ORDER OF THE GENERAL COURT (Seventh Chamber)
22 November 2018 (*)
(EU trade mark — Cancellation proceedings — Word mark RoB — Declaration of invalidity — Article 75 of Regulation (EC) No 207/2009 (now Article 94 of Regulation (EU) 2017/1001) — Rule 62(3) of Regulation (EC) No 2868/95 (now Article 58(3) of Regulation (EU) 2018/625) — Action manifestly lacking any foundation in law)
In Case T‑356/17,
Daico International BV, established in Amsterdam (Netherlands), represented by M. Kassner, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Söder, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being:
American Franchise Marketing Ltd, established in London (United Kingdom),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 21 March 2017 (Case R 1407/2016‑2), relating to cancellation proceedings between American Franchise Marketing and Daico International,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, A. Marcoulli (Rapporteur) and A. Kornezov, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 2 June 2017,
having regard to the objection of inadmissibility raised by EUIPO, by document lodged at the Court Registry on 11 October 2017,
makes the following
Order
Background to the dispute
1        On 20 April 2007, the applicant, Daico International BV, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by 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)).
2        Registration as a mark was sought for the word sign RoB (‘the contested mark’).
3        The goods and services in respect of which registration was sought are in Classes 3, 10, 18, 25, 28, 35, 40, 41 and 43 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.
4        The contested mark was registered on 10 March 2008.
5        On 11 August 2015, American Franchise Marketing Ltd filed an application for revocation in respect of the contested mark, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), on the ground that that mark had not been put to genuine use for an uninterrupted five-year period. That application was directed against all the goods and services covered by the contested mark.
6        By letter of 26 November 2015, EUIPO set the applicant a period expiring on 6 March 2016 for the production of evidence of genuine use of the contested mark (‘the letter of 26 November 2015’). In addition, EUIPO stated that, in the absence of proof of genuine use within the period set, the contested mark would be revoked. That letter was sent by registered post without acknowledgement of receipt on 27 November 2015.
7        On 1 June 2016, as no evidence of use had been submitted within the period set, the Cancellation Division upheld the revocation of the contested mark in its entirety.
8        On 31 July 2016, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Cancellation Division.
9        Also on 31 July 2016, the applicant filed an application for restitutio in integrum pursuant to Article 81 of Regulation No 207/2009 (now Article 104 of Regulation 2017/1001). The applicant submitted, in essence, that it had not received notification from EUIPO concerning the revocation proceedings.
10      On 4 August 2016, the Board of Appeal informed the parties that the appeal before it was suspended pending a decision of the Cancellation Division on the application for restitutio in integrum.
11      On 1 September 2016, the Cancellation Division rejected the application for restitutio in integrum. It noted that the applicant had not based its application on the fact that it had acted with all the due care required by the circumstances but on the fact that EUIPO had not correctly notified it of the information concerning the revocation proceedings. The Cancellation Division therefore considered that the application submitted by the applicant in fact relied on an obvious procedural error attributable to EUIPO, under Article 80(1) and (2) of Regulation No 207/2009 (now Article 103(1) and (2) of Regulation 2017/1001). Consequently, it rejected the application for restitutio in integrum. As regards the obvious procedural error attributable to EUIPO, the Cancellation Division noted that, according to the information available, the letter of 26 November 2015 had indeed been received on 4 December 2015. Moreover, the applicant activated the option to receive communications by electronic means only on 24 March 2016. Accordingly, the Cancellation Division indicated its intention not to revoke its decision of 1 June 2016.
12      By decision of 21 March 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. First, noting the terms of Rule 62(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 58(3) of 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)), the Board of Appeal noted that the letter of 26 November 2015 had been sent by registered mail to the applicant’s address. That letter had been delivered on 4 December 2015. The Board of Appeal concluded from this that the letter of 26 November 2015 met the conditions of actual knowledge by the addressee of the notification, concerning external aspects of the notification. The question of whether or not the applicant’s director was aware of the notification concerned the internal aspect of the notification and is not covered by the assessment of its validity. The Cancellation Division thus correctly concluded that the letter of 26 November 2015 had been delivered to the applicant on 4 December 2015. Since the applicant did not produce evidence of genuine use of the contested mark within the period prescribed, the Cancellation Division acted correctly in revoking that mark.
