JUDGMENT OF THE GENERAL COURT (Third Chamber)
6 October 2021 (*)
(EU trade mark – Invalidity proceedings – EU word mark JUVÉDERM VOLUMA – Late payment of the appeal fee – Inadmissibility of the appeal before the Board of Appeal – Article 101(4) of Regulation (EU) 2017/1001 – Article 106(1)(b) of Regulation 2017/1001 – Restitutio in integrum)
In Case T‑636/20,
Dermavita Company S.a.r.l., established in Beirut (Lebanon), represented by D. Todorov, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Allergan Holdings France SAS, established in Courbevoie (France),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 24 August 2020 (Case R 1016/2020-4), relating to invalidity proceedings between Dermavita Company and Allergan Holdings France,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, V. Kreuschitz and Z. Csehi (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 21 October 2020,
having regard to the response lodged at the Court Registry on 5 January 2021,
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 31 December 2007, Allergan Inc., the predecessor in law to Allergan Holdings France SAS, 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)).
2        Registration as a mark was sought for the word sign JUVÉDERM VOLUMA.
3        The goods in respect of which registration was sought are in Classes 5 and 10 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 5: ‘Pharmaceutical preparations for the treatment of glabellar lines, facial wrinkles, asymmetries and defects and conditions of the human skin’;
–        Class 10: ‘Dermal implants, namely, visco-supplementation solutions for filling wrinkles’.
4        The trade mark application was published in Community Trade Marks Bulletin
No 22/2008 of 2 June 2008 and, on 11 December 2008, the sign in question was registered as an EU trade mark under number 6547301.
5        On 6 July 2018, Dermavita Co. Ltd Parseghian & Partners, the predecessor in law of the applicant, Dermavita Company S.a.r.l., filed an application for a declaration of invalidity of the contested mark on the ground of bad faith within the meaning of Article 51(1)(b) of Regulation No 40/94 (now Article 59(1)(b) of Regulation 2017/1001).
6        By decision of 27 March 2020, the Cancellation Division rejected the application for a declaration of invalidity as unfounded.
7        On 22 May 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
8        However, the applicant did not pay the appeal fee referred to in the second sentence of Article 68(1) of Regulation 2017/1001 until 24 June 2020, that is, after the time limit prescribed in the first sentence of Article 68(1) of Regulation 2017/1001, which expired on 2 June 2020.
9        On 17 June 2020, the Registry of the Boards of Appeal notified the applicant that the appeal fee had not been received by EUIPO by the expiry of the time limit for bringing an appeal and that, accordingly, the appeal was likely to be deemed not to have been filed for the purposes of Article 23(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1). The Registry then invited the applicant to file comments or any supporting evidence regarding that irregularity within one month.
10      On 22 June 2020, the applicant lodged its written observations concerning the notification relating to the irregularity in connection with the payment of the appeal fee. It requested an extension of the time limit for paying that fee until 30 June 2020, or, in the alternative, the interruption of the appeal proceedings. In support of its requests, the applicant submitted, in essence, that there was an exceptional occurrence, within the meaning of Article 101(4) of Regulation 2017/1001, in Bulgaria, namely the COVID-19 pandemic, which also affected the applicant’s representative, who was under quarantine between 30 May and 27 June 2020. As a result, in accordance with Article 101(4) of Regulation 2017/1001, the applicable time limits should have been extended by the Executive Director of EUIPO until 30 June 2020. In addition, the applicant argued that there were capital control measures in place in Lebanon, where the company has its registered office, which prevented it from transferring funds outside that country and from paying the appeal fee directly to EUIPO. Such measures should, according to the applicant, lead to an interruption of proceedings pursuant to Article 106(1)(b) of Regulation 2017/1001.
11      On 23 June 2020, the Registry of the Boards of Appeal requested that the applicant specify whether it was submitting, in essence, an application for restitutio in integrum under the conditions provided for in Article 104 of Regulation 2017/1001.
