JUDGMENT OF THE GENERAL COURT (Second Chamber)
1 July 2014 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark YouView+ — Earlier Benelux figurative trade mark You View You-View.tv — Late submission of documents — Discretion granted by Article 76(2) of Regulation (EC) No 207/2009 — Concept of a ‘provision to the contrary’ — Rule 20(1) of Regulation (EC) No 2868/95)
In Case T‑480/13,
You-View.tv, established in Anvers (Belgium), represented by S. Criel, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock and N. Bambara, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
YouView TV Ltd, established in London (United Kingdom),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 18 June 2013 (Case R 2112/2012-4) relating to opposition proceedings between You-View.tv and YouView TV Ltd,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 30 August 2013,
having regard to the response lodged at the Court Registry on 12 December 2013,
having regard to the decision of 14 February 2014 dismissing the application for leave to lodge a reply,
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 and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1        On 22 September 2011, YouView TV Ltd, the other party to the proceedings before the Board of Appeal, 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 mark in respect of which registration was sought is the word mark YouView+.
3        The goods and services in respect of which registration was sought are in Classes 9, 16, 38, 41 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.
4        On 17 February 2012, the applicant, You-View.tv, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5        The opposition was based on the following earlier Benelux figurative trade mark:
6        That mark, registered on 7 April 2008 under No 838408, designates services in Classes 35, 38 and 41.
7        The grounds for opposition were those laid down in Article 8(1)(b) of Regulation No 207/2009.
8        By notification of 30 April 2012, OHIM — pursuant to Rule 19(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark — set the time-limit for substantiating the earlier rights on which the opposition was based at 5 September 2012. The explanatory note attached to that notification explained that, as regards an earlier trade mark registration, the registration certificate or equivalent official document had to show all the formal and substantive particulars, including the applicant’s ownership. It also indicated that OHIM would not inform the applicant whether the required evidence was missing and that the opposition would be rejected without any examination of its merits if the evidence was not filed within the prescribed period.
9        The applicant filed an extract from the Benelux Trade Mark Office and an English translation thereof, indicating You-View.tv BVBA — and not You-View.tv — as the name of the holder of the earlier mark. No explanation was given at that time regarding the fact that the name indicated in the extract was not the same as that of the applicant.
10      By decision of 21 September 2012, the Opposition Division rejected the opposition in its entirety and ordered the applicant to bear the costs. It explained, first, that the notice of opposition was filed in the name of You-View.tv whereas the opposition was based on an earlier Benelux mark registered in the name of You-View.tv BVBA, secondly, that those were two different legal entities and, thirdly, that the applicant had not provided any evidence of a transfer of ownership of the earlier mark to its name, or filed any document demonstrating that it had been authorised by the proprietor of the earlier mark to file an opposition. The Opposition Division concluded that, under Rule 20(1) in conjunction with Rule 19 of Regulation No 2868/95, the opposition should be rejected as unfounded since the opponent had failed to prove its entitlement to file the opposition.
11      On 15 November 2012 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. In that appeal, it submitted evidence intended to establish its ownership of the earlier mark. In that respect, it indicated, inter alia, that it had become a public limited company on 16 March 2010 and that the modification of its legal form had not been notified to the Benelux Trade Mark Office.
12      By decision of 18 June 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It considered, in particular, that by the end of the period referred to in Rule 19(1) of Regulation No 2868/95, the applicant had failed to provide proof of the existence, validity and scope of protection of the earlier mark, or of its entitlement to file the opposition, contrary to the requirements laid down in Rule 19(2) of that regulation. It concluded that the Opposition Division had correctly rejected the opposition as unfounded pursuant to Rule 20(1) of Regulation No 2868/95 (paragraph 16 of the contested decision). It added the following in paragraphs 17 to 19 of its decision:
‘17 The facts and evidence submitted for the first time by [the applicant] during the appeal proceedings in order to prove that it is the owner of the earlier mark must be disregarded. According to the case-law of the European Courts, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time-limits to which such submission is subject under the provisions of [Regulation No 2868/95]. The possibility to submit facts and evidence after the expiry of the periods specified is therefore conditional upon there being no provision to the contrary. It is only if that condition is met that [OHIM] has the discretion, attributed to it by the Court of Justice when interpreting Article 76(2) [of Regulation No 207/2009], as regards the taking into account of facts and evidence submitted out of time …
18 Such an express provision to the contrary exists in the case at hand, namely Rule 20(1) [of Regulation No 2868/95] in conjunction with Rule 19 [of Regulation No 2868/95]. Pursuant to these provisions, in the absence of proof of the existence, validity and scope of protection of the earlier mark, as well as the opponent’s entitlement to file the opposition, the rejection of the opposition is mandatory (“shall” be rejected), and not merely an option for [OHIM].
19 In sum, the opponent’s non-compliance with Rule 19(2) [of Regulation No 2868/95] cannot be made good by the late submission of documents before the Board.’
Forms of order sought
13      The applicant claims that the Court should:
–        declare that the OHIM was not entitled to dismiss the opposition on the basis of non-compliance with Rule 20(1) in conjunction with rule 19(2) of Regulation No 2868/95;
–        annul the contested decision;
–        order OHIM to examine the grounds relied on in support of the opposition, as set out in the original notice of opposition of 17 February 2012 as well as the notice of appeal dated 15 November 2012;
–        order OHIM to bear its own costs and to pay the costs incurred by the applicant for the purpose of the proceedings, in particular the travel and subsistence expenses and the remuneration of its agents, advisers and lawyers.
