JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
8 September 2021 (*)
(EU trade mark – Invalidity proceedings – EU word mark SCIO – Earlier non-registered mark SCIO – Article 53(1)(b) of Regulation (EC) No 207/2009 (now Article 60(1)(b) of Regulation (EU) 2017/1001) – Article 8(3) of Regulation No 207/2009 (now Article 8(3) of Regulation 2017/1001) – Article 71(1) of Regulation 2017/1001 – Article 72(1) of Regulation 2017/1001 – Article 95(1) of Regulation 2017/1001 – Article 16(1) of Delegated Regulation (EU) 2018/625 – Article 6bis of the Paris Convention)
In Case T‑86/20,
Qx World Kft., established in Budapest (Hungary), represented by Á. László and A. Cserny, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Mandelay Magyarország Kereskedelmi Kft. (Mandelay Kft.), established in Szigetszentmiklós (Hungary), represented by V. Luszcz, C. Sár and É. Ulviczki, lawyers,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 2 December 2019 (Case R 1312/2019-5), relating to invalidity proceedings between Qx World and Mandelay,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira (Rapporteur), President, D. Gratsias and T. Perišin, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 13 February 2020,
having regard to the response of EUIPO lodged at the Court Registry on 20 April 2020,
having regard to the response of the intervener lodged at the Court Registry on 4 May 2020,
further to the hearing on 29 January 2021,
gives the following
Judgment
Background to the dispute
1        On 17 September 2012, the intervener, Mandelay, filed an application for registration of an EU trade mark 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        Registration as a mark was sought for the word sign SCIO.
3        The goods and services in respect of which registration was sought are in Classes 9 and 44 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 correspond, for each of those classes, to the following description:
–        Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines; computer software; fire-extinguishing apparatus’;
–        Class 44: ‘Hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.’
4        The application for registration was published in the European Union Trade Marks Bulletin on 19 November 2012. The mark was registered as an EU trade mark on 18 February 2014, under number 11 191 194, in respect of all the goods and services referred to in paragraph 3 of this judgment.
5        On 6 November 2017, the applicant, Qx World, filed with EUIPO an application for a declaration of invalidity of that mark for all the goods and services in respect of which it had been registered. The ground of invalidity relied on in support of that application was that set out in Article 60(1)(b) of Regulation 2017/1001, read in conjunction with Article 8(3) of that regulation.
6        The application for a declaration of invalidity was based on the non-registered mark SCIO, protected in Hungary, Germany, Bulgaria, Belgium, Austria, Cyprus, Denmark, Greece, Spain, Finland, France, the United Kingdom, Italy, the Netherlands, Portugal, Romania and Sweden, in respect of the following goods and services: ‘scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services’.
7        By decision of 16 April 2019, the Cancellation Division dismissed the application for a declaration of invalidity, on the ground that the applicant had not established the existence of the earlier non-registered mark SCIO, for the purposes of Article 8(3) of Regulation 2017/1001.
8        On 14 June 2019, the applicant brought an action before EUIPO against that decision of the Cancellation Division.
9        By decision of 2 December 2019 (ʻthe contested decisionʼ), the Fifth Board of Appeal of EUIPO dismissed the action.
10      The Board of Appeal stated, as a preliminary point, that the application for a declaration of invalidity was based solely on Article 60(1)(b) of Regulation 2017/1001, read in conjunction with Article 8(3) of that regulation. It recalled that, in accordance with the case-law, new grounds cannot be added in the course of the opposition proceedings or subsequent appeal proceedings. It therefore rejected the applicant’s argument, submitted at a later stage in the proceedings, that the earlier non-registered mark was well known within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (‘the Paris Convention’).
11      Next, the Board of Appeal agreed with the Cancellation Division’s finding that the principles set out in the case-law on Article 8(4) of Regulation 2017/1001 must be applied, by analogy, even when a trade mark, within the meaning of Article 8(3) of that regulation, has been invoked. The applicant was therefore required to specify and clarify the legal and jurisprudential principles to be applied in order to establish whether or not the earlier trade mark relied on could, in the countries referred to in paragraph 6 of this judgment, be granted the level of protection conferred on non-registered trade marks. Only the law which governs the mark relied on can determine whether that mark predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark.
