JUDGMENT OF THE GENERAL COURT (First Chamber)
18 January 2023 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark Clavis – Earlier EU word mark CLAVIS – Failure to identify the earlier trade mark in the notice of opposition – Conditions for admissibility of the opposition)
In Case T‑758/21,
Dorsum Informatikai Fejlesztő és Szolgáltató Zrt., established in Budapest (Hungary), represented by G. Hajdu, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and D. Hanf, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
id Quantique SA, established in Carouge (Switzerland), represented by F. Nielsen, lawyer,
THE GENERAL COURT (First Chamber),
composed of D. Spielmann, President, R. Mastroianni and M. Brkan (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action based on Article 263 TFEU, the applicant, Dorsum Informatikai Fejlesztő és Szolgáltató Zrt., seeks alteration or annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 September 2021 (Case R 189/2021-1) (‘the contested decision’).
Background to the dispute
2        On 15 May 2019, the intervener, id Quantique SA, filed with EUIPO an application for registration of an EU trade mark for the word sign Clavis, which was published in European Union Trade Marks Bulletin
No 2019/118 of 26 June 2018.
3        The mark applied for designated, inter alia, following the restriction made in the course of proceedings before EUIPO, goods and services in Classes 9 and 42 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 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Encryption software; Encryption apparatus; Electronic encryption units; Data encryption apparatus; Computer software for encryption; Encoding apparatus; Decoding apparatus; Encoding and decoding apparatus; Electronic number generators; Decryption software; Decryption apparatus; Electronic decryption units; Data decryption apparatus; Computer software for decryption; Quantum key generation software; Quantum key generation apparatus; Quantum key distribution software; Quantum key distribution apparatus; Random number generator; Photon counter; Single-photon detector’;
–        Class 42: ‘Data encryption services; Data decryption services; Data encryption and decoding services; Encryption, decryption and authentication of information, messages and data; Design of integrated circuits; Design of electric circuit boards; Research relating to telecommunication techniques; Research in the field of information technology; Research in the field of telecommunications technology; Research services; Scientific research; Computer security services in the nature of administering digital certificates; Research in the field of quantum encryption; Research in the field of quantum decryption; Research in the field of quantum cryptography; Research in the field of quantum-based telecommunication; Research in the field of single-photon based telecommunication; Research in the field of optics; Development in the field of quantum encryption; Development in the field of quantum decryption; Development in the field of quantum-based telecommunication; Development in the field of single-photon based telecommunication; Development in the field of quantum cryptography; Development in the field of optics; Validation and testing of quantum-resistant algorithms’.
4        On 22 August 2019, the applicant filed a notice of opposition to registration of the mark applied for in respect of all the services in Class 42 referred to in paragraph 3 above. The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
5        In the notice of opposition, the applicant identified, as the basis of its opposition, EU word mark ‘CLAVIS’, the application for registration of which had been filed on 15 May 2019 under number 18 064 876. The priority date indicated was 27 December 2013. In addition, at the top of the notice of opposition form, in the field ‘Your reference’, the applicant put ‘clavis2013’.
6        On 26 September 2019, the opposition period provided for in Article 46(1) of Regulation 2017/1001 expired.
7        In its communication to the applicant dated 9 October 2019, the Opposition Division held that the opposition was admissible at least in so far as it was based on EU trade mark No 18 064 876. The applicant was given until 9 February 2020 to substantiate, where appropriate, its earlier rights and submit the facts, evidence and arguments in support of the opposition, in accordance with Article 6(1) and Article 7(1) and (2) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).
8        On 14 January 2020, the applicant submitted to EUIPO the registration certificate for EU word mark CLAVIS, registered on 27 December 2013 under No 12 031 563 (‘the earlier mark’).
9        On 7 May 2020, the Opposition Division informed the applicant that EUIPO intended to revoke the decision on the admissibility of the opposition. The reason for this was that the procedure which led to the decision of 9 October 2019 contained an obvious error attributable to EUIPO, namely that it had overlooked the fact that the earlier mark invoked was not an earlier mark in accordance with Article 8(2) of Regulation 2017/1001. The applicant, which was granted a deadline for submitting observations, did not raise any objection or observations.
10      By its communication of 2 July 2020, the Opposition Division informed the applicant that the examination of the notice of opposition had shown that it was inadmissible, given that the mark on which the opposition was based was not an earlier mark within the meaning of Article 8(2) of Regulation 2017/1001 and that that deficiency had not been remedied before the expiry of the opposition period. The Opposition Division invited the applicant to submit its observations on that matter.