13      Next, as regards the evidence filed after the expiry of the period set, the Board of Appeal noted that, where no proof of genuine use was provided within the period set by EUIPO, the latter had to uphold the revocation of the mark. Such a conclusion does not apply where evidence of that use was indeed submitted within the period set. In the present case, EUIPO did not receive evidence of use of the contested mark within the period prescribed. The Board of Appeal therefore decided not to take into account the new evidence produced out of time.
14      Lastly, the Board of Appeal rejected the applicant’s submission that the application for revocation had been lodged in bad faith.
Forms of order sought
15      The applicant claims that the Court should:
–        declare the application admissible;
–        annul the contested decision;
–        order EUIPO to pay the costs.
16      EUIPO contends that the Court should:
–        dismiss the action by order under Article 126 of the Rules of Procedure of the General Court;
–        order the applicant to pay the costs.
Law
17      Under Article 126 of the Rules of Procedure, where an action is manifestly inadmissible or lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
18      In the present case, the Court considers that it has sufficient information from the documents before it and decides, pursuant to that article, to give a decision on the action without taking further steps in the proceedings.
19      The applicant submits that the Board of Appeal, by refusing to take account of the evidence of genuine use of the contested mark, infringed its right to be heard, as follows from Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001). The Board of Appeal, it argues, erred in stating that it was established, in accordance with Rule 62(3) of Regulation No 2868/95, that the letter of 26 November 2015 had been received by the applicant. The applicant refers, in this regard, to the judgment of 25 October 2012, Automobili Lamborghini v OHIM — Miura Martínez (Miura) (T‑191/11, not published, EU:T:2012:577, paragraph 34), in which it was held that the existence of evidence of reasonable doubt as to the correct reception by the addressee of the consignment in question is sufficient proof that it did not receive the document. That judgment is, moreover, referred to in the directives relating to procedures published by EUIPO (Part A, section 1, point 3.2.2). In the present case, the applicant can clearly prove that it did not receive the letter of 26 November 2015, as it was received by Mr or Ms D., whom the applicant does not know. There is, therefore, a reasonable doubt as to whether the letter of 26 November 2015 was indeed received. Furthermore, the reference made by the Board of Appeal to the order of 22 January 2015, GEA Group v OHIM (engineering for a better world) (T‑488/13, EU:T:2015:64), is incorrect, since that case concerned the receipt of a fax. By contrast, the judgment of 15 September 1998, European Night Services and Others v Commission (T‑374/94, T‑375/94, T‑384/94 and T‑388/94, EU:T:1998:198), is relevant in so far as it was found in that case that a letter, received by an employee not authorised to do so, was not properly notified. This, it is submitted, also applies a fortiori in regard to a person who is unknown to the applicant.
20      First, concerning the alleged infringement of Article 75 of Regulation No 207/2009, it must be recalled that that provision, in its second sentence, enshrines, in the context of EU trade mark law, the general principle of the protection of the rights of the defence under which a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known (see judgment of 4 May 2017, Haw Par v EUIPO — Cosmowell (GELENKGOLD), T‑25/16, not published, EU:T:2017:303, paragraph 54 and the case-law cited).
21      In the present case, the applicant refers specifically to the alleged fact that the Board of Appeal infringed Article 75 of Regulation No 207/2009 ‘by refusing to consider the evidence of genuine use of the [contested] mark’.
22      The applicant is thus in reality contesting the Board of Appeal’s failure to take into account the evidence of genuine use produced before it. In that regard, it is sufficient to note, as did the Board of Appeal, that Rule 40(5) of Regulation No 2868/95 (now Article 19(1) of Regulation 2018/625) provides that EUIPO is to invite the proprietor of the EU trade mark to furnish proof of use of the mark, within such period as it is to specify. That rule also provides, in its second sentence, that if proof of use of the mark is not provided within the period set by EUIPO, the mark is to be revoked. Furthermore, under Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001), EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.