14      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The first and third heads of claim
15      First, the General Court has jurisdiction, under Article 65(3) of Regulation No 207/2009, only to annul or to alter the decisions of the Boards of Appeal. By its first head of claim, the applicant seeks a declaratory judgment to the effect that OHIM was not entitled to reject the opposition filed by the applicant. Consequently, the General Court does not have jurisdiction to rule on that head of claim, which is therefore inadmissible (judgment of 12 June 2007 in Case T‑105/05 Assembled Investments (Proprietary) v OHIM — Waterford Wedgwood (WATERFORD STELLENBOSCH), not published in the ECR, paragraph 13).
16      Secondly, it must be borne in mind that if the EU Courts annul a decision of a Board of Appeal of OHIM, OHIM is required, under Article 266 TFEU and Article 65(6) of Regulation No 207/2009, to take the necessary measures to comply with the judgment annulling the decision.
17      In accordance with settled case-law, it is not for the Court to issue directions to OHIM; it is for the latter to give due effect to the grounds and operative part of the Court’s judgments (Case T‑508/08 Bang & Olufsen v OHIM [2011] ECR II‑6979, paragraphs 30 and 31).
18      Accordingly, the applicant’s third head of claim requesting the Court to order OHIM to examine the grounds relied on by the applicant in support of the opposition, as set out in the initial notice of opposition of 17 February 2012 and in the notice of appeal dated 15 November 2012, is inadmissible.
The second head of claim
19      The applicant raises three pleas in law, the first alleging infringement of Article 75 of Regulation No 207/2009, the second alleging infringement of Rule 17(4) of Regulation No 2868/95 and the third alleging infringement of Article 76(2) of Regulation No 207/2009 and of Rule 20(1) of Regulation No 2868/95.
20      The third plea must be examined first.
21      In the third plea, after quoting Article 76(2) of Regulation No 207/2009, under which OHIM may disregard facts or evidence which are not submitted in due time, the applicant notes that, in the case-law, that article has been interpreted as meaning that OHIM has a discretion to take into account facts or evidence submitted late, unless there is a provision to the contrary.
22      The applicant adds that Rule 20(1) of Regulation No 2868/95 did not constitute a provision to the contrary, within the meaning of Article 76(2) of Regulation No 207/2009, since the conditions for the application of that rule were not met.
23      The applicant also claims that the fact that evidence was submitted for the first time in the context of the appeal brought before the Board of Appeal does not argue against taking that evidence into account.
24      In order to assess the merits of the applicant’s line of argument, it must be noted that it follows from the wording of Article 74(2) of Regulation No 40/94, which was reproduced without amendment in Article 76(2) of Regulation No 207/2009, 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 time-limits to which such submission is subject and that OHIM is in no way prohibited from taking account of facts and evidence which are submitted or produced late (see Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 42).
25      The Court of Justice held, in Case C‑120/12 P Rintisch v OHIM [2013] ECR, paragraph 33, that Rule 20(1) of Regulation No 2868/95 does not preclude the Board of Appeal from using its discretion under Article 76(2) of Regulation No 207/2009 in order to take account of facts and evidence submitted or produced late.
26      In the present case, as can be seen from the reasons stated for the contested decision (paragraph 12 above), the Board of Appeal considered that Rule 20(1) of Regulation No 2868/95 constituted a provision to the contrary for the purpose of Article 76(2) of Regulation No 207/2009 and that, accordingly, it had no discretion to take account of the evidence submitted to it by the applicant to establish ownership of the earlier mark.
27      Moreover, that interpretation of the contested decision is confirmed by OHIM, which indicates, in its written pleadings submitted in the course of the proceedings before the Court, that ‘[i]t is apparent from the contested decision that the Board [of Appeal] considered that, when it comes to the substantiation of an earlier registered trade mark, there is no room for the exercise of any discretion on [its] part’.
28      Consequently, in applying Rule 20(1) of Regulation No 2868/95 and in failing to exercise its discretion, the Board of Appeal infringed Article 76(2) of Regulation No 207/2009 (Rintisch v OHIM, paragraph 35).
29      That conclusion cannot be called into question by OHIM’s arguments.
30      First of all, the fact, even were it assumed to be established, that the applicant did not seriously attempt, in the prescribed periods, to prove its ownership of the earlier mark is irrelevant to the lawfulness of the contested decision. As noted, that decision is not based on the lack of probative value of the evidence produced by the applicant before the Board of Appeal, but on the Board of Appeal’s inability to take that evidence into account at the stage of the opposition proceedings at which it adopted that decision.
31      Likewise, the argument that the Board of Appeal must, in certain circumstances, exercise its discretion under Article 76(2) of Regulation No 207/2009 restrictively must be rejected for the reasons set out in the previous paragraph, as must the argument that taking account of the evidence produced late would probably not have been justified. Moreover, in contrast to what it had done in the case that gave rise to Rintisch v OHIM — namely, for the sake of completeness, examining the circumstances warranting the late production of evidence by the applicant and thus exercising its discretion — in the present case, the Board of Appeal did not carry out such an examination.
32      In addition, it must be pointed out that, in view of the Board of Appeal’s discretion, the concept of a lack of legitimate interest in seeking to have the contested decision annulled — which applies where the annulment of the contested decision can only give rise to another decision identical in substance to the decision annulled — cannot be invoked (Case T‑99/95 Stott v Commission [1996] ECR II‑2227, paragraphs 31 and 32).
33      It follows from all the foregoing that the contested decision must be annulled, without it being necessary to rule on the other pleas in law raised in support of applicant’s second head of claim.
Costs
34      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 18 June 2013 (Case R 2112/2012-4), relating to opposition proceedings between You-View.tv and YouView TV Ltd.
2.      Dismisses the remainder of the heads of claim.
3.      Orders OHIM to pay the costs.
Martins Ribeiro
Gervasoni
Madise
Delivered in open court in Luxembourg on 1 July 2014.
[Signatures]
* Language of the case: English.