VM Vermögens-Management GmbH v European Union Intellectual Property Office.

• Jurisdiction: European Union
• Celex Number: 62017CJ0653
• ECLI: ECLI:EU:C:2019:406
• Date: 15 May 2019
• Docket Number: C-653/17
• Procedure Type: Recurso de anulación
• Court: Court of Justice (European Union)

Provisional text

JUDGMENT OF THE COURT (Fifth Chamber)

15 May 2019 (*)

(Appeal — EU trade mark — Regulation (EC) No 207/2009 — Regulation (EU) 2015/2424 — Invalidity proceedings — Word mark Vermögensmanufaktur — Declaration of invalidity — Right to a fair hearing — Examination of the facts by EUIPO of its own motion — Retrospectivity — Jurisdiction of the General Court — Statement of reasons for judgments)

In Case C‑653/17 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 21 November 2017,

VM Vermögens-Management GmbH, established in Düsseldorf (Germany), represented by T. Dolde and P. Homann, Rechtsanwälte,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO), represented by S. Hanne, acting as Agent,

defendant at first instance

DAT Vermögensmanagement GmbH, established in Baldham (Germany),

intervener at first instance,

THE COURT (Fifth Chamber),

composed of E. Regan (Rapporteur), President of the Chamber, C. Lycourgos, E. Juhász, M. Ilešič and I. Jarukaitis, Judges,

Advocate General: J. Kokott,

Registrar: A. Calot Escobar,

having regard to the written procedure,

having decided, after hearing the Advocate General, to proceed to judgment without an Opinion,

gives the following

Judgment

1 By its appeal, VM Vermögens-Management GmbH seeks to have the judgment of the General Court of the European Union of 7 September 2017, VM v EUIPO — DAT Vermögensmanagement (Vermögensmanufaktur) (T‑374/15, EU:T:2017:589; ‘the judgment under appeal’) set aside, by which that Court dismissed its action seeking the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 April 2015 (Case R 418/2014-5) (‘the contested decision’), concerning invalidity proceedings between DAT Vermögensmanagement GmbH and VM Vermögens-Management.

Legal context

Regulation (EC) No 207/2009

2 Article 7(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1), entitled ‘Absolute grounds for refusal’, provides:

‘The following shall not be registered:

...

(b) trade marks which are devoid of any distinctive character;

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;

...’

3 Article 65 of that regulation, entitled ‘Actions before the Court of Justice’, provides:

‘1. Actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals.

2. The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power.

3. The Court of Justice has jurisdiction to annul or to alter the contested decision.

...’

4 Under Article 75 of that regulation, entitled ‘Statement of reasons on which decisions are based’:

‘Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.’

5 Article 76 of that regulation, entitled ‘Examination of the facts by the Office of its own motion’, is worded as follows:

‘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.’

Regulation (EU) 2015/2424

6 Article 1(28) of Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade marks and Designs) (OJ 2015 L 341, p. 21), provides:

‘Article 28 [of Regulation No 207/2009] is replaced by the following:

“Article 28

Designation and classification of goods and services

...

8. Proprietors of EU trade marks applied for before 22 June 2012 which are registered in respect of the entire heading of a Nice class may declare that their intention on the date of filing had been to seek protection in respect of goods or services beyond those covered by the literal meaning of the heading of that class, provided that the goods or services so designated are included in the alphabetical list for that class in the edition of the Nice Classification in force at the date of filing.

The declaration shall be filed at the Office by 24 September 2016, and shall indicate, in a clear, precise and specific manner, the goods and services, other than those clearly covered by the literal meaning of the indications of the class heading, originally covered by the proprietor’s intention. The Office shall take appropriate measures to amend the Register accordingly. The possibility to make a declaration in accordance with the first subparagraph of this paragraph shall be without prejudice to the application of Article 15, Article 42(2), Article 51(1)(a), and Article 57(2).

EU trade marks for which no declaration is filed within the period referred to in the second subparagraph shall be deemed to extend, as from the expiry of that period, only to goods or services clearly covered by the literal meaning of the indications included in the heading of the relevant class.

9. Where the register is amended, the exclusive rights conferred by the EU trade mark under Article 9 shall not prevent a third party from continuing to use a trade mark in relation to goods or services where and to the extent that the use of the trade mark for those goods or services:

(a) commenced before the register was amended; and

(b) did not infringe the proprietor’s rights based on the literal meaning of the record of the goods and services in the register at that time.

In addition, the amendment of the list of goods or services recorded in the register shall not give the proprietor of the EU trade mark the right to oppose or to apply for a declaration of invalidity of a later trade mark where and to the extent that:

(a) the later trade mark was either in use, or an application had been made to register the trade mark, for goods or services before the register was amended; and

(b) the use of the trade mark in relation to those goods or services did not infringe, or would not have infringed, the proprietor’s rights based on the literal meaning of the record of the goods and services in the register at that time.’

Communications Nos 4/03 and 2/12

7 The first paragraph of Point IV of Communication No 4/03 of the President of EUIPO, of 16 June 2003, concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations, stated:

‘The 34 classes for goods and the 11 classes for services comprise the totality of all goods and services. As a consequence of this, the use of all the general indications listed in the class heading of a particular class constitutes a claim to all the goods or services falling within this particular class.’

8 On 20 June 2012, the President of EUIPO adopted Communication No 2/12, repealing Communication No 4/03 and concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations. Point V of that communication provided:

‘As regards [EU] trade marks registered before the entry into force of [Communication No 2/12] which use all the general indications listed in the class heading of a particular class, [EUIPO] considers that the intention of the applicant, in view of the contents of the previous Communication No 4/03, was to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made.’

Background to the dispute

9 The background to the dispute, as set out in paragraphs 1 to 16 of the judgment under appeal, may, for the purposes of the present proceedings, be summarised as follows.

10 On 18 December 2009, the appellant, VM Vermögens-Management, filed an application for registration of an EU trade mark with EUIPO pursuant to Regulation No 207/2009. Registration as a mark was sought for the word sign ‘Vermögensmanufaktur’ (‘the contested mark’).

11 The services in respect of which registration was sought are in Classes 35 and 36 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 (‘the Nice Agreement’), and correspond, for each of those classes, to the following description:

– Class 35: ‘Advertising; business management; business administration; office functions’;

– Class 36: ‘Insurance; financial affairs; monetary affairs; asset management, financial consultancy; real estate affairs.’

12 On 8 February 2011, the EU trade mark application was published in Community Trade Marks Bulletin No 26/2011. On 18 May 2011, the contested mark was registered under number 8770042.

13 On 30 July 2012, the intervener at first instance, DAT Vermögensmanagement, filed an application with EUIPO for a declaration that the contested mark was invalid for all of the services for which it was registered, under Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) and (c) of that regulation (‘the...