JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
22 September 2021 (*)
(EU trade mark – Proceedings for the revocation of decisions or for the cancellation of entries – Cancellation of an entry in the register which contains an obvious error attributable to EUIPO – Trade marks involved in insolvency proceedings – Registration of the transfers of the marks – Effects vis-à-vis third parties of bankruptcy or similar proceedings – Competence of EUIPO – Duty of diligence – Articles 20, 24, 27 and 103 of Regulation (EU) 2017/1001 – Articles 3, 7 and 19 of Regulation (EU) 2015/848)
In Case T‑173/20,
Henry Cotton’s Brand Management Co. Ltd, established in Dublin (Ireland), represented by A. von Mühlendahl, C. Eckhartt and P. Böhner, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Capostagno, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Industries Sportswear Co. Srl, established in Venice (Italy), represented by P. Cervato, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 10 February 2020 (Joined Cases R 254/2019-2 and R 255/2019-2), relating to proceedings between Industries Sportswear and Henry Cotton’s Brand Management regarding the cancellation of entries in the register,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, D. Gratsias and M. Kancheva (Rapporteur), Judges,
Registrar:
A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 23 March 2020,
having regard to the response of EUIPO lodged at the Court Registry on 13 August 2020,
having regard to the response of the intervener lodged at the Court Registry on 5 August 2020,
further to the hearing on 5 May 2021,
gives the following
Judgment
Background to the dispute
1        On 12 May 1998, Estotrans BV filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to
Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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)). Registration as a mark was sought for the word sign Henry Cotton’s. The goods in respect of which registration was sought are in Classes 3, 9, 18 and 25 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.
2        On 4 October
1999, the mark applied for was registered under the number 821769. On 19 June 2001, the transfer of that mark to Sterdhil-Consultadoria e Servicios Lda was entered in EUIPO’s register. On 15 January
2003, the change in proprietor, now Sterdhil-Consultadoria e Servicios (Sociedade Unipessoal) Lda, was entered in that register.
3        Furthermore, on 18 February 2002, Sterdhil-Consultadoria e Servicios (Sociedade Unipessoal), which subsequently became Sterdhil Srl, filed a second application for registration of an EU trade mark with EUIPO pursuant to Regulation No 40/94. Registration as a mark was sought for the figurative sign Henry Cotton’s. The services covered by that application are in Class 35 of the Nice Agreement.
4        On 14 May 2003, the mark applied for was registered under the number 2580728, with the following representation:
5        After a number of other transfers, the transfer of the two EU trade marks referred to in paragraphs 2 and 4 above (‘the marks at issue’) to the intervener, Industries Sportswear Co. Srl, a company governed by Italian law, was entered in EUIPO’s register on 4 March 2014.
6        On 13 October 2017, the intervener was declared insolvent by judgment No 142/2017 of the Tribunale di Venezia (District Court, Venice, Italy), which was delivered in insolvency proceedings No 138/2017.
7        On 18 October 2017, the transfer of the marks at issue, from the intervener to Spring Holdings SARL, was entered in EUIPO’s register at the request of a representative common to both of those parties (‘the representative in common’).
8        On 25 October 2017, the appointed liquidator of the intervener (‘the liquidator’) informed EUIPO that the intervener had been declared insolvent, providing a copy of the judgment of the Tribunale di Venezia (District Court, Venice) of 13 October 2017, and that the insolvency had become effective as of 13 October 2017 on account of the entry of that judgment in the Italian Companies Register (registro delle imprese). The liquidator also requested that the insolvency proceedings relating to the intervener be entered in EUIPO’s register, in accordance with Article 24 of Regulation 2017/1001, and that the recordal of the transfer of the marks at issue to Spring Holdings be cancelled, in accordance with Article 103 of that regulation.
9        On 9 April 2018, EUIPO informed the liquidator and the representative in common of its decision to cancel the recordal of that transfer, because it was erroneous, and to publish the correction on the same day.
10      On 16 April 2018, the applicant, Henry Cotton’s Brand Management Co. Ltd, filed a recordal application for the transfer of the marks at issue to itself. It claimed that those marks, which had initially been assigned by the intervener to Spring Holdings, had subsequently been assigned to it by Spring Holdings. It produced, as regards the first transfer, a certified copy, dated 21 March 2018, of a deed of assignment bearing the date of 26 June 2014 and, as regards the second transfer, a certified copy, dated 1 March 2018, of a deed of assignment bearing the date of 15 December 2017.
11      On the same day, that is to say, on 16 April 2018, the transfers of ownership of the marks at issue to Spring Holdings (recordal T
014185535) and then to the applicant (recordal T
014188695) were entered in EUIPO’s register.
12      On 23 June 2018, the liquidator reiterated his request for the insolvency proceedings relating to the intervener to be entered in the register and requested the cancellation, in accordance with Article 103 of Regulation 2017/1001, of recordals T 014185535 and T 014188695, on the basis of Article 42 of Regio decreto n. 267 (Royal Decree No 267/1942) of 16 March 1942 (GU No 81, of 6 April 1942) (‘the Italian Law on bankruptcy’), which deprives a company in liquidation of the right to administer its assets and of the right to use them as from the date on which it is declared insolvent, namely, as regards the intervener, 13 October 2017. The liquidator also stated that he had already submitted such a request for cancellation on 5 and 14 June 2018, but had received no acknowledgement of receipt from EUIPO.
13      On 11 July 2018, regarding the request for recordal of the insolvency proceedings relating to the intervener, which had been submitted on 25 October 2017, EUIPO informed the liquidator that that request had been accepted, but stated that it had ‘never [been] recorded in [its] database due to technical problems at that time’.
14      On 12 July 2018, EUIPO informed the applicant of cancellation requests T 014552502 (cancellation of register entry T
014185535) and T 014479391 (cancellation of register entry T
014188695) and requested that it submit its observations. On 8 August 2018, the applicant submitted its observations.
15      On 21 August 2018, EUIPO forwarded a copy of those observations to the liquidator, asked him to provide ‘official proof of ownership of the … trade marks [at issue] by [the intervener] at the time of the insolvency proceeding’ and requested that he submit his observations. On 20 and 21 September 2018, the liquidator complied with that request and provided documents seeking to satisfy EUIPO’s request for proof.
16      On 26 September 2018, EUIPO informed the applicant that, in view of the documents filed by the liquidator, it considered that the intervener was the proprietor of the marks at issue at the time of the insolvency proceedings and that recordals T 014185535 and T 014188695 should therefore be cancelled. The applicant was requested to submit its observations.
17      On 20 November 2018, the applicant submitted its observations, in which it referred, inter alia, to an ‘assignment agreement’ concluded between the intervener and Spring Holdings on 26 June 2014 and to an ‘Intellectual Property Licence Agreement’ concluded on 30 December 2014 between Spring Holdings, as the new proprietor of the marks at issue since 26 June 2014, and the intervener, as licensee. On 17 January 2019, the liquidator submitted his observations in reply.
18      On 28 and 30 January 2019 respectively, in accordance with Article 162 of Regulation 2017/1001, the department in charge of EUIPO’s register, which was established under Article 159(c) of that regulation, adopted two decisions retroactively cancelling register entries T 014185535 and T 014188695, which had been made on 16 April 2018, since they postdated 13 October 2017. It found that EUIPO had made an obvious error in omitting ‘an essential procedural step’ which had been drawn to its attention on 25 October 2017, namely the request for the recordal of insolvency proceedings concerning the intervener, a request which was based on a final decision of the Tribunale di Venezia (District Court, Venice) which had taken effect on 13 October 2017. Furthermore, it ordered that the request for the recordal of those insolvency proceedings on the basis of that decision of the Tribunale di Venezia (District Court, Venice), be registered with retroactive effect from 13 October 2017 (recordal file No T 014459807), in accordance with Article 24(3) of Regulation 2017/1001.