12      Lastly, the Board of Appeal noted that the applicant had not, however, provided any proof whatsoever of the applicable national legislation or made the slightest reference to the relevant national laws which purportedly gave it rights over the non-registered trade mark relied on, and had also failed to provide any information about the prerequisites governing the acquisition of the earlier right referred to and the scope of its protection at national level.
13      The Board of Appeal thus considered that the applicant, by not making any reference whatsoever to the relevant national laws and by not submitting any proof in relation to the applicable national legislation, had failed to meet the burden of proof placed on it.
Forms of order sought
14      The applicant claims that the Court should:
–        principally, alter the contested decision for the purposes of annulling the first-instance decision and remit the case to EUIPO’s Cancellation Division for re-examination;
–        in the alternative, annul both the contested decision and the decision of the Cancellation Division and remit the case to that division for re-examination.
15      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
16      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred in the present proceedings and in the proceedings before the Board of Appeal.
Law
Determination of the applicable regulationratione temporis
17       In view of the date of submission of the application for registration of the mark at issue, that is to say, 17 September 2012, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Furthermore, in accordance with settled case-law, procedural rules are generally deemed to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited).
18      Accordingly, in this case, first, with regard to the substantive rules, the references made by the Board of Appeal, in the contested decision, and by the parties, in their arguments, to the provisions of Regulation 2017/1001 must be understood as referring to the provisions of Regulation No 207/2009, which are identical in content.
19      Secondly, with regard to the procedural rules, the dispute is governed by the provisions of Regulation 2017/1001 and by the provisions of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1). Article 82(2) of that delegated regulation provides that, subject to certain exceptions, its provisions shall apply from 1 October 2017. More specifically, the provisions relating to applications for a declaration of invalidity are to apply to applications made after that date or to proceedings, the adversarial part of which has started after that date. The application for a declaration of invalidity was filed with EUIPO on 6 November 2017.
Substance
20      In support of its action, the applicant relies on two pleas in law alleging, first, infringement of Article 8(3) of Regulation No 207/2009 (now Article 8(3) of Regulation 2017/1001) and, second, infringement of essential procedural requirements.
21      The second plea will be examined first.
The second plea in law, alleging infringement of essential procedural requirements
22      This plea can be divided into two complaints. The first complaint alleges infringement of the right to an effective remedy. The second complaint alleges infringement of the right to be heard.
–       The first complaint, relating to infringement of the right to an effective remedy
23      The applicant submits, in essence, that the Board of Appeal, by analysing in the place of the Cancellation Division the arguments put forward by the parties before it, rather than annulling that division’s decision, deprived it of the right to an effective remedy. The contested decision is, according to the applicant, the first decision to contain an adequate statement of reasons, as if there had not been a first instance before the Cancellation Division. In addition, it asserts that the Cancellation Division’s decision is vitiated by a failure to state reasons in that the decision does not state how the applicant failed to demonstrate the existence of the earlier non-registered mark and does not make it possible to determine whether the lack of proof of the existence of that mark was based on facts or on national law.
24      EUIPO and the intervener dispute the applicant’s arguments.
25      In that regard, it must be borne in mind that Article 71(1) of Regulation 2017/1001 provides that, ‘following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal’ and that ‘[it] may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution’.
26      Furthermore, in accordance with settled case-law, there is functional continuity between the various departments of EUIPO, on the one hand, and the Boards of Appeal on the other. It follows from that functional continuity that, in the review of decisions taken by the departments of EUIPO hearing the application at first instance that the Boards of Appeal must undertake, the Boards of Appeal are required to base their decision on all the matters of fact and of law which the parties concerned introduced either in the proceedings before the department which heard the application at first instance or in the appeal. The review undertaken by the Boards of Appeal is not limited to the lawfulness of the contested decision, but, by virtue of the devolutive effect of the appeal proceedings, it requires a reappraisal of the dispute as a whole, since the Boards of Appeal must re-examine in full the initial application and take into account evidence produced in due time. Thus, it follows from Article 71(1) of Regulation 2017/1001 that, through the effect of the appeal before it, the Board of Appeal is called upon to carry out a full re-examination of the opposition, in both law and fact (see, by analogy, judgment of 7 December 2017, Coca-Cola v EUIPO – Mitico (Master), T‑61/16, EU:T:2017:877, paragraph 115 and the case-law cited).