23      It follows that, where no proof of use of the mark concerned is submitted within the period set by EUIPO, the latter must, as a rule, revoke the mark of its own motion. This is not required, however, where evidence of that use that is not entirely irrelevant is adduced within that time (see, to that effect, judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraphs 86 and 87, and of 4 May 2017, Kasztantowicz v EUIPO — Gbb Group (GEOTEK), T‑97/16, not published, EU:T:2017:298, paragraph 29). It also follows from this that it remains possible to submit proof of use of the mark in addition to the evidence adduced within the time period set by EUIPO under Rule 40(5) of Regulation No 2868/95 after expiry of that period and that EUIPO is in no way prohibited from taking account of such additional evidence which is submitted after that time (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 88; see also, to that effect, judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraphs 26 to 28).
24      In the present case, however, it is common ground that no proof of genuine use of the contested mark was produced within the period set by EUIPO. Therefore, it cannot be held that the evidence produced for the first time before the Board of Appeal was additional evidence. The Board of Appeal could therefore correctly decide, in paragraph 40 of the contested decision, not to take into account that new evidence (see, to that effect, judgment of 4 May 2018, Skyleader v EUIPO — Sky International (SKYLEADER), T‑34/17, not published, EU:T:2018:256, paragraphs 22 to 32).
25      In addition, assuming that, by its plea, the applicant is referring more generally to the procedure before the Board of Appeal, there is no evidence to suggest that it was not given the opportunity effectively to make known its point of view.
26      It is therefore necessary to reject, as being manifestly unfounded, the plea raised by the applicant alleging infringement of Article 75 of Regulation No 207/2009.
27      Secondly, it must be noted that the applicant also relies, in the application, on infringement of Rule 62(3) of Regulation No 2868/95.
28      It should be recalled that Rule 61 of Regulation No 2868/95 (now Article 56 of Regulation 2018/625), which lays down ‘General provisions on notifications’, contains an exhaustive list of the means by which EUIPO is to notify, inter alia, its decisions. Thus, paragraph 2 of that rule states that notifications are to be made by post, by hand delivery, by deposit in a post box at EUIPO, by telecopier or other technical means, or by public notification.
29      Rule 62(3) of Regulation No 2868/95 provides as follows:
‘Where notification is effected by registered letter, whether or not with advice of delivery, this shall be deemed to be delivered to the addressee on the 10th day following that of its posting, unless the letter has failed to reach the addressee or has reached him at a later date. In the event of any dispute, it shall be for [EUIPO] to establish that the letter has reached its destination or to establish the date on which it was delivered to the addressee, as the case may be.’
30      In view of the arguments put forward in the application, it must be held that, by pleading the infringement of Rule 62(3) of Regulation No 2868/95, the applicant disputes the evidence adduced by EUIPO for the purposes of showing that the letter of 26 November 2015 reached its destination, thus causing time to start to run in respect of the period for providing evidence of genuine use of the contested mark.
31      In that regard, a distinction must be drawn between, first, the transmission of a document to the addressee, which is required for due notification, and, secondly, effective knowledge of that document, which is not required for the notification to be regarded as due notification. According to the case-law, the existence of a valid notification to the addressee is in no way conditional on its having been actually brought to the notice of the person competent to deal with it under the internal rules of the entity addressed, as due notification of a decision is effected once it has been communicated to the addressee and the addressee is in a position to take cognisance of it. Thus, in order to assess the validity of a notification, only its external aspect is taken into consideration, that is to say, due transmission to the addressee, and not its internal aspect, which concerns the internal functioning of the entity addressed (see order of 22 January 2015, engineering for a better world, T‑488/13, EU:T:2015:64, paragraph 19 and the case-law cited; judgment of 4 May 2017, GEOTEK, T‑97/16, not published, EU:T:2017:298, paragraph 39).
32      In that context, the notifier must establish that it has created the conditions for the document to be notified to arrive within the sphere of influence of the addressee. However, the notifier is not required to establish that the document was actually brought to the attention of the addressee. The notifier is thus neither obliged nor, indeed, as a general rule, able to interfere with the internal functioning of the addressee in order to ensure such cognisance. In particular, the notifier cannot be held responsible for the fact that, because of a possible lack of diligence on the part of the addressee, the latter did not take cognisance of a document which duly arrived within its sphere of influence (see, to that effect, judgment of 4 May 2017, GEOTEK, T‑97/16, not published, EU:T:2017:298, paragraph 41 and the case-law cited).
