CELEX: 62016TJ0780
EU trade mark
Invalidity proceedings
EU figurative mark mediaexpert
Earlier national word mark mediaexpert
Relative ground for refusal
Article 53(1)(a) and Article 8(1)(b) of Regulation (EC) No 207/2009
Evidence of the existence, validity and scope of protection of the earlier mark
Registration certificate for the earlier mark
Translation
Rules 37 to 39 and Rule 98(1) of Regulation (EC) No 2868/95
Legitimate expectations

Background to the dispute
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).
Registration as a mark was sought for the following figurative sign in colour:
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’.
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.
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.
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:
The earlier mark was registered in respect of goods and services in classes 7, 9, 11, 12, 16, 20, 35, 39, 41 and 42.
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.
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.
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.
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.
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’.
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.
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’.
By decision of 29 October 2015, the Cancellation Division rejected the application for a declaration of invalidity in its entirety.
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.
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.
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
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.
EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.

Law
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
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.
Furthermore, the applicant complains that EUIPO did not ask it to submit a full translation of the database extract.
EUIPO disputes the applicant’s arguments.
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.
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 or for a declaration of invalidity [of an EU mark]… shall contain:
...
(b) as regards the grounds on which the application is based,
...
(ii)      in the case of an application pursuant to Article 5[3](1) of Regulation [No 207/2009], particulars of the right on which the application for a declaration of invalidity is based and if necessary particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity;
...
(iv)      an indication of the facts, evidence and arguments presented in support of those grounds.’
In that regard, as is clear from the letter of the Cancellation Division of 4 June 2014 (see paragraphs 9 and 10 above), in its application for a declaration of invalidity the applicant failed to comply with the provisions referred to in paragraphs 25 and 26 above. As the Board of Appeal rightly noted in paragraph 19 of the contested decision, first, the list of goods and services covered by the earlier mark which was relied on in support of that application had not been supplied in English but only in Polish, by means of the database extract annexed to the application at issue and, second, the applicant did not set out in detail reasons in support of its application.
Accordingly, the Cancellation Division was required to set a time limit for the applicant to enable it to remedy those deficiencies in the application for a declaration of invalidity, which, if not remedied within the prescribed period, would lead to the rejection of that application as being inadmissible.
As the Board of Appeal stated in the second sentence of paragraph 27 of the contested decision, the imposition of that obligation on the Cancellation Division stems from Rule 39(3) of Regulation No 2868/95, which reads as follows:
‘(3)       If the Office finds that the application does not comply with Rule 37, it shall invite the applicant to remedy the deficiencies found within such period as it may specify. If the deficiencies are not remedied before expiry of the time limit, the Office shall reject the application as inadmissible.’
Moreover, it is necessary to refer also to Rule 38(1) of Regulation No 2868/95, which states:
‘1.      The time limit referred to in Article [119(6)] of Regulation [No 207/2009] within which the applicant for revocation or a declaration of invalidity has to file a translation of his application shall be one month, starting with the date of the filing of his application, failing which the application shall be rejected as inadmissible.’
In the present case, the applicant responded to the Cancellation Division’s letter of 4 June 2014 by means of the letter of 1 July 2014, which contained both the list in English of the goods and services covered by the earlier mark and the grounds for the application for a declaration of invalidity.
By means of the list in English set out in that letter, the applicant, in essence, supplemented its application for a declaration of invalidity, which should have, from the date of its filing, stated, in the language of the invalidity proceedings, the goods and services covered by the earlier mark that were relied on in support of that application.
Accordingly, the Cancellation Division, by letter of 7 July 2014, rightly informed the applicant that the application for a declaration of invalidity was thereafter admissible.
However, as follows from paragraphs 26 and 27 of the contested decision and from the penultimate paragraph of the substantive reasoning in the decision of the Cancellation Division, which the Board of Appeal upheld in its entirety and which therefore forms part of the context in which the contested decision was adopted (see, to that effect, judgment of 22 September 2016,
Sun Cali
v
EUIPO — Abercrombie & Fitch Europe (SUN CALI),
T‑512/15, EU:T:2016:527, paragraph 46 and the case-law cited), the fact that the application for a declaration of invalidity thereafter met the admissibility criteria laid down by Rule 37 of Regulation No 2868/95, including with respect to the issue of language, did not mean, first, that it was sufficiently substantiated nor, secondly, that the Cancellation Division had to invite the applicant to provide more evidence in support of the application before rejecting it on the merits.
