ORDER OF THE GENERAL COURT (Third Chamber)
8 June 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU figurative trade mark Djili soy original DS — Earlier national word mark DJILI — Relative ground for refusal — Action in part manifestly inadmissible and in part manifestly lacking any foundation in law)
In Case T‑456/17,
Victor Lupu, residing in Bucharest (Romania), represented by P. Acsinte, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ibryam Dzhihangir, residing in Silistra (Bulgaria), represented by C.-R. Romiţan, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 3 May 2017 (Case R 516/2011-5), relating to opposition proceedings between Mr Lupu and Mr Dzhihangir.
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 21 July 2017,
having regard to the response of EUIPO lodged at the Court Registry on 3 October 2017,
having regard to the response of the intervener lodged at the Court Registry on 9 October 2017,
having regard to the plea of inadmissibility submitted by the intervener, pursuant to Article 191 of the Rules of Procedure, read in conjunction with Article 130(1) and (2) of those rules, by separate document also lodged at the Court Registry on 9 October 2017,
makes the following
Order
Background to the dispute
1        On 14 January 2010 the intervener, Mr Ibryam Dzhihangir, filed an application for registration of the figurative mark represented below with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (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        On 19 May 2010 the applicant, Mr Victor Lupu, opposed the registration of that mark for all the goods and services applied for on the basis of Article 8(1)(a) and (b) of Regulation No 207/2009 (now Article 8(1)(a) and (b) of Regulation 2017/1001) and of the earlier Romanian word mark DJILI.
3        The earlier mark was registered on 2 April 2009 with the Oficiul de Stat pentru Invenţii şi Mărci (State Office for Inventions and Trade Marks, Romania) by a third party. That party assigned the mark to the applicant on 8 December 2009.
4        By decision of 9 February 2011, the Opposition Division of EUIPO upheld the opposition for the majority of the goods and services for which registration was sought, taking the view that there was a likelihood of confusion between the mark applied for and the earlier mark.
5        On 9 March 2011, the intervener lodged an appeal with EUIPO against the decision of the Opposition Division claiming, inter alia, that the earlier mark was the subject of an action before the Romanian courts for a declaration of invalidity. He applied for the suspension of the proceedings before the Board of Appeal until a definitive ruling had been made on the validity of that mark. On 27 October 2011, the Fifth Board of Appeal granted the application for a suspension.
6        The earlier mark was declared invalid by a decision of a Romanian Court of 21 June 2011 and that decision was confirmed by a decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice, Romania) on 27 May 2016. Those decisions were forwarded to the Board of Appeal by the intervener who asked for the proceedings before the Board to be resumed.
7        On 14 June 2016, the applicant asked the Board of Appeal to maintain the suspension of the proceedings before it on the ground that he intended to challenge the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 27 May 2016. In that regard, the intervener stated that the proposed action was an extraordinary appeal which did not suspend the application of the decision.
8        On 16 December 2016, the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) dismissed the appeal brought before it by the applicant.
9        On 17 March 2017, the Board of Appeal informed the applicant that it appeared that the only earlier right relied on in support of the opposition had ceased to exist and called on the applicant to submit observations. The applicant has not done so.
10      By decision of 3 May 2017 (‘the contested decision’), the Board of Appeal annulled the decision of the Opposition Division and rejected the applicant’s opposition. It took the view that the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 27 May 2016 was final, that the only earlier right relied on in support of the opposition had thereby been declared invalid and that therefore the opposition was unfounded.
Forms of order sought
11      In the application, the applicant claims that the Court should:
–        annul the contested decision;
–        uphold the opposition against registration of the mark applied for or declare that registration invalid;
–        in the alternative, annul the contested decision, order the proceedings before the Board of Appeal to be resumed and 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 before the Romanian courts is sent to it;
–        order EUIPO and the intervener to pay the costs.
12      In its response, the EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by EUIPO.
13      In its response, the intervener contends that the Court should:
–        dismiss the action as unfounded.
14      In the plea of inadmissibility, the intervener contends that the Court should dismiss the action without ruling on the merits.
15      The applicant and EUIPO presented observations on the plea of inadmissibility, submitting, in essence, that it should be dismissed.
Law
16      Under Article 126 of the Rules of Procedure, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may decide to give a ruling by reasoned order without taking further steps in the proceedings.
17      In the present case, the Court considers that the case-file provides sufficient information and decides, in accordance with that article, to give a decision on the action without taking further steps in the proceedings. In addition, under Article 130(7) of the Rules of Procedure the examination of the application for a ruling on admissibility submitted by the applicant should be reserved for the final judgment.
Admissibility
The grounds relied on in the plea of inadmissibility
18      The intervener claims, in essence, that the decisions of the Romanian courts are final and therefore preclude the present proceedings by virtue of the right to a fair trial which includes the right not to call into question a final judgment. Thus, no other judicial proceedings on the validity of the earlier mark are possible, since the registration of the earlier right was definitively declared to be invalid.
19      As the applicant states in his observations on the plea of inadmissibility, the intervener does not provide any evidence capable of calling into question the admissibility of the action.
20      It must be stated that the intervener’s arguments in the plea of inadmissibility relate to the issue whether the Board of Appeal could correctly consider that the earlier right no longer existed. Such an issue relates to the merits of the contested decision.
21      The intervener’s arguments in the plea of inadmissibility are therefore not distinct from those relied on in the application concerning the merits of the case.
22      In the light of those considerations, it must be held that none of the grounds put forward by the intervener in support of the plea of inadmissibility is such as to call into question the admissibility of the dispute and that therefore they will be considered in the course of the examination of the substance of the case.
The ground of inadmissibility relied on in EUIPO’s response
23      EUIPO submits in its response that the action is inadmissible in that the pleas and arguments in the application do not comply with the requirements laid down in Article 177(1)(d) of the Rules of Procedure.
24      It must be recalled that, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d), the application must contain a 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.