Opinion of the Advocate General — ECLI:EU:C:2017:892
Date: 2017-11-23
Language of the case: German
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded;Appeal - inadmissible
Origin: Germany

Summary — Judgment of the Court (First Chamber), 28 February 2018 1. Appeal — Grounds — Specific criticism of a point of the General Court’s reasoning necessary (Art. 256(1), second para., TFEU; Statute of the Court of Justice, Art. 58, first para.; Rules of Procedure of the Court of Justice, Arts 168(1)(d) and 169(2)) 2. EU trade mark — Appeals procedure — Action brought against a decision by the Cancellation Division of EUIPO — Examination by the Board of Appeal — Scope — Facts and evidence not produced in support of the opposition within the period prescribed for that purpose — Account taken — Discretion of the Board of Appeal (Council Regulation No 207/2009, Art. 76(2)) 3. EU trade mark — Appeals procedure — Action brought against a decision by the Cancellation Division of EUIPO — Examination by the Board of Appeal — Scope — Facts and evidence not produced in support of the opposition within the period prescribed for that purpose — Account taken — Discretion of the Board of Appeal — No contrary provision (Council Regulation No 207/2009, Arts 57(2) and (3), 63(2) and 76(2); Commission Regulation No 2868/95, Art. 1, Rules 40(6) and 50(1)) 4. Appeal — Grounds — Incorrect assessment of the facts and evidence — Inadmissibility — Review by the Court of the assessment of the facts and evidence — Possible only where the clear sense of the evidence has been distorted — Ground of appeal alleging distortion of the clear sense of the evidence — Need to indicate precisely the evidence alleged to have been distorted and show the errors of appraisal which led to that distortion [Art. 256 TFEU; Statute of the Court of Justice, Art. 58, first para.; Rules of Procedure of the Court of Justice, Art. 168(1)(d)) 5. EU trade mark — Surrender, revocation and invalidity — Examination of the application — Proof of use of the earlier mark – Preliminary issue (Council Regulation No 207/2009, Art. 57(2) and (3)) 6. EU trade mark — Appeals procedure — Decision on the appeal – Referred back by the Board of Appeal to the body which adopted the contested decision (Council Regulation No 207/2009, Arts 64(2) and 76(2)) 1. See the text of the decision. (see para. 35) 2. See the text of the decision. (see paras 48, 49) 3. The first subparagraph of Rule 50(1) of the Implementing Regulation provides that, unless otherwise provided, the provisions relating to proceedings before the department which made the contested decision are to be applicable to appeal proceedings mutatis mutandis. However, as regards the submission of proof of genuine use of the earlier mark pursuant to Article 57(2) or (3) of Regulation No 207/2009, in the context of invalidity proceedings brought on the basis of Article 53(1)(a) of that regulation, Rule 40(6) of the Implementing Regulation provides that the European Union Intellectual Property Office (EUIPO) is to invite the proprietor of the earlier mark to prove the use of that mark during a period which it is to specify. Although it follows from the wording of that rule that, when no proof of use of the mark concerned is produced within the time limit set by EUIPO, the application for a declaration of invalidity must be rejected by EUIPO of its own motion, such a conclusion does not, however, pertain where some evidence intended to show that use has been produced within that time limit. In such a case, and unless it emerges that that evidence is entirely irrelevant for the purpose of establishing genuine use of the earlier mark in question, the proceedings must take their course. EUIPO must, inter alia, as provided for by Article 57(1) of Regulation No 207/2009, invite the parties, as often as necessary, to file observations on communications from the other parties or issued by EUIPO itself. In such a context, if the application for a declaration of invalidity is rejected on the ground that the earlier mark concerned was not subject to genuine use, that rejection does not proceed from application of Rule 40(6) of the Implementing Regulation, an essentially procedural provision, but solely from application of the substantive provisions in Article 57(2) or (3) of Regulation No 207/2009. It follows therefrom that it remains possible to submit evidence of use of the mark in addition to the evidence adduced within the time period set by EUIPO under Rule 40(6) of the Implementing Regulation and that EUIPO is in no way prohibited from taking account of additional evidence which is submitted after that time under the discretion conferred upon it under Article 76(2) of Regulation No 207/2009. Accordingly, Rule 40(6) of the Implementing Regulation does not, contrary to the appellant's submissions, constitute a provision contrary to Article 76(2) of Regulation No 207/2009, with the result that the Board of Appeal is not entitled to take account of additional evidence of use of the earlier mark in question produced by the applicant for a declaration of invalidity in support of its action before it. As regards the appeal procedure, the Court has already held that it follows from Article 63(2) of Regulation No 207/2009, read in conjunction with Article 76(2) of that regulation, that, for the purposes of the examination of the merits of the appeal brought before it, the Board of Appeal is not only to invite the parties, as often as necessary, to file, within time limits which it sets, observations on notifications which it has sent to them, but may also decide on measures of inquiry, including the production of facts or evidence.In turn, such provisions