11      On 10 September 2020, the applicant submitted that it was the proprietor of the earlier mark and that, according to the data in the register, that mark was in fact earlier than the mark applied for.
12      On 27 November 2020, the Opposition Division rejected the opposition as inadmissible. It found that the mark relied on in the notice of opposition was not earlier than the mark applied for and that the earlier mark had not been clearly indicated as a basis for the opposition before the expiry of the opposition period.
13      On 28 January 2021, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
14      By the contested decision, the Board of Appeal dismissed the appeal. In particular, it found, first of all, that the applicant had incorrectly entered the details of the mark applied for under the heading ‘Basis of opposition’ in its notice of opposition. It added that the correct information relating to the earlier mark had not been provided until after the expiry of the opposition period. The Board of Appeal then confirmed the Opposition Division’s assessment that the mark indicated in the notice of opposition was not an earlier right and that, consequently, the earlier right had not been identified in accordance with Article 2(2)(b) of Delegated Regulation 2018/625, which constituted a ground for rejecting the opposition as inadmissible in accordance with Article 5(3) of Delegated Regulation 2018/625. Lastly, the Board of Appeal found that Article 7 of Delegated Regulation 2018/625, relied on by the applicant, concerns the substantiation of the earlier right and not the conditions of admissibility of the opposition. As regards the admissibility of the opposition, EUIPO had no discretion to search its register in order to identify the earlier right the applicant intended to invoke or to accept evidence filed after the expiry of the opposition period.
Forms of order sought
15      The applicant claims that the Court should:
–        vary the contested decision and uphold its appeal;
–        in the alternative, annul the contested decision and the decision of the Opposition Division of 27 November 2020;
–        order EUIPO to pay the costs.
16      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
17      The intervener contends that the Court should dismiss the action.
Law
The first head of claim
18      By its first head of claim, the applicant asks the Court to alter the contested decision and to uphold its appeal against the Opposition Division’s decision by which it requested that the Opposition Division’s decision be annulled, that the opposition be upheld and that the application for registration of the mark applied for be rejected.
19      EUIPO contends that that head of claim is inadmissible.
20      It must be borne in mind that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72).
21      In the present case, the Board of Appeal ruled on the admissibility of the opposition filed by the applicant without taking a position on its merits. In the light of the case-law cited in the preceding paragraph, the Court cannot, in the context of an application for alteration, carry out an assessment as to the substance of the case without the Board of Appeal having already adopted a position.
22      It follows that the first head of claim must be rejected as unfounded.
Substance
23      In support of its action, the applicant puts forward four pleas in law, alleging infringement of Article 47(1), Article 107, Article 95 and Article 72(2) of Regulation 2017/1001, respectively.
The first plea, alleging infringement of Article 47(1) of Regulation 2017/1001
24      By its first plea, the applicant submits, in essence, in the first place, that the Board of Appeal made an error of assessment in concluding that the applicant had not provided any information concerning its earlier mark in the notice of opposition. The applicant notes that it was EUIPO which drew its attention to the mark applied for by means of a surveillance letter and submits that, in that letter, EUIPO provided it with the reference ‘clavis2013’ clearly identifying its earlier mark and the year 2013.
25      In the second place, the applicant is of the view that EUIPO infringed Article 47 of Regulation 2017/1001 in as much as it did not assess in its entirety the notice of opposition which should have led it to take into account the reference ‘clavis2013’ in order to enable it to identify the earlier right and to invite it to remedy the deficiencies found in the notice of opposition.
26      EUIPO and the intervener dispute the applicant’s arguments.
27      It should be noted that Article 47 of Regulation 2017/1001, entitled ‘Examination of opposition’, provides that, in the examination of the opposition, EUIPO is to invite the parties, as often as necessary, to file observations, within a period set by EUIPO, on communications from the other parties or issued by itself. That provision thus provides, as regards the examination of the opposition, for an adversarial procedure inviting the parties to submit their observations, which is described in Article 8 of Delegated Regulation 2018/625. However, it follows from Article 6(1) of that delegated regulation that the adversarial part of the opposition proceedings, which includes, inter alia, inviting the parties to submit observations, begins only after the opposition has been found to be admissible.
28      It is therefore necessary to ascertain whether the Board of Appeal erred in law in confirming the Opposition Division’s decision to reject the opposition as inadmissible without first inviting the applicant to remedy the deficiencies contained in the notice of opposition.