27      Accordingly, contrary to what the applicant claims, the Board of Appeal, by analysing the arguments of the parties put forward before the Cancellation Division, did not infringe any of those substantive rights.
28      Moreover, it should be noted that in the contested decision the Board of Appeal upheld in every respect the Cancellation Division’s assessment. In paragraphs 31, 33 and 34 of that decision, the Board of Appeal found, in essence, like the Cancellation Division, that the principles set out in the case-law concerning Article 8(4) of Regulation No 207/2009 (now Article 8(4) of Regulation 2017/1001) had to be applied by analogy to Article 8(3) of Regulation No 207/2009, where an earlier non-registered mark was invoked. According to the Board of Appeal, the applicant for a declaration of invalidity was thus required to demonstrate that the sign at issue fell within the scope of the law of the Member State referred to and allowed the use of a more recent trade mark to be prohibited. It held that only the law governing that sign made it possible to establish whether that sign predated the contested mark and whether it could justify the prohibition of its use. In paragraphs 32 and 36 of the contested decision, the Board of Appeal found, like the Cancellation Division, that the applicant had not provided any proof whatsoever of the applicable national legislation or made the slightest reference to the relevant national laws which purportedly gave it rights over the non-registered trade mark on which it was relying. In its view, the applicant had also failed to provide any information about the prerequisites governing the acquisition of the earlier right referred to and the scope of its protection at national level. In paragraph 37 of the contested decision, the Board of Appeal stated that the Cancellation Division had been right to conclude that the applicant had not substantiated to the requisite legal standard the earlier non-registered mark and that, therefore, the action for a declaration of invalidity based on the ground set out in Article 53(1)(b) of Regulation No 207/2009 (now Article 60(1)(b) of Regulation 2017/1001), read in conjunction with Article 8(3) of that regulation, had to be dismissed.
29      It must therefore be inferred that the Board of Appeal, by expressly confirming and repeating the analysis of the Cancellation Division, implicitly held that the applicant’s argument that the Cancellation Division had disregarded all the written pleadings, observations, arguments and evidence submitted by the parties was unfounded and should therefore be rejected.
30      Furthermore, as regards the applicant’s argument that the Board of Appeal did not pay any attention to the arguments raised in the action before it, it must be borne in mind that the Boards of Appeal, in stating the reasons for the decision which they are led to take, are not obliged to adopt a position on all the arguments relied on by the parties concerned before them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 30 June 2010, Matratzen Concord v OHIM – Barranco Schnitzler (MATRATZEN CONCORD), T‑351/08, not published, EU:T:2010:263, paragraph 18 and the case-law cited). As is apparent from paragraph 28 of this judgment, the Board of Appeal set out to the requisite standard the facts and legal considerations having decisive importance in the context of the contested decision. The applicant’s argument must therefore be rejected as unfounded.
31      As regards, lastly, the applicant’s argument that the Cancellation Division’s decision is vitiated by a failure to state reasons, it should be borne in mind, as the intervener submits, that the legality of the Board of Appeal’s decision must not be assessed in the light of the legality of the Cancellation Division’s decision, but solely on the basis of the factual and legal findings in the contested decision and the adequacy of its statement of reasons. In accordance with Article 72(1) of Regulation 2017/1001, actions may be brought before the General Court only against decisions of the Boards of Appeal, with the result that, in the case of such an action, only pleas directed against those decisions are admissible (see judgment of 22 April 2015, Rezon v OHIM – mobile.international (mobile.de proMotor), T‑337/14, not published, EU:T:2015:220, paragraph 23 and the case-law cited). The applicant’s argument must therefore be rejected as inadmissible.
32      It follows from all the foregoing considerations that the present complaint must be rejected as unfounded.
–       The second complaint, relating to infringement of the right to be heard
33      The applicant submits that the Board of Appeal infringed Article 95(1) of Regulation 2017/1001 by examining facts which were not disputed between the parties. It submits, in that regard, that there was consensus between the parties on the existence and protection of the earlier non-registered mark and that, therefore, EUIPO (the Cancellation Division and the Board of Appeal) should have restricted its examination to solely the arguments submitted and the relief sought by the parties. It asserts that, by disputing the existence of the earlier mark and the protection granted to it, EUIPO obliged it to prove an undisputed fact, which it was not required to substantiate, in accordance with that provision.
