CELEX: 62021TJ0530
EU trade mark
Opposition proceedings
Application for an EU figurative mark representing the superposed capital letters ‘P’ and ‘L’
Earlier EU figurative mark representing a mirror image combination of the superposed capital letters ‘P’ and ‘L’
Admissibility of the appeal before the Board of Appeal
Locus standi
Relative ground for refusal
Likelihood of confusion
Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001)

)
By its action under Article 263 TFEU, the applicant, Pierre Lannier, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 June 2021 (Case R 1915/2020-5) (‘the contested decision’).
…
Forms of order sought
The applicant claims, in essence, that the Court should:
–
annul the contested decision;
–
order EUIPO and the intervener to pay the costs.
EUIPO and the intervener contend that the Court should:
–
dismiss the action;
–
order the applicant to pay the costs.
Law
…
The first plea in law, alleging infringement of Article 67, Article 68(1) and Article 94 of Regulation 2017/1001, as well as Article 22(1) and Article 42(3) of Delegated Regulation 2018/625
In essence, the applicant makes a number of criticisms of the Board of Appeal’s assessment, in the contested decision, concerning the intervener’s response to the deficiency notified to it by the Registry of the Boards of Appeal. According to the applicant, the Board of Appeal wrongly held that the appeal was admissible. In support of its arguments, it alleges infringement of Article 67, Article 68(1) and Article 94 of Regulation 2017/1001, as well as Article 22(1) and Article 42(3) of Delegated Regulation 2018/625.
EUIPO and the intervener, Pierre Lang Trading GmbH, dispute those arguments.
In the first place, it is necessary to examine the arguments by which the applicant criticises the Board of Appeal for having declared the intervener’s appeal admissible.
As a reminder of the circumstances in the light of which the Board of Appeal examined the admissibility of the appeal before it, it should be noted that, on 2 March 2017, Pierre Lang Europe Handelsges.m.b.H. filed a notice of opposition to registration of the mark applied for pursuant to Article 41(1)(a) of Regulation No 207/2009 (now Article 46(1)(a) of Regulation 2017/1001). As is stated in paragraph 6 above, the ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009. As is stated in paragraph 6 above, the ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
By a company purchase agreement concluded on 4 April 2019, Pierre Lang Europe Handelsges.m.b.H. was acquired with all its tangible and intangible assets, including all of its trade marks, by the newly formed undertaking PL Schmuckhandels GmbH, whose company name, according to the extract from the Austrian companies register dated 8 January 2021, was amended to Pierre Lang Trading GmbH on 17 May 2019.
On 31 July 2020, the Opposition Division rejected the opposition in its entirety.
On 30 September 2020, a notice of appeal was filed against the decision of the Opposition Division, by means of a form made available to the interested parties by EUIPO. On that form, the appellant’s name was Pierre Lang Europe Handelsges.m.b.H.
On 30 November 2020, a statement setting out the grounds of appeal was filed with EUIPO, within the time limit laid down in Article 68(1) of Regulation 2017/1001, under the name Pierre Lang Europe Ges.m.b.H.
On 11 January 2021, following a letter from the Registry of the Boards of Appeal in which that registry invited the appellant before the Board of Appeal to clarify its name, EUIPO received the following documents:
–
a letter stating that the name of the appellant before the Board of Appeal was Pierre Lang Trading GmbH;
–
a new version of the statement setting out the grounds of appeal, in which the name Pierre Lang Trading GmbH was included;
–
the company purchase agreement by which Pierre Lang Europe Handelsges.m.b.H. had been acquired by the intervener;
–
an extract from the Austrian companies register relating to the intervener indicating its change of company name from PL Schmuckhandels GmbH to Pierre Lang Trading GmbH;
–
a copy of the application submitted to EUIPO on 5 January 2021 pursuant to Article 20(4) of Regulation 2017/1001 for registration of the transfer of the earlier mark from Pierre Lang Europe Handelsges.m.b.H. to the intervener.
It is in the light of those circumstances that the arguments by which the applicant criticises the Board of Appeal for having declared the intervener’s appeal admissible must be examined.
First, the applicant submits that the Board of Appeal infringed Article 67 of Regulation 2017/1001. In particular, it claims that the documents produced by the intervener to rectify the appeal are insufficient. In essence, the applicant submits that the documents produced do not establish the
locus standi
of the intervener to bring an appeal before the Board of Appeal.
It must be observed that, under Article 41(1)(a) of Regulation No 207/2009, applicable at the time, within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8 thereof. In respect, as in the present case, of Article 8(1)(b) of that regulation, notices of opposition may be filed, inter alia, by the proprietors of EU trade marks with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
In the present case, it is common ground that Pierre Lang Europe Handelsges.m.b.H. was the proprietor of the earlier mark when it filed a notice of opposition, on 2 March 2017, to registration of the mark applied for.
