General Court considers consequence of failing to identify earlier markin notice of opposition

Par Richard Milchior, le 9 mars 2023

Article publié dans World Trademark Review

– Following the filing of an opposition by Dorsum, the EUIPO found that the mark indicated in the notice of opposition was not an earlier right

– Consequently, the earlier right had not been identified, which constituted a ground for rejecting the opposition as inadmissible

– The court confirmed that the present case concerned a deficiency entailing automatically the rejection of the opposition on the ground of inadmissibility

On 18 January 2023 the General Court issued its decision in Dorsum Informatikai Fejlesztő és Szolgáltató Zrt v European Union Intellectual Property Office (EUIPO) (Case T‑758/21). The applicant, Dorsum Informatikai Fejlesztő és Szolgáltató Zrt, hadrequested the alteration or annulment of the decision of the First Board of Appeal of the EUIPO of 22 September 2021 (CaseR 189/2021-1).

Background

On 15 May 2019 id Quantique SA fi led an application for registration of an EU trademark for the word sign CLAVIS in Classes 9and 42. On 22 August 2019 the applicant fi led a notice of opposition in respect of all the services in Class 42. The applicantidentifi ed, as the basis of its opposition, the EU word mark CLAVIS, the application for registration of which had been fi led on 15May 2019 under No 18,064,876. The priority date indicated was 27 December 2013. In addition, at the top of the notice ofopposition form, in the fi eld “Your reference”, the applicant put ‘clavis2013’. On 26 September 2019 the opposition periodexpired.

On 9 October 2019 the Opposition Division of the EUIPO held that the opposition was admissible at least insofar as it wasbased on EUTM No 18,064,876. The applicant was given until 9 February 2020 to substantiate, where appropriate, its earlierrights and submit the facts, evidence and arguments in support of the opposition. On 14 January 2020 the applicant submittedthe registration certifi cate for the EU word mark CLAVIS, registered on 27 December 2013 under No 12,031,563 (‘the earliermark’).

On 7 May 2020, the Opposition Division informed the applicant that the EUIPO intended to revoke the decision on theadmissibility of the opposition. The reason was that the procedure which led to the decision of 9 October 2019 contained anobvious error attributable to the EUIPO, namely that it had overlooked the fact that the earlier mark invoked was not an earliermark. The applicant was granted a deadline to submit observations, but did not raise any objection or observations.

On 2 July 2020 the Opposition Division informed the applicant that the examination of the notice of opposition had shown thatit was inadmissible, given that the mark on which the opposition was based was not an earlier mark and that that defi ciency hadnot been remedied before the expiry of the opposition period. On 10 September 2020 the applicant submitted that it was theproprietor of an earlier mark which was in fact earlier than the mark applied for.

On 27 November 2020 the Opposition Division rejected the opposition as inadmissible. It found that the mark relied on in thenotice of opposition was not earlier than the mark applied for and that the earlier mark had not been clearly indicated as a basisfor the opposition before the expiry of the opposition period.

This decision was appealed. The Board of Appeal dismissed the appeal. In particular, it found that the applicant had incorrectlyentered the details of the mark applied for under the heading “Basis of opposition” in its notice of opposition and that the correctinformation relating to the earlier mark had not been provided until after the expiry of the opposition period. It confi rmed thatthe mark indicated in the notice of opposition was not an earlier right and that, consequently, the earlier right had not beenidentifi ed; this constituted a ground for rejecting the opposition as inadmissible. As regards the admissibility of the opposition,the EUIPO had no discretion to search its register to identify an earlier right or to accept evidence fi led after the expiry of theopposition period.

Decision

First head of claim

The applicant asked the court to alter the board’s decision and to uphold its appeal against the Opposition Division’s decision inwhich it requested that that decision be annulled, that the opposition be upheld and that the application for registration of themark applied for be rejected.

The power of the General Court to alter decisions does not have the effect of conferring on it the power to substitute its ownreasoning for that of a Board of Appeal or to carry out an assessment on which that board has not yet adopted a position.Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the court, after reviewingthe assessment made by the board, is in a position to determine, based on the matters of fact and of law as established, whatdecision the board was required to take.

