JUDGMENT OF THE GENERAL COURT (Third Chamber)
30 April 2019
(*)
(EU trade mark — Opposition proceedings — Application for EU figurative mark Djili DS — Earlier national word mark DJILI — Relative ground for refusal — No likelihood of confusion — Article 8(1)(a) and (b) of Regulation (EU) 2017/1001)
In Case T‑558/18,
Victor Lupu, residing in Bucharest (Romania), represented by P. Acsinte, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being:
Et Djili Soy Dzhihangir Ibryam, established in Dulovo (Bulgaria), represented by C.-R. Romiţan, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 5 June 2018 (Case R 2391/2017-5) concerning opposition proceedings between Mr Lupu and Et Djili Soy Dzhihangir Ibryam,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, V. Kreuschitz and N. Półtorak (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 21 September 2018,
having regard to the response of EUIPO lodged at the Court Registry on 6 December 2018,
having regard to the response of the intervener lodged at the Court Registry on 13 December 2018,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 3 July 2009 the intervener, Et Djili Soy Dzhihangir Ibryam, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) under 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 following figurative sign:
3        The goods in respect of which registration was sought are in Classes 29, 31 and 32 under the Nice Agreement concerning the International Classification of Goods and Services for the purposes of Registration of Marks, of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 29:
‘Meat, fish, poultry and game; Meat extracts; Preserved, frozen, dried and cooked fruits and vegetables; Jellies, jams, compotes; Eggs, milk and milk products; Edible oils and fats’;
–        Class 31: ‘Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt’;
–        Class 32: ‘Beers; Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages’;
4        The EU trade mark application was published in Community Trade Marks Bulletin No 2009/035 of 14 September 2009.
5        On 11 December 2009, the applicant, Mr Victor Lupu, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the earlier Romanian word mark DJILI covering, inter alia, goods in Classes 29 and 31 and corresponding, for each of those classes, to the following description:
–        Class 29: ‘Sun-flower and pumpkin roasted and not roasted, salted and not salted seeds, roasted hazel nuts, pistachio; conserved, dried and boiled fruits and vegetables extracts, edible oils and fats’;
–        Class 31: ‘Agriculture, horticulture, forestry products and cereals not included in other classes, seeds, especially sun-flower and pumpkin seeds, hazel nuts, pistachio, peanut; nutrients for animals’.
7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 207/2009 (now Article 8(1)(a) and (b) of Regulation 2017/1001).
8        The earlier mark was filed on 2 April 2009 with the Oficiul de Stat pentru Invenţii şi Mărci (State Office for Inventions and Trade Marks, Romania) by a third party and registered on 25 June 2009. That third party transferred the mark to the applicant on 8 December 2009.
9        On 1 October 2010, the intervener informed EUIPO that it had lodged an appeal before the Romanian courts, seeking annulment of the earlier mark. It requested the suspension of the proceedings before the Opposition Division until a definitive ruling had been given as to the validity of that mark. On 13 October 2010, EUIPO granted the requested suspension.
10      The earlier mark was declared invalid by a Romanian court decision of 21 June 2011 and that decision was confirmed by a decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice, Romania) on 27 May 2016. Those decisions were sent to EUIPO by the intervener, which requested the resumption of the proceedings before EUIPO.
11      On 14 June 2016, the applicant asked EUIPO to suspend the procedure, on the ground that he intended to challenge the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 27 May 2016. In that regard, the intervener pointed out that the proposed action was an extraordinary appeal which does not suspend the application of that decision.
12      On 16 December 2016, the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) dismissed the action brought before it by the applicant.
13      On 29 March 2017, EUIPO informed the applicant that the opposition proceedings were being resumed and that he had two months to indicate to EUIPO whether or not he was maintaining his opposition.