33      In the present case, it should be noted, first of all, that the letter of 26 November 2015 was sent as a registered letter without acknowledgement of receipt. Furthermore, as is apparent from the document from the Spanish postal service, reproduced in paragraph 6 of the contested decision, the addressee of that letter was the applicant, namely, ‘DAICO INTERNATIONAL B.V.’.
34      Next, as shown by the document from the Dutch postal service, reproduced in paragraph 27 of the contested decision, the Dutch address of the addressee was the address that the applicant had indicated at that time to EUIPO, namely, ‘Kloveniersburgwal 41, Amsterdam 1011 JW’. That document bears the same postal reference number as that from the Spanish postal service. It should also be noted that the applicant states in the application that it declared a change of address to EUIPO on 24 March 2016, that is, after the letter of 26 November 2015 had been sent. Assuming that the applicant had, in fact, changed address before the letter of 26 November 2015 was sent, EUIPO did not, at that time, have the applicant’s new address.
35      Lastly, as is clear from the document from the Spanish postal service, reproduced in paragraph 12 of the contested decision, the letter in question was delivered on 4 December 2015, a fact which is also evidenced by the document issued by the Dutch postal service referred to above.
36      It follows from those details that EUIPO created the conditions for the document to be notified to reach the addressee’s sphere of influence, within the meaning of the case-law referred to in paragraph 32 above.
37      The fact that the letter of 26 November 2015 was allegedly received by a person unknown to the applicant cannot alter that conclusion. It should be recalled that the existence of a valid notification to the addressee is in no way conditional on its having been actually brought to the notice of the person competent to deal with it under the internal rules of the entity addressed. Furthermore, the notification of a measure to a company’s registered office meets in all cases the requirement of legal certainty and, moreover, makes it possible for the company to take cognisance of the measure notified. Consequently, companies have no right to require the notification of a measure to a particular person (judgment of 26 November 1985, Cockerill-Sambre v Commission, 42/85, EU:C:1985:471, paragraph 11, and order of 20 November 2012, Shahid Beheshti University v Council, T‑120/12, not published, EU:T:2012:610, paragraph 38).
38      Moreover, nothing has been put forward to suggest, as in the case giving rise to the judgment of 15 September 1998, European Night Services and Others v Commission (T‑374/94, T‑375/94, T‑384/94 and T‑388/94, EU:T:1998:198), and assuming that the national regulatory framework can be transposed, that valid instructions were left by the applicant to the Dutch postal service, which were not complied with. As regards the reference made by the applicant to the judgment of 25 October 2012, Miura (T‑191/11, not published, EU:T:2012:577), suffice it to note that that judgment concerned a situation different to that in the present case, namely, a letter sent by ordinary mail.
39      In addition, it should be noted that, as is apparent from the statement of the owner of an administrative services company, the applicant has no salaried employees. It was thus very specifically for the applicant to ensure the conditions for the receipt of any post which might be sent to it, inter alia by registered post. No evidence has been put forward to support the view that any such precautions were taken. It should also be pointed out that the applicant stated during the administrative procedure that several letters sent by EUIPO had not been received.
40      It follows that the Board of Appeal did not err in finding that the letter of 26 November 2015 had been delivered to the applicant on 4 December 2015 and that, consequently, no proof of genuine use of the contested mark had been submitted within the period set.
41      It is therefore necessary to reject, as manifestly unfounded, the plea raised by the applicant alleging infringement of Rule 62(3) of Regulation No 2868/95.
42      In the light of the foregoing, the pleas put forward by the applicant and, therefore, the action in its entirety must be dismissed as manifestly lacking any foundation in law, without it being necessary to rule on the admissibility of the present action, which is disputed by EUIPO.
Costs
43      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby orders:
1.      The action is dismissed.
2.      Daico International BV shall pay the costs.
Luxembourg, 22 November 2018.
E. Coulon
V. Tomljenović
Registrar
President
*      Language of the case: English.