In the light of the company purchase agreement produced before the Board of Appeal, it must be noted that, following the purchase, on 4 April 2019, of Pierre Lang Europe Handelsges.m.b.H. and all of its trade marks by the intervener, the latter became the proprietor of the earlier mark.
It is apparent from the documents before the Court that, following the rejection, on 31 July 2020, of the opposition to registration of the mark applied for, a notice of appeal was filed with EUIPO on 30 September 2020 against the decision of the Opposition Division. As is apparent from the notice of appeal reproduced on pages 82 and 83 of EUIPO’s file, that notice was filed under the name Pierre Lang Europe Handelsges.m.b.H.
In that regard, it must be stated that, according to the case-law, when EUIPO examines the admissibility of an appeal brought before it, it must take into account the Register of European Union trade marks (‘the Register’) (judgment of 11 February 2020, Jakober v EUIPO (Shape of a cup),
T‑262/19
, not published,
EU:T:2020:41
, paragraph
). On the date on which the notice of appeal was filed against the decision of the Opposition Division, the name of the proprietor of the earlier mark set out in the Register was Pierre Lang Europe Handelsges.m.b.H.
It is also apparent from the documents before the Court that, in order to fulfil the obligation under Article 68(1) of Regulation 2017/1001, a statement setting out the grounds of appeal was filed with EUIPO on 30 November 2020. The name Pierre Lang Europe Ges.m.b.H. was included in that document.
Noting that the statement setting out the grounds of appeal had been filed in the name of an undertaking designated by a name different from that entered in the Register, the Registry of the Boards of Appeal, by letter of 9 December 2020, requested the party which had instituted the appeal proceedings to submit observations in that regard and to produce any documents capable of substantiating those observations.
In response to that request, the intervener sought, on 11 January 2021, to correct the name of the appellant before the Board of Appeal as set out in the notice of appeal, relying on Article 21(1)(a) and Article 23(1)(c) of Delegated Regulation 2018/625. It produced, in support of its request, the documents referred to in paragraph 24 above.
In that regard, it must be borne in mind that, under Article 21(1)(a) of Delegated Regulation 2018/625, a notice of appeal filed in accordance with Article 68(1) of Regulation 2017/1001 must contain the name of the appellant before the Board of Appeal in the form prescribed in Article 2(1)(b) of Implementing Regulation 2018/626.
Where the notice of appeal does not comply with the requirements laid down in Article 21(1)(a) of Delegated Regulation 2018/625, the Board of Appeal must reject the appeal as inadmissible, as provided for in Article 23(1)(c) of that regulation, if, despite having been informed thereof, the appellant has not remedied the deficiency within the prescribed time limit.
It follows from a combined reading of Article 21(1)(a) and Article 23(1)(c) of Delegated Regulation 2018/625, as well as Article 2(1)(b) of Implementing Regulation 2018/626, that the incorrect identification of the appellant in the notice of appeal filed in accordance with Article 68(1) of Regulation 2017/1001 is a defect capable of being rectified.
In the present case, it must be held that, by submitting to the Registry of the Boards of Appeal the documents referred to in paragraph 24 above, the intervener has established that it was the proprietor of the earlier mark at the time when the appeal was brought before the Board of Appeal. Contrary to the applicant’s assertions, the intervener has also provided explanations regarding the undertakings involved and the various names used. First of all, as is shown in particular by the company purchase agreement of 4 April 2019, the name Pierre Lang Europe Handelsges.m.b.H. is that of the intervener’s predecessor. Next, the insertion of the name Pierre Lang Europe Ges.m.b.H. into the statement setting out the grounds of appeal was the result of a clerical error, as the intervener confirms in paragraph 13 of its response. Lastly, the name Pierre Lang Trading GmbH is the name of the intervener. According to those documents, that name has now been entered in the Register as being that of the proprietor of the earlier mark since 5 January 2021.
It follows that the intervener has proved its status as proprietor of the earlier mark on the date on which the appeal was brought, that the incorrect identification of the appellant in the notice of appeal filed in accordance with Article 68(1) of Regulation 2017/1001 is a defect capable of being rectified, and that the intervener corrected the notice of appeal within the prescribed period.
Therefore, it must be held that, contrary to the applicant’s assertions, the intervener provided EUIPO with a satisfactory response and corrected its notice of appeal, in accordance with Article 21(1)(a) and Article 23(1)(c) of Delegated Regulation 2018/625, as well as Article 2(1)(b) of Implementing Regulation 2018/626.