19      On 31 January 2019, the applicant filed two notices of appeal, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decisions of the department in charge of EUIPO’s register cancelling register entries T 014185535 and T 014188695.
20      On 9 April 2019, the liquidator filed a request for recordal of a judgment delivered on 13 March 2019 by the Tribunale di Venezia (District Court, Venice), which was responsible for the insolvency proceedings relating to the intervener, authorising the judicial seizure of the marks at issue as a precautionary measure under the Italian Code of Civil Procedure. The liquidator stated that, on 22 February 2019, he had filed an application before that court in which he had informed it that, in the course of the proceedings before EUIPO, he had become aware of the ‘assignment agreement’ and the licence agreement of 2014 relied on by the applicant (see paragraph 17 above) and had demanded the judicial seizure of the marks at issue on account of the invalidity and fraudulent nature of those documents. On 5 July 2019, after hearing all the parties concerned, the Tribunale di Venezia (District Court, Venice) confirmed that judgment of 13 March 2019.
21      By decision of 10 February 2020 (‘the contested decision’), after joining them, the Board of Appeal dismissed the appeals referred to in paragraph 19 above.
22      In the first place, in paragraphs 45 to 51 of the contested decision, the Board of Appeal, first of all, found that, in the present case, on 13 October 2017, the intervener, which had its seat in Italy, had been declared insolvent by the Tribunale di Venezia (District Court, Venice). It concluded that the insolvency proceedings relating to the intervener were subject to Italian law, namely the Italian Law on bankruptcy, as argued by the liquidator. It stated that, according to that law, the insolvency judgment produced effects vis-à-vis the debtor (the insolvent company, in the present case the intervener) from the moment it was filed at the registry of the Italian court and vis-à-vis third parties (therefore vis-à-vis the assignees of the marks at issue, namely Spring Holdings and the applicant) from the moment it was entered in the Italian Companies Register, under Article 16 of the Italian Law on bankruptcy, which referred to Article 133 of the Italian Code of Civil Procedure.
23      Next, the Board of Appeal found that, in the present case, the judgment declaring the intervener insolvent had been delivered, filed and entered in the Italian Companies Register on the same date, namely 13 October 2017, as was apparent from that judgment and from the extract from the report from that register. It concluded that, as of that date, the intervener had been deprived of the right to administer and dispose of the assets in its possession, in accordance with Article 42 of the Italian Law on bankruptcy, and that all acts carried out by it after that judgment were ineffective vis-à-vis its creditors under Article 44 of the same law. It also pointed out that, on that date, the intervener appeared as the proprietor of the marks at issue in EUIPO’s register and, moreover, that those marks appeared in the insolvency inventory list, which reproduced the data in EUIPO’s register.
24      Furthermore, the Board of Appeal stated that, on 25 October 2017, the liquidator had requested the recordal of the insolvency proceedings relating to the intervener in EUIPO’s register, that EUIPO had failed to take that request into account, which was still pending on 16 April 2018 when the application for registration of the transfer of the marks at issue to the applicant was submitted, and that EUIPO had nonetheless registered the change in ownership of those marks by entering in the register two successive recordals of transfer of those marks (in favour of Spring Holdings and then in favour of the applicant) on the same day. The Board of Appeal also observed that, some days before, namely on 9 April 2018, EUIPO had decided to cancel a previous recordal of the first of those transfers, in favour of Spring Holdings, after having been informed by the liquidator, first, that the intervener was insolvent and, secondly, that the representative in common could not represent the intervener as the assignor.
25      In the second place, in paragraphs 52 to 60 of the contested decision, the Board of Appeal, first of all, replied to the applicant’s argument that EUIPO should not have cancelled those recordals because, irrespective of the intervener’s insolvency, the marks at issue had already been transferred to Spring Holdings in the course of the month of June 2014. The Board of Appeal found, in that regard, that, pursuant to Article 45 of the Italian Law on bankruptcy, the formalities that were required for a deed to be enforceable against third parties were ineffective vis-à-vis the insolvency proceedings if they had been executed after the declaration of insolvency. It stated that, in accordance with Article 27(1) of Regulation 2017/1001, the alleged transfers of the marks at issue had not been entered in the register before the intervener was declared insolvent and therefore had no effect vis-à-vis third parties, namely, in the present case, the liquidator. It observed that it was therefore irrelevant to determine whether the date of 26 June 2014 indicated on the first assignment agreement relating to the marks at issue was certain within the meaning of Italian law, a point which the parties had discussed at length, as long as the transfer had not been entered in EUIPO’s register. The Board of Appeal took the view that, in any event, as the applicant itself had admitted, it was not competent to decide upon that issue, which fell within the jurisdiction of the national courts. According to the Board of Appeal, although it was indeed true that the entry of a transfer in EUIPO’s register was not a condition of the validity of that transfer between the parties, as the applicant had argued, it was nevertheless a condition for the transfer of the marks to have effects vis-à-vis third parties, namely, in the present case, the liquidator.
26      Next, the Board of Appeal stated that the alleged deed of ‘extension’ of the licence agreement (which, according to the applicant, had confirmed Spring Holdings’ ownership rights in the marks at issue) had not been signed by the liquidator, with the result that the applicant could not validly claim that the liquidator had acknowledged the rights of Spring Holdings in those marks. Furthermore, it pointed out that the liquidator had challenged the assignment agreement of 26 June 2014 between the intervener and Spring Holdings before the Tribunale di Venezia (District Court, Venice).
27      In addition, the Board of Appeal found that, since the marks at issue had been mentioned in the inventory list annexed to the judgment declaring the intervener insolvent, a list which EUIPO had no competence to challenge, since it could not substitute itself for the national courts, EUIPO was required to take that fact into account and enter the insolvency proceedings relating to those marks in the register, as requested by the liquidator. According to the Board of Appeal, the application for recordal of the successive transfers of the marks at issue submitted by the applicant after the intervener’s insolvency was belated and did not provide evidence that the insolvency judgment was erroneous. It stated that it would have been for the applicant to present to EUIPO evidence that that judgment had no effect against those marks on the basis of a national court decision, something which it had failed to do.
28      Lastly, the Board of Appeal found that EUIPO had made an obvious error in entering the successive transfers of the marks at issue in the register on 16 April 2018, since the intervener, which was the assignor in the first of those transfers, had been an insolvent company since 13 October 2017 and EUIPO had been informed of that fact. It stated that the obvious error had therefore been made in the recordals which were entered on 16 April 2018, and not only in 2017 as the applicant claimed. It added that the cancellation of the entries in the register had been decided on within one year of the date on which those entries had been made, namely on 30 January 2019, with the result that the conditions for the application of Article 103 of Regulation 2017/1001 were satisfied. Consequently, it found that the decisions cancelling register entries T 014185535 and T 014188695 were correct.
Forms of order sought
29      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
30      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
31      The intervener contends that the Court should:
–        dismiss the action;
–        uphold the contested decision, with the consequences that EUIPO must, first, cancel the entries in the register made on 16 April 2018 recording the transfers of the marks at issue and re-register the intervener as the exclusive proprietor of those marks and, secondly, enter the insolvency proceedings relating to the intervener in the register as from 13 October 2017;
–        order the applicant to pay the costs.
