. de Justo Bailey, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Aurelio Muñoz Molina, residing at Petrer (Spain),

ACTION brought against the decision of the First Board of Appeal of OHIM of 21 January 2009 (Case R 551/2008-1) relating to opposition proceedings between DL Sports & Marketing Ltda and Mr Aurelio Muñoz Molina,

THE GENERAL COURT (Fourth Chamber),

composed, at the time of the deliberation, of O. Czúcz (Rapporteur), President of the Chamber, I. Labucka and K. O’Higgins, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 6 April 2009,

having regard to the response lodged at the Registry of the Court on 23 July 2009,

having regard to the fact that no application for a hearing was submitted by the parties within a period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,

gives the following

Judgment

Background to the dispute

1 On 2 January 2006, Aurelio Muñoz Molina 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by 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 word sign R10.

3 The Community trade mark application was published in Community Trade Marks Bulletin No 30/2006 of 24 July 2006.

4 On 24 October 2006, DL Sports & Marketing Ltda filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of the trade mark applied for. That opposition was based on the non-registered mark or the sign used in the course of trade, R10, and was directed against all of the goods covered by the trade mark applied for. The grounds put forward in support of the opposition were those referred to in Article 8(2)(c) and Article 8(4) of Regulation No 40/94 (now Article 8(2)(c) and Article 8(4) of Regulation No 207/2009).

5 On 28 November 2006, the Opposition Division allowed DL Sports & Marketing a period of four months, until 29 March 2007, in order, inter alia, to prove the existence and validity of the earlier right relied on. On 29 March 2007, DL Sports & Marketing requested an extension of the deadline, which, on 8 June 2007, was extended until 9 August 2007. On 24 October 2007, the Opposition Division noted that no evidence had been submitted in support of the opposition.

6 By letter of 31 October 2007, the lawyers acting for the applicant, Nike International Ltd, informed the Opposition Division that, by a contract dated 20 June 2007, DL Sports & Marketing had assigned to the applicant – through Nike, Inc. – ownership of numerous trade marks and industrial property rights (‘the transfer agreement’). The applicant’s lawyers stated that they had been instructed by the new owner of the earlier right to pursue the opposition proceedings and, accordingly, asked to be entered as representatives in those proceedings.

7 On 19 February 2008, the Opposition Division rejected the opposition on the ground that DL Sports & Marketing had not substantiated, within the prescribed period, the existence of the earlier right relied on in support of the opposition (‘the Opposition Division’s decision’).

8 On 28 March 2008, the applicant appealed to OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Opposition Division’s decision.

9 By decision of 21 January 2009 (‘the contested decision’), the First Board of Appeal of OHIM dismissed that appeal as inadmissible on the ground that the applicant had not produced proof of its status as a party to the opposition proceedings and, consequently, that it was not entitled to appeal the Opposition Division’s decision. The Board of Appeal found that, at that stage of the proceedings, the applicant’s lawyers had not claimed – much less produced proof – that the earlier right relied on in support of the opposition was among the trade marks transferred...