ORDER OF THE GENERAL COURT (Sixth Chamber)
16 January 2020 (*)
(Action for annulment — EU trade mark — International registration designating the European Union — No recording of the change in ownership in the international register — No locus standi — Inadmissibility)
In Case T‑128/19,
Hemp Foods Australia Pty Ltd, established in Sydney (Australia), represented by M. Holah and P. Brownlow, Solicitors,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
César Raúl Dávila Cabrejos, residing in Lima (Peru), represented by L. Estropá Navarro, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 16 November 2018 (Case R 1041/2018-2), relating to opposition proceedings between Mr Cabrejos and Raw With Life Pty Ltd as Trustee for Benhaim Trading Trust,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli, President, S. Frimodt Nielsen and J. Schwarcz (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 22 February 2019,
having regard to the written question put to EUIPO by the Court on 2 May 2019 and the reply to that question lodged at the Court Registry on 17 May
2019,
having regard to the written question put to the applicant by the Court on 14 June 2019 and the reply to that question lodged at the Court Registry on 2 July
2019,
having regard to the plea of inadmissibility submitted by EUIPO by document lodged at the Court Registry on 4 July 2019,
having regard to the response of the intervener lodged at the Court Registry on 4 July 2019,
having regard to the observations of the applicant on the plea of inadmissibility put forward by EUIPO, lodged at the Court Registry on 18 July 2019,
makes the following
Order
Background to the dispute and facts subsequent to the lodging of the application
1        On 10 May 2015,
Raw With Life Pty Ltd as Trustee for Benhaim Trading Trust (‘the original proprietor’) designated the European Union in respect of international registration No 1259974 of the following figurative sign (‘the international registration at issue’):
2        The goods in respect of which protection in the European Union of the international registration at issue was sought are in, inter alia, Class 3 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.
3        The international registration at issue was notified on 13 August 2015 to 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).
4        On 14 February 2016, the intervener, César Raúl Dávila Cabrejos, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001),
on the basis of six earlier EU trade marks, to the application for protection of the international registration at issue.
5        On 8 May 2018, the Opposition Division upheld the opposition.
6        On 5 June 2018, the original proprietor filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001.
7        By decision of 16 November 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
8        On 11 December 2018, the International Bureau of the World Intellectual Property Organisation (WIPO) received a request for the recording of a change in ownership of the international registration at issue, which had been assigned, on 3 December 2018, by the original proprietor to the applicant, Hemp Foods Australia Pty Ltd (‘the first request for the recording of a change in ownership’).
9        On 11 January 2019, WIPO requested that the first request for the recording of a change in ownership be regularised within a period of three months.
10      According to the applicant, the first request for the recording of a change in ownership was deemed to have been abandoned on 11 April 2019 on the ground that certain irregularities that had been found to exist had not been remedied within the time limit set.
11      On 31 May 2019, WIPO received a new request for the recording of a change in ownership of the international registration at issue (‘the second request for the recording of a change in ownership’). On 21 June 2019, the change in ownership of the international registration at issue was recorded in the international register.
Forms of order sought
12      In the application, the applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
13      In the plea of inadmissibility, EUIPO contends that the Court should:
–        dismiss the action as inadmissible;
–        order the applicant to pay the costs.
14      In his response, the intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
15      In its observations on the plea of inadmissibility, the applicant claims that the Court should reject the plea of inadmissibility.
Law
16      Under Article 130(1) and (7) of the Rules of Procedure of the General Court, if the defendant so requests, the Court may rule on inadmissibility or lack of competence without going to the substance of the case.
17      In the present case, since EUIPO has applied for a ruling that the action is inadmissible, the Court, finding that it has sufficient information from the documents in the case file, has decided to rule on that application without taking further steps in the proceedings.
18      In support of the plea of inadmissibility, EUIPO puts forward, in essence, two objections to admissibility. First, it submits that the applicant does not have locus standi to bring the present action. Thus, according to EUIPO, under Article 72(4) of Regulation 2017/1001, only the original proprietor was entitled to bring an action against the contested decision. Secondly, EUIPO submits that the applicant failed to comply with the formal and substantive requirements set out in Articles 174 to 176 of the Rules of Procedure for a lawful replacement of a party to the proceedings before the Court. First, as regards the formal conditions, EUIPO maintains that the original proprietor never acquired the status of ‘the original party in the proceedings before the General Court’, as required by Article 174 of the Rules of Procedure. It submits that the applicant also failed to comply with Articles 175 and 176 of the Rules of Procedure by not submitting a separate document with an application for replacement and by therefore preventing the original proprietor from submitting its observations on that matter. Secondly, as regards the substantive conditions, EUIPO maintains that there is no proof
to establish that, before the present action was brought, the international registration at issue was lawfully and effectively transferred to the applicant by the original proprietor or that that transfer was recorded in the international register.
19      The applicant disputes EUIPO’s arguments. First, the applicant submits that, since a request for the recording of a change in ownership of the international registration at issue had been received by WIPO at the time when the present action was brought, it was the party that was entitled to bring the action before the Court. Secondly, it submits that Articles 174 to 176 of the Rules of Procedure are not relevant in the present case, since those articles apply to situations in which the transfer of an intellectual property right affected by the proceedings takes place in the course of the proceedings before the Court, which is not the case here. Thirdly, the applicant states that the transfer has now been duly recorded with WIPO and EUIPO and that 3 December 2018 is the date on which the rights to the international registration at issue were transferred by the original proprietor to the applicant.