12      On 29 June 2020, replying to the Registry’s letter referred to in paragraph 11 above, the applicant repeated its request for an extension of the time limit for paying the appeal fee and an interruption of proceedings and specified that it was not applying for restitutio in integrum. In that regard, the applicant stated that, if the Board of Appeal so directed, it would pay the fee due for that restitutio in integrum procedure. In addition, referring to Article 107 of Regulation 2017/1001, in the light of which Article 101(4) of Regulation 2017/1001 should, according to the applicant, be interpreted, the latter claimed that, if the Board of Appeal considered that it was not competent to grant the requested extension of the time limit pursuant to Article 101(4), it should communicate the applicant’s request to the Executive Director of EUIPO in order for the latter to adopt the corresponding decision.
13      On 6 July 2020, the applicant submitted its statement of grounds of appeal.
14      By decision of 24 August 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO declared that the appeal was deemed not to have been filed, under Article 68(1) of Regulation 2017/1001 and Article 23(3) of Delegated Regulation 2018/625, given that the appeal fee had not been paid within the prescribed period.
15      More specifically, it considered, in the first place, that it was not competent to take decisions under Article 101(4) of Regulation 2017/1001 and specified that the only solution for a party that has not complied with a time limit is to apply for restitutio in integrum, as provided for in Article 104 of Regulation 2017/1001. It added that Decision EX-20-4 of the Executive Director of EUIPO of 29 April 2020 (‘the decision of the Executive Director of 29 April 2020’), adopted on the basis of Article 101(4) of Regulation 2017/1001 and providing for an extension of certain time limits until 18 May 2020, was not applicable. According to the Board of Appeal, the time limits which had expired on 18 May 2020 or after that date did not come within the scope of that decision.
16      In the second place, according to the Board of Appeal, the late payment could have been considered to have been made within the time limit only if restitutio in integrum had been applied for under Article 104 of Regulation 2017/1001 and the conditions provided for by that provision had been fulfilled. It found that this was not the case because, first, the applicant had stated expressly that it had not submitted such an application and, second, the fee for the application for restitutio in integrum had not been paid. The Board of Appeal added that it is not its role to direct a party to submit an application or pay a fee.
17      In the third place, the Board of Appeal found that the applicant’s reliance on Article 106(1)(b) of Regulation 2017/1001 was unfounded. First, it observed that that provision referred to the applicant for or proprietor of an EU trade mark and did not extend to opponents or applicants for a declaration of invalidity. Second, it indicated that that provision required the existence of bankruptcy or similar proceedings against the applicant for or proprietor of a mark and that difficulties with banks were not sufficient. Third, it stated that the fee could have been paid, and was, moreover, eventually paid, at any time through any bank in the world. Fourth, it considered that the credibility of the applicant’s allegations regarding restrictive capital controls in Lebanon was undermined by the fact that it had been able to bring an action on 15 June 2020 before the Court against Decision R 877/2019-4 of the Board of Appeal (registered under case number T‑372/20), represented by the same lawyer, even though the applicant claims that that lawyer was personally unable to work and to represent it.
Forms of order sought
18      The applicant claims that the Court should:
–        annul the contested decision and order the Fourth Board of Appeal to deem the appeal before it as having been filed;
–        Order EUIPO and the other party to the proceedings before the Board of Appeal to pay the costs.
19      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
20      In support of its action, the applicant raises, in essence, two pleas in law alleging, first, infringement of Article 101(4) of Regulation 2017/1001 and, second, infringement of Article 106(1)(b) of that regulation, respectively.
The first plea in law, alleging infringement of Article 101(4) of Regulation 2017/1001
21      In essence, the applicant claims that EUIPO should have, in accordance with its requests of 22 and 29 June 2020, granted it an extension of the time limit under Article 101(4) of Regulation 2017/1001. If the Board of Appeal considered that it was not competent to grant the requested extension of the time limit pursuant to that article, it should have communicated the applicant’s request to the Executive Director of EUIPO in order for the latter to adopt the corresponding decision.
