JUDGMENT OF THE GENERAL COURT (Second Chamber)
21 January 2014 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark ULTRA CHOCO – Earlier national word mark ultra choco – Unregistered earlier mark ULTRA CHOCO used in the course of trade in the European Union and in Bulgaria – Article 60 of Regulation (EC) No 207/2009 – Failure to comply with the obligation to pay appeal fee within the time-limit – Decision of the Board of Appeal declaring the appeal deemed not to have been filed)
In Case T‑232/12,
Wilmar Trading Pte Ltd, established in Singapore (Singapore), represented by E. Miller, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by C. Negro and D. Botis, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Agroekola EOOD, established in Sofia (Bulgaria),
ACTION brought against the decision of the First Board of Appeal of OHIM of 27 March 2012 (Case R 87/2012‑1), relating to opposition proceedings between Wilmar Trading Pte Ltd and Agroekola EOOD,
THE GENERAL COURT (Second Chamber),
composed of M. E. Martins Ribeiro (Rapporteur), President, S. Gervasoni and L. Madise, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 29 May 2012,
having regard to the response lodged at the Court Registry on 4 September 2012,
having regard to the reply lodged at the Court Registry on 8 January 2013,
having regard to the rejoinder lodged at the Court Registry on 27 March 2013,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 2 July 2010, Agroekola EOOD filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        The trade mark in respect of which registration was sought is the word sign ULTRA CHOCO.
3        The goods in respect of which registration was sought are in Classes 29, 30 and 31 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats; soy protein isolates; processed soya beans; preparations made from soya, soy protein products and food products containing soy protein, all for human consumption; isolated soy protein for fish, meat and poultry products; Animal protein; Edible soy proteins; Food preparations containing soya and milk proteins; Protein derived from soya beans for use as substitutes for dairy products; Protein for use as a food additive; Soy protein for use as a food additive; Soya protein food products for use as substitutes for food; cacao butter; Cocoa butter for food purposes; Preparations of lactose for whitening cocoa; Preparations of vegetable fat and lactose for creaming cocoa; Preparations of vegetable fat for creaming cocoa; cocoa butter substitutes made from palm material’;
–        Class 30: ‘Coffee, tea, cocoa; cacao substitutes; cacao based beverages; Aerated beverages [with coffee, cocoa or chocolate base]; Beverages consisting principally of cocoa; Cocoa based creams in the form of spreads; cocoa based beverages with milk; Cocoa for use in making beverages; Drinking cocoa paste; Foodstuffs containing cocoa [as the main constituent]; Preparations with a cocoa base for making alcoholic beverages; Cocoa mixes; cocoa products; sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals; bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; bakery goods containing soy proteins’;
–        Class 31: ‘Agricultural, horticultural and forestry products and grains not included in other Classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt; foodstuffs for animals, especially substances containing proteins for feeding animals; Vegetable protein hydrolyzates for consumption by animals; Protein prepared from soya beans for consumption by animals; Cocoa beans (unprocessed); Horticultural mulches made from cocoa shell waste; Cocoa beans, raw’.
4        The application was published in Community Trade Marks Bulletin No 170/2010 of 10 September 2010.
5        On 7 December 2010, the applicant filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, against the registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based, first, pursuant to Article 8(3) of Regulation No 207/2009, on the earlier Singaporean word mark ultra choco, filed on 3 September 2001 and registered on 19 September 2002 under No T0113987B for the goods in Class 29.
7        The opposition was based, second, pursuant to Article 8(4) of Regulation No 207/2009, on the unregistered earlier mark ULTRA CHOCO used in the course of trade in the European Union and in Bulgaria.
8        By decision of 10 November 2011, the Opposition Division rejected the opposition.
9        On 10 January 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 60 of Regulation No 207/2009, against the Opposition Division’s decision.
10      By letter of 18 January 2012, the Registry of the Boards of Appeal notified the applicant that the appeal fee had not been paid within the period allowed and that the appeal could therefore be deemed never to have been filed. The Registry added that the time-limit for payment could nonetheless be considered to have been observed if, in accordance with Article 8(3)(a) of Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 1995 L 303, p. 33), within the appeal period, either the payment was made through a banking establishment or an order to transfer the amount of the payment was given to a banking establishment. The applicant was requested to provide evidence of payment before 18 February 2012. It was also pointed out that, if payment had been made within the last ten days of the appeal period, the applicant was requested to pay a surcharge of 10% of the appeal fee, in accordance with Article 8(4) of Regulation No 2869/95. Should it be otherwise, the applicant was informed that the appeal would be deemed not to have been filed.