29      It is apparent from Article 2(2)(b)(i) of Delegated Regulation 2018/625 that the notice of opposition must contain a clear identification of the earlier mark on which the opposition is based, namely, with regard to a registered mark, the registration number, an indication that the earlier mark is registered, and the name of the Member State in or for which the earlier mark is protected or, if applicable, the indication that it is an EU trade mark.
30      Under Article 5(3) of Delegated Regulation 2018/625, the opposition is to be rejected as inadmissible, inter alia, if the notice of opposition does not clearly indicate the earlier mark, as required by Article 2(2)(b)(i) of that regulation, and if those deficiencies are not remedied before the expiry of the opposition period. That provision seeks to ensure that the indication of the earlier mark is sufficiently clear for EUIPO and the other party to the proceedings to be able to identify it (see, to that effect and by analogy, judgments of 15 June 2005, Spa Monopole v OHIM – Spaform (SPAFORM), T‑186/04, EU:T:2005:224, paragraphs 44 and 47, and of 13 February 2019, Etnia Dreams v EUIPO – Poisson (Etnik), T‑823/17, not published, EU:T:2019:85, paragraph 40).
31      Therefore, it is necessary to determine whether, in the present case, the notice of opposition contained a clear indication of the earlier mark.
32      In the first place, it must be stated that, in the notice of opposition, the applicant stated that it based its opposition on the mark ‘CLAVIS’, bearing the registration number 18 064 876, and the ‘date of filing’ of the application was 15 May 2019. Since those indications correspond to the mark applied for, they cannot constitute an earlier right and, consequently, no earlier right was clearly identified for the purposes of Article 2(2)(b)(i) of Delegated Regulation 2018/625. In that regard, the applicant does not dispute that the notice of opposition contained incorrect data.
33      In the second place, the applicant submits that the Board of Appeal was required to read the notice of opposition as a whole, which would allow its intention to base its opposition on the earlier mark to be deduced on account of the indication of 27 December 2013 as the priority date and the reference ‘clavis2013’ in the field ‘Your reference’, a reference also used by EUIPO in the surveillance letter of 26 June 2019 sent to the applicant. In that regard, it should be noted that the Board of Appeal cannot be asked to carry out further research to identify the earlier right. The elements that are necessary to identify clearly in the notice of opposition the earlier mark on which the opposition is based are apparent from Article 2(2)(b)(i) of Delegated Regulation 2018/625, and include, inter alia, an indication of the registration number of that mark.
34      Thus, it must be held that the mere indication of the reference ‘clavis2013’ in the field entitled ‘Your reference’ in the notice of opposition and the reference to a priority date in 2013 do not, on their own, support the conclusion, in the absence of any express indications in the notice of opposition making it possible to identify the earlier mark, registered on 27 December 2013 under No 12 031 563, that it is on that mark that the applicant intended to base its opposition.
35      Therefore, it cannot be a clear identification of the earlier mark for the purposes of Article 2(2)(b)(i) of Delegated Regulation 2018/625.
36      In the third place, as regards the applicant’s argument that EUIPO should have invited it to remedy the deficiencies noted in the notice of opposition, it should be recalled that Article 5 of Delegated Regulation 2018/625 draws a distinction between two categories of conditions of admissibility (see, to that effect and by analogy, judgment of 13 February 2019, Etnik, T‑823/17, not published, EU:T:2019:85, paragraph 61).
37      If the notice of opposition does not satisfy the conditions of admissibility referred to in Article 5(3) of Delegated Regulation 2018/625, the opposition is to be rejected as inadmissible unless the deficiencies have been remedied before the expiry of the opposition period. By contrast, if the notice of opposition does not comply with the provisions of Article 2(2)(d) to (h) of Delegated Regulation 2018/625, Article 5(5) of that regulation provides that the opposition is to be rejected as inadmissible only where the opposing party, after having been invited by EUIPO to remedy the deficiencies noted within a period of two months, has failed to correct those deficiencies within the prescribed period.
38      Accordingly, it is only where the notice of opposition fails to satisfy certain conditions of admissibility not including those expressly mentioned in Article 5(3) of Delegated Regulation 2018/625 that EUIPO is required to inform the opposing party and to invite that party to remedy the deficiencies noted within a period of two months before rejecting the opposition as inadmissible (see, to that effect and by analogy, judgment of 13 February 2019, Etnik, T‑823/17, not published, EU:T:2019:85, paragraph 64 and the case-law cited).