22      In the first place, the applicant sets out the arguments intended to establish that there was an exceptional occurrence within the meaning of Article 101(4) of Regulation 2017/1001. In that regard, it specifies, first, that Bulgaria had to deal with the COVID-19 pandemic, defined by the Bulgarian Government as an extraordinary epidemiological situation until 30 June 2020. Accordingly, the Bulgarian Government declared a state of emergency in the country from 13 March 2020 (which was subsequently extended until 30 June 2020) and the law firm of the applicant’s representative in Sofia (Bulgaria) was closed. Second, having regard to that situation, the applicant’s representative was placed under quarantine between 30 May and 27 June 2020. Third, in the decision of the Executive Director of 29 April 2020, the COVID-19 pandemic was defined as an exceptional occurrence within the meaning of Article 101(4) of Regulation 2017/1001. It follows, according to the applicant, that the time limit for paying the appeal fee should have been extended pursuant to Article 101(4) of Regulation 2017/1001 until the end of the exceptional occurrence, that is to say, 30 June 2020, considering the situation in Bulgaria, or 28 June 2020, considering the personal situation of the applicant’s representative.
23      In the second place, according to the applicant, the requested extension comes within the competence of the Board of Appeal, which should have interpreted Article 101(4) of Regulation 2017/1001, in accordance with the requirements of Article 107 of that regulation, in support of such competence. If the Board of Appeal did not consider itself to have competence, it should have referred the applicant’s request to the Executive Director of EUIPO in order for the latter to adopt the corresponding decision. However, by merely stating that it did not have competence, the Board of Appeal failed to reply to any of the applicant’s legal arguments. In so far as neither the Board of Appeal nor the Executive Director of EUIPO examined the merits of its request pursuant to Article 101(4) of Regulation 2017/1001, the procedure was not complied with.
24      In the third place, the applicant submits that the circumstances described, relating to the COVID-19 pandemic, do not come within the scope of Article 104 of Regulation 2017/1001, which is not applicable in the case of exceptional occurrences. It argues that it is apparent from a combined reading of Article 104(5), Article 105(2) and Article 68 of Regulation 2017/1001 that restitutio in integrum is not applicable to the prescribed time limit for paying appeal fees, that is to say, the time limit laid down in Article 68 of Regulation 2017/1001. It is for that reason that it specified that it was not applying for restitutio in integrum, although it requested the Board of Appeal, in the event that it considered that Article 104 of Regulation 2017/1001 was applicable and having regard to its communication of 23 June 2020, to direct it to pay the fee, so that it could do so. The applicant submits that it fell to the Board of Appeal to take a decision on that request.
25      EUIPO disputes the applicant’s arguments.
26      The first sentence of Article 68(1) of Regulation 2017/1001 provides that notice of appeal is to be filed in writing with EUIPO within two months of the date of notification of the decision. According to the second sentence of that article, the notice is to be deemed to have been filed only when the appeal fee has been paid. In accordance with Article 23(3) of Delegated Regulation 2018/625, the Board of Appeal is to declare an appeal as deemed not to have been filed where the appeal fee has been paid after the expiry of the time limit set out in the first sentence of Article 68(1) of Regulation 2017/1001.
27      In the present case, it is common ground between the parties that the Cancellation Division handed down its decision on 27 March 2020, that that decision was notified to the applicant on the same day and that, following the appeal it filed on 22 May 2020, the latter paid the appeal fee only on 24 June 2020, that is to say, after the expiry of the time limit of two months referred to in paragraph 26 above.