11      On 20 January 2012, the applicant informed OHIM that the appeal fee had been paid on 11 January 2012 and adduced evidence of payment showing that date and a copy of the bank transfer order proving the payment of the surcharge of 10% of the appeal fee in the amount of EUR 80.
12      On 27 January 2012, the Registry acknowledged receipt of the applicant’s letter of 20 January 2012, which was forwarded to Agroekola.
13      On 1 February 2012, Agroekola informed OHIM that it was apparent from the evidence submitted by the applicant that the appeal fee had not been paid within the prescribed period, since the payment should have been made no later than 10 January 2012, with the result that the appeal had to be deemed not to have been filed.
14      On 23 February 2012, the Registry sent Agroekola’s observations to the applicant and informed it that it was by mistake that the Registry had accepted the payment of the surcharge of EUR 80. The Registry indicated that, since the bank transfer order concerning the payment of the appeal fee had not been given within the appeal period, but on 11 January 2012, the appeal had to be deemed not to have been filed. The Registry informed the applicant that it was giving the order to reimburse it and that the case would be referred to the First Board of Appeal.
15      By letter of 27 February 2012, the applicant, referring to Article 8(4) of Regulation No 2869/95 and without disputing the fact that the transfer order had been given on 11 January 2012, stated that that provision authorises a late payment of the surcharge within an additional period fixed by OHIM.
16      On 7 March 2012, the applicant filed the statement setting out the grounds of the appeal, making submissions on the existence of an alleged likelihood of confusion between the signs at issue, but without commenting as to the date on which the transfer order concerning the payment of the appeal fee had been given.
17      By decision of 27 March 2012 (‘the contested decision’), the First Board of Appeal of OHIM found that the appeal had not been filed within the prescribed period and ordered reimbursement of the appeal fee to the applicant. The Board of Appeal found, at paragraph 10 of the contested decision, that the appeal fee had not been paid within the period prescribed by Rule 49(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). The Board of Appeal noted, at paragraph 11 of the contested decision, that, in accordance with Article 60 of Regulation No 207/2009, the appeal fee must be paid within two months from the date of notification of the Opposition Division’s decision. Since the date of notification was 10 November 2011, the deadline for payment was 10 January 2012. The Board of Appeal therefore found, at paragraph 12 of the contested decision, that the appeal fee had been paid after the period had expired, with the result that the appeal was deemed not to have been filed.
Forms of order sought
18      The applicant claims that the Court should:
–        annul the contested decision;
–        order the Board of Appeal to consider the appeal brought against the Opposition Division’s decision of 10 November 2011 and to follow the normal procedure.
19      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Admissibility of a document produced for the first time before the Court
20      The applicant seeks to rely on a document, which was not produced during the administrative procedure, which is intended to show that the bank transfer order concerning the payment of the appeal fee had been given on 10 January 2012, that is to say, within the prescribed period.
21      In that regard, it should be borne in mind that the purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 65 of Regulation No 207/2009. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence which has been adduced for the first time before it (Case T‑407/08 MIP Metro v OHIM – CBT Comunicación Multimedia (Metromeet) [2010] ECR II‑2781, paragraph 16, see also, to that effect, order of 13 September 2011 in Case C‑546/10 P Wilfer v OHIM, not published in the ECR, paragraph 41 and the case-law cited).
22      Moreover, it should be noted that the applicant has not put forward any reason that would have prevented it from producing that annex during the administrative procedure, particularly because, in that procedure, the applicant sent OHIM a bank transfer order dated 11 January 2012.
23      In those circumstances, the annex to the application which consists of a copy of a transfer order on which the applicant seeks to rely in the present action must be declared inadmissible as it was not submitted to the Board of Appeal for examination.
Substance
24      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 60 of Regulation No 207/2009.
25      It claims, in essence, to have acted within the prescribed period, since it filed the appeal and made payment of the appeal fee on 10 January 2012. According to the applicant, the Board of Appeal did not examine the document concerning the transfer of the fee of 11 January 2012 as proof of the date of execution of the transfer order, which would have reasonably led to the conclusion that the transfer order had been given at least one day earlier, that is to say, on 10 January 2012.
26      In this respect, it should be noted that, pursuant to Article 60 of Regulation No 207/2009, notice of appeal, which must be filed in writing at OHIM within two months of the date of notification of the decision, is to be deemed to have been filed only when the appeal fee has been paid.
27      Furthermore, under Rule 49(3) of Regulation No 2868/95, if the appeal fee has been paid after the period for the filing of appeal pursuant to Article 60 of Regulation No 207/2009 has expired, the appeal is to be deemed not to have been filed and the appeal fee is to be refunded to the appellant.
