Judgments nº T-235/16 of Tribunal General de la Unión Europea, June 21, 2017

• Resolution Date: June 21, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-235/16

(EU trade mark - Opposition proceedings - Application for the EU figurative trade mark GPTech - Earlier EU word marks GP JOULE - Failure to produce before the Opposition Division proof of entitlement to file a notice of opposition - Proof first produced before the Board of Appeal - Failure to take into account - Discretion of the Board of Appeal - Circumstances precluding additional or supplementary evidence from being taken into account - Article 76(2) of Regulation (EC) No 207/2009 - Rules 17(4), 19(2), 20(1) and 50(1) of Regulation (EC) No 2868/95) In Case T-235/16,

GP Joule PV GmbH & Co. KG, established in Reuf‌lenköge (Germany), represented by F. Döring, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Zaera Cuadrado, acting as Agent,

defendant,

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

Green Power Technologies, SL, established in Bollullos de la Mitación (Spain),

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 9 February 2016 (Case R 848/2015-2), relating to opposition proceedings between GP Joule PV and Green Power Technologies,

THE GENERAL COURT (Seventh Chamber),

composed of V. Tomljenović, President, A. Marcoulli and A. Kornezov (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 10 May 2016,

having regard to the response lodged at the Court Registry on 29 July 2016,

having regard to the change in the composition of the Chambers of the General Court,

having regard to the reassignment of the case to the Seventh Chamber and to a new Judge-Rapporteur,

having regard to the fact that no request for a hearing was submitted by the main 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

Background to the dispute

1 On 12 February 2014, Green Power Technologies, SL (‘the trade mark applicant’) filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 Registration as a mark was sought for the following figurative sign, comprising a graphic element, a stylised element, ‘gp’, and the element ‘tech’ juxtaposed to it:

3 The goods and services in respect of which registration was sought are in Classes 9 and 42 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 14 May 2014, the applicant, GP Joule PV GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods in Class 9 and some of the services in Class 42 of the Nice Agreement. The notice of opposition was based on the following earlier trade marks: EU word mark No 8818098, GP JOULE, covering services in Classes 36, 37, 39, 40 and 42, and EU word mark No 9599754, GP JOULE, covering goods in Classes 6, 9 and 19 (‘the earlier marks’). The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

5 In the e-filing form used to lodge the notice of opposition and, in particular, under the heading ‘Entitlement of opponent’, the applicant stated as follows: ‘Owner/Co-Owner/Licencee’, which is an automatic setting that appears on the form (‘e-filing opposition form’).

6 On 5 June 2014, EUIPO informed the parties that the opposition was admissible and set the relevant time limits for the opposition proceedings, including the start date of the adversarial part of the proceedings, namely 11 August 2014, as well as the time limit for submission by the applicant of evidence substantiating its earlier rights, namely 10 October 2014. The following was specified in the explanatory note attached to the communication addressed to the applicant:

- under the heading ‘Information on the proceedings’, paragraph (a)(ii) of the explanatory note states that if the evidence relating to the earlier rights on which the opposition is based is not filed within the prescribed time limit, the opposition will be rejected as unfounded pursuant to Rule 20(1) 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);

- under that same heading, paragraph (b) of the explanatory note states that once the period of time to file the evidence has expired, the trade mark applicant will have at least two full months to respond to the notice of opposition and that this period can be extended if EUIPO considers it necessary to ensure that the trade mark applicant has the opportunity to respond to the material submitted by the opponent;

- under the heading ‘Important notes’, the explanatory note states that ‘where the opposition is entered in the name of a licensee, it must prove its entitlement showing both that it is a licensee and that it is authorised by the proprietor of the mark to file oppositions’.

7 The applicant failed to submit observations and to produce evidence within the prescribed period, namely by 10 October 2014.

8 On 13 November 2014, the trade mark applicant submitted its observations, in which it claimed, inter alia, that the notice of opposition mentioned GP Joule PV acting as the opponent, whereas the proprietor of the earlier marks, according to the EUIPO database, was a natural person, namely Mr P. The trade mark applicant also put forward arguments seeking to support, in that case, the lack of similarity between the marks at issue and between the goods and services covered by those marks.

9 On 20 February 2015, the applicant submitted observations in response, in which it claimed, inter alia, that it was the exclusive licensee of Mr. P., its CEO, without however producing any proof thereof.

10 On 26 March 2015, the Opposition Division rejected the opposition in its entirety as unfounded, pursuant to Rules 19 and 20 of Regulation No 2868/95, in the version applicable at the material time, on the ground that the applicant had submitted no proof of an existing licence agreement or of any entitlement to file a notice of opposition granted to the applicant by the proprietor of the earlier marks.

11 On 28 April 2015, the applicant filed a notice of appeal against the decision of the Opposition Division.

12 On 15 July 2015, the applicant produced for the first time before the Board of Appeal a statement from Mr P. dated 2 July 2015 in which he declares that he granted the applicant, which was under his management, the exclusive authority to use the earlier marks and to defend them in its own name (‘the statement of 15 July 2015’).

13 By decision of 9 February 2016 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.

14 The Board of Appeal found, in essence, that:

- the applicant sufficiently satisfied the requirements of admissibility under Rule 15(2)(h)(iii) of Regulation No 2868/95 by stating that it was the exclusive licensee of the proprietor of the earlier marks and that it was authorised by the proprietor to file the notice of opposition, even though that was mentioned only in the applicant’s response to the observations of the trade mark applicant of 20 February 2015, because, in fact, in the section of the e-filing opposition form headed ‘Entitlement of opponent’ it was only possible to select the option ‘Owner/Co-owner/Licencee’; that, however, did not release the applicant from the obligation to substantiate its entitlement to file a notice of opposition under Rule 19(2) of Regulation No 2868/95;

- the Opposition Division clearly and unambiguously requested the applicant to provide evidence substantiating the earlier rights and to produce further material within the prescribed period, namely by 10 October 2014; under those circumstances, according to the Board of Appeal, the Opposition Division rightly rejected the opposition as unfounded pursuant to Rule 20(1) of Regulation No 2868/95;

- the applicant presented the statement of 15 July 2015 for the first time with the statement of grounds of appeal; since no evidence had been produced before the Opposition Division, the statement could not be regarded as ‘additional’ or ‘supplementary’ evidence within the meaning of Rule 50(1) of Regulation No 2868/95, read in conjunction with Article 76(2) of Regulation No 207/2009, and, therefore, the Board of Appeal had no discretion enabling it to accept evidence produced late;

- nonetheless, for the sake of completeness, the Board of Appeal indicated that, even assuming that it had such discretion enabling it to accept material produced late, it would exercise that power by deciding not to take the material into account, on the grounds that (i) there could be no doubt as to the requirements that the applicant had to satisfy within the prescribed period, given that, in such a case, the Board of Appeal’s...