Judgments nº T-263/18 of Tribunal General de la Unión Europea, March 05, 2019

Resolution Date:March 05, 2019
Issuing Organization:Tribunal General de la Unión Europea
Decision Number:T-263/18
 
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(EU trade mark - Revocation proceedings - European Union figurative trade mark MEBLO - Genuine use of the trade mark - Article 58(1)(a) of Regulation (EU) 2017/1001 - Proof of genuine use)

In Case T-263/18,

Meblo Trade d.o.o., established in Zagreb (Croatia), represented by A. Ivanova, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Markakis and H. O’Neill, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervening before the General Court, being

Meblo Int, proizvodnja izdelkov za spanje d.o.o., established in Nova Gorica (Slovenia), represented by A. Plesničar, lawyer,

ACTION against the decision of the Fourth Board of Appeal of EUIPO of 27 February 2018 (Case R 883/2017-4), concerning revocation proceedings between Meblo Trade and Meblo Int, proizvodnja izdelkov za spanje,

THE GENERAL COURT (Third Chamber),

composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 26 April 2018,

having regard to the response of EUIPO lodged at the Court Registry on 7 August 2018,

having regard to the response of the intervener lodged at the Court Registry on 3 August 2018,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks of 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 27 January 1999, Meblo Holding d.o.o., the intervener’s predecessor in law, Meblo Int, proizvodnja izdelkov za spanje d.o.o., and the applicant, Meblo Trade d.o.o., entered into a licence agreement concerning the ‘protected sign MEBLO’ (‘the licence agreement’).

2 On 30 October 2003, the intervener’s predecessor in law filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) under 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 2008 on the European union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The trade mark in respect of which registration was sought is the following figurative sign:

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4 The goods and services in respect of which registration was sought are in Classes 16, 17, 19, 20, 22, 24 and 35 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 to the following descriptions respectively:

- Class 16 - ‘Plastic film for wrapping; packaging material made of cardboard’;

- Class 17 - ‘Stuffing of plastic materials’;

- Class 19 - ‘Plates made of wood, chipboards, fiber plates, plywood plates, wainscotting (not of metal); wall and ceiling wainscot made of chipboards or plywood plates’;

- Class 20 - ‘Furniture, including beds and bed frames; mirrors, frames; spring mattresses and protective covers for spring mattresses (sleeping equipment); articles (not included in other classes) made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics’;

- Class 22 - ‘Stuffing made of natural fibers’;

- Class 24 - ‘Protective spreads for spring mattresses’;

- Class 35 - ‘Business management, services relating to the sale of furniture, beds, bed frames, spring mattresses and other articles of sleeping equipment; accounting; marketing research, marketing studies; advertising; organization of fairs and exhibitions for commercial or advertising purposes; middleman services relating to the purchase and selling of enterprises; business management assistance; professional business consultancy’.

5 The trade mark was registered on 29 March 2005 under No 3431731.

6 On 4 September 2014, the intervener’s predecessor in law terminated its licence agreement with the applicant. By letter of 8 September 2014 to the applicant, the intervener’s predecessor in law formally confirmed the termination of the licence agreement. According to that letter, termination was to take effect on 4 March 2015.

7 On 29 December 2015, EUIPO registered the transfer of the contested mark to the intervener.

8 On 31 March 2016, the applicant filed an application for revocation, under Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), in respect of the contested mark, claiming that the mark had not been put to genuine use within a continuous period of five years, namely between 31 March 2011 and 30 March 2016 (‘the relevant period’).

9 On 5 July 2016, the intervener filed items of evidence, numbered 1 to 14, within the time limit set by EUIPO.

10 On 23 August 2016, the applicant lodged its observations, within the time limit set by EUIPO, on the evidence submitted by the intervener. On 5 September 2016, EUIPO forwarded those observations to the intervener and set a time limit for submission of the latter’s observations.

11 On 9 November 2016, that is, within the time limit set by EUIPO, the intervener submitted observations together with items of evidence, numbered 15 to 55, to the Cancellation Division.

12 By decision of 23 March 2017, the Cancellation Division upheld the applicant’s application in part, revoking the contested mark in respect of all the goods and services covered by the registration, with the exception of the following goods and services in Classes 20 and 35 respectively:

- Class 20 - ‘Furniture, including beds and bed frames; spring mattresses’;

- Class 35 - ‘Services relating to the sale of furniture, beds, bed frames, spring mattresses and other articles of sleeping equipment’.

13 On 3 May 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001).

14 By decision of 27 February 2018 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. It found, in essence, that the evidence submitted by the proprietor of the EU trade mark was sufficient to prove genuine use of that mark in respect of the goods and services referred to in paragraph 12 above.

Forms of order sought

15 The applicant claims that the General Court should annul the contested decision in so far as the Board of Appeal found that EU trade mark No 3431731, MEBLO, had been used by the proprietor or by its predecessors in respect of the goods ‘Furniture, including beds and bed frames’ in Class 20 and ‘services relating to the sale of furniture, beds, bed frames, spring mattresses and other articles of sleeping equipment’ in Class 35.

16 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

17 The intervener claims that the Court should:

- dismiss the action;

- uphold the contested decision;

- order the applicant to pay the costs.

Law

18 In support of its action, the applicant relies on a single plea in law, divided into two parts, alleging infringement of Article 58(1)(a) of Regulation 2017/1001 and breach of the principle of equality of arms, respectively.

19 The Court considers it appropriate to examine, at the outset, the part relating to the breach of the principle of equality of arms.

Breach of the principle of equality of arms

20 As a preliminary point, it must be observed that on 9 November 2016, at the request of EUIPO, the intervener submitted observations together with items of evidence, numbered 15 to 22, to the Cancellation Division. Those items comprised English translations of evidence filed on 5 July 2016 (items 15 to 18 and 20 to 22), excerpts from the Romarin database of the World Intellectual Property Organization (WIPO), notices and invoices concerning the licence fee (item 15) and three screenshots showing buildings (item 19). By letter of 8 December 2016, EUIPO provided the applicant with the observations and evidence filed by the intervener. The letter contained, inter alia, the following: ‘[the] Office considers the adversarial part of the procedure closed. Unless further examination of the file reveals that the submission of additional observations or evidence is needed, the Office will rule on the application on the basis of the evidence before it’.

21 In that connection, the applicant takes the view that it was for the Board of Appeal to determine whether the items of evidence filed on 9 November 2016 were admissible, since they had been produced at a later stage in the procedure, and, if they were admissible, to determine why they had not been forwarded to the applicant for its observations, particularly if they were indeed part of the evidence on which the Cancellation Division based its decision. It is argued that those flaws vitiate the proceedings before the Cancellation Division and the Board of Appeal. The applicant claims that it is clear from paragraph 26 of the contested decision that the Fourth Board of Appeal based its decision primarily on that ‘new’ evidence.

22 It must be concluded that, by the part of the plea alleging breach of the principle of equality of arms, the applicant in fact claims (i) infringement of Article 95(2) of Regulation 2017/1001, which provides that EUIPO may disregard facts or...

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