Law
The issue of whether the intervener’s second head of claim is admissible
32      By its second head of claim, the intervener claims that the Court should uphold the contested decision, with the consequences that EUIPO must, first, cancel the entries in the register made on 16 April 2018 recording the transfers of the marks at issue and re-register the intervener as the exclusive proprietor of those marks and, secondly, enter the insolvency proceedings relating to the intervener in the register as from 13 October 2017.
33      As regards the claim that the Court should uphold the contested decision, it must be stated that that claim must be understood as seeking, in essence, the dismissal of the action (see, to that effect, judgment of 5 February 2016, Kicktipp v OHIM – Italiana Calzature (kicktipp), T‑135/14, EU:T:2016:69, paragraph 19 (not published) and the case-law cited). It is therefore, in fact, indissociable from the first head of claim, which seeks the dismissal of the action.
34      As regards the inferences which the intervener claims that the Court should draw from the dismissal of the action, which constitute, in essence, claims that the Court should order EUIPO to carry out various operations in its register, it is sufficient to point out that it is not for the Court to issue directions to EUIPO. It is for the latter to draw the appropriate inferences from the operative part and grounds of the Court’s judgments (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).
35      The intervener’s second head of claim must therefore be rejected, in so far as it requests that the Court issue directions to EUIPO, on the grounds of lack of jurisdiction.
Substance
36      In support of its action, the applicant relies, in essence, on a single plea in law alleging infringement of Article 103 of Regulation 2017/1001, read in conjunction with Articles 20, 24 and 27 of that regulation. It submits, in essence, that the Board of Appeal erred in finding that the conditions for revocation of a decision or cancellation of an entry which contains an ‘obvious error’, within the meaning of Article 103 of that regulation, were satisfied, even though the entries made on 16 April 2018 recording the transfers of the marks at issue complied with all the legal requirements.
37      That single plea consists formally of four closely connected parts, by which the applicant claims, first, that those entries were made in accordance with the applicable law and do not contain any ‘obvious error’ within the meaning of Article 103 of Regulation 2017/1001, secondly, that that provision is not applicable in the present case as there is no ‘obvious error’, thirdly, that Article 27 of that regulation is not applicable and, fourthly, that, even if Article 27 of that regulation were applicable, the intervener and the liquidator knew of the transfers of the marks at issue.
38      In that regard, the Court takes the view that the claims, in the first two parts of the applicant’s single plea, relating to the absence, on the part of EUIPO, of any obvious error within the meaning of Article 103 of Regulation 2017/1001, in actual fact constitute an independent fifth part, which must logically be examined after the other four parts, which relate to Articles 20, 24 and 27 of that regulation.
39      The Court also takes the view that the five parts of the applicant’s single plea must be rephrased, according to their respective contents, as alleging, in essence, first, that EUIPO failed to have regard to its competence under Articles 20 and 24 of Regulation 2017/1001, secondly, that EUIPO and the Board of Appeal erred in taking into account the insolvency judgment of 13 October 2017, thirdly, that Article 27(1) of Regulation 2017/1001 is not applicable in the present case, fourthly, that the exception regarding knowledge which is provided for in Article 27 of Regulation 2017/1001 and the alleged knowledge, on the part of the intervener and the liquidator, of the assignment agreement of 2014 are applicable in the present case and, fifthly, that the Board of Appeal misapplied Article 103 of Regulation 2017/1001 to EUIPO’s decisions to cancel the entries of 16 April 2018.
40      EUIPO and the intervener contend that the applicant’s single plea should be rejected and dispute its arguments.
Preliminary observations
41      It must be pointed out at the outset, as observed by the intervener, that family A, consisting of, inter alia, B and her son C, which manages the applicant, previously managed the intervener, whereas the liquidator represents the general body of creditors of the insolvent intervener.
42      In the present case, it is for the Court to decide whether the Board of Appeal was right in finding that the decisions of the department in charge of EUIPO’s register cancelling the entries of 16 April 2018, relating to the successive transfers of the marks at issue, were lawful under Article 103 of Regulation 2017/1001. In that regard, account must be taken of the relevant provisions of that regulation, in particular Articles 103, 20, 24 and 27, and of Articles 3, 7 and 19 of Regulation (EU) 2015/848 of the European Parliament and of the Council of 20 May 2015 on insolvency proceedings (OJ 2015 L 141, p. 19, corrigendum OJ 2016 L 349, p. 9).
43      Article 103 of Regulation 2017/1001, which is entitled ‘Revocation of decisions’, but which also concerns the cancellation of entries, provides in paragraphs 1 and 2 thereof:
‘1.      Where [EUIPO] has made an entry in the Register or taken a decision which contains an obvious error attributable to [EUIPO], it shall ensure that the entry is cancelled or the decision is revoked. Where there is only one party to the proceedings and the entry or the act affects its rights, cancellation or revocation shall be determined even if the error was not evident to the party.
2.      Cancellation or revocation as referred to in paragraph 1 shall be determined, ex officio or at the request of one of the parties to the proceedings, by the department which made the entry or took the decision. The cancellation of the entry in the Register or the revocation of the decision shall be effected within one year of the date on which the entry was made in the Register or that decision was taken, after consultation with the parties to the proceedings and any proprietor of rights to the EU trade mark in question that are entered in the Register. [EUIPO] shall keep records of any such cancellation or revocation.’
44      Article 20 of Regulation 2017/1001, which is entitled ‘Transfer’, provides in paragraphs 1, 3 to 5 and 11 thereof:
‘1.      An EU trade mark may be transferred, separately from any transfer of the undertaking, in respect of some or all of the goods or services for which it is registered.
…
3.      … an assignment of the EU trade mark shall be made in writing and shall require the signature of the parties to the contract, except when it is a result of a judgment; otherwise it shall be void.
4.      On request of one of the parties a transfer shall be entered in the Register and published.
5.      An application for registration of a transfer shall contain [the] information [specified].
…
11.      As long as the transfer has not been entered in the Register, the successor in title may not invoke the rights arising from the registration of the EU trade mark.’
45      Article 13 of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37), specifies the information which an application for registration of a transfer of a mark which is submitted under Article 20(5) of Regulation 2017/1001 must contain.
46      Article 24 of Regulation 2017/1001, which is entitled ‘Insolvency proceedings’, lays down in the first subparagraph of paragraph 1 and in paragraph 3 thereof:
‘1.      The only insolvency proceedings in which an EU trade mark may be involved are those opened in the Member State in the territory of which the debtor has his centre of main interests.
…
3.      Where an EU trade mark is involved in insolvency proceedings, on request of the competent national authority an entry to this effect shall be made in the Register and published in the European Union Trade Marks Bulletin referred to in Article 116.’
47      Article 27 of Regulation 2017/1001, which is entitled ‘Effects vis-à-vis third parties’, provides in paragraphs 1 and 4 thereof:
‘1.      Legal acts referred to in Articles 20, 22 and 25 concerning an EU trade mark shall have effects vis-à-vis third parties in all the Member States only after entry in the Register. Nevertheless, such an act, before it is so entered, shall have effect vis-à-vis third parties who have acquired rights in the trade mark after the date of that act but who knew of the act at the date on which the rights were acquired.
…
4.      Until such time as common rules for the Member States in the field of bankruptcy enter into force, the effects vis-à-vis third parties of bankruptcy or similar proceedings shall be governed by the law of the Member State in which such proceedings are first brought within the meaning of national law or of conventions applicable in this field.’