34      EUIPO and the intervener dispute the applicant’s arguments.
35      As a preliminary point, in paragraph 30 of the contested decision, the Board of Appeal noted that, in so far as the applicant relied on the sign SCIO as an non-registered trade mark in Hungary, Germany, Bulgaria, Belgium, Austria, Cyprus, Denmark, Greece, Spain, Finland, France, the United Kingdom, Italy, the Netherlands, Portugal, Romania and Sweden, it was for it to adduce proof of the content of the legislation of those Member States.
36      In paragraph 32 of the contested decision, the Board of Appeal noted, however, that the applicant had not produced any evidence whatsoever of the applicable national legislation or made the slightest reference to the relevant national laws which purportedly gave it rights over the non-registered trade mark on which it relied. It also stated that nor had the applicant provided any information about the prerequisites governing the acquisition of the earlier right referred to and the scope of its protection at national level.
37      In paragraph 36 of the contested decision, the Board of Appeal concluded that the applicant had not satisfied the requirements concerning the burden of proof borne by it, under which the applicant was required to specify and clarify the legal and jurisprudential principles to be applied in order to establish whether or not the mark relied on could, in those countries, be granted the level of protection conferred on non-registered trade marks.
38      In that regard, in the first place, it must be held, as is stated, moreover, in the EUIPO Guidelines (Part C (Opposition), Section 3 (Unauthorised filing by agents of the TM proprietor, Article 8(3) of the regulation), Section 3.1 (Kinds of mark covered), second and third subparagraphs), that, in the absence of any restriction in Article 8(3) of Regulation No 207/2009 and in view of the need to provide the legitimate interests of the real proprietor with effective protection, the term ‘trade marks’ should be interpreted broadly and must be understood as including pending applications, since there is nothing in this provision restricting its scope exclusively to registered trade marks. For the same reasons, non-registered marks or well-known marks within the meaning of Article 6bis of the Paris Convention also fall within the definition of that term within the meaning of that provision.
39      Article 16(1)(b) of Delegated Regulation 2018/625, read in conjunction with Article 7(2) of that delegated regulation, provides that, in the case of applications pursuant to Article 53(1) of Regulation No 207/2009 (now Article 60(1) of Regulation 2017/1001), the applicant for a declaration of invalidity must provide, in particular, evidence of the existence, validity and scope of protection of its earlier mark or right, as well as evidence proving its entitlement to file the application for a declaration of invalidity.
40      Thus, the applicant for a declaration of invalidity must, in the case of applications pursuant to Article 53(1) of Regulation No 207/2009, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, provide EUIPO with, not only particulars showing that he or she satisfies the necessary conditions under the national law which he or she seeks to have applied, but also particulars establishing the content of that law (see, to that effect and by analogy, judgment of 24 October 2018, Bacardi v EUIPO – Palírna U zeleného stromu (42 BELOW), T‑435/12, EU:T:2018:715, paragraph 78 and the case-law cited). It is for that applicant to establish that the non-registered mark falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited (see, to that effect and by analogy, judgment of 24 October 2018, 42 BELOW, T‑435/12, EU:T:2018:715, paragraph 84 and the case-law cited).
41      It is also appropriate to recall that, according to the Court of Justice, where an application for an EU trade mark to be declared invalid is based on an earlier right protected by a rule of national law, the competent EUIPO bodies must assess the authority and scope of the particulars submitted by the applicant in order to establish the content of that rule. In addition, since the decision of those bodies may have the effect of depriving the proprietor of the trade mark of a right that has been granted to him or her, the scope of such a decision necessarily implies that the authority which takes it is not limited to the role of mere validation of the national law (see judgment of 5 April 2017, EUIPO v Szajner, C‑598/14 P, EU:C:2017:265, paragraph 36 and the case-law cited).
42      Thus, EUIPO must ascertain, beyond the documents submitted, the wording, the conditions of application and the scope of the rules of law relied upon by the applicant for a declaration of invalidity.