28      Article 101 of Regulation 2017/1001, that article being headed ‘Time limits’, provides, inter alia, as follows in paragraph 4:
‘If an exceptional occurrence, such as a natural disaster or strike, interrupts or interferes with proper communication from the parties to the proceedings to the Office or vice-versa, the Executive Director may determine that for parties to the proceedings having their residence or registered office in the Member State concerned or who have appointed a representative with a place of business in the Member State concerned all time limits that otherwise would expire on or after the date of commencement of such occurrence, as determined by him, shall extend until a date to be determined by him. When determining that date, he shall assess when the exceptional occurrence comes to an end. …’
29      In the contested decision, the Board of Appeal rightly considered that it was not competent to adopt decisions pursuant to Article 101(4) of Regulation 2017/1001. Under that provision, that competence is attributed to the Executive Director of EUIPO, who has discretion to grant extensions to time limits for all the parties to the proceedings. In the present case, it is common ground between the parties that the Executive Director of EUIPO did not take a decision by which the time limits for the relevant period, namely, a minima, that of 18 May 2020 to 24 June 2020, were extended. The decision of the Executive Director of 29 April 2020 thus provides for an extension of time limits until 18 May 2020, but does not relate to time limits that expired after that date.
30      Neither was the Board of Appeal required to refer the applicant’s requests of 22 and 29 June 2020 to the Executive Director of EUIPO in order for the latter to take the corresponding decision, and it itself did not have competence to apply Article 101(4) of Regulation 2017/1001. Such an obligation and such competence do not flow either from Article 107 of Regulation 2017/1001 or from the fact that the Board of Appeal did not take into consideration the reasons relied on by the applicant to explain the delay at issue.
31      The Board of Appeal correctly pointed out that the only solution for a party that has failed to comply with a time limit is to submit an application for restitutio in integrum.
32      In the context of the restitutio in integrum procedure, the applicant could have raised all of its substantive arguments, namely the fact that Bulgaria was facing an exceptional occurrence in view of the COVID-19 pandemic, also affecting its representative who was placed under quarantine, and the capital control measures then in place in Lebanon that prevented it from making payments outside that country.
33      Thus, having regard to the restitutio in integrum procedure that was available to the applicant, there was no need to interpret Article 101(4) of Regulation 2017/1001 in the light of Article 107 of that regulation and contrary to the wording of that first provision so as to recognise that the Board of Appeal has inherent competence to apply that same provision.
34      In the present case, it is not disputed that the applicant did not submit an application for restitutio in integrum.
35      The reasons why the applicant, on the contrary, expressly stated that it was not submitting such an application are unfounded. Contrary to its claim, restitutio in integrum is applicable to the prescribed time limit for paying appeal fees, that is, the time limit laid down in Article 68 of Regulation 2017/1001, whereas Article 104(5) of Regulation 2017/1001 precludes that remedy, inter alia, regarding the prescribed time limit for requesting the ‘continuation of proceedings’ under Article 105(1) of Regulation 2017/1001. In any event, in the present case, such a request for the continuation of proceedings cannot be granted where, in accordance with Article 105(2) of Regulation 2017/1001, the time limit laid down in Article 68 of Regulation 2017/1001 has not been complied with.
36      EUIPO was not required to direct the applicant to submit an application for restitutio in integrum so that it could argue the reasons for non-compliance with the time limit laid down in Article 68 of Regulation 2017/1001. In that regard, it is sufficient to note that there is no provision requiring EUIPO to inform a party of the procedures available to it under Article 104 of Regulation 2017/1001 and under Article 68 of Delegated Regulation 2018/625. Nor is it incumbent on it to advise that party to pursue any particular legal remedy (see, to that effect, judgment of 4 May 2018, Skyleader v EUIPO – Sky International (SKYLEADER), T‑34/17, not published, EU:T:2018:256, paragraph 43 and the case-law cited). Moreover, as EUIPO notes in its submissions, information for the parties is contained in EUIPO’s Guidelines, particularly in the event of expiry of a time limit.
37      It therefore cannot be said that the Board of Appeal did not take account of the substantive reasons given by the applicant to explain the delay at issue.