48      Article 3 of Regulation 2015/848, which is entitled ‘International jurisdiction’, provides in the first and second subparagraphs of paragraph 1 thereof:
‘The courts of the Member State within the territory of which the centre of the debtor’s main interests is situated shall have jurisdiction to open insolvency proceedings … The centre of main interests shall be the place where the debtor conducts the administration of its interests on a regular basis and which is ascertainable by third parties.
In the case of a company or legal person, the place of the registered office shall be presumed to be the centre of its main interests in the absence of proof to the contrary …’
49      Article 7 of Regulation 2015/848, which is entitled ‘Applicable law’, provides in paragraphs 1 and 2 thereof:
‘1.      Save as otherwise provided in this Regulation, the law applicable to insolvency proceedings and their effects shall be that of the Member State within the territory of which such proceedings are opened (the “State of the opening of proceedings”).
2.      The law of the State of the opening of proceedings shall determine the conditions for the opening of those proceedings, their conduct and their closure. In particular, it shall determine the following:
…
(b)      the assets which form part of the insolvency estate and the treatment of assets acquired by or devolving on the debtor after the opening of the insolvency proceedings;
…
(m)      the rules relating to the voidness, voidability or unenforceability of legal acts detrimental to the general body of creditors.’
50      Article 19 of Regulation 2015/848, which is entitled ‘Principle’, lays down in the paragraph 1 thereof:
‘Any judgment opening insolvency proceedings handed down by a court of a Member State which has jurisdiction pursuant to Article 3 shall be recognised in all other Member States from the moment that it becomes effective in the State of the opening of proceedings.’
51      It must thus be pointed out that, under Regulation 2017/1001, the Italian Law on bankruptcy is applicable to certain aspects of the present case.
52      First of all, under Article 24(1) of Regulation 2017/1001 and also under Article 7 of Regulation 2015/848, the Italian Law on bankruptcy, as the law of the Member State in the territory of which the intervener had its centre of main interests at the time when it was declared insolvent, governs the insolvency proceedings in which the mark at issue is involved. Furthermore, under Article 27(4) of Regulation 2017/1001, it also governs the issues relating to the effects vis-à-vis third parties of those insolvency proceedings.
53      In addition, under Article 7(2) of Regulation 2015/848, the Italian Law on bankruptcy determines, inter alia, under subparagraph (b) of Article 7(2) of that regulation, ‘the assets which form part of the insolvency estate and the treatment of assets acquired by or devolving on the debtor after the opening of the insolvency proceedings’ and, under subparagraph (m) of Article 7(2) of that regulation, ‘the rules relating to the voidness, voidability or unenforceability of legal acts detrimental to the general body of creditors’. Likewise, under Article 19 of that regulation, the insolvency judgment handed down by the Tribunale di Venezia (District Court, Venice) is automatically effective throughout the European Union with regard to all the third parties and therefore, in the present case, with regard to the applicant and EUIPO.
54      The Italian Law on bankruptcy provides, in essence, in Articles 16 and 17, that the insolvency judgment produces effects vis-à-vis the debtor (the natural or legal person declared bankrupt or insolvent) from the moment it is filed at the registry of the court and vis-à-vis third parties from the moment it is entered in the Italian Companies Register (in the present case on 13 October 2017); in Article 42, relating to the dispossession of the debtor, that the management of the debtor’s assets is entrusted to the person responsible for the liquidation of the insolvent company; in Article 44, that all the acts carried out by the debtor after the declaration of insolvency, or without a date which has become certain before the declaration of insolvency, are ineffective by law and unenforceable against third parties, including the general body of creditors, and, in Article 45, that the formalities that are required for an act to be enforceable against third parties, including the general body of creditors, are ineffective if they have been carried out after the declaration of insolvency.
55      It is in the light of those provisions that the five parts of the applicant’s single plea must be examined.
The first part of the single plea, alleging that EUIPO failed to have regard to its competence under Articles 20 and 24 of Regulation 2017/1001
56      By the first part of the single plea, the applicant claims, in essence, that, under, in particular, Article 20 of Regulation 2017/1001, EUIPO must only verify the formal requirements with regard to an application for registration of the transfer of a mark and that it is not for it to examine the substantive issues, which do not fall within its competence.
57      In the present case, the applicant submits that EUIPO went beyond its competence and exceeded its powers, first, in examining questions of ownership under Italian law and, secondly, in not confining itself to a formal examination of the documents provided in support of the requests for recordal of the transfers of the marks at issue, namely agreements in writing bearing the signatures of the parties concerned. It argues that EUIPO should therefore only have examined whether sufficient evidence of those transfers had been submitted and whether the documents provided contained what was stated in the applications for registration of those transfers. It claims that it also follows from the case-law of the Court that EUIPO is not entitled to consider the validity and legal effects of a transfer of a mark under the applicable national law. It submits that the Board of Appeal went beyond its competence and exceeded its powers by carrying a substantive assessment as to whether the inventory list annexed to the judgment declaring the intervener insolvent proved ownership of the marks at issue.
58      According to the applicant, it is not disputed that the application for registration of the transfers of those marks which was submitted on 16 April 2018 satisfied all the substantive and formal requirements, since the transfer agreements were in writing and were signed by both of the parties concerned by each of those transfers. Although the applicant admits that, on that date, on which the entries recording those transfers were made, the registered proprietor of those marks was the intervener, it claims that the register did not, however, reflect the legal situation, since the intervener had transferred the marks at issue to Spring Holdings in 2014, and Spring Holdings had, in turn, transferred those marks to the applicant in the course of the month of December 2017. It concludes that those transfers were registered on 16 April 2018 in accordance with the applicable legal requirements and that EUIPO could not examine whether the agreements concluded in 2014 (the transfer to Spring Holdings) or in 2017 (the transfer to itself) were valid under Italian or Irish law.
59      It must be pointed out at the outset, first, that, according to settled case-law, which is applicable to EUIPO, the competent institution or agency is required to examine carefully and impartially all the relevant factual and legal aspects of the individual case (see, to that effect, judgments of 21 November 1991, Technische Universität München, C‑269/90, EU:C:1991:438, paragraph 14; of 15 July 2011, Zino Davidoff v OHIM – Kleinakis kai SIA (GOOD LIFE), T‑108/08, EU:T:2011:391, paragraph 19; and of 25 September 2018, Grendene v EUIPO – Hipanema (HIPANEMA), T‑435/17, not published, EU:T:2018:596, paragraph 79 and the case-law cited). In particular, EUIPO, which keeps a public register, must, in this respect, diligently take into account facts that are capable of having legal implications for the entries it makes in that register.
60      Secondly, it must be pointed out that, according to the case-law referred to by the applicant, Article 19 of Regulation 2017/1001 does not, in principle, require that EUIPO consider and apply the laws of the Member States concerning an EU trade mark as an object of property. In particular, it is not apparent from that provision that EUIPO or the Courts of the European Union must consider or rule on contractual or legal questions arising under national law (see, to that effect, judgment of 9 September 2011, Chalk v OHIM – Reformed Spirits Company Holdings (CRAIC), T‑83/09, not published, EU:T:2011:450, paragraph 27).
61      According to that case-law, a potential conflict between two assignments of a trade mark raises questions in relation to the law of contract and the law of property which exceed the scope of
Article 20 of Regulation 2017/1001 and of Implementing Regulation 2018/626 and the solution to which does not fall within EUIPO’s competence. It follows that it is not for EUIPO to consider the validity and the legal effects of a transfer of an EU trade mark under the applicable national law (see, to that effect, judgment of 9 September 2011, CRAIC, T‑83/09, not published, EU:T:2011:450, paragraphs 30 and 31).