14      On 31 May 2017, the applicant informed EUIPO that he wished to maintain his opposition.
15      On 13 September 2017, the Opposition Division rejected the opposition as unfounded.
16      On 8 November 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
17      By decision of 5 June 2018 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal. In particular, it found that the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 27 May 2016 was final and that, therefore, the earlier right relied on in support of the opposition had been declared invalid. In addition, it also found that no relative ground for refusal under Article 8(4) of Regulation No 207/2009 was raised within the period prescribed by EUIPO, that the applicant could not validly request the extension of the period for filing his opposition without complying with the procedural rules which establish a period of three months following publication of the contested EU trade mark and, therefore, that the opposition was unfounded.
Forms of order sought
18      In the application, the applicant claims that the Court should:
–        annul the contested decision;
–        uphold the opposition against registration of the mark applied for or cancel that registration.
19      In its defence, EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs incurred by EUIPO.
20      In its response, the intervener contends that the Court should:
–        dismiss the action as unfounded;
–        order the applicant to pay the costs.
Law
The applicant’s first head of claim
21      By his first head of claim, the applicant seeks the annulment of the contested decision.
22      The applicant relies, in essence, on a single plea in law, alleging infringement of his rights as a proprietor of an earlier mark. He alleges infringement of Article 6 of the Convention on the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950, of Article 1 of the First Additional Protocol to the Convention on the Protection of Human Rights and Fundamental Freedoms, of Rule 20(7)(a) and (c) 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) (replaced by 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)) and, by analogy, of Article 53(2)(c) and (d) of Regulation No 207/2009 (now Article 60(2)(c) and (d) of Regulation 2017/1001).
23      EUIPO and the intervener contest those claims.
24      In the present case, it is appropriate for the General Court to note that the Board of Appeal found, in paragraph 43 of the contested decision, that the only earlier right on which the applicant had based his opposition had been declared invalid, definitively, by the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 27 May 2016 and, consequently, that the opposition was unfounded. The Board of Appeal also found, in paragraph 44 of the contested decision, first, that the applicant had not put forward any relative ground for refusal of registration of an EU trade mark within the period prescribed by EUIPO under Article 8(4) of Regulation No 207/2009 and, second, that the applicant could not claim an extension of time to file his opposition. It is on that basis that the Board of Appeal concluded, in paragraph 48 of the contested decision, that the Opposition Division had been right to rule that the opposition must be rejected.
25      It must be held that none of the arguments put forward by the applicant is capable of calling into question the Board of Appeal’s conclusion or establishing that it infringed the provisions relied on by the applicant.
26      First, the applicant submits that the resumption of proceedings should have been conditional upon the production of the reasoned decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 16 December 2016 rejecting the extraordinary appeal for annulment brought against the decision of that court of 27 May 2016 confirming the definitive invalidity of the earlier mark. Although the appeal for annulment was dismissed by that decision, the grounds of the decision were not yet known to the parties at the date of the contested decision. Accordingly, the applicant submits that the Board of Appeal infringed its own procedural rules on suspension, in so far as, in his view, it ruled on the appeal in the absence of a final decision.
27      That argument cannot, however, be accepted. On the one hand, even had the parties known the grounds of that decision, it would not have enabled them to challenge it since no other national appeal procedure was open to them. On the other, as EUIPO contends, the grounds of the decision in question do not affect the finding that the mark at issue was definitively invalid.
28      In that regard, it must be noted that the applicant does not dispute the statements in paragraphs 39 and 40 of the contested decision that, on the one hand, all the domestic remedies available in Romania had been exhausted and, on the other, the applicant had neither provided information that could call into question the fact that the judgment of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) was final, nor demonstrated that that judgment had not acquired the force of res judicata.
29      Second, the applicant claims, in essence, that, once the reasoned decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 16 December 2016
is sent to him, and given that the time
limit for bringing an action before the European Court of Human Rights has not expired, he will then be able to consider bringing an action before that court.
30      Those considerations can be understood only as an additional element in support of his argument that, for that reason as well, the Board of Appeal ought to have maintained the suspension of the proceedings before it.
