Order — ECLI:EU:T:2018:342
Date: 2018-06-08
Language of the case: English
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded;Action for annulment - inadmissible
Origin: Romania

summary of the pleas in law relied on. That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary without any other supporting information (judgments of 27 September 2005, Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, EU:T:2005:340, paragraph 26; of 3 December 2014, Max Mara Fashion Group v OHIM — Mackays Stores (M & Co.), T‑272/13, not published, EU:T:2014:1020, paragraphs 17 and 18, and of 12 November 2015, CEDC International v OHIM — Fabryka Wódek Polmos Łańcut (WISENT VODKA), T‑450/13, not published, EU:T:2015:841, paragraph 17). 25 In the present case, it must be pointed out that in the application the applicant, first, referred to the legal provisions which he submits were infringed and, secondly, set out his arguments in a sufficiently clear and precise manner, which in particular permitted EUIPO and the intervener to prepare their defences, as is clear, moreover, from their respective replies. 26 Similarly, the summary of the pleas in law relied on in the application enables the Court to rule on the action. It follows that the applicant has challenged, in the application, the legality of the contested decision in a manner that complies with the requirements of Article 177(1)(d) of the Rules of Procedure. The applicant’s third head of claim 27 By his third head of claim, the applicant asks the Court to annul the contested decision, to order the proceedings before the Board of Appeal to be resumed and to order the Board to maintain the suspension of those proceedings until a final, written, reasoned and signed decision on the pending action for a declaration of invalidity is forwarded to that Board. 28 It is clear from settled case-law that, in an action before the Court against the decision of a Board of Appeal of EUIPO, the latter is required, under Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001), to take the necessary measures to comply with the judgments of the Courts of the European Union. It is therefore not for the General Court to issue directions to EUIPO, but for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the Courts of the European Union (see judgment of 11 July 2007, El Corte Inglés v OHIM–Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited). Therefore, the applicant’s head of claim that the Court should order EUIPO to resume the proceedings before the Board of Appeal and that the Board of Appeal should maintain the suspension of those proceedings is inadmissible. Conclusion on the admissibility of the action 29 In the light of all of the foregoing considerations, it must be held that the third head of claim in the action is inadmissible. Substance 30 By his first head of claim, the applicant seeks the annulment of the contested decision. 31 In the application, the applicant relies, in essence, on a single plea alleging infringement of his rights as proprietor of an earlier mark. He claims that there was an infringement of Article 1 of the First Additional Protocol to the European Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950, of Rule 20 (7)(a) and (c) 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) and, by analogy, of Article 53(2)(c) and (d) of Regulation No 207/2009 (now Article 60(2)(c) and (d) of Regulation 2017/1001). 32 In that regard, the applicant claims, first, that only the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 16 December 2016, dismissing the extraordinary application for annulment of that court’s decision of 27 May 2016 which upheld the definitive declaration of invalidity of the earlier mark, could be regarded as the definitive decision putting an end to the dispute. Although, by that decision, the application for annulment was dismissed, the parties still did not know the grounds for that decision on the date of the contested decision. The applicant claims that the Board of Appeal should therefore have maintained the suspension of the proceedings before it. 33 Secondly, the applicant claims, in essence, that the proceedings for a declaration of invalidity of the earlier mark before the national courts could not be regarded as concluded and definitive as long as the appeal deadline enabling him to lodge an appeal before the European Court of Human Rights had not expired and that, for that same reason, the Board of Appeal should have maintained the suspension of the proceedings before it. 34 Thirdly, the applicant claims that he has made use of the earlier mark since the 1990s, and therefore before the application for registration of the mark applied for by the intervener. According to the applicant, that mark was registered on 2 April 2009 at the request of a third party who assigned it to him in order to avoid litigation. 35 In its reply, EUIPO disputes the applicant’s arguments, contending primarily that the applicant does not dispute that the extraordinary appeal which he initiated did not have suspensive effect as regards the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 27 May 2016 confirming the invalidity of the earlier mark. It adds that the fact that the grounds of that decision were still not known did not mean that the suspension of the proceedings before the Board of Appeal should be maintained. In addition, the applicant’s arguments that he is the proprietor of an unregistered sign, mark or copyright are ineffective. 36 In his reply and in the plea of inadmissibility, the intervener primarily contends that the applicant and the third party who registered the earlier mark colluded together and acted in bad faith, and that the mark was definitively declared to be invalid by the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 27 May 2016 which gave rise to the removal of that mark from the national register of marks by the State Office for Inventions and Trade Marks. 