43      Furthermore, the review by EUIPO must be conducted in the light of the need to ensure the practical effect of Regulation No 207/2009, which is to protect the EU trade mark (see judgment of 5 April 2017, EUIPO v Szajner, C‑598/14 P, EU:C:2017:265, paragraph 39 and the case-law cited).
44      It follows that the obligation for the applicant for a declaration of invalidity to produce, in the case of applications pursuant to Article 53(1) of Regulation No 207/2009, in particular evidence of the existence, validity and scope of protection of its earlier mark or right, as well as evidence proving its entitlement to file the application for a declaration of invalidity, is a necessary prerequisite to enable EUIPO, first, to examine whether the conditions for applying the ground for refusal of registration relied on are met and, secondly, to ensure a correct application of that regulation.
45      In the second place, it should be borne in mind that, under Article 95(1) of Regulation 2017/1001, in proceedings relating to relative grounds for refusal of registration, EUIPO is restricted in this examination to the arguments submitted and the relief sought by the parties.
46      Article 95(1) of Regulation 2017/1001 relates, in particular, to the factual basis of decisions of EUIPO, that is, the facts and evidence on which those decisions may be validly based. Thus the Board of Appeal, when hearing an action terminating invalidity proceedings, may base its decision only on the facts and evidence which the parties have presented (see judgment of 24 September 2008, Anvil Knitwear v OHIM – Aprile e Aprile (Aprile), T‑179/07, not published, EU:T:2008:401, paragraph 71 and the case-law cited).
47      However, the criteria for applying a relative ground for refusal or any other provision relied on in support of claims put forward by the parties naturally form part of the matters of law submitted for examination by EUIPO. A matter of law may have to be ruled on by EUIPO even though it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of Regulation No 207/2009 having regard to the facts, evidence and arguments provided by the parties (see judgment of 15 March 2018, Marriott Worldwide v EUIPO – Graf (Representation of a winged bull), T‑151/17, not published, EU:T:2018:144, paragraph 16 and the case-law cited).
48      In the present case, the applicant submits that the Board of Appeal, by requiring proof of the existence and scope of protection of the earlier mark, even though that was not disputed by the parties, exceeded the limits set by Article 95(1) of Regulation 2017/1001 and required it to establish the existence of a fact which it was not obliged to prove.
49      Such an argument fails to have regard to the meaning of Article 95(1) of Regulation 2017/1001. As is apparent from paragraph 44 of this judgment, the obligation on the applicant for a declaration of invalidity to produce, in the case of applications pursuant to Article 53(1) of Regulation No 207/2009, in particular evidence of the existence, validity and scope of protection of its earlier mark or right, as well as evidence proving its entitlement to file the application for a declaration of invalidity, is a necessary prerequisite to enable EUIPO to examine whether the conditions for applying the ground for refusal of registration relied on are met and to ensure a correct application of Regulation No 207/2009. It follows that EUIPO was required to ascertain of its own motion that the applicant had in fact fulfilled that obligation.
50      It follows from the foregoing that the applicant is wrong to allege infringement of Article 95(1) of Regulation 2017/1001. The present complaint must therefore be rejected as unfounded and, consequently, the plea must be rejected in its entirety.
The first plea in law, alleging infringement of Article 8(3) of Regulation No 207/2009
51      The applicant submits, in essence, that the Board of Appeal infringed Article 8(3) of Regulation No 207/2009 in finding that the contention that the earlier mark was well known constituted a new ground of invalidity which had to be rejected, since the application for a declaration of invalidity was based solely on Article 53(1)(b) of that regulation, read in conjunction with Article 8(3) of that regulation and not on Article 53(1)(a) of that regulation (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(2)(c) or Article 8(5) of Regulation No 207/2009 (now Article 8(2)(c) and Article 8(5) of Regulation 2017/1001).
52      EUIPO submits, in essence, that the question of whether the claim concerning well-known marks within the meaning of Article 6bis of the Paris Convention constitutes a new ground or a new earlier right is irrelevant and makes no difference, since no well-known mark was mentioned in the application for a declaration of invalidity. Consequently, the well-known mark relied on by the applicant could not have been taken into account either as a new ground or as a new earlier right.
