Judgment — ECLI:EU:T:2011:450
Date: 2011-09-09
Language of the case: English
Court formation: First Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded
Origin: United Kingdom

Summary of the pleas in law 23 The applicant disputes the contested decision, which, he claims, was based on incorrect interpretations of Article 16, 23 and 77a of Regulation No 40/94 and Rule 31 of Regulation No 2868/95. 24 The applicant argues that the Board of Appeal was wrong to refuse to revoke the decision by which OHIM had registered the intervener as proprietor of the Community trade mark in the register and to find that Regulation No 40/94 and Regulation No 2868/95 did not permit OHIM to register the applicant as proprietor of the Community trade mark concerned. Article 16 of Regulation No 40/94 25 The applicant argues that Article 16(1) of Regulation No 40/94 requires OHIM to consider and apply the laws of the Member States – in the present case, the law of the United Kingdom – when making any decision concerning the transfer of a Community trade mark. In that regard, the Court notes that Article 16(1) of Regulation No 40/94 states that a Community trade mark as an object of property is to be dealt with as a national trade mark registered in a Member State. It follows that it is the national law of the Member State concerned which applies to questions regarding ownership of a Community trade mark. Accordingly, the competent authority to deal with questions relating to the ownership of Community trade marks is the competent authority for national marks of the Member State in question. 26 However, Article 16 of Regulation No 40/94 does not govern the law applicable to a contract, which includes the rules on the validity and interpretation of contracts concerning a Community trade mark, such as, in particular, assignments. In those cases the rights and obligations concerned are inter partes, namely between the parties to a contract. 27 The Board of Appeal was therefore right to find, contrary to the applicant’s arguments, that Article 16 of Regulation No 40/94 does not in any way require that OHIM consider and apply the national laws of the Member States concerning a Community trade mark as an object of property. It is not apparent from Article 16 of Regulation No 40/94 that OHIM or the Courts of the European Union must consider or rule on contractual or legal questions arising under national law. Article 17 of Regulation No 40/94 and Rule 31 of Regulation No 2868/95 on the transfer of a Community trade mark 28 The applicant claims that Rule 31 of Regulation No 2868/95 requires that OHIM consider the validity and effect of documents that are provided to it if the legal effects of those documents are challenged. In that regard, in this case, the Court must determine the powers of OHIM regarding the registration of a transfer of a Community trade mark following an assignment. Accordingly, it is appropriate first to consider the legal provisions on transfers, namely Article 17 of Regulation No 40/94 read together with Rule 31 of Regulation No 2868/95. 29 Under Article 17(3) of Regulation No 40/94 (now Article 17(3) of Regulation No 207/2009), the assignment of a Community trade mark is to be made in writing and is to be signed by the parties to the contract, except when it is a result of a judgment. Under Rule 31 of Regulation No 2868/95, an application for registration of a transfer for the purpose of Article 17 of Regulation No 40/94 is to contain the documents establishing the transfer. 30 In the present case, the intervener’s request for the transfer satisfies the requirements of Rule 31 of Regulation No 2868/95, for it was accompanied by a document assigning the trade mark in accordance with the requirements of that rule. It follows that the first request for registration of a transfer and the registration of the intervener as the new proprietor of the Community trade mark at issue were valid. By contrast, the second request for a transfer did not meet those requirements, since the applicant was not the registered proprietor of the Community trade mark, who at that time was already the intervener. In that regard, as was argued by OHIM, a potential conflict between the two assignments at issue raises questions in relation to the law of contract and property, which exceed the scope of Rule 31 of Regulation No 2868/95 and the solution to which does not fall within OHIM’s jurisdiction. 31 It follows that OHIM was neither required nor entitled to consider the validity and the legal effects of a transfer under the applicable national law. Article 77a of Regulation No 40/94 32 The applicant claims that Article 77a of Regulation No 40/94 allows OHIM to consider the validity of its decisions not only at the time when they are made, but also in the light of further facts and evidence supplied to OHIM subsequently. The Court observes, in that regard, that Article 77a(1) of Regulation No 40/94 (now Article 80(1) of Regulation No 207/2009) provides for the revocation of a decision or the cancellation of an entry in the register which contain an obvious procedural error attributable to OHIM. As provided in Article 77a(2) of Regulation No 40/94 (now Article 80(2) of Regulation No 207/2009), such a revocation of a decision or cancellation of an entry are to be determined ex officio or at the request of one of the parties to the proceedings within six months from the date on which the entry was made in the register or the decision was taken. 33 However, this case does not concern an obvious procedural error attributable to OHIM. Indeed, at the time the decision was taken to enter the transfer of the Community trade mark to the intervener, OHIM relied on the documents submitted, which gave rise to no doubts about their validity and content. Indeed, the application to register the transfer was accompanied by a written document of transfer signed by the transferor and the transferee, allowing identification of the transfers of ownership from the initial proprietor to the Crown and, then, to the intervener. 34 Consequently, the documents submitted complied with Article 17 of Regulation No 40/94 and Rule 31 of Regulation No 2868/95 and therefore were correctly accepted by OHIM. There was no apparent irregularity which should have been perceived by OHIM. Therefore, in this case there was no manifest error attributable to OHIM. 35 It should also be noted that, as OHIM and the intervener submit, OHIM was in no way obliged to consider the documents submitted subsequently in order to call into question the validity of a transfer which had been notified to it earlier and the corresponding transfer of which had been registered. Article 23 of Regulation No 40/94 36 Under Article 23 of Regulation No 40/94, a transfer of a Community trade mark is in principle to have effects vis-a-vis third parties only after entry in the register, save where third parties have acquired rights in the trade mark after the date of the transfer and they knew of that transfer at the date on which the rights were acquired. It follows that, in order to be able to assert his rights vis-à-vis third parties, the new proprietor after the transfer of the trade mark must register that transfer. In the absence of such registration, third parties having no knowledge of the transfer cannot have that transfer raised against them. In the present case, the applicant, as the alleged proprietor of the Community trade mark following the alleged earlier assignment, did not register the transfer of the Community trade mark in the register at OHIM. Moreover, there is no indication or claim that the intervener knew of the earlier assignment of the mark at issue to the applicant. In such a situation, the transfer of the Community trade mark to the applicant may not be raised against the intervener. 37 It follows that the Board of Appeal was justified in holding that OHIM had lawfully registered the transfer of the mark at issue to the intervener on the basis of the evidence which was submitted to it. 38 It follows from all the foregoing considerations that the application must be dismissed in its entirety. Costs 39 Under Article 87(2) 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. 40 As the applicant has been unsuccessful, he must be ordered to pay the costs in accordance with the form of order sought by OHIM and the intervener. 41 Furthermore, under Article 136(2) of the Rules of Procedure, costs necessarily incurred for the purposes of the proceedings before the Board of Appeal of OHIM are to be regarded as recoverable costs. Consequently, it is appropriate to order the applicant to pay the costs incurred on that occasion by the intervener, in accordance with the form of order sought by the intervener. On those grounds, THE GENERAL COURT (First Chamber) hereby: 1. Dismisses the action; 2. Orders Mr David Chalk to pay the costs, including the costs necessarily incurred by Reformed Spirits Company Holdings Ltd for the purposes of the proceedings before the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). Azizi Cremona Frimodt Nielsen Delivered in open court in Luxembourg on 9 September 2011. [Signatures] * Language of the case: English.