demonstrate the possibility of seeing the underlying facts of a dispute multiply at various stages of the proceedings before EUIPO. Under the third subparagraph of Rule 50(1), where the appeal is directed against a decision of an Opposition Division, the Board of Appeal must limit its examination of the appeal to facts and evidence presented within the time limits set or specified by the Opposition Division, unless the Board considers that additional or supplementary facts and evidence must be taken into account pursuant to Article 76(2) of Regulation No 207/2009. Thus, the Implementing Regulation expressly provides that the Board of Appeal enjoys, when examining an appeal directed against a decision of the Opposition Division, the discretion deriving from the third subparagraph of Rule 50(1) of that regulation and from Article 76(2) of Regulation No 207/2009 to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division. However, it cannot be inferred therefrom, a contrario, that during the examination of an appeal against a decision of a Cancellation Division, the Board of Appeal does not have such discretion. The third subparagraph of Rule 50(1) of the Implementing Regulation is merely the expression, as regards the examination of an appeal against a decision of an Opposition Division, of the principle flowing from Article 76(2) of Regulation No 207/2009, which constitutes the legal basis for Rule 50 and contains a rule which applies horizontally within the scheme of that regulation, which, accordingly, applies irrespective of the nature of the proceedings concerned. (see paras 51-57, 59-61) 4. See the text of the decision. (see paras 65, 66) 5. In accordance with Article 57(2) and (3) of Regulation No 207/2009, where the proprietor of an earlier national mark who initiated proceedings for a declaration of invalidity of an EU trade mark has failed to provide, at the request of the proprietor of that mark, proof of genuine use of that earlier national trade mark in the Member State in which it is protected during the period of five years preceding the date of the application for a declaration of invalidity for the goods or services in respect of which it is registered and on which the application was based, that application must be dismissed. Since the lack of genuine use of the earlier mark, when raised by the proprietor of a disputed EU trade mark in the context of an application for a declaration of invalidity, thus constitutes, in accordance with the wording of that provision, a reason justifying in itself the rejection of that application, the question concerning the proof of that use had to be settled before a decision is taken on the application for a declaration of invalidity and, is, therefore, in that sense, a ‘preliminary issue’. (see paras 87, 88) 6. The operative part of a measure must be read in the light of the grounds. Thus, Article 64(2) of Regulation No 207/2009 expressly provides that, if the Board of Appeal remits a case for further prosecution to the division whose decision was appealed, that division is bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same. Where the Board of Appeal annulled the decisions of the Cancellation Division on the ground that, contrary to the conclusions they had reached, the proof of genuine use of the earlier national trade mark at issue had been adduced by the proprietor of that mark only in respect of part of the services in respect of which a declaration of invalidity was sought, the Cancellation Division is bound by that ground in the context of the remittal made by the Board of Appeal by virtue of Article 64(2) of Regulation No 207/2009. Thus, the annulment by the Board of the decisions of the Cancellation Division must necessarily be understood as affecting only those decisions in so far as they rejected the applications for a declaration of invalidity on the ground of the lack of proof of genuine use of the earlier national mark in respect of that part of those services. However, since the Board of Appeal was of the view that the proof of genuine use of the earlier national mark had not been adduced by its proprietor in respect of the other services targeted by the applications for a declaration of invalidity, the decisions of the Cancellation Division must be regarded, in the absence of any action brought before the General Court on that point, as having definitively rejected the applications for a declaration of invalidity as regards those services. It follows therefrom that the Cancellation Division, in the context of the remittal made under Article 64(2) of Regulation No 207/2009, in order to assess the merits of the applications for a declaration of invalidity in the light of the relative ground for refusal provided for in Article 8(1)(b) of that regulation, can take into account only the services in respect of which the Board of Appeal found that proof of genuine use of the earlier national mark had been adduced. It is true that the Cancellation Division, pursuant to Article 64(2) of Regulation No 207/2009, is bound only by the grounds of the decisions of the Board of Appeal, in so far as the facts are the same. Nevertheless, the Cancellation Division cannot, without calling into question the definitive nature of its own decisions and undermining legal certainty, examine, under Article 76(2) of Regulation No 207/2009, evidence of genuine use of the earlier national trade mark at issue in respect of the services for which it was considered by the Board of Appeal without that being challenged by the applicant for a declaration of invalidity by an action brought before the General Court, that that evidence had not been adduced. (see paras 100-107)