Order — ECLI:EU:T:2006:401
Date: 2006-12-14
Language of the case: English
Court formation: Third Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Notification and transmission
Procedure: Action for annulment - inadmissible

ORDER OF THE COURT OF FIRST INSTANCE (Third Chamber) 14 December 2006 (*) (Community trade mark – Preliminary procedural issues – Objection of inadmissibility – Notification of the decision of the Board of Appeal – Period within which proceedings must be brought) In Case T‑14/06, K-Swiss, Inc., established in West Lake Village, California (United States), represented by H. Hübner, lawyer, applicant, v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar, acting as Agent, defendant, APPLICATION for annulment of the decision of the First Board of Appeal of OHIM of 26 September 2005 (Case R 1109/2004-1), concerning the registration, as a Community trade mark, of a mark in the form of five parallel stripes placed on the side of the representation of a shoe, THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber), composed of M. Jaeger, President, V. Tiili and O. Czúcz, Judges, Registrar: E. Coulon, makes the following Order Legal context 1 Under Article 63(5) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, actions against decisions of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) must be brought before the Court of First Instance within two months of the date of notification of the decision of the Board of Appeal. In accordance with Article 102(2) of the Rules of Procedure of the Court of First Instance, the prescribed time-limits are to be extended on account of distance by a single period of 10 days. 2 Rule 61(1) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) provides: ‘In proceedings before [OHIM], notifications to be made by [OHIM] shall take the form of transmitting the original document, an uncertified copy thereof or a computer print-out in accordance with Rule 55, or, as concerns documents emanating from the parties themselves, duplicates or uncertified copies.’ 3 Paragraph 2 of that rule provides: ‘Notification shall be made: (a) by post in accordance with Rule 62; (b) by hand delivery in accordance with Rule 63; (c) by deposit in a post box at [OHMI] in accordance with Rule 64; (d) by telecopier and other technical means in accordance with Rule 65; (e) by public notification in accordance with Rule 66.’ 4 Rule 62(1) of Regulation No 2868/95 provides: ‘Decisions subject to a time-limit for appeal, summonses and other documents as determined by the President of [OHIM] shall be notified by registered letter with advice of delivery. All other notifications shall be by ordinary mail.’ 5 Finally, Rule 68 of Regulation No 2868/95 provides: ‘Where a document has reached the addressee, if [OHIM] is unable to prove that it has been duly notified, or if provisions relating to its notification have not been observed, the document shall be deemed to have been notified on the date established by [OHIM] as the date of receipt.’ Background to the case 6 On 24 July 2002, the applicant filed an application for a Community trade mark with OHIM under Regulation No 40/94. 7 The application concerned registration of a figurative mark consisting of five parallel stripes placed on the side of the representation of a shoe and reproduced below: 8 The goods in respect of which registration was sought fall within Class 25 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 are described as follows: ‘shoes for men, women and children’. 9 By decision of 19 October 2004, the examiner rejected the application for registration pursuant to Article 7(1)(b) of Regulation No 40/94. 10 The action brought by the applicant against that decision was rejected by the First Board of Appeal of OHIM by decision of 26 September 2005 (‘the contested decision’). Procedure and forms of order sought 11 By application lodged at the Registry of the Court of First Instance on 16 January 2006, the applicant brought the present action. 12 By a separate document lodged at the Registry of the Court of First Instance on 3 April 2006, OHIM raised an objection of inadmissibility, in accordance with Article 114(1) of the Rules of Procedure. 13 The applicant lodged its observations on that objection on 31 May 2006. 14 In the application, the applicant claims that the Court should: – annul the contested decision; – order OHIM to pay the costs. 15 In its objection of inadmissibility, OHIM submits that the Court should: – declare the application inadmissible; – order the applicant to pay the costs. 16 In its observations on the objection of inadmissibility, the applicant claims that the Court should: – declare the application admissible. Law 17 Under Article 114(1) of the Rules of Procedure, if a party so requests, the Court of First Instance may rule on inadmissibility, lack of competence or another preliminary plea without hearing argument on the substance of the case. In accordance with Article 114(3), the remainder of the proceedings is to be oral, unless the Court decides otherwise. 18 In the present case, the Court finds that it has sufficient information from the documents in the file to give a decision without taking further steps in the proceedings. 19 OHIM submits that, since the contested decision was delivered to the applicant by express courier dispatched by DHL (‘the DHL courier’) on 28 October 2005, the present action, lodged at the Registry of the Court of First Instance on 16 January 2006, was brought after the expiry of the two-month period following notification of the contested decision, extended on account of distance by a single period of 10 days. The action, it argues, is therefore inadmissible. 