37 The Board of Appeal found, in paragraph 21 of the contested decision, that the only earlier right on which the applicant had based his opposition had been definitively declared to be invalid by the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 27 May 2016 and that therefore the opposition was unfounded. It is on that basis that the Board of Appeal concluded, in paragraph 22 of the contested decision, that the decision of the Opposition Division had to be annulled and the opposition dismissed. 38 It is clear that none of the arguments presented by the applicant could call into question that conclusion of the Board of Appeal or establish that it infringed the provisions relied on by the applicant in the application. 39 First of all, the applicant’s argument that the Board of Appeal could not consider that it was aware of the definitive judgment putting an end to the national proceedings, given that the parties were still not aware of the grounds of the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 16 December 2016, cannot be accepted. First, being aware of the grounds of that decision would not have enabled the parties to challenge it, since no other national remedy was available to them. Secondly, as EUIPO contends, the grounds of the decision in question have no bearing on the finding that the mark was definitively declared to be invalid. 40 In that regard, it must also be made clear, as EUIPO did, that the applicant does not challenge the Board of Appeal’s finding that the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 16 December 2016, concerning the extraordinary appeal, did not have suspensive effect on the previous decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 27 May 2016 which confirmed the invalidity of the earlier mark. Therefore, the Board of Appeal rightly held that the mark had been definitively declared to be invalid. 41 Next, the applicant’s arguments alleging that, since an appeal before the European Court of Human Rights was still available to him, the Board of Appeal should have maintained the suspension of the proceedings before it, cannot call into question either the Board’s reasoning or its conclusion. It must be stated that, even though the period of six months for the applicant to bring an action before that court had not elapsed, the fact remains that, when the Board made its ruling, the national courts had ruled definitively on the invalidity of the earlier mark and that it was no longer registered in the national register of marks kept by the State Office for Inventions and Trade Marks. 42 Finally, the arguments of both the applicant and the intervener, seeking, in essence, to establish their respective use of the earlier mark and the mark applied for before the application to register the latter mark, do not in any way call into question the Board of Appeal’s reasoning and are thus not relevant for the purposes of assessing the lawfulness of the contested decision. 43 The opposition was brought on the basis of the earlier mark under Article 8(1)(a) and (b) of Regulation No 207/2009. As EUIPO observes, under Article 41(3) of Regulation No 207/2009 (now Article 46(3) of Regulation 2017/1001), the opposition must set out the grounds on which it is based. Therefore, on expiry of the deadline for filing an opposition, set out in Article 41 of Regulation No 207/2009, the applicant may no longer rely on new earlier rights or new grounds of opposition. Since the Board of Appeal rightly considered, as was recalled in paragraph 37 above, that the only earlier right on which the applicant had based his opposition had been declared invalid, there is no need to examine new grounds of opposition. 44 It follows that the single plea relied on by the applicant, and therefore the applicant’s first head of claim, must be rejected as manifestly lacking any foundation in law. 45 By his second head of claim, the applicant asks the Court to uphold the opposition against registration of the mark applied for or to cancel that registration and thus, in essence, alter the contested decision. 46 It should be noted that the review carried out by the Court under Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001) is a review of the legality of the decisions of the Boards of Appeal of EUIPO and that it may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds set out in Article 65(2) of that regulation (now Article 72(2) of Regulation 2017/1001) (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 71 and the case-law cited). 47 Since the single plea relied on by the applicant in support of the claim for annulment is manifestly lacking any foundation in law, as was found in paragraph 44 above, the contested decision is not vitiated by any of the illegalities referred to in Article 65(2) of Regulation No 207/2009. Therefore the applicant’s request to alter the contested decision cannot be granted, and the second head of claim must be rejected. 48 In the light of the foregoing considerations, the present action must be dismissed as being in part manifestly inadmissible and in part manifestly lacking any foundation in law. Costs 49 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. As the applicant has been unsuccessful, he must be ordered to bear his own costs and to pay those incurred by EUIPO in accordance with the form of order sought by EUIPO. Since the intervener failed to make a claim for costs, it must be held that he is to bear his own costs in accordance with Article 138(3) of the Rules of Procedure. On those grounds, THE GENERAL COURT (Third Chamber) makes the following order: 1. The plea of inadmissibility is joined to the main proceedings. 2. The action is dismissed. 3. Mr Victor Lupu shall bear his own costs and pay those incurred by the European Union Intellectual Property Office (EUIPO). 4. Mr Ibryam Dzhihangir shall bear his own costs. Done at Luxembourg, 8 June 2018. The Registrar The President E. Coulon S. Frimodt Nielsen * Language of the case: English.