53      The intervener maintains, in essence, that the plea is based, first of all, on a misreading and a misinterpretation of the contested decision, next on a misinterpretation of the scope of the initial application for a declaration of invalidity and, lastly, on a misinterpretation of the concept of well-known trade mark, by considering that concept to be a self-standing category, as regards establishing the existence, proprietorship, validity and scope of protection of the earlier right relied on.
54      It should be borne in mind, as a preliminary point, that the Board of Appeal noted, in paragraph 13 of the contested decision, that the action for a declaration of invalidity should be understood as being based solely on Article 53(1)(b) of Regulation No 207/2009, read in conjunction with Article 8(3) of that regulation, as is apparent from the application for a declaration of invalidity filed on 6 November 2017.
55      The Board of Appeal stated, in paragraph 14 of the contested decision, that, at a later stage of the proceedings, the applicant for a declaration of invalidity (the applicant) had stated that its earlier non-registered mark was well known. However, it noted that the action was not based on Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) thereof, or on Article 53(1)(a) of that regulation, read in conjunction with Article 6bis of the Paris Convention and Article 8(2)(c) of that regulation. It also stated that, in accordance with the case-law, new grounds cannot be added in the course of the proceedings.
56      The Board of Appeal therefore concluded, in paragraph 15 of the contested decision, that the applicant’s argument based on the provisions referred to in paragraph 55 of this judgment should be rejected.
57      The applicant submits, in essence, that the Board of Appeal erred in law in finding that relying on a well-known mark constituted a new ground for invalidity which could be analysed only in the context of Article 53(1)(a) of Regulation No 207/2009.
58      In that regard, it is appropriate to recall that, in accordance with Article 53(1)(b) of Regulation No 207/2009, an EU trade mark is to be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, where there is a trade mark as referred to in Article 8(3) of that regulation and the conditions set out in that paragraph are fulfilled.
59      According to Article 8(3) of Regulation No 207/2009, upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.
60      Article 8(3) of Regulation No 207/2009 is designed to prevent the misuse of a mark by the trade mark proprietor’s agent, as the agent may exploit the knowledge and experience acquired during its business relationship with the proprietor and therefore improperly benefit from the effort and investment which the trade mark proprietor him or herself made (judgment of 6 September 2006, DEF-TEC Defense Technology v OHIM – Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR), T‑6/05, EU:T:2006:241, paragraph 38).
61      The purpose of Article 8(3) of Regulation No 207/2009 is therefore to protect the legitimate interests of trade mark proprietors and to preserve them from arbitrary misuse of their trade marks by granting them the right to prohibit the registrations applied for by their agents or representatives without their consent.
62      It has been noted in paragraph 38 of this judgment that well-known marks within the meaning of Article 6bis of the Paris Convention fall within the definition of the term ‘trade marks’ for the purposes of Article 8(3) of Regulation No 207/2009, which is the provision on which the application for a declaration of invalidity was expressly based.
63      Accordingly, contrary to the view taken by the Board of Appeal, the applicant’s contention that the earlier mark was also well known does not constitute a new ground for invalidity based on Article 53(1)(a) of Regulation No 207/2009.
64      It follows that the Board of Appeal erred in law in finding that the contention at issue constituted a new ground for invalidity which, as such, could not be relied on in the course of the proceedings.
65      Furthermore, it is appropriate to recall that, in order to determine the grounds on which an application for a declaration of invalidity is based, it is necessary to examine all of the application, especially in light of the detailed statement of reasons in support of it (see judgment of 18 March 2016, Karl-May-Verlag v OHIM – Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 26 and the case-law cited).
66      Although Article 12(1)(b) of Delegated Regulation 2018/625 provides that an application for a declaration of invalidity must contain the grounds on which it is based, Article 16(1) of that delegated regulation specifies, however, that the applicant may present the facts, evidence and arguments in support of the application up to the closure of the adversarial part of invalidity proceedings.
67      The rationale of Article 16(1) of Delegated Regulation 2018/625 is to leave more flexibility, as opposed to opposition proceedings, to supplement the facts, evidence and arguments in support of the application, in response in particular to the arguments of the proprietor of the contested mark, given that invalidity proceedings are the last action enabling the validity of an EU trade mark to be challenged.