39      In the present case, as stated in paragraph 35 above, the notice of opposition submitted by the applicant failed to satisfy one of the conditions for admissibility of the opposition provided for in Article 5(3) of Delegated Regulation 2018/625, with the result that EUIPO was not required to invite the applicant to remedy that before rejecting the opposition as inadmissible.
40      Thus, the Board of Appeal was right to find that the present case concerned a deficiency entailing automatically, since the deficiencies were not remedied before the expiry of the opposition period, the rejection of the opposition on the ground of inadmissibility, pursuant to Article 5(3) of Delegated Regulation 2018/625.
41      The Board of Appeal was thus also right to uphold the Opposition Division’s decision declaring the opposition inadmissible. Accordingly, since the adversarial stage of the opposition proceedings had not been initiated, the adversarial examination procedure provided for in Article 47 of Regulation 2017/1001 could not be applied in the present case.
42      It follows that the first plea must be rejected.
The second plea, alleging infringement of Article 107 of Regulation 2017/1001
43      According to the applicant, for the purposes of compliance with Article 107 of Regulation 2017/1001, EUIPO must also take into account the principles of the Hungarian Code of Administrative Procedure which include the obligation on the public authorities to cooperate, including the obligation on the part of those authorities to invite the parties to remedy the deficiencies contained in their application, and it is only in the absence of such remedy that a public authority can deal with an application on the basis of its incomplete content. EUIPO is thus under an obligation to cooperate with the parties and to facilitate the exercise of their procedural rights, which includes the obligation to draw their attention to manifest errors and to give them the opportunity to rectify them.
44      In particular, the applicant claims that the Board of Appeal clearly stated that the notice of opposition contained a manifest error and that EUIPO, taking into account the reference ‘clavis2013’, should have identified the earlier mark.
45      EUIPO and the intervener dispute the applicant’s arguments.
46      Article 107 of Regulation 2017/1001 provides that, in the absence of procedural provisions in that regulation or in acts adopted pursuant to that regulation, EUIPO is to take into account the principles of procedural law generally recognised in the Member States.
47      That provision applies only in the event of a lacuna or ambiguity in the procedural provisions (see judgment of 13 September 2010, Travel Service v OHIM – Eurowings Luftverkehrs (smartWings), T‑72/08, not published, EU:T:2010:395, paragraph 76 and the case-law cited).
48      In the present case, the applicant claims that Article 107 of Regulation 2017/1001 was infringed in as much as the Board of Appeal found that it was not for EUIPO to correct the errors made by the applicant.
49      However, it must be stated that, as is apparent from paragraphs 37 and 38 above, both Regulation 2017/1001 and Delegated Regulation 2018/625 contain procedural provisions laying down the cases in which EUIPO is required to invite the opponent to remedy the deficiencies found in its opposition before rejecting it as inadmissible. In that regard, it should be noted that, as is apparent from paragraph 40 above, in the present case, the Board of Appeal was right to find, pursuant to Article 5(3) of Delegated Regulation 2018/625, that the notice of opposition did not clearly identify the earlier right and that that was a deficiency automatically entailing the rejection of the opposition on the ground of inadmissibility given that the deficiencies were not remedied before the expiry of the opposition period.
50      It follows, since there is no ambiguity in the procedural provisions applied, that, contrary to what the applicant claims, Article 107 of Regulation 2017/1001 is not applicable in the present case.
51      The second plea in law must therefore be rejected as unfounded.
The third plea, alleging infringement of Article 95(2) of Regulation 2017/1001
52      The applicant disputes the Board of Appeal’s assertion that it had no discretion to accept evidence submitted after the expiry of the opposition period.
53      The applicant does not deny having provided, after the expiry of the opposition period, the correct information concerning the mark on which it intended to base its opposition. However, it submits that, under Article 95(2) of Regulation 2017/1001, EUIPO could nevertheless have taken that evidence into account. The applicant takes the view that it is clear from the wording of that provision that EUIPO had discretion in such a case and that there was no procedural rule under which EUIPO was required to disregard such evidence.
54      Therefore, the applicant submits that EUIPO was required to state reasons for its decision regarding the exercise of its discretion and that, by failing to do so, the Board of Appeal infringed Article 95(2) of Regulation 2017/1001.