In addition, as has been emphasised by EUIPO, the intervener was the registered proprietor of the earlier mark as from 5 January 2021. On that basis, it could, in accordance with Article 20(11) and (12) of Regulation 2017/1001, legitimately rectify the appeal.
Furthermore, as regards the applicant’s assertion that, on the day on which the appeal was brought before the Board of Appeal, a document in EUIPO’s database showed a complete transfer of the earlier mark to the intervener, it is true that, under Article 112 of Regulation 2017/1001, EUIPO collects and stores certain information in its database.
However, it is sufficient to note, as EUIPO did, that that document, which the applicant produced as an annex to the application, in fact concerns international registration No 1290848 designating the United States and Japan. That document does not refer to the transfer of the earlier mark to the intervener, but records the entry in the international register held by the International Bureau of the World Intellectual Property Organization (WIPO) of the transfer of an international registration based on the earlier mark in favour of the intervener.
Lastly, under the first sentence of Article 23(1) of Regulation No 207/2009, the transfer of a trade mark is to have effects vis-à-vis third parties only after entry in the Register. The lack of effects, vis-à-vis third parties, of transfers which have not been entered in the Register is intended to protect a person who has, or may have, rights in an EU trade mark as an object of property (judgment of 4 February 2016, Hassan,
C‑163/15
,
EU:C:2016:71
, paragraph
).
In the light of the foregoing, it must be concluded that, contrary to the applicant’s assertions, the observations submitted by the intervener and the evidence produced in support thereof were sufficient to enable the Board of Appeal to rule, as it did, on the admissibility of the appeal. The applicant’s arguments in that regard must be rejected.
As regards, more specifically, Article 67 of Regulation 2017/1001, it should be recalled, as the applicant does, that, under that provision, any party to proceedings adversely affected by a decision may appeal. In the present case, the Opposition Division rejected the opposition based on the earlier mark in its entirety. The intervener, in its capacity as successor to the company which filed that notice of opposition and as proprietor of the earlier mark on the date on which the appeal was brought, was in fact the person harmed by the decision of the Opposition Division.
Therefore, the intervener satisfied the conditions laid down in Article 67 of Regulation 2017/1001.
It follows that, contrary to the applicant’s assertions, the contested decision does not infringe that provision. All of the applicant’s arguments alleging infringement of Article 67 of Regulation 2017/1001 must be rejected.
Secondly, the applicant argues that the Registry of the Boards of Appeal failed to fulfil its obligations under Article 42(3) of Delegated Regulation 2018/625, inasmuch as it neither verified that the person bringing the appeal had the requisite
locus standi
to do so nor requested the President of the Fifth Board of Appeal to rule without delay on the admissibility of the appeal, having regard to the document in EUIPO’s database showing the complete transfer of the earlier mark.
In that regard, first, it follows from paragraph 33 above that, contrary to the applicant’s assertions, the Registry of the Boards of Appeal requested the intervener to prove that it had
locus standi
for the purpose of bringing an appeal against the decision of the Opposition Division. The Registry of the Boards of Appeal could not therefore have infringed Article 42(3) of Delegated Regulation 2018/625, inasmuch as it is argued that it failed to verify that the person bringing the appeal had the necessary
locus standi
to do so. Second, in the light of the finding already made in paragraph 43 above, it must be held, without there being any need to examine whether it was for the Registry of the Boards of Appeal to call upon the President of the Fifth Board of Appeal, that the applicant’s arguments cannot succeed in any event.
Accordingly, the infringement of Article 42(3) of Delegated Regulation 2018/625 alleged by the applicant has not been established and the arguments raised in that regard must be rejected.
Thirdly, the applicant claims that, by declaring the intervener’s appeal admissible, the Board of Appeal infringed Article 68(1) of Regulation 2017/1001.
It should be borne in mind that, under that provision, the notice of appeal must be filed in writing with EUIPO within two months of the date of notification of the decision and that, subsequently, a written statement setting out the grounds of appeal must be filed within four months of the date of notification of the decision.
It is clear, in the light of paragraphs 30 and 32 above, that the intervener filed the notice of appeal and the statement setting out the grounds of appeal within the time limits laid down in that provision. The applicant’s argument in that regard has no factual basis and must therefore be rejected.
As regards the version of the statement setting out the grounds of appeal filed on 11 January 2021 (see paragraph 34 above), it is apparent from the documents before the Court that, as EUIPO contends and as the applicant acknowledges, it was the statement setting out the grounds of appeal filed on 30 November 2020, within the time limit laid down in Article 68(1) of Regulation 2017/1001, which was sent to the applicant and which was taken into account by the Board of Appeal in the contested decision.
