Judgments nº T-407/05 of Court of First Instance of the European Communities, November 06, 2007

• Resolution Date: November 06, 2007
• Issuing Organization: Court of First Instance of the European Communities
• Decision Number: T-407/05

In Case T-407/05,

SociÈtÈ anonyme des eaux minÈrales d-…vian (SAEME), established in …vian-les-Bains (France), represented by C.†Hertz-Eichenrode, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and designs) (OHIM), represented by G.†Schneider, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

A.†Racke GmbH†&†Co.†OHG, established in Bingen (Germany), represented by N.†Schindler, lawyer,

ACTION against the decision of the Fourth Board of Appeal of OHIM of 22†July 2005 (Case R†82/2002-4) relating to opposition proceedings between SociÈtÈ anonyme des eaux minÈrales d-…vian (SAEME) and A.†Racke GmbH & Co. OHG, and also against decision No†2754/2001 of the Opposition Division of OHIM of 23†November 2001,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),

composed of J.D.†Cooke, President, I.†Labucka and M.†Prek, Judges,

Registrar: K.†Andov·, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 16†November 2005,

having regard to the response of OHIM lodged at the Registry of the Court on 1†March 2006,

having regard to the response of the intervener lodged at the Registry of the Court on 3†March 2006,

further to the hearing on 28†March 2007,

gives the following

Judgment

†Legal framework

1 ††††††††Article†42(3) and Article†74 of Council Regulation (EC) No†40/94 of 20†December 1993 on the Community trade mark (OJ 1994 L†11, p.†1), as amended, provide:

-Article†42

Opposition

-

3. Opposition must be expressed in writing and must specify the grounds on which it is made. It shall not be treated as duly entered until the opposition fee has been paid. Within a period fixed by the Office, the opponent may submit in support of his case facts, evidence and arguments.

   -

   Article†74

   Examination of the facts by the Office of its own motion

1. In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

2. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.-

   2 ††††††††Rule 16, Rule 17(2) and Rule 20(2) of Commission Regulation (EC) No†2868/95 of 13†December 1995 implementing Regulation No†40/94 (OJ 1995 L†303, p.†1; -the implementing regulation-) provide:

   -Rule 16

   Facts, evidence and arguments presented in support of the opposition

1. Every notice of opposition may contain particulars of the facts, evidence and arguments presented in support of the opposition, accompanied by the relevant supporting documents.

2. If the opposition is based on an earlier mark which is not a Community trade mark, the notice of opposition shall preferably be accompanied by evidence of the registration or filing of that earlier mark, such as a certificate of registration. If the opposition is based on a well-known mark as referred to in Article†8(2)(c) of the Regulation or on a mark having a reputation as referred to in Article†8(5) of the Regulation, the notice of opposition shall in principle be accompanied by evidence attesting that it is well known or that it has a reputation. If the opposition is entered on the basis of any other earlier right, the notice of opposition shall in principle be accompanied by appropriate evidence on the acquisition and scope of protection of that right.

3. The particulars of the facts, evidence and arguments and other supporting documents as referred to in paragraph 1, and the evidence referred to in paragraph 2 may, if they are not submitted together with the notice of opposition or subsequent thereto, be submitted within such period after commencement of the opposition proceedings as the Office may specify pursuant to Rule 20(2).

   Rule 17

   Use of languages in opposition proceedings

   -

2. Where the evidence in support of the opposition as provided for in Rule 16(1) and (2) is not filed in the language of the opposition proceedings, the opposing party shall file a translation of that evidence into that language within a period of one month from the expiry of the opposition period or, where applicable, within the period specified by the Office pursuant to Rule 16(3).

   -

   Rule 20

   Examination of opposition

   -

2. Where the notice of opposition does not contain particulars of the facts, evidence and arguments as referred to in Rule 16(1) and (2), the Office shall call upon the opposing party to submit such particulars within a period specified by the Office. Any submission by the opposing party shall be communicated to the applicant who shall be given an opportunity to reply within a period specified by the Office.-

   †Background to the dispute

   3 ††††††††On 21†September 1998, A.†Racke GmbH†&†Co OHG filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Regulation No†40/94.

   4 ††††††††The mark in respect of which registration was sought is the following figurative sign in gold, black and white:

   5 ††††††††The goods covered by the trade mark applied for are -wine and sparkling wine- in Class 33 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.

   6 ††††††††The application for registration of the mark was published in Community Trade Marks Bulletin No†58/99 on 26†July 1999.

   7 ††††††††On 26†October 1999, SociÈtÈ anonyme des eaux minÈrales d-…vian (SAEME) filed notice of opposition on the basis of Article†8(1)(b) and Article†8(5) of Regulation No†40/94. The opposition was based on the following earlier rights:

   -††††††††the German word mark DE†1†185†308 evian (-the German trade mark-), which had been filed on 11†November 1985 and registered on 10†July 1992 in respect of -mineral waters- in Class 32, protection of the mark having been renewed until 30†November 2015;

   -††††††††the French figurative mark FR†98712542 (evian and a mountain motif) (-the French trade mark-), filed on 12†January 1998 and registered in respect of various goods and services;

   -††††††††the international mark IR†696812 (-the international trade mark-), registered on 6†July 1998 on the basis of the French trade mark referred to above and effective in Denmark, Germany, Spain, Italy, Austria, Finland, Sweden, the United Kingdom and the Benelux countries;

   -††††††††the earlier trade mark evian, well known in Belgium and in France for -mineral water- (-the well-known trade mark-).

   8 ††††††††The notice of opposition was accompanied by a copy of the German trade mark, a copy of the French trade mark (in the original language, French) and a copy of the international trade mark (in the original language, French). Also attached was a translation into the language of the proceedings (German) of the list of goods in Classes 32 and 33 of the Nice Agreement to which the opposition based on the French and international trade marks relates.

   9 ††††††††By letter of 16†December 1999, the Opposition Division requested the applicant, pursuant to Rule 15(2)(c) and Rule 18(2) of the implementing regulation, to send it three copies of its French and international trade marks within a period of two months, stating that if the applicant should fail to do so, its opposition would be declared inadmissible.

   10 ††††††The applicant sent those documents by letter of 8†February 2000.

   11 ††††††By a standard letter dated 28†February 2000, the Opposition Division allowed the applicant a period of four months to submit any additional facts, evidence or arguments that it considered necessary to substantiate its opposition, stating that the documents should be supplied in the language of the opposition proceedings or be accompanied by a translation.

   12 ††††††On 29†August 2000, the intervener sent its statement to the Opposition Division, claiming inter alia that no evidence of the existence or legal validity of the French and international trade marks had been produced, since...