20 The applicant acknowledges that it received the contested decision by DHL courier on 28 October 2005, but submits that that date of delivery must not be considered as the date of legal notification of that decision. It submits, in that respect, that delivery of the contested decision by DHL courier is not one of the means of notification provided for in Rule 61(2) of Regulation No 2868/95, not even being delivery by post as referred to in point (a), and cannot therefore be regarded as constituting notification within the meaning of that rule and Article 63(5) of Regulation No 40/94, which provides that the action must be brought before the Court of First Instance within two months of the date of notification of the decision of the Board of Appeal. 21 In the alternative, the applicant submits that, by analogy, the provisions relating to notification by post should be applied. It considers that, in this case, notification is deemed irrefutably to have been effected on the 10th day following that of its posting, that is, in the present case, on 5 November 2005. Under those circumstances, the period for bringing an action did not expire until 16 January 2006, and the action is therefore admissible. 22 The Court notes that, as the applicant submits, the delivery of the contested decision by an express courier service, such as DHL, is not included in the means of notification provided for in Rule 61(2) of Regulation No 2868/95. Moreover, it must be held that neither OHIM nor the applicant, which indeed expressly submits that delivery by DHL does not constitute notification by post, claims that the DHL delivery to the applicant on 28 October 2005 was sent in the form of a registered letter or, moreover, that DHL is able to send such letters in Germany or, finally, that the contested decision was notified to the applicant by one of the other means provided for in Rule 61(2) of Regulation No 2868/95 and in Rules 62 to 66 of that regulation. In that respect, it is important, moreover, to point out that the covering letter attached to the DHL delivery to the applicant does not in any way indicate that it is a registered letter, but states that that delivery is ‘[n]otified by DHL only’. 23 It follows from the foregoing that the contested decision was not notified to the applicant in accordance with the requirements of Rules 61 and 62 of Regulation No 2868/95. 24 Contrary to the applicant’s assertions, however, that fact is not capable of leading to the conclusion that the present action was brought within the prescribed period. 25 It must be borne in mind that, in accordance with Rule 68 of Regulation No 2868/95, entitled ‘Irregularities in notification’, ‘[w]here a document has reached the addressee, if [OHIM] is unable to prove that it has been duly notified, or if provisions relating to its notification have not been observed, the document shall be deemed to have been notified on the date established by [OHIM] as the date of receipt’. 26 That provision, taken as a whole, must be construed as affording to OHIM the possibility of establishing the date on which a document reached its addressee, if it is not possible to prove due notification or the provisions relating to its notification have not been observed; OHIM must be entitled therefore to attach to that proof the legal effects of due notification (Joined Cases T-380/02 and T‑128/03 Success-Marketing v OHIM – Chipita (PAN & CO) [2005] ECR II‑1233, paragraph 64). 27 In the present case, it is common ground that the applicant received the DHL delivery on 28 October 2005, as is attested, moreover, by the monitoring document held by the Registry of the Boards of Appeal. 28 Pursuant to Rule 68 of Regulation No 2868/95, the contested decision is therefore deemed to have been notified to the applicant on 28 October 2005, with the result that the presumption laid down in Rule 62(3) of Regulation No 2868/95 does not apply in the present case. This is also in compliance with Rule 70(2) of Regulation No 2868/95, which provides ‘[w]here that procedural step is a notification, the event considered [to set time running] shall be the receipt of the document notified, unless otherwise provided’. Similarly, according to settled case-law concerning the fifth paragraph of Article 230 EC, in the event that the contested measure has been notified to its addressee, the period within which proceedings must be brought begins to run on the day of receipt by that addressee (see, to that effect, Case T-12/90 Bayer v Commission [1991] ECR II‑219, paragraph 19, confirmed on appeal in Case C-195/91 P Bayer v Commission [1994] ECR I‑5619). 29 Under those circumstances, and given that, in accordance with Article 63(5) of Regulation No 40/94, an action must be brought before the Court within two months of the date of notification of the decision of the Board of Appeal, extended on account of distance by a single period of 10 days, pursuant to Article 102(2) of the Rules of Procedure, the period within which proceedings against the contested decision had to be brought expired on 9 January 2006. 30 The present action, which was brought on 16 January 2006, is therefore out of time and must be dismissed as inadmissible. Costs 31 Under Article 87(2) 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, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM. On those grounds, THE COURT OF FIRST INSTANCE (Third Chamber) hereby orders: 1. The action is dismissed as inadmissible. 2. The applicant shall bear the costs. Luxembourg, 14 December 2006. E. Coulon M. Jaeger Registrar President * Language of the case: English.