Therefore, contrary to the applicant’s assertions, the contested decision does not infringe that provision. Its arguments in that regard must therefore be rejected.
Fourthly, the applicant submits that, by finding the statement setting out the grounds of appeal to be admissible and, accordingly, extending that finding to the appeal itself, the Board of Appeal infringed Article 22(1) of Delegated Regulation 2018/625.
It should be recalled that, under that provision, the statement setting out the grounds of appeal must contain a clear and unambiguous identification of the appeal proceedings to which it refers, the grounds of appeal on which the annulment of the contested decision is requested and the facts, evidence and arguments in support of the grounds invoked.
In the present case, the statement setting out the grounds of appeal satisfied the conditions set out in Article 22(1) of Delegated Regulation 2018/625. Although the intervener filed a statement setting out the grounds of appeal under a different name from that entered in the Register, it in any event corrected that clerical error on 11 January 2021, within the time limit set for that purpose by the Registry of the Boards of Appeal.
Accordingly, the applicant’s arguments in that regard must be rejected.
In the second place, it is necessary to examine the applicant’s arguments alleging infringement of Article 94 of Regulation 2017/1001, in so far as they relate to formal and procedural defects allegedly attributable to the Board of Appeal.
First, the applicant submits that the Board of Appeal did not respond to the arguments which it raised regarding the inadmissibility of the appeal.
It should be borne in mind that, under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, according to which the reasoning of the author of the act must be shown clearly and unequivocally. Its purpose is twofold: first, to enable the persons concerned to ascertain the reasons for the measure taken in order to defend their rights and, second, to enable the Courts of the European Union to exercise their power to review the legality of the decision. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all of the legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM,
C‑447/02 P
,
EU:C:2004:649
, paragraphs
to
).
In particular, the duty to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient if they set out the facts and the legal considerations having decisive importance in the context of the decision (judgment of 15 January 2015, MEM v OHIM (MONACO),
T‑197/13
,
EU:T:2015:16
, paragraph
).
It is clear from a reading of the contested decision that the Board of Appeal set out, in paragraphs 15 to 18 of that decision, the reasons why it held, in view of the applicant’s arguments, that the various items of evidence produced by the intervener on 11 January 2021 had been sufficient to rectify the appeal and that that appeal complied with Articles 66 and 67 of Regulation 2017/1001, as well as Article 68(1) thereof. In those paragraphs, the Board of Appeal set out the facts and the legal considerations having decisive importance, with the result that it was not required to address one by one all the arguments put forward by the applicant. The applicant’s arguments in that regard must therefore be rejected.
Second, the applicant argues that neither the substance of the intervener’s response to the notification from the Registry of the Boards of Appeal nor its arguments in that regard were in fact discussed; an omission in breach of the second sentence of Article 94(1) of Regulation 2017/1001.
It must be borne in mind that, under that provision, decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments.
In the present case, it must be noted, as EUIPO did, that that body duly notified the applicant of all the documents exchanged between the Registry of the Boards of Appeal and the intervener during the appeal proceedings. In addition, it is apparent from the documents before the Court that, in the statement filed with EUIPO by the applicant on 22 March 2021, the latter challenged the admissibility of the intervener’s appeal before the Board of Appeal on grounds similar to those set out in its application before the Court. The applicant therefore did in fact present its comments in that regard. Its argument that, in breach of the second sentence of Article 94(1) of Regulation 2017/1001, it was given no opportunity to express its views in that regard has no factual basis and must be rejected.
Furthermore, it is apparent from paragraphs 15 to 18 of the contested decision that the Board of Appeal relied on the evidence submitted by the intervener, on which the applicant presented its comments in its statement of 22 March 2021. However, although the applicant submits that the intervener has not had an opportunity to present its comments on the arguments set out in that regard in its statement, it does not establish or even allege that the contested decision is based on those arguments. Consequently, in so far as it is not apparent from the contested decision that that decision is based on those arguments, that failure to present comments cannot establish an infringement of the second sentence of Article 94(1) of Regulation 2017/1001.
Accordingly, it must be held that the infringement of the second sentence of Article 94(1) of Regulation 2017/1001 alleged by the applicant has not been established.
It follows that the first plea in law, alleging infringement of Article 67, Article 68(1) and Article 94 of Regulation 2017/1001, as well as Article 22(1) and Article 42(3) of Delegated Regulation 2018/625, must be rejected.
…

On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:

1.
Dismisses the action;

2.
Orders Pierre Lannier to pay the costs.

Kornezov
Kowalik-Bańczyk
Hesse
Delivered in open court in Luxembourg on 14 December 2022.
[Signatures]
(
*1
)	Language of the case: English.
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)	Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.