62023TJ0119_RES
Case T‑119/23
Insider LLC
v
European Union Intellectual Property Office
Judgment of the General Court (Eighth Chamber) of 17 April 2024
(EU trade mark – Opposition proceedings – Application for EU figurative mark in Insajderi – Earlier national word mark INSAJDERI and earlier national figurative mark in Insajderi Gazetë online – Relative ground for refusal – Article 8(3) of Regulation (EU) 2017/1001 – Extent of the examination to be carried out by the Board of Appeal – Article 27(2) of Delegated Regulation (EU) 2018/625 – Failure to submit evidence – Translation – Article 7 of Delegated Regulation 2018/625 – Right to be heard – Article 41 of the Charter of Fundamental Rights – Article 94(1) of Regulation 2017/1001 – Possibility for the Board of Appeal to accept evidence submitted for the first time before it – Article 27(4) of Delegated Regulation 2018/625 – Article 95(2) of Regulation 2017/1001)
EU trade mark – Appeals procedure – Appeal brought against a decision of a unit of the Office ruling at first instance and referred to the Board of Appeal – Functional continuity between those two bodies – Examination of the appeal by the Board of Appeal – Scope
(European Parliament and Council Regulation 2017/1001, Art. 71(1))
(see paragraph 16)
EU trade mark – Procedural provisions – Decisions of the Office – Observance of the rights of the defence – Scope of the principle
(Charter of Fundamental Rights of the European Union, Art. 41(2)(a); European Parliament and Council Regulation 2017/1001, Art. 94(1))
(see paragraphs 27-33, 46)
EU trade mark – Appeals procedure – Appeal against a decision of the Opposition Division of EUIPO – Examination by the Board of Appeal – Scope – Facts and evidence not produced in support of the opposition within the period prescribed for that purpose – Account taken – Discretion of the Board of Appeal
(European Parliament and Council Regulation 2017/1001, Art. 95(2); Commission Regulation 2018/625, Arts 8(1) and 27(4))
(see paragraphs 38-40, 45)
Résumé
By its judgment, the General Court annuls the decision of the Board of Appeal of the European Union Intellectual Property Office (EUIPO) (
1
) on the basis of Article 41(2)(a) of the Charter of Fundamental Rights of the European Union (‘the Charter’), on the ground that the applicant was not heard on matters raised by the Board of Appeal of its own motion which affected him adversely.
Mr Florim Alaj applied, to EUIPO, for registration of the figurative sign ‘in Insajderi’ for services relating to the provision of information, news, and commentary in the field of current events via the internet. (
2
) Insider LLC, the applicant, filed a notice of opposition to that registration (
3
) on the basis of two earlier marks registered in Kosovo. The Opposition Division upheld that opposition.
Nevertheless, the Board of Appeal annulled the Opposition Division’s decision and rejected the opposition on the ground that the applicant had not demonstrated the existence of the earlier marks claimed and its proprietorship of them. It noted, inter alia, the absence of original versions of the registration certificates for the earlier marks and found that the certified translations, provided by the applicant as evidence, constituted unofficial translations in which the original text was not visible, which made it impossible to verify whether essential information was mentioned in the original certificate.
Findings of the Court
As a preliminary point, the Court recalls that the obligation to state reasons laid down in the second sentence of Article 94(1) of Regulation 2017/1001 constitutes a specific application of the general principle of protection of the rights of the defence, enshrined in Article 41(2)(a) of the Charter. All EU acts must respect fundamental rights, as recognised by the Charter, that respect constituting a condition of their lawfulness which it is for the EU Courts to review in the framework of the complete system of legal remedies. As regards, more specifically, the right to be heard in all proceedings, it guarantees every person the opportunity to make known his or her views effectively during an administrative procedure and before the adoption of a decision in relation to that person that is liable to affect his or her interests adversely. That right extends to all the factual and legal material which forms the basis of the decision, but not to the final position which the authority intends to adopt. EUIPO is therefore under an obligation, in proceedings pending before its departments, to afford the parties the opportunity to express their point of view on all matters which form the basis of the decisions of those departments.
In the case at hand, the Court considers that the fact that the Board of Appeal raised of its own motion the absence of original versions of the registration certificates for the earlier marks and expressed doubts as to the authenticity of their translations, without having heard the applicant on that point, constitutes a procedural irregularity. An infringement of the rights of the defence may, however, be held to exist only provided that the failure to take into account the view of an interested party has had a concrete effect on the ability of that party to defend itself. That being so, the applicant cannot, however, be required to show that the contested decision would have been different in content had it not been for the infringement found, but simply that such a possibility cannot be totally ruled out, since it would have been better able to defend itself had there been no procedural error.
It is in the light of those considerations that the Court comes to the conclusion that, in this case, it cannot be entirely ruled out that the outcome of the proceedings would have been different had it not been for the procedural irregularity. Had the Board of Appeal given the applicant the opportunity effectively to make known its views on the absence of the original versions of the registration certificates for the earlier marks, the latter would have been in a position to provide them, enabling the Board of Appeal to examine them and to ascertain the authenticity of the translations. Accordingly, the Board of Appeal’s decision was adopted in breach of the right to be heard guaranteed by Article 41(2)(a) of the Charter.
(
1
)	Decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 December 2022 (Case R 1152/2022-5).
(
2
)	Those were services falling within Class 41 within the meaning 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
)	Based on Article 8(3) of 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).