31      However, it is clear that those elements cannot call into question either the reasoning or the conclusion of the Board of Appeal. Even though the period of six months for the applicant to bring an action before that court had not elapsed, the fact remains that, when the Board made its ruling, the national courts had ruled definitively on the invalidity of the earlier mark and that mark was no longer registered in the national register of marks kept by the State Office for Inventions and Trade Marks (see, to that effect, order of 8 June 2018, Lupu v EUIPO — Dzhihangir (Djili soy original DS), T‑456/17, not published, EU:T:2018:342, paragraph 41).
32      Third, according to the applicant, the earlier mark was registered on 2 April 2009 at the request of a third party, who transferred the mark to him in order to avoid a dispute. Furthermore, he argues that he has used the unregistered mark Djili to identify his goods in the course of trade since the 1990s and thus prior to the application for registration of the trade mark applied for by the intervener. In the present case, the applicant claims that he was, however, obliged to await the decision of the Înalta Curte de Casație şi Justiție (High Court of Cassation and Justice) of 30 January 2015, by which the latter ruled on that earlier use and held that he had adduced evidence of that use, in order to rely on that mark in the present dispute. In consequence, the applicant is of the opinion that he was entitled to rely on that use in the opposition proceedings in question.
33      In that regard, both the applicant’s and the intervener’s arguments, seeking, in essence, to establish their use of the earlier mark and the mark applied for
respectively, prior to the application for registration of the latter mark, do not call the Board of Appeal’s reasoning into question at all and thus are not relevant to the assessment of the legality of the contested decision.
34      The applicant’s arguments on that point therefore cannot succeed. Indeed, and as EUIPO rightly contends, whether or not it is possible for the applicant to rely on an unregistered trade mark or on another sign used in the course of trade is covered by Article 8(4) of Regulation 2017/1001 and cannot, in any event, be conditional upon a prior decision by the national courts.
35      What is more, the opposition was brought on the basis of the earlier mark and on that of Article 8(1)(a) and (b) of Regulation No 207/2009. However, as EUIPO recalls, in accordance with Article 41(3) of Regulation No 207/2009 (now Article 46(3) of Regulation 2017/1001), the opposition must state the grounds on which it is based. Accordingly, once the time
limit has expired for submitting a statement of opposition as referred to in Article 41 of Regulation No 207/2009, the applicant may no longer rely on new earlier rights or new grounds for opposition. Since the Board of Appeal considered, correctly, as has been recalled in paragraph 24 above, that the only earlier right on which the applicant had based its opposition had been declared invalid, there is no need to examine new grounds for opposition (see, to that effect, order of 8 June 2018, Djili soy original DS, T‑456/17, not published, EU:T:2018:342, paragraphs 42 and 43). In that regard, it is appropriate to note, as has EUIPO, that expiry of the deadline for filing a statement of opposition is without prejudice to the possibility of making an application for a declaration of invalidity within the meaning of Article 60 of Regulation 2017/1001.
36      Consequently, since the single plea relied on by the applicant is manifestly unfounded, it must be rejected as must, accordingly, the applicant’s first head of claim.
The applicant’s second head of claim
37      By his second head of claim, the applicant requests the Court to uphold the opposition filed against registration of the mark applied for or to declare that mark invalid and thus, in essence, seeks alteration of the contested decision.
38      It should be recalled that the review carried out by the General Court under Article 72(3) of Regulation 2017/1001 is a review of the legality of the decisions of the EUIPO Boards of Appeal. It may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 72(2) of Regulation 2017/1001 (see judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 71 and the case-law cited).
39      As the single plea in law relied on by the applicant in support of his application for annulment must be rejected, as established in paragraph 36 above, the contested decision is not vitiated by any of the grounds of unlawfulness referred to in Article 72(2) of Regulation 2017/1001. It is therefore not appropriate to grant the applicant’s application to alter the contested decision and the second head of claim must be rejected.
40      In the light of the foregoing considerations, the applicant’s second head of claim must be rejected, as must, consequently, the action in its entirety.
Costs
41      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he 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 (Third Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Mr Victor Lupu to pay the costs.
Frimodt Nielsen
Kreuschitz
Półtorak
Delivered in open court in Luxembourg on 30 April 2019.
E. Coulon
S. Frimodt Nielsen
Registrar
President
*      Language of the case: English.