55      EUIPO and the intervener dispute the applicant’s arguments.
56      Article 95(2) of Regulation 2017/1001 provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.
57      It follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the periods to which such submission is subject under the provisions of Regulation 2017/1001. EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late. In stating that EUIPO ‘may’ decide to disregard such evidence, that provision grants EUIPO a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (see, by analogy, judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraphs 77 and 78 and the case-law cited).
58      However, the possibility for parties to proceedings before EUIPO to submit facts and evidence after the expiry of the periods specified for that purpose is conditional upon there being no provision to the contrary. It is only if that condition is satisfied that EUIPO has discretion as regards the taking into account of facts and evidence submitted out of time pursuant to Article 95(2) of Regulation 2017/1001 (see, to that effect, judgment of 12 December 2007, K & L Ruppert Stiftung v OHIM – Lopes de Almeida Cunha, Couto Simões, Lima Jatobá (CORPO livre), T‑86/05, EU:T:2007:379, paragraph 47).
59      In that regard, a distinction must be drawn between, on the one hand, the conditions which the notice of opposition must satisfy, which are laid down as conditions of admissibility of the opposition, and, on the other hand, the submission of the facts, evidence and arguments and of the documents supporting the opposition, which are matters falling within the scope of the examination of the opposition (see, to that effect, judgment of 17 June 2008, El Corte Inglés v OHIM – Abril Sánchez and Ricote Saugar (BoomerangTV), T‑420/03, EU:T:2008:203, paragraph 64).
60      In accordance with the wording of Article 5(3) of Delegated Regulation 2018/625, failure to comply with the conditions for admissibility laid down in that provision entails the automatic rejection of the opposition as inadmissible. The clear identification of the earlier mark is a condition of admissibility which must be satisfied by the notice of opposition in accordance with Article 5(3) of Delegated Regulation 2018/625 and does not come within the scope of the examination of the merits of the opposition.
61      Article 5(3) of Delegated Regulation 2018/625 constitutes an express provision to the contrary, within the meaning of the case-law cited in paragraph 58 above, according to which the rejection of the opposition is mandatory and not merely an option subject to EUIPO’s discretion. Thus, EUIPO’s discretion, provided for in Article 95(2) of Regulation 2017/1001, to take into consideration facts and evidence submitted after the expiry of the periods prescribed does not apply to the conditions of admissibility of the opposition laid down in Article 5(3) of Delegated Regulation 2018/625.
62      In the present case, as stated in paragraph 40 above, the deficiency found, consisting of the failure to clearly identify the earlier mark, automatically entails rejection of the opposition on the ground of inadmissibility in accordance with Article 5(3) of Delegated Regulation 2018/625. The Board of Appeal was therefore right to find, in paragraph 25 of the contested decision, that as regards admissibility, EUIPO had no discretion to accept evidence submitted after the expiry of the opposition period.
63      Accordingly, the third plea must be rejected as unfounded.
The fourth plea, alleging infringement of Article 72(2) of Regulation 2017/1001
64      The applicant is of the view that EUIPO infringed an essential procedural requirement within the meaning of Article 72(2) of Regulation 2017/1001, first, in that it failed to fulfil its duty to cooperate with the applicant by not inviting it to remedy the error in the notice of opposition and, second, in that it failed to take into account, in the exercise of its discretion, the evidence produced by the applicant.
65      EUIPO and the intervener dispute the applicant’s arguments.
66      It should be borne in mind that, under Article 72(2) of Regulation 2017/1001, an action may be brought before the General Court on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty on the Functioning of the European Union, infringement of Regulation 2017/1001 or of any rule of law relating to their application or misuse of powers.
67      In the present case, it must be noted that, first, the applicant’s argument relating to EUIPO’s obligation to invite it to remedy its errors has been examined in the context of the first and second pleas in law. Second, the applicant’s argument relating to EUIPO’s consideration of certain items of evidence in the exercise of its discretion was also examined in the context of the third plea. Thus, in so far as the fourth plea invoked by the applicant, alleging infringement of Article 72(2) of Regulation 2017/1001, is not a separate plea but is linked to the other pleas in law invoked by the applicant which have been rejected as unfounded, that plea must also be rejected as unfounded. Accordingly, the head of claim seeking annulment is rejected.
Costs
68      Under Article 134(1) 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.
69      Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by EUIPO. Since the intervener has not applied for costs, it must bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Dorsum Informatikai Fejlesztő és Szolgáltató Zrt. to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);
3.      Declares that the intervener is to bear its own costs.
Spielmann
Mastroianni
Brkan
Delivered in open court in Luxembourg on 18 January 2023.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.