20      In that regard, it must be borne in mind that the question as to whether an action is admissible must be assessed by reference to the situation prevailing when the application was lodged (judgment of 27 November 1984, Bensider and Others v Commission, 50/84, EU:C:1984:365, paragraph 8, and order of 6 July 2017, Yanukovych v Council, C‑505/16 P, EU:C:2017:525, paragraph 53).
21      Under Article 72(4) of Regulation 2017/1001, an action against a decision of a Board of Appeal is open to any party to proceedings before the Board of Appeal adversely affected by its decision.
22      Furthermore, it is clear from a combined reading of Article 20, in particular
Article 20(11), of that regulation, on the one hand, and of Article 199 thereof, on the other hand, that it is only after the recording of a change in the ownership of an international registration in the international register that the new proprietor may invoke the rights arising from that registration.
23      In addition, under Articles 174 to 176 of the Rules of Procedure, where an intellectual property right affected by the proceedings before the Court has been transferred, the new proprietor of that right, as the successor to the party before the Board of Appeal, may be authorised by order to replace the transferor in the proceedings before the Court, where the former proprietor of the right has no objection and the Court, having heard the other parties to the action, considers it appropriate (see order of 10 September 2015, Pelikan v OHIM — RMP (be.bag), T‑517/14, not published, EU:T:2015:720, paragraph 16 and the case-law cited).
24      Moreover, where the change in the ownership of an international registration designating the European Union takes place after the Board of Appeal has adopted a decision, but before an action has been brought before the Court, the new proprietor may bring an action before the Court without having to submit an application for replacement and must be accepted as a party to the proceedings once it has proven ownership of the registration invoked before EUIPO (see, by analogy, judgments of 28 June 2005, Canali Ireland v OHIM — Canal Jean (CANAL JEAN CO. NEW YORK), T‑301/03, EU:T:2005:254, paragraph 19, and of 21 April 2010, Peek & Cloppenburg and van Graaf v OHIM — Queen Sirikit Institute of Sericulture (Thai Silk), T‑361/08, EU:T:2010:152, paragraph 31).
25      In the present case, it must be stated that when, on 22 February 2019, the applicant brought the present action, the change in the ownership of the international registration at issue had not been recorded in the international register. It follows that, at the time when it brought the
present action, the applicant had not become a party to proceedings before EUIPO for the purposes of Article 72(4) of Regulation 2017/1001, as interpreted by the case-law referred to in paragraph 24 above.
26      Consequently, it was for the original proprietor to bring the present action and to have itself replaced, in accordance with the formal requirements laid down by Articles 174 to 176 of the Rules of Procedure, by the applicant once the change in ownership of the international registration at issue had been recorded in the international register.
27      Those findings are not called into question by the arguments put forward by the applicant.
28      First, the applicant submits that it was entitled to bring the present action since WIPO had received the first request for the recording of a change in ownership at the time when that action was brought. The applicant bases its argument on Article 20(12) of Regulation 2017/1001, which provides that where there are time limits to be observed vis-à-vis EUIPO, the new proprietor may make the corresponding statements to EUIPO once the request for registration of the transfer has been received by EUIPO. However, it must be stated that that provision applies exclusively to time limits to be complied with before EUIPO and not to the conditions for the bringing of an action before the Court, which only the recording in the international register enables the new proprietor to bring. For the sake of completeness, it must be pointed out that, according to the information put before the Court, the first request for the recording of a change in ownership filed with WIPO was deemed to have been abandoned.
29      Secondly, the applicant states that the request for the recording of a change in ownership was refiled with WIPO on 31 May 2019 and that the transfer has now been recorded in the international register since 21 June 2019 and has also been recorded at EUIPO. In that regard, first of all, it is clear from paragraph 22 above that, in principle, the date on which a change in ownership is recorded in the international register is alone relevant for the purposes of the question as to whether an action is admissible. In the present case, that date, namely 21 June 2019, is subsequent to the date on which the present action was brought and, in the light of the case-law referred to in paragraph 20 above, has no bearing on the question as to whether that action is admissible. Next, it must be pointed out that, it is true that, pursuant to Rule 27(1)(b) of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol relating to that Agreement, the recording of a change in ownership in the international register may bear the date on which the request for recording was received, provided that that request, when it is received, complies with the applicable requirements. The fact remains that, even if the date of submission of the second request for the recording of a change in ownership, namely 31 May 2019, could be taken into account in the present case, that date also, in the light of the case-law referred to in paragraph 20 above, has no bearing on the question as to whether the present action, which was brought before that date, is admissible.
30      Lastly and thirdly, in so far as the applicant appears to be maintaining that, since the transfer of the intellectual property rights from the original proprietor to itself has now been recorded in the international register, account must be taken, for the purposes of the question as to whether the present action is admissible, of the date on which that transfer took place, namely 3 December 2018, it is sufficient to state that it is clear from paragraph 22 above that the date of that transfer is irrelevant for those purposes.
31      Consequently, the plea of inadmissibility put forward by EUIPO must be upheld and the action must be dismissed as inadmissible.
Costs
32      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 forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby orders:
1.      The action is dismissed as inadmissible.
2.      Hemp Foods Australia Pty Ltd shall pay the costs.
Luxembourg, 16 January 2020.
E. Coulon
A. Marcoulli
Registrar
President
*      Language of the case: English.