In that regard, it should be noted that the legislature drew a fundamental distinction between, on the one hand, the conditions which an application for a declaration of invalidity must satisfy in order to be admissible and, on the other hand, the conditions concerning the production of the facts, evidence and arguments and of the documents in support of the application, which fall within the scope of the examination of that application (see, by analogy, judgment of 13 June 2002,
Chef Revival USA
v
OHIM — Massagué Marín (Chef),
T‑232/00, EU:T:2002:157, paragraph 54).
Only in respect of the admissibility criteria for an application for a declaration of invalidity did the legislature provide, in Rule 38(1) and Rule 39(3) of Regulation No 2868/95, that the Cancellation Division is obliged to allow the party concerned to remedy deficiencies in its application for a declaration of invalidity which may lead to the rejection of that application as being inadmissible, whereas no similar obligation exists in respect of the conditions required for an application for a declaration of invalidity to be declared well founded (see to that effect and by analogy, judgment of 17 June 2008,
El Corte Inglés
v
OHIM — Abril Sánchez and Ricote Saugar (BoomerangTV),
T‑420/03, EU:T:2008:203, paragraph 66 and the case-law cited).
In that context, it should be noted that the Board of Appeal, like the Cancellation Division, considered, in essence, that the applicant had not sufficiently substantiated its application for a declaration of invalidity, given that it had not produced an English translation of the database extract and that the Polish version of that extract could not be taken into account.
It follows from the case-law that a registration certificate for the earlier mark, to which the database extract is equivalent, and a translation of that certificate are not subject to the admissibility conditions but constitute documents relating to the examination of the merits of an application for a declaration of invalidity (see, to that effect and by analogy, judgments of 13 June 2002,
Chef,
T‑232/00, EU:T:2002:157, paragraph 52, and of 30 June 2004,
GE Betz v OHIM — Atofina Chemicals (BIOMATE),
T‑107/02, EU:T:2004:196, paragraph 70).
Consequently, while Rule 39(3) of Regulation No 2868/95 obliged the Cancellation Division to inform the applicant that the absence of a translation of the list of goods and services covered by the earlier mark is contrary to Rule 37(b)(ii) of Regulation No 2868/95, read together with Rule 38(1) of that regulation, no provision of either that regulation or of Regulation No 207/2009 obliged the Cancellation Division to proceed in the same way concerning the absence of a translation of the database extract.
As regards the evidence provided in support of the application for a declaration of invalidity, which is relevant to the assessment of the merits of that application and not its admissibility, Rule 38(2) of Regulation No 2868/95 provides that where that evidence ‘is not filed in the language of the ... invalidity proceedings, the applicant shall file a translation of that evidence into that language within a period of two months after the filing of such evidence’, but imposes no obligation on the Cancellation Division to invite the author of such an application to provide the translation in question.
Consequently, the Cancellation Division was no more obliged to ask the applicant to produce the complete translation of the database extract (see, to that effect, judgment of 28 October 2016,
Unicorn
v
EUIPO — Mercilink Equipment Leasing (UNICORN),
T‑201/15, not published, EU:T:2016:639, paragraphs 23 and 25) than it was to ask it to produce other documents in support of the merits of its application for a declaration of invalidity.
In that regard, it must be observed that the present case concerns a decision which does not relate to the absence of a translation of the list of goods and services covered by the earlier mark, as part of the assessment of the admissibility of the applicant’s application for a declaration of invalidity, but to the absence of a translation of the database extract, as part of the assessment of the merits of that application (see, to that effect and by analogy, judgment of 30 June 2004,
BIOMATE,
T‑107/02, EU:T:2004:196, paragraph 76).
In the absence of a translation, the Cancellation Division could not take the database extract into account and could therefore dismiss the application for a declaration of invalidity on the merits if, in the absence of the information contained in that extract, it was impossible for it to assess the existence, validity and scope of protection of the earlier mark (see, to that effect and by analogy, judgment of 29 September 2011,
adidas
v
OHIM — Patrick Holding
(
Representation of a shoe with two stripes
), T‑479/08, not published, EU:T:2011:549, paragraphs 32 and 33), which is part of the substantive assessment of an application for a declaration of invalidity (see, by analogy, judgment of 30 May 2013,
Moselland
v
OHIM — Renta Siete (DIVINUS),
T‑214/10, not published, EU:T:2013:280, paragraph 24), as the Board of Appeal stated correctly in paragraphs 29 and 30 of the contested decision.