28      Finally, it is apparent from Article 8(3) of Regulation No 2869/95, as amended, that it is to be considered that the period for payment has been observed if, in a Member State, within the period within which the payment should have been made, an order was duly given to a banking establishment to transfer the amount of the payment.
29      In the present case, the parties agree that, since the Opposition Division’s decision was notified on 10 November 2011, the period for introducing an appeal before the Board of Appeal expired on 10 January 2012. It follows that the period allowed for payment of the appeal fee also expired, since none of the cases set out in Rule 72 of Regulation No 2868/95 was applicable, on 10 January 2012, so that, unless the applicant proves that a transfer order had been given to a banking establishment within that period, its appeal must be considered not to have been filed.
30      However, the copy of the bank transfer order concerning the payment of the appeal fee which was sent to OHIM in response to its request of 18 January 2012 for proof of the date on which that order had been given, is dated only 11 January 2012, that is to say, one day after the expiry of the period for filing a notice of appeal.
31      The applicant’s argument that OHIM should reasonably have concluded that the transfer order had been given on 10 January 2012, namely, the day before the receipt of that transfer, cannot be upheld, since it is not for OHIM to make presumptions as to the date on which a transfer order is given.
32      It was therefore for the applicant, in accordance with a reading of Article 60 of Regulation No 207/2009 in conjunction with Rule 49(3) of Regulation No 2868/95 and Article 8(3) of Regulation No 2869/95, to show that the payment had been made within the prescribed period, by submitting to OHIM a copy of a transfer order pre-dating 11 January 2012.
33      That interpretation is the most apt to meet the requirement of legal certainty. It ensures a clear determination and meticulous observance of the start and end points of the period referred to in Article 60 of Regulation No 207/2009 (see judgment of 10 April 2013 in Case T‑360/11 Fercal v OHIM – Parfums Rochas (PATRIZIA ROCHA), not published in the ECR, paragraph 28 and the case-law cited).
34      That interpretation also meets the requirement of avoiding any discrimination or arbitrary treatment, in that it makes possible the same methods of calculating time-limits for all the parties, irrespective of their residence or nationality (see PATRIZIA ROCHA, paragraph 33 above, paragraph 29 and the case-law cited).
35      It follows from the foregoing that the applicant failed to establish, as requested by OHIM in its letter of 18 January 2012, that the transfer order to a banking establishment had been given within the appeal period, that is to say, no later than 10 January 2012.
36      The fact that the applicant went on to pay the surcharge of 10% of the amount of the appeal fee is, from that point of view, irrelevant, since payment of the appeal fee itself was not made within the prescribed period.
37      The applicant also claims, in essence, in its reply, that OHIM, in its letter of 27 January 2012, breached the principle of the protection of legitimate expectations, on the ground that it confirmed the regularity of the payment of the fees within the prescribed period which expired on 10 January 2012 and of the transfer order attached to the applicant’s letter of 20 January 2012, so that the applicant states that it could not take advantage of the remainder of the period which had not expired during which it could have presented other documents proving that the date of transfer of EUR 800 was within the prescribed period, a document which it presented in this action.
38      In this respect, without it being necessary to consider the admissibility of such a ground raised for the first time in the reply, it must be stated that OHIM in no way, in that letter of 27 January 2012, confirmed or informed the applicant that the payment of the appeal fee had been made within the prescribed period, but merely acknowledged receipt of the applicant’s observations and of the transfer order dated 11 January 2012.
39      OHIM therefore did not give rise to any legitimate expectations on the part of the applicant, with whom the responsibility lay to submit all documents which it considered necessary to show that the transfer order had been given within the prescribed period.
40      Furthermore, it is apparent from the very wording of the applicant’s letter of 20 January 2012, stating that the payment of the appeal fee had been made on 11 January 2012, that it was of the opinion, at that date, that the payment of the appeal fee had been made within the prescribed period, since it sent a copy of a transfer order demonstrating, according to the applicant itself, the fact that the payment of the fee concerned had been made on 11 January 2012.
41      Furthermore, in its letter of 27 February 2012, the applicant, instead of sending OHIM proof of payment of the appeal fee within the prescribed period, in no way called in question the fact that the transfer order had been given on 11 January 2012, but merely claimed that the appeal was admissible, on the ground that the surcharge, which could be paid after that date, had been paid within the period prescribed by OHIM.
42      It follows from the foregoing that the action must be dismissed.
Costs
43      Under Article 87(2) of the Rules of Procedure of the 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 OHIM.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action.
2.      Orders Wilmar Trading Pte Ltd to pay the costs.
Martins Ribeiro
Gervasoni
Madise
Delivered in open court in Luxembourg on 21 January 2014.
[Signatures]
* Language of the case: English.