62      Consequently, as EUIPO, moreover, points out in its response, it is apparent from that case-law that, when dealing with a request for recordal of a transfer of an EU trade mark, EUIPO’s competence is, in principle, confined to examining the formal requirements set out in Article 20 of Regulation 2017/1001 and Article 13 of Implementing Regulation 2018/626 and does not imply an assessment of substantive issues that may arise under the applicable national law.
63      However, according to settled case-law, in interpreting a provision of EU law, it is necessary to consider not only its wording but also the context in which it occurs and the objectives pursued by the legislation of which it is part (see judgment of 4 February 2016, Hassan, C‑163/15, EU:C:2016:71, paragraph 19 and the case-law cited).
64      In particular, Article 20 of Regulation 2017/1001 must be interpreted in the light of the provisions in the same section of Regulation 2017/1001, which is entitled ‘EU trade marks as objects of property’ (Chapter II, Section 4, Articles 19 to 29), the purpose of which is to ensure that such a mark is capable of ‘being transferred, of being charged as security in favour of a third party and of being the subject matter of licences’ (see recital 26 of that regulation).
65      Consequently, in applying Article 20 of Regulation 2017/1001, EUIPO must take account, in particular, of Article 27(1) of that regulation, under which transfers of an EU trade mark are to have effects vis-à-vis third parties, in principle, only after entry in the EU trade marks register, from which it is, moreover, apparent that such an entry does not have retroactive effect.
66      Furthermore, as the case may be, where, as in the present case, insolvency proceedings have been opened against the proprietor of a mark, EUIPO must take into account the provisions of Article 27(4) of Regulation 2017/1001, from which it is apparent that the effects vis-à-vis third parties of such proceedings are governed by national law.
67      In the present case, the proceedings relating to the insolvency of the intervener are governed by Italian law, a point which the applicant does not dispute. In particular, it is apparent from the information which the liquidator provided EUIPO with that, first of all, Articles 16 and 17 of the Italian Law on bankruptcy provide, in essence, that the insolvency judgment produces effects, first, vis-à-vis the debtor, that is to say, the natural or legal person declared bankrupt or insolvent, from the moment that that judgment is filed at the registry of the court and, secondly, vis-à-vis third parties from the moment it is entered in the Italian Companies Register. Secondly, it is apparent from Article 42 of that law that the management of the insolvent company is entrusted to the liquidator. Lastly, it is apparent from Articles 44 and 45 of that law, first, that all the acts carried out by the debtor after the declaration of insolvency, or without a date which has become certain before the declaration of insolvency, are ineffective by law and unenforceable against third parties, including the general body of creditors, and, that, secondly, the formalities that are required for an act to be enforceable against those third parties are ineffective if they have been carried out after the declaration of insolvency.
68      Thus, in the present case, in accordance with Article 27(4) of Regulation 2017/1001, the implications of the insolvency proceedings must be drawn from Italian law, in particular by duly taking into account its effect on the acts which were carried out by the debtor after that declaration of insolvency or which were without dates which had become certain before that declaration.
69      Consequently, in view of the foregoing, it must be held that, although it is true that EUIPO must confine itself to examining the formal requirements for the validity of an application for registration of a transfer of a mark under Article 20(5) of Regulation 2017/1001 and Article 13 of Implementing Regulation 2018/626, that examination nonetheless implies that it must diligently take into account facts that are capable of having legal implications for the application for registration of such a transfer, including the existence of insolvency proceedings.
70      The duty of diligence incumbent on EUIPO pursuant to the principle referred to in paragraph 59 above is all the more imperative where, as in the present case, before receiving an application for registration of the transfer of an EU trade mark, EUIPO was informed, by an earlier request for recordal which had been submitted in accordance with Article 24(3) of Regulation 2017/1001, that that mark was involved in insolvency proceedings, that is to say, proceedings seeking the realisation of the assets of the proprietor of that mark for the benefit of its creditors. In such a case, it is for EUIPO to deal with that application for registration of a transfer with particular diligence, in order to take into consideration the objective of ‘guarantee[ing] the effectiveness’ of the insolvency proceedings which is referred to in recital 36 of Regulation 2015/848, in particular if the existence, validity or certain date of that transfer is disputed by the liquidator.
71      The applicant, however, submits, in essence, that an application for registration of a transfer of an EU trade mark is totally independent of any earlier application for recordal of insolvency proceedings affecting that same mark. It claims that EUIPO is only competent to verify the formal requirements of the transfer and that it should refrain from any assessment of the possible implications of the first application for the subsequent applications.
72      However, in the light of the considerations set out in paragraphs 59 to 70 above, such a line of argument must be rejected. Once it has been informed of the opening of insolvency proceedings involving an EU trade mark by a national court, EUIPO cannot disregard that fact where, at a later date, an application for registration of a transfer regarding the same mark is submitted, especially where, moreover, the person responsible for the liquidation of the assets which form part of the insolvency estate expressly disputes the existence or the validity of the document produced in support of that application and legal proceedings have been brought in that regard.
73      Furthermore, in the present case, as has been pointed out in paragraph 67 above, under the applicable Italian law, the insolvency proceedings at issue had the effect of making ineffective the formalities required to ensure that an act by the debtor was enforceable against third parties, since those formalities had been carried out after the declaration of insolvency. Consequently, since that declaration produced its effects prior to the application for registration of the transfers at issue and EUIPO had been informed of it prior to that application, EUIPO was required to suspend the registration of those transfers until the national court had examined the substance of the case.
74      By contrast, following the applicant’s line of argument would result not only, in practice, in a circumvention of the national provisions concerning insolvency and their objective, namely the protection of creditors, but would also to a great extent render Article 24(3) of Regulation 2017/1001 redundant.
75      The Board of Appeal was therefore right in, inter alia, finding, in paragraph 58 of the contested decision, that, since the marks at issue were mentioned in the inventory list annexed to the judgment declaring the intervener insolvent, EUIPO was required to take that fact into account and enter the insolvency proceedings relating to those marks in the register, as requested by the liquidator. In so doing, the Board of Appeal simply referred to the duty of diligence which was incumbent on EUIPO, as explained in paragraphs 59 to 70 above. Furthermore, the Board of Appeal was also right in stating, in the same paragraph of its decision, that EUIPO had no competence to challenge that inventory list, since it could not substitute itself for the national courts.
76      The first part of the single plea must therefore be rejected.
The second part of the single plea, alleging that EUIPO and the Board of Appeal erred in taking into account the insolvency judgment of 13 October 2017
77      By the second part of the single plea, the applicant submits, in essence, that the Board of Appeal erred when it found that an essential procedural step had not been taken on the ground that, when EUIPO had registered the transfers of the marks at issue on 16 April 2018, it had not taken into account the fact that it had itself overlooked the earlier request for the insolvency proceedings relating to the intervener to be entered in the register, a request which had been submitted by the liquidator on 25 October 2017 pursuant to Article 24 of Regulation 2017/1001. The applicant takes the view that, at the time of the application for registration of those transfers, the intervener could no longer be considered to be the proprietor of those marks, since they had previously been transferred by the intervener to Spring Holdings by an assignment agreement of 26 June 2014 and that company had subsequently transferred them to the applicant. According to the applicant, the recordal of the insolvency proceedings under Article 24 of Regulation 2017/1001 could not therefore have any effect, because, in October 2017 and April 2018, the intervener could no longer be considered to be the proprietor of those marks.