The Board of Appeal thus correctly noted, in paragraph 31 of the contested decision, that in the circumstances of the present case, the dismissal of the application for a declaration of invalidity was the consequence of a failure to comply with a substantive condition required for the success of that application, since the applicant, by failing to submit within the prescribed period the relevant evidence and supporting documents, failed to prove the existence of the facts or the rights on which its application for a declaration of invalidity was founded (see, to that effect and by analogy, judgments of 13 June 2002,
Chef,
T‑232/00, EU:T:2002:157, paragraph 44, and of 17 June 2008,
BoomerangTV,
T‑420/03, EU:T:2008:203, paragraph 67).
Contrary to what is claimed by the applicant, in the present case it could not be held that a translation of the database extract had been validly produced by means of the information contained in the application for a declaration of invalidity and in the letter of 1 July 2014.
Rule 98(1) of Regulation No 2868/95 provides that ‘when a translation of a document is to be filed, the translation is to identify the document to which it refers and reproduce the structure and contents of the original document.’
In that regard, as the Board of Appeal observed, in essence, in paragraph 24 of the contested decision, the mere indication in the letter of 1 July 2014 of the list in English of goods and services covered by the earlier mark on which the application for a declaration of invalidity was based could not constitute a complete and structured translation of the database extract, within the meaning of Rule 98(1) of Regulation No 2868/95.
As EUIPO rightly submits, the applicant, in the application for a declaration of invalidity and in the letter of 1 July 2014, did no more than reproduce certain information appearing in the database extract, but failed explicitly to refer to that document and failed to reproduce its structure. Any interpretation according to which the information provided could compensate for the absence of a translation reproducing the same structure as the original would be tantamount to rendering Rule 98(1) of Regulation No 2868/95 redundant, since that provision expressly provides that the translation must ‘identify’ the document to which it refers and reproduce, inter alia, its ‘structure’. Accordingly, in order for a translation to be taken into account, it must comply with those formal requirements, the aim of which is, first, to enable the other party to the invalidity proceedings, as well as the EUIPO bodies, easily to compare the original document and its translation, and secondly, to ensure that the latter is sufficiently clear. In other words, the objective is, in particular, to enable the debate between the parties to the invalidity proceedings to take place on a sound foundation, in accordance with the adversarial principle, and to ensure equality of arms (see, to that effect and by analogy, judgment of 2 February 2016,
Benelli Q. J.
v
OHIM — Demharter (MOTO B),
T‑169/13, not published, EU:T:2016:56, paragraphs 70 and 71 and the case-law cited).
Moreover, as EUIPO correctly observes, first, the validity of the earlier mark cannot be inferred merely from the dates of filing and registration, as stated in the application for a declaration of invalidity. The database extract produced by the applicant contains an untranslated section corresponding to the date ‘2010-02-26’, which allegedly refers to the registration date of the earlier mark. However, the textual elements referred to after that date (‘Decyzja o rejestracji — nadanie numeru rejestracji’) were not translated into English and therefore leave open the question whether, on the abovementioned date, the earlier mark had been definitively registered.
Second, on the third page of the application for a declaration of invalidity, the applicant defined the earlier mark as being the word mark ‘mediaexpert’, but it also annexed the copy of the figurative mark reproduced in paragraph 6 above. In the database extract, the word element ‘mediaexpert’ appears at the top left but the image of a figurative mark appears on a separate page. In that context, in order that EUIPO and the proprietor of the contested mark should not misunderstand the nature of the earlier mark, it was essential that the applicant provide a translation of the database extract explaining the meaning of the section ‘Rodzaj znaku towarowego’ and the reference ‘Słowno-graficzny’, given that information concerning the nature of the earlier mark is essential for the purpose of determining the scope of protection which it enjoys in invalidity proceedings (see, to that effect and by analogy, judgment of 29 September 2011,
Representation of a shoe with two stripes,
T‑479/08, not published, EU:T:2011:549, paragraph 45).
Moreover, as EUIPO correctly observes, the representation of the earlier mark submitted by the applicant to it is in black and white and therefore does not correspond to the earlier mark as it appears, in colour, in the online register of the Polish Patent Office, as is apparent from the document produced by EUIPO before the General Court.
Last, it must be pointed out that, as follows from paragraph 23 of the contested decision, the applicant did not take advantage of the appeal proceedings to produce a translation of the database extract fulfilling the requirements laid down by Rule 98(1) of Regulation No 2868/95. Accordingly, the Board of Appeal was unable to exercise the discretion available to it under Article 76(2) of Regulation No 207/2009 and to take into account any new evidence submitted before it.