In the present case, the Board of Appeal had ruled on the admissibility of the opposition fi led by the applicant without taking aposition on its merits. Therefore, the court could not, in the context of an application for alteration, carry out an assessment as tothe substance of the case without the board having already adopted a position. The fi rst head of claim was rejected asunfounded.

Substance

In support of its action, the applicant put forward four pleas in law, alleging infringement of Article 47(1), Article 107, Article 95and Article 72(2) of Regulation 2017/1001.

First plea

The applicant submitted, in the fi rst place, that the Board of Appeal had made an error of assessment in concluding that theapplicant had not provided any information concerning its earlier mark in the notice of opposition. The applicant noted that itwas the EUIPO which drew its attention to the mark applied for by means of a surveillance letter and submitted that, in thatletter, the EUIPO had provided it with the reference ‘clavis2013’, clearly identifying its earlier mark and the year 2013. In thesecond place, it claimed that the EUIPO had infringed Article 47 inasmuch as it did not assess in its entirety the notice ofopposition which should have led it to take into account the reference ‘clavis2013’ in order to enable it to identify the earlierright and to invite it to remedy the defi ciencies found in the notice of opposition.

Article 47, entitled “Examination of opposition”, provides that, in the examination of the opposition, the EUIPO is to invite theparties to fi le observations, within a period set by the EUIPO, on communications from the other parties or issued by itself.However, it follows from Article 6(1) of Delegated Regulation 2018/625 that the adversarial part of the opposition proceedingsbegins only after the opposition has been found to be admissible. It was therefore necessary to ascertain whether the Board ofAppeal had erred in law in confi rming the Opposition Division’s decision to reject the opposition as inadmissible without fi rstinviting the applicant to remedy the defi ciencies contained in the notice of opposition.

Article 2(2)(b)(i) of Delegated Regulation 2018/625 states that the notice of opposition must contain a clear identifi cation of theearlier mark on which the opposition is based. Under Article 5(3) of the regulation, the opposition must be rejected asinadmissible if the notice of opposition does not clearly indicate the earlier mark and if those defi ciencies are not remediedbefore the expiry of the opposition period. Therefore, it was necessary to determine whether, in the present case, the notice ofopposition contained a clear indication of the earlier mark.

The applicant stated that it based its opposition on the mark CLAVIS, registration No 18,064,876, and its “date of fi ling” of theapplication was 15 May 2019. Since those indications correspond to the mark applied for, they could not constitute an earlierright and, consequently, no earlier right was clearly identifi ed and the applicant did not dispute that the notice of oppositioncontained incorrect data.

The applicant also submitted that the Board of Appeal was required to read the notice of opposition as a whole, which wouldallow its intention to base its opposition on the earlier mark to be deduced on account of the indication of 27 December 2013 asthe priority date and the reference ‘clavis2013’ in the fi eld “Your reference”, a reference also used by the EUIPO in thesurveillance letter of 26 June 2019 sent to the applicant. In that regard, it should be noted that the Board of Appeal cannot beasked to carry out further research to identify the earlier right. The elements that are necessary to identify clearly in the notice ofopposition the earlier mark on which the opposition is based include an indication of the registration number of that mark.

Thus, it was held that the mere indication of the reference ‘clavis2013’ in the fi eld entitled “Your reference” and the reference toa priority date in 2013 did not, on their own, support the conclusion, in the absence of any express indications in the notice ofopposition making it possible to identify the earlier mark, registered on 27 December 2013 under No 12,031,563, that it was onthat mark that the applicant intended to base its opposition, and it was not a clear identifi cation of the earlier mark.