78      The applicant submits that, even if EUIPO had entered the insolvency proceedings in the register, the transfers of the marks at issue, first to Spring Holdings and then to the applicant, would nevertheless have had to be registered, since, first, all the requirements for the registration of a transfer set out in Article 20 of Regulation 2017/1001 (agreement in writing, signatures, application for registration) had been satisfied and the required evidence had been submitted and since, secondly, the intervener was, at the time of such an entry in the register, no longer the proprietor of those marks, which it had assigned to Spring Holdings. It argues that the entry of the insolvency proceedings in the register could not have had the effect that the assets of the intervener, an insolvent company, again included something – such as those marks – which, at the time of the opening of the insolvency proceedings, was no longer part of its assets. It adds that the insolvency itself and the entry of the insolvency proceedings in the register produce effects for the future, as is apparent from Article 27(4) of Regulation 2017/1001.
79      It must be pointed out at the outset that it is common ground between the parties that the intervener was validly declared insolvent by an insolvency judgment which was delivered on 13 October 2017 by the Tribunale di Venezia (District Court, Venice) under the Italian Law on bankruptcy and became effective vis-à-vis third parties on the same day under that law, which, pursuant to Article 27(4) of Regulation 2017/1001, governs the effects vis-à-vis third parties of those proceedings. Consequently, as of that date, the intervener was no longer entitled to transfer the marks at issue under Article 20 of that regulation and EUIPO could not carry out the registration of a transfer which was applied for after that date.
80      The Board of Appeal, in paragraphs 48 and 49 of the contested decision, simply referred to the consequences of such an insolvency judgment for the party which was entered in the register as the proprietor of an EU trade mark at the time when that judgment was delivered, that is to say, the prohibition of administering its assets (property and titles to property entered in the register) and the invalidity or ineffectiveness of any subsequent acts vis-à-vis creditors (including the formalities required to ensure that an act has effects vis-à-vis third parties, which are ineffective if they are carried out after the declaration of insolvency). It observed that, in the present case, at the time when that judgment was delivered, namely on 13 October 2017, the intervener appeared in EUIPO’s register as the proprietor of the marks at issue and that those marks appeared on the insolvency inventory list.
81      In that regard, it must be stated that, contrary to what the applicant claims, the Board of Appeal did not carry a substantive assessment as to whether the inventory list proved ownership of the marks at issue. The Board of Appeal simply took into consideration an official document that had been approved by the Tribunale di Venezia (District Court, Venice), which was responsible for the insolvency proceedings, and found, in paragraph 58 of the contested decision, that no evidence had been provided to show that that document had been challenged before a court. Furthermore, in paragraphs 50 and 51 of that decision, the Board of Appeal pointed out that EUIPO had not dealt with the liquidator’s request, which had been received on 25 October 2017, for the insolvency proceedings relating to the intervener to be entered in the register and that that request was still pending on 16 April 2018, the date on which the application for registration of the transfers of those marks from the intervener to Spring Holdings and from Spring Holdings to the applicant was submitted.
82      The Board of Appeal was therefore right in finding, in paragraphs 52 to 56 of the contested decision, that the applicant’s argument that the transfer of the marks at issue by the intervener to Spring Holdings had taken place on 26 June 2014 (that is to say, before the intervener was declared insolvent) did not permit the inference that the recordals of transfer of 16 April 2018 were lawful and in finding, in essence, that that argument was ineffective.
83      In that regard, the Board of Appeal was right in relying on Article 27(1) of Regulation 2017/1001, regarding the effects vis-à-vis third parties of legal acts such as transfers of a trade mark, effects which those acts have only after entry in the register. It found that the alleged transfer of the marks at issue by the intervener, regardless of whether it was valid and its date was certain, had not, in any event, been entered in EUIPO’s register before the insolvency judgment of 13 October 2017 and that, as a result, it could not have any effect with regard to the liquidator, who had to be classified as a ‘third party’ because he was not a party to that alleged transfer. Furthermore, in the light of
Article 27(4) of Regulation 2017/1001, the Board of Appeal was right in relying on Article 45 of the Italian Law on bankruptcy, which provides that all the formalities that are required to ensure that an act is enforceable against third parties are ineffective if they have been carried out after the declaration of insolvency, as is the case here.
84      It is therefore apparent from the contested decision that the Board of Appeal did not rule on the substantive legal issues which fell within the jurisdiction of the national courts and were a matter for national law, such as the ownership of the marks at issue under Italian law or the substantive validity of the transfers of those marks which had been registered on 16 April 2018. On the contrary, in paragraphs 55 and 58 of the contested decision, it expressly stated that it did not have any competence in that regard and duly recognised the jurisdiction of the relevant national courts.
85      Lastly, in so far as the applicant relies on paragraph 30 of the judgment of 9 September 2011, CRAIC (T‑83/09, not published, EU:T:2011:450), it must be pointed out that, in that paragraph of that judgment, the Court held that the first application for registration of a transfer of the mark concerned in the case which gave rise to that judgment satisfied the requirements of Rule 31 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) (now Article 13 of Implementing Regulation 2018/626), because it was accompanied by a document assigning the trade mark in accordance with the requirements of that rule, with the result that that application and the registration of the transferee as the new proprietor of the trade mark at issue were valid. By contrast, the Court held that a second application for registration of a transfer of the same mark did not meet those requirements, since the transferor was not the registered proprietor, which at that time was already the transferee in the context of the earlier transfer of that mark. In that regard, the Court pointed out that a potential conflict between the two assignments of which that mark had been the subject matter raised questions in relation to the law of contract and the law of property, which exceeded the scope of that rule and the examination of which did not fall within EUIPO’s competence.
86      However, those findings do not imply that, in the present case, the Board of Appeal assessed the substantive validity of the transfers of the marks at issue, as the applicant seems to suggest. In that regard, it is sufficient to point out that, in the dispute on which the Court ruled in the judgment of 9 September 2011, CRAIC (T‑83/09, not published, EU:T:2011:450), the applicant did not rely, in support of his application for registration of the transfer of the mark, on a decision of a national court relating to insolvency proceedings that is analogous to the judgment delivered by the Tribunale di Venezia (District Court, Venice) in the present case. EUIPO was not therefore required to apply the national law and the reference to the judgment cited is thus irrelevant. In any event, in the contested decision, the Board of Appeal confined itself to taking note of that Italian judgment and, as has already been pointed out in paragraph 84 above, it did not itself rule on the ownership of the marks at issue under Italian law or assess the substantive validity of the transfers of those marks.
87      The second part of the single plea must therefore be rejected.
The third part of the single plea, alleging that Article 27(1) of Regulation 2017/1001 is not applicable in the present case
88      By the third part of the single plea, the applicant claims, in essence, that Article 27(1) of Regulation 2017/1001 cannot apply in the present case, since it concerns only situations in which more than one party claims a right to an EU trade mark, that is to say, relies on legal acts which have as their object or effect the creation or transfer of rights in such a mark. By contrast, it submits that it is not applicable to a situation, such as that in the present case, in which an entity is no longer the proprietor of the marks concerned at the time when insolvency proceedings concerning it are opened, because it has transferred those marks to another entity years previously.
89      In that regard, it must be borne in mind that the first sentence of Article 27(1) of Regulation 2017/1001 provides that legal acts referred to in Articles 20, 22 and 25 of that regulation concerning an EU trade mark are to have effects vis-à-vis third parties in all the Member States only after entry in the register.