In view of the foregoing, the first plea in law must be rejected.

The second plea in law, alleging infringement of the principle of protection of legitimate expectations
By the second plea, the applicant complains that EUIPO gave it the impression that, after the filing of the letter of 1 July 2014, its application for a declaration of invalidity was complete and that it complied with all the relevant provisions. The applicant could not, therefore, it claims, have envisaged that by failing to provide a translation of the database extract its application would be rejected. Moreover, EUIPO had not correctly applied its own guidelines concerning the examination of EU trademarks (‘the guidelines’).
EUIPO disputes the applicant’s arguments.
It should be noted that by its arguments the applicant relies, in essence, on the infringement by EUIPO of the principle of the protection of legitimate expectations.
In that regard, it must be borne in mind that, according to settled case-law, the right to rely on the principle of the protection of legitimate expectations extends to any individual who is in a situation in which it is clear that the EU authorities have given him precise assurances, thereby causing him to entertain legitimate expectations. Thus, regardless of the form in which it is communicated, precise, unconditional and consistent information which comes from an authorised and reliable source constitutes such assurance (judgment of 12 December 2014,
Comptoir d’Épicure
v
OHIM — A-Rosa Akademie (da rosa),
T‑405/13, not published, EU:T:2014:1072, point 65; see also, to that effect, order of 21 September 2012,
Noscira
v
OHIM,
C‑69/12 P, not published, EU:C:2012:589, paragraph 27).
In the present case, it is clear that such assurances are lacking. In the first place, as stated in paragraphs 12 and 14 above, the Cancellation Division, both when it invited the applicant to remedy formal irregularities in the application for a declaration of invalidity that could lead to its being held inadmissible and when it acknowledged receipt of the letter of 1 July 2014, was careful to stipulate that this merely concerned questions of admissibility and that it was possible that documents or translations submitted or to be submitted by the applicant would not be sufficient to substantiate the application for a declaration of invalidity, with respect in particular to evidence of the existence and validity of the earlier right invoked, that issue being part of the examination of the merits of the application concerned.
In the second place, as EUIPO correctly observes, the obligation to produce translations of evidence in the language of the proceedings in support of an application for a declaration of invalidity has a clear legal basis in Rule 38(2) of Regulation No 2868/95. The applicant could not be unaware of that provision nor expect EUIPO to have the power to exempt a party from compliance with the requirements stemming from that provision.
In the third place, it is admittedly the case that, in point 6.2 of Part D, Section 1 of the guidelines, the following is stated:
‘If the applicant does not file a translation of evidence in support of the application which is required to evaluate the admissibility of the case (e.g. the particulars of the earlier right on which the application is based, or the indication of the facts, evidence and arguments in support of the grounds are not translated), the Office will invite the applicant to remedy the deficiency pursuant to Rule 39(3) of [Regulation No 2898/65]. If the deficiency is not remedied, the application for cancellation will be rejected as totally or partially inadmissible (Article 119(6) of [Regulation No 207/2009], Rules 38(2) and 39(3) of [Regulation No 2898/65])’.
However, first, it is clear that the invitation that EUIPO is required to issue under that subparagraph of point 6.2 of the guidelines concerns only the irregularities that could lead to the rejection of an application for a declaration of invalidity as being inadmissible and not issues concerning the evidence to be examined in its assessment of the merits of an application for a declaration of invalidity. Second, the distinction between the conditions governing the admissibility of an application for a declaration of invalidity and the question of whether it is sufficiently substantiated is clearly explained at point 4.1.3 of Part D, Section 1 of the guidelines, where it states, inter alia, that, with respect to matters which do not affect the admissibility of an application for a declaration of invalidity, EUIPO will not invite the party concerned to supplement the documents that it has submitted.
Therefore, the applicant’s attempt to rely on the guidelines to establish an infringement of the principle of protection of legitimate expectations is misconceived.
Accordingly, it must be held that the second plea is not well founded.
In the light of all the foregoing, the present action must be dismissed, there being no need to give a ruling on the admissibility, opposed in part by EUIPO, of the requests contained in the applicant’s second, third and fourth heads of claim.

Costs
Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.
Dismisses the action;
2.
Orders Mediaexpert sp. z o.o. to pay the costs.
Berardis
Papasavvas
Spineanu-Matei
Delivered in open court in Luxembourg on 20 July 2017.
E. Coulon

D. Gratsias
Registrar

President
*
Language of the case: English.