68      In this case, the contention in question was added by the applicant in its observations of 22 December 2017, that is to say, during the adversarial part of the proceedings, the closure of which occurred on 8 March 2019.
69      In those circumstances and in so far as the contention in question did not constitute a new ground for invalidity, it must be held that the conclusions set out in paragraph 43 of the order of 8 June 2018, Lupu v EUIPO – Dzhihangir (Djili soy original DS) (T‑456/17, not published, EU:T:2018:342), referred to by the Board of Appeal in paragraph 14 of the contested decision, then by EUIPO and the intervener in their respective written pleadings, that ‘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’ are not applicable in this case.
70      EUIPO submits that, if Article 53(4) of Regulation No 207/2009 (now Article 60(4) of Regulation 2017/1001) prevents the proprietor of earlier rights not relied on in an application for a declaration of invalidity from raising them in a new application for a declaration of invalidity concerning the same EU trade mark, it would be illogical to allow the proprietor of those earlier rights to supplement the first application with new rights on which he or she did not rely in that application.
71      That argument of EUIPO is based on the premiss that the contention that the earlier mark was also well known would amount to relying on a new earlier right.
72      However, it must be observed that that reasoning does not appear in the contested decision and is explained for the first time ex post facto before the Court. It has been pointed out previously that the Board of Appeal had rejected that contention because it constituted a new ground for invalidity which, as such, could not be invoked in the course of the proceedings. The Board of Appeal did not in any way base its decision on the fact that that contention amounted to invoking a new earlier right.
73      By this line of argument, EUIPO therefore seeks, not to produce evidence capable of elucidating the existing reasoning in the contested decision, but to put forward an additional ground in support of the merits of the Board of Appeal’s finding in that decision.
74      In accordance with settled case-law, the statement of reasons on which a measure is based must be provided to the person concerned by the measure before the latter brings an action against it and non-compliance with the duty to state reasons cannot be regularised by the fact that the person concerned becomes cognisant thereof during proceedings before the EU judicature. That would undermine the rights of defence of the party concerned and his or her right to an effective judicial remedy, as well as the principle of equality of parties before the EU judicature (see judgment of 10 June 2020, L. Oliva Torras v EUIPO – Mecánica del Frío (Vehicle couplings), T‑100/19, EU:T:2020:255, paragraph 104 and the case-law cited).
75      Consequently, that line of argument must be rejected.
76      The same is true of the intervener’s argument set out in paragraphs 38 to 59 of its written pleading. It must be observed that that argument is relied on by the intervener in the alternative and for the purposes of demonstrating that the applicant had not, in any event, adduced the necessary proof of the well-known character of the earlier mark.
77      Since the Board of Appeal ruled on that issue only from the point of view of admissibility, the intervener’s argument, which relates to an aspect on which the Board of Appeal did not take a position, must be rejected.
78      It follows from all the foregoing that the first plea in law must be upheld and, consequently, the contested decision must be annulled.
79      Lastly, as regards the applicant’s claim seeking, both principally and in the alternative, annulment of the decision of the Cancellation Division and the referral of the case back to it, it must be borne in mind that, if it were to be understood as an request for alteration of the contested decision, the power of the Court to alter decisions pursuant to Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001) 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 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).
80      In that regard, it should be noted that the Board of Appeal based the contested decision solely on the fact that the earlier mark was not registered.
81      In those circumstances, it is not for the Court to examine, in the present case, the arguments put forward by the applicant seeking cancellation of the contested mark in the light of the well-known character of the earlier mark, within the meaning of Article 6bis of the Paris Convention.
82      The request for alteration of the contested decision submitted, in essence, by the applicant on the basis of that line of argument must therefore be dismissed.
Costs
83      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.
84      In the present case, EUIPO and the intervener have been unsuccessful, but the applicant has not applied for costs. Each party must therefore be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 December 2019;
2.      Orders Qx World Kft., EUIPO and Mandelay Magyarország Kereskedelmi Kft. (Mandelay Kft.) each to bear their own costs.
Costeira
Gratsias
Perišin
Delivered in open court in Luxembourg on 8 September 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.