Judgments nº T-780/16 of Tribunal General de la Unión Europea, July 20, 2017

Resolution DateJuly 20, 2017
Issuing OrganizationTribunal General de la Unión Europea
Decision NumberT-780/16

In Case T-780/16,

Mediaexpert sp. z o.o., established in Warsaw (Poland), represented by J. Aftyka, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

Mediaexpert S.A., established in Warsaw,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 11 August 2016 (Case R 2583/2015-1), relating to invalidity proceedings between Mediaexpert sp. z o.o. and Mediaexpert S.A.,

THE GENERAL COURT (Sixth Chamber),

composed of G. Berardis (Rapporteur), President, S. Papasavvas and O. Spineanu-Matei, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 8 November 2016,

having regard to the response lodged at the Court Registry on 23 January 2017,

having regard to the fact that no application for a hearing was submitted by the parties within the period of three weeks from notification of closure of the written procedure, and having therefore decided to rule on the action without an oral 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 20 March 2013 Mediaexpert S.A. 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 in colour:

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3 The services in respect of which registration was applied for are in Classes 35, 39 and 41 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, and correspond, for each of those classes, to the following description:

- Class 35: ‘Business management; business administration’;

- Class 39: ‘Transport; Packaging and storage of goods’;

- Class 41: ‘Education; providing of training; sporting activities’.

4 The EU trade mark application was published in Community Trade Marks Bulletin No 225/2013 of 26 November 2013, and on 5 March 2014 the corresponding mark was registered under number 11674132 in respect of the services referred to in paragraph 3 above.

5 On 22 May 2014 the applicant, Mediaexpert sp. z o.o., filed an application for a declaration that the contested mark was invalid under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation.

6 The application for a declaration of invalidity was based on the earlier Polish mark No 226812, filed on 23 January 2009 and registered on 26 February 2010, represented below in accordance with the documentation provided by the applicant:

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7 The earlier mark was registered in respect of goods and services in classes 7, 9, 11, 12, 16, 20, 35, 39, 41 and 42.

8 The application for a declaration of invalidity was accompanied by a printout extract from the database of the Urząd Patentowy Rzeczypospolitej Polskiej (Polish Patent Office), concerning registration of the earlier mark (‘the database extract’). The database extract, written in Polish and not accompanied by a translation into English, the language of the invalidity proceedings, contained, inter alia, the list of goods and services covered by that mark.

9 By letter of 4 June 2014, the Cancellation Division, on the basis of Regulation 39(3) 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), invited the applicant to remedy, by 4 August 2014 at the latest, the fact that its application did not comply with the requirements of Rule 37 of that regulation, in so far as the earlier right relied on was not duly identified.

10 In that regard, the Cancellation Division noted that the application for a declaration of invalidity:

- first, did not mention the goods and services covered by the earlier mark on which that application was based, as required by Rule 37(b)(ii) of Regulation No 2868/95, with the additional point that, pursuant to Article 119(5) and (6) of Regulation No 207/2009, that information had to be supplied in the language of the invalidity proceedings;

- second, did not contain an explanation of the grounds and other remarks.

11 The Cancellation Division stated that if the applicant did not remedy the irregularities in its application, referred to in paragraph 10 above, the latter would be rejected as being inadmissible, pursuant to Rule 39(3) of Regulation No 2868/95.

12 Moreover, the Cancellation Division informed the applicant that ‘the documents and/or translations that may be submitted with a view to remedying the abovementioned deficiencies may not be sufficient for the substantiation of the application for invalidity (proof of the existence and validity of the earlier right) as a whole’.

13 By letter of 1 July 2014, the applicant responded to the Cancellation Division’s letter of 4 June 2014, providing, in the reply itself, drafted in English, the list of goods and services protected by the earlier mark and explaining the grounds on which the application for a declaration of invalidity was based.

14 On 7 July 2014 the Cancellation Division wrote to the applicant to inform it that following the further information filed on 1 July 2014, its application for a declaration of invalidity was admissible. On that occasion, the Cancellation Division, in essence, repeated the information referred to in paragraph 12 above, using the following wording:

‘Please note that the documents and/or translations that you may have submitted so far with a view to completing the admissibility of the application may not be sufficient for the substantiation of the application for invalidity (proof of the existence and validity of the earlier right/s) as a whole. This will be examined when a decision on the substance of the case is taken’.

15 By decision of 29 October 2015, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.

16 In essence, the Cancellation Division noted that the applicant had not produced a full translation in English of the registration certificate for the earlier mark. It concluded that the applicant had not provided documents allowing the validity and scope of protection of that mark to be established and had not therefore sufficiently substantiated its application for a declaration of invalidity, an issue which had to be distinguished from that of the admissibility of that application.

17 On 22 December 2015 the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision, pursuant to Articles 58 to 64 of Regulation No 207/2009.

18 By decision of 11 August 2016 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal and upheld the reasoning in the Cancellation Division’s decision. Moreover, inter alia in paragraphs 27 to 29 of the contested decision, the Board of Appeal rejected the applicant’s argument that EUIPO had misled the applicant by informing it that its application for a declaration of invalidity was admissible but failing to warn the applicant of the need to produce a full translation in English of the registration certificate for the earlier mark. In that regard, the Board of Appeal stated that the conditions governing the admissibility of an application for a declaration of invalidity were different from those relating to the substantiation of that application and that EUIPO was not required to notify an applicant of the consequences of failure to comply with the substantive conditions which such an application must satisfy.

Forms of order sought

19 The applicant claims that the Court should:

- annul the contested decision;

- annul the decision of the Cancellation Division;

- refer the case back to EUIPO so that it can alter the decision on the substance of the case and annul the contested mark concerning all the services covered;

- order EUIPO to pay the costs of the proceedings before the Cancellation Division, Board of Appeal and General Court.

20 EUIPO contends that the Court should:

- dismiss the application;

- order the applicant to pay the costs.

Law

21 Although the arguments relied on by the applicant in support of its action are poorly structured, it may be inferred that it puts forward, in essence, two pleas in law alleging, first, infringement of Rule 37(b), Rule 38(1) and (2), Rule 39(2) and (3) and Rule 98(1) of Regulation No 2868/95 and, second, infringement of the principle of protection of legitimate expectations.

The first plea in law: infringement of Rule 37(b), Rule 38(1) and (2), Rule 39(2) and (3) and Rule 98(1) of Regulation No 2868/95

22 By the first plea in law, the applicant claims, in essence, to have provided, in accordance with all the required formalities, evidence of the existence, validity and scope of protection of the earlier mark by means of the information contained in the application for a declaration of invalidity and that added in the letter of 1 July 2014 (see paragraph 13 above). Therefore, EUIPO had in its possession, in English, the date from which that mark was protected and the list of goods and services covered.

23 Furthermore, the applicant complains that EUIPO did not ask it to submit a full translation of the database extract.

24 EUIPO disputes the applicant’s arguments.

25 First, the parties agree that, pursuant to Article 119(5) and (6) of Regulation No 207/2009, the language of the invalidity proceedings in the present case is English, as the Board of Appeal correctly noted in paragraph 14 of the contested decision.

26 That being noted, it should be observed that in the words of Rule 37 of Regulation No 2868/95:

‘An application to the Office for revocation...

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