90      It must be stated that, contrary to what the applicant claims, the Board of Appeal was right in finding that that provision was applicable in the present case.
91      In paragraphs 49 to 56 of the contested decision, the Board of Appeal pointed out that the ownership of the marks at issue on 13 October 2017, the date on which the registered proprietor of those marks, namely the intervener, had been declared insolvent, was the subject matter of a dispute between the applicant and the liquidator, representing the general body of the intervener’s creditors, and that the alleged transfer of that ownership, which, according to the applicant, had taken place in 2014, did not, in any event, have any effect vis-à-vis third parties, including the liquidator, because it had not been entered in EUIPO’s register before 13 October 2017.
92      It follows that Article 27(1) of Regulation 2017/1001 is applicable in the present case, in particular to the alleged agreement of 2014 to transfer the marks at issue, which was not made effective vis-à-vis third parties in accordance with that provision prior to 13 October 2017, the date on which the judgment declaring the intervener insolvent in accordance with the Italian Law on bankruptcy, which is applicable under Article 27(4) of that regulation and Article 19(1) of Regulation 2015/848, took effect and had effects vis-à-vis third parties.
93      The third part of the single plea must therefore be rejected.
The fourth part of the single plea, alleging that the exception regarding knowledge which is provided for in Article 27(1) of Regulation 2017/1001 and the alleged knowledge, on the part of the intervener and the liquidator, of the assignment agreement of 2014 are applicable in the present case
94      By the fourth part of the single plea, the applicant submits, in essence, that the Board of Appeal erred in not taking into consideration the fact that the intervener and the liquidator knew of the transfer of the marks at issue which had taken place in 2014, a fact which it claims is proved by the existence of the licence agreement relating to those marks, which the intervener and Spring Holdings had entered into on 30 December 2014, and the liquidator’s extension of that licence agreement by email of 7 December 2017. It argues that that is also apparent from a ‘letter agreement’ of 24 November 2017, by which Spring Holdings proposed to extend the duration of the licence agreement until 30 November 2022.
95      In any event, the applicant submits that the liquidator could not be considered to be a third party (even acting in the interests of the intervener’s creditors), because he had, as a party to the licence agreement, entered into a contractual relationship with the applicant. The latter concludes that, even if Article 27(1) of Regulation 2017/1001 were to apply to the present case, the intervener and the liquidator himself could not rely on that provision because they had actual knowledge of the previous transfer of the marks at issue to Spring Holdings in 2014.
96      It must be pointed out that those arguments are based on the exception regarding knowledge which is provided for in the second sentence of Article 27(1) of Regulation 2017/1001, according to which, even before it is entered in EUIPO’s register, a legal act concerning an EU trade mark is to have effect vis-à-vis third parties who have acquired rights in the trade mark after the date of that act if they knew of the act at the date on which the rights were acquired.
97      It must, however, be stated that, in the present case, EUIPO was not in a position to apply that exception regarding knowledge.
98      As has already been pointed out in paragraph 75 above, the Board of Appeal was right in finding, in paragraph 58 of the contested decision, that, since the marks at issue were mentioned in the inventory list annexed to the insolvency judgment of 13 October 2017, it was not for EUIPO to challenge that list, as it could not substitute itself for the national courts and was required to enter the insolvency proceedings relating to those marks in the register. The Board of Appeal was also right in finding, in the same paragraph of that decision, that the application for registration of the transfers of those marks which had been submitted by the applicant after the intervener had been declared insolvent was belated and that the applicant had not provided evidence that the insolvency judgment was erroneous on the basis of a national court decision.
99      Consequently, it was not for EUIPO to ascertain whether, as at the date of the judgment declaring the intervener insolvent, the exception regarding knowledge could be raised against the intervener and the liquidator. It follows that the present part is ineffective.
100    In any event, as regards the intervener’s and the liquidator’s alleged knowledge, on 13 October 2017, of the transfer of the marks at issue by the intervener to Spring Holdings, which had allegedly taken place in 2014, it is necessary to make the following observations.
101    First, as regards the intervener, it must be pointed out that the Court of Justice, with regard to
the purpose of the rule laid down in the first sentence of Article 27(1) of Regulation 2017/1001, has stated that the lack of effects, vis-à-vis third parties, of the legal acts referred to in Articles 20, 22 and 25 of that regulation which have not been entered in the register is intended to protect a person who has, or may have, rights in an EU trade mark as an object of property (see, to that effect, judgment of 4 February 2016, Hassan, C‑163/15, EU:C:2016:71, paragraph 25).
102    It must therefore be held that Article 27(1) of Regulation 2017/1001 is intended, in the present case, to protect any person who has, or may have, rights in the marks at issue as objects of property, that is to say, the creditors of the intervener, the company which has been declared insolvent. Consequently, the knowledge of the transfer of those marks on the part of the intervener itself is not relevant and cannot affect the rights of its creditors to its liquidated assets.
103    Secondly, as regards the liquidator, it must be examined whether he actually confirmed that he knew of the transfer of 2014 before 13 October 2017, as the applicant claims.
104    In that regard, it is important to point out that, under Article 27(1) of Regulation 2017/1001, the exception regarding knowledge applies to those who, having subsequently acquired rights in the trade mark concerned, knew of the act ‘at the date on which the rights were acquired’, that is to say, in the present case, on 13 October 2017, as the applicant itself admits in paragraph 74 of the application.
105    First of all, it is common ground that the liquidator was not involved either in the assignment agreement or in the licence agreement relied on by the applicant, which were allegedly entered into in 2014.
106    Next, it is apparent from the case file that the liquidator challenged the validity of that assignment agreement and licence agreement before the Tribunale di Venezia (District Court, Venice). In the actual document on which the applicant relies, namely the application initiating proceedings which the liquidator submitted to that court on 13 June 2019, it is expressly stated that the liquidator knew of the assignment agreement ‘for the first (and only) time’ in the course of June 2018 (that is to say, after the insolvency judgment of 13 October 2017), on account, specifically, of the proceedings before EUIPO.
107    In support of its claims, the applicant simply refers to the ‘letter agreement’, namely correspondence dating from the months of November and December 2017 regarding the extension of the licence agreement. In that regard, it is important to point out that the correspondence relied on by the applicant postdates the insolvency judgment, which is dated 13 October 2017. In any event, it is apparent from the case file that the liquidator rejected the applicant’s claims, stating that the proposal for the extension of the licence agreement submitted by Spring Holdings on 24 November 2017 was ‘purely temporary, provisional and obviously excluded the actions against the alleged assignment of the trade marks’, among which are the marks at issue. As is expressly stated in the liquidator’s request seeking to obtain the authorisation to accept that extension, the authorisation was ‘without prejudice to any actions initiated to ascertain whether the assignment of the marks was lawful, for an appropriate price and any other circumstance in relation to the object’. Furthermore, the liquidator disputed before the Board of Appeal the veracity of the email which had allegedly been sent by him in response to that proposal and was relied on by the applicant, and the applicant has not proved that the liquidator ever signed that proposal. Consequently, such evidence cannot prove that the liquidator knew, on 13 October 2017, of the alleged assignment agreement of 26 June 2014.
108    The Board of Appeal was therefore right in finding, in essence, that the exception regarding knowledge provided for in Article 27(1) of Regulation 2017/1001 did not apply in the present case and that the alleged assignment agreement and licence agreement of 2104, irrespective of whether they were valid and their dates were certain under Italian law, were, in any event, unenforceable vis-à-vis the intervener and the liquidator on 13 October 2017.