As regards the applicant’s argument that the EUIPO should have invited it to remedy the defi ciencies in the notice of opposition,it was recalled that Article 5 of Delegated Regulation 2018/625 draws a distinction between two categories of conditions ofadmissibility: if the notice of opposition does not satisfy the conditions of admissibility referred to in Article 5(3) of theregulation, the opposition must be rejected as inadmissible unless the defi ciencies have been remedied before the expiry of theopposition period. Otherwise, if the notice of opposition does not comply with the provisions of Article 2(2)(d) to (h) of theregulation, Article 5(5) of that regulation provides that the opposition must be rejected as inadmissible only where the opposingparty, after having been invited by the EUIPO to remedy the defi ciencies noted within a period of two months, has failed tocorrect those defi ciencies within the prescribed period.

In the present case, the notice of opposition failed to satisfy one of the conditions for admissibility provided for in Article 5(3) ofthe regulation and the EUIPO was not required to invite the applicant to remedy that before rejecting the opposition asinadmissible. According to the court, the board was right to fi nd that the present case concerned a defi ciency entailingautomatically the rejection of the opposition on the ground of inadmissibility, since the defi ciencies were not remedied beforethe expiry of the opposition period. Accordingly, since the adversarial stage of the opposition proceedings had not been initiated,the adversarial examination procedure provided for in Article 47 of Regulation 2017/1001 could not be applied. The fi rst pleawas rejected.

Second plea

Article 107 of Regulation 2017/1001 provides that, in the absence of procedural provisions in that regulation or in acts adoptedpursuant to that regulation, the EUIPO must take into account the principles of procedural law generally recognised in themember states. However, both Regulation 2017/1001 and Delegated Regulation 2018/625 contain procedural provisionslaying down the cases in which the EUIPO is required to invite the opponent to remedy the defi ciencies found in its oppositionbefore rejecting it as inadmissible. In that regard, it was noted that, in the present case, the board was right to fi nd that thenotice of opposition did not clearly identify the earlier right and that it was a defi ciency automatically entailing the rejection ofthe opposition on the ground of inadmissibility given that the defi ciencies were not remedied before the expiry of the oppositionperiod.

Since there was no ambiguity in the procedural provisions applied, Article 107 of Regulation 2017/1001 was not applicable inthis case and the second plea in law was rejected as unfounded.

Third and fourth pleas

The applicant also disputed the Board of Appeal’s assertion that it had no discretion to accept evidence submitted after theexpiry of the opposition period.

The applicant provided, after the expiry of the opposition period, the correct information concerning the mark on which itintended to base its opposition. However, it submitted that, under Article 95(2) of Regulation 2017/1001, the EUIPO couldnevertheless have taken that evidence into account and was required to state reasons for its decision regarding the exercise ofits discretion and that, by failing to do so, the board had infringed Article 95(2) of Regulation 2017/1001. This article providesthat the EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

According to the wording of that provision, the EUIPO is in no way prohibited from taking account of facts and evidence whichare submitted or produced late. In stating that the EUIPO “may” decide to disregard such evidence, that provision grants theEUIPO a wide discretion to decide, while giving reasons for its decision, whether or not to take such evidence into account.However, the possibility for parties to submit facts and evidence after the expiry of the periods specifi ed for that purpose isconditional upon there being no provision to the contrary.

In that regard, a distinction must be drawn between, on the one hand, the conditions which the notice of opposition must satisfy- conditions of admissibility of the opposition – and, on the other hand, the submission of the facts, evidence and arguments andof the documents supporting the opposition, which are matters falling within the scope of the examination of the opposition. Inthe present case, the defi ciency found, consisting of the failure to clearly identify the earlier mark, automatically entailed therejection of the opposition on the ground of inadmissibility. The Board of Appeal was therefore right to fi nd that, as regardsadmissibility, the EUIPO had no discretion to accept evidence submitted after the expiry of the opposition period and the thirdplea was rejected as unfounded.

The final plea was considered as already included in the previous one and rejected too.

The action was dismissed.

Comment

The advice is simple: opponents must correctly identify the earlier right on which the opposition is based when preparing thenotice of opposition and, if a mistake is made, it must be corrected before the end of the opposition period.

This article first appeared on WTR Daily, part of World Trademark Review, in February 2023. For further information, please go to www.worldtrademarkreview.com.