109    The fourth part of the single plea must therefore be rejected.
The fifth part of the single plea, alleging that the Board of Appeal misapplied Article 103 of Regulation 2017/1001 to EUIPO’s decisions to cancel the entries of 16 April 2018
110    By the fifth part of the single plea, the applicant claims, in essence, that Article 103 of Regulation 2017/1001 is not applicable in the present case, since there was no ‘obvious error’ when EUIPO entered the transfer of the marks at issue to the applicant in the register on 16 April 2018, in compliance with the legislative conditions. It reasserts that the intervener, before being declared insolvent, had transferred those marks to Spring Holdings, which had, in turn, transferred the marks to it. Furthermore, it submits that the error alleged by the intervener, namely the omission of a procedural step, was not made at the time when that
transfer was entered in the register, but dated back to October 2017.
111    In that regard, it must be pointed out that the wording of Article 103 of Regulation 2017/1001, which came into force on 1 October 2017, differs from that of Article 80 of Regulation No 207/2009 in that it covers any ‘obvious error’ that is attributable to EUIPO, and not only any ‘obvious procedural error’ which is attributable to EUIPO, which has been defined by the Court of Justice as a flagrant error of a procedural nature made by EUIPO (see, to that effect, judgment of 31 October 2019, Repower v EUIPO, C‑281/18 P, EU:C:2019:916, paragraph 29). The procedural nature of the obvious error is not therefore a condition for the application of Article 103 of Regulation 2017/1001.
112    As regards the ‘obvious’ or flagrant nature of the error justifying the adoption of a decision revoking an earlier decision or justifying the cancellation of an entry, it refers to errors which are highly obvious and do not allow the operative part of that earlier decision to be maintained or that entry to be maintained without a new analysis which will be carried out subsequently by the department which took that decision or made that entry (see, to that effect, judgment of 28 May 2020, Aurea Biolabs v EUIPO – Avizel (AUREA BIOLABS), T‑724/18 and T‑184/19, EU:T:2020:227, paragraphs 29 and 30 and the case-law cited).
113    More generally, according to the case-law, an error may only be classified as obvious where it can readily be detected, in the light of the criteria to which the legislature intended the administration’s exercise of its discretion to be subject, and where the evidence adduced is sufficient to make that administration’s assessment implausible and that assessment cannot be accepted as justified and consistent (see, to that effect, judgment of 2 April 2019, Fleig v EEAS, T‑492/17, EU:T:2019:211, paragraph 55 and the case-law cited).
114    In the present case, it must be pointed out, as regards the failure to enter the insolvency proceedings in the register, that an insolvency must be considered to be effective and enforceable as from the date fixed by the applicable national law, in the present case 13 October 2017 under Articles 44 and 45 of the Italian Law on bankruptcy (see, in particular, paragraphs 54 and 67 above). Furthermore, EUIPO knew of the intervener’s insolvency and, by decision of 9 April 2018 (see paragraph 9 above), had already expressly announced its intention of giving effect to it. Consequently, since the first recordal of the transfer of the marks at issue by the intervener to Spring Holdings, a recordal which had been requested on 18 October 2017 by their representative in common, was cancelled by EUIPO on 9 April 2018 with retroactive effect, those marks had to be regarded as belonging to the intervener on 13 October 2017 and, a fortiori, on 16 April 2018.
115    It must therefore be held that the ‘obvious error’ attributable to EUIPO, within the meaning of Article 103 of Regulation 2017/1001, was made when EUIPO, on 16 April 2018, entered the transfers of the marks at issue in the register at the applicant’s request without taking into account the existence and the enforceability of the judgment of 13 October 2017 declaring the intervener insolvent, a judgment which it had failed to enter in the register following the request to do so which the liquidator had submitted on 25 October 2017.
116    The entries in the register on 16 April 2018 of the successive transfers of the marks at issue thus constituted ‘obvious errors’ attributable to EUIPO, for the purposes of Article 103 of Regulation 2017/1001, since, first, the intervener had previously been declared insolvent, namely on 13 October 2017, and, secondly, at the time when those entries were made, EUIPO knew of the opening of the insolvency proceedings relating to the registered proprietor of those marks, namely the intervener.
117    In normal circumstances in which errors had not been made, if the judgment declaring the registered proprietor of the marks at issue insolvent had been duly entered in the register at the time when the liquidator requested that it be entered, namely on 25 October 2017, any subsequent application for registration of a transfer concerning the same marks would have been automatically suspended and could have been acted upon only with the express authorisation of the liquidator or the national court responsible for the insolvency proceedings.
118    In entering the contested transfers in the register at the request of the applicant on 16 April 2018, after having failed to enter the insolvency proceedings concerning the proprietor of the marks at issue in the register in accordance with the liquidator’s request of 25 October 2017, EUIPO made an obvious error, with the result that it was required to cancel
those entries of 16 April 2018, which contained that obvious error, as soon as possible.
119    In that regard, the Court of Justice has stated, in essence, that the purpose of the obligation to revoke a decision or cancel an entry that contains an obvious error attributable to EUIPO, which is currently imposed on EUIPO by Article 103 of Regulation 2017/1001, is to guarantee sound administration and procedural economy (see, to that effect and by analogy, judgment of 31 October 2019, Repower v EUIPO, C‑281/18 P, EU:C:2019:916, paragraph 32).
120    Furthermore, the period of one year from the date on which the entry was made in the register, as laid down in Article 103(2) of Regulation 2017/1001, was duly complied with when, on 30 January 2019, the department in charge of EUIPO’s register adopted the two decisions cancelling register entries T 014185535 and T 014188695, which had been made on 16 April 2018.
121    It follows that the necessary conditions for the application of Article 103 of Regulation 2017/1001 by EUIPO, in particular by the department in charge of EUIPO’s register, were satisfied.
122    The Board of Appeal was therefore right in upholding that department’s decision of 30 January 2019 to cancel the entries which had been made on 16 April 2018 relating to the successive transfers of the marks at issue.
123    The fifth part of the single plea must therefore be rejected.
124    In the light of all of the foregoing considerations, the single plea must be rejected and consequently the action must be dismissed in its entirety.
Costs
125    Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
126    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 (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Henry Cotton’s Brand Management Co. Ltd to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Industries Sportswear Co. Srl.
Costeira
Gratsias
Kancheva
Delivered in open court in Luxembourg on 22 September 2021.
E. Coulon
M. van der Woude
Registrar
President
Table of contents
Background to the dispute
Forms of order sought
Law
The issue of whether the intervener’s second head of claim is admissible
Substance
Preliminary observations
The first part of the single plea, alleging that EUIPO failed to have regard to its competence under Articles 20 and 24 of Regulation 2017/1001
The second part of the single plea, alleging that EUIPO and the Board of Appeal erred in taking into account the insolvency judgment of 13 October 2017
The third part of the single plea, alleging that Article 27(1) of Regulation 2017/1001 is not applicable in the present case
The fourth part of the single plea, alleging that the exception regarding knowledge which is provided for in Article 27(1) of Regulation 2017/1001 and the alleged knowledge, on the part of the intervener and the liquidator, of the assignment agreement of 2014 are applicable in the present case
The fifth part of the single plea, alleging that the Board of Appeal misapplied Article 103 of Regulation 2017/1001 to EUIPO’s decisions to cancel the entries of 16 April 2018
Costs
*      Language of the case: English.