38      It follows from all the foregoing considerations that the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 106(1)(b) of Regulation 2017/1001
39      The applicant claims that the Board of Appeal infringed Article 106(1)(b) of Regulation 2017/1001 when it rejected its requests of 22 and 29 June 2020, made in the alternative, for the interruption of proceedings due to the ex lege restrictive capital control measures imposed by the Lebanese Government on all Lebanese bank accounts, including the applicant’s account.
40      In that regard, it observes that, as a company governed by Lebanese law, carrying out its activities in Lebanon, it is subject to legal restrictions relating to capital controls. More specifically, bank transfers between Lebanon and other countries are prohibited by Lebanese law and the applicant was therefore prevented, within the prescribed time limit, from transferring any amounts abroad, including for the purpose of paying the appeal fee required by EUIPO.
41      The applicant submits that that legal prohibition could amount to ‘legal reasons resulting from action taken against his property’ within the meaning of Article 106(1)(b) of Regulation 2017/1001, with the result that the interruption of proceedings is warranted. By contrast, the grounds in the contested decision for rejecting its request are contradictory and incorrect. First of all, contrary to what is apparent from the contested decision, the scope of that provision is not limited to ‘bankruptcy or like proceedings’. In addition, contrary to the Board of Appeal’s finding in the contested decision, the legal restrictions cannot be defined as ‘difficulties with banks’. The applicant goes on to claim that the Board of Appeal unlawfully required the applicant to hold bank accounts with banks outside the country where its registered office and the place where it is established are situated, namely Lebanon. Last, contrary to what is apparent from the contested decision, the credibility of the applicant’s claims relating to restrictive capital controls in Lebanon is not undermined by the fact that it was able to bring an action on 15 June 2020 before the Court against Decision R 877/2019-4 of the Board of Appeal. According to the applicant, the Board of Appeal failed to have regard to the fact that actions brought before the Court are free, which is the reason why it was not required to pay a fee to the Court relating to that action. In addition, the applicant specifies that the appeal fee was subsequently paid on its account by a third party, a company governed by Bulgarian law.
42      EUIPO disputes the applicant’s arguments.
43      Article 106 of Regulation 2017/1001, entitled ‘Interruption of proceedings’, provides, inter alia, as follows, in paragraph 1:
‘Proceedings before the Office shall be interrupted:
…
(b)      in the event of the applicant for, or proprietor of, an EU trade mark being prevented, for legal reasons resulting from action taken against his property, from continuing the proceedings before the Office;
…’
44      In the contested decision, the Board of Appeal found, in essence, that the applicant’s reliance on Article 106(1)(b) of Regulation 2017/1001 was unfounded in so far as that provision referred to the applicant for or proprietor of an EU trade mark and did not extend to opponents or applicants for a declaration of invalidity.
45      It is appropriate to confirm the Board of Appeal’s assessment in so far as the wording of Article 106(1) of Regulation 2017/1001 limits its scope to the applicant for or proprietor of an EU trade mark, while an application for a declaration of invalidity within the meaning of Article 59 of Regulation 2017/1001 can be submitted, in accordance with Article 63(1)(a) of the same regulation, by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which, under the terms of the law governing it, has the capacity in its own name to sue and be sued. It should, moreover, be noted that the applicant has not put forward any argument to call into question that assessment. In addition, in view of the restitutio in integrum procedure that was available to the applicant, there is no need to interpret Article 106(1)(b) of Regulation 2017/1001 in a manner that is contrary to its wording. As observed in paragraph 32 above, in the context of such a procedure, the applicant could have raised all of its substantive arguments, inter alia, that the capital control measures then in place in Lebanon prevented it from transferring funds outside that country.
46      In addition, for the sake of completeness, it must be noted that the measures relied on by the applicant, namely the ex lege restrictive capital controls imposed by the Lebanese Government on all bank accounts held with Lebanese banks, including the applicant’s account, are general in scope and therefore do not come within the scope of Article 106(1)(b) of Regulation 2017/1001, which specifically governs action taken against the property of the person referred to in that provision.
47      Accordingly, the Board of Appeal did not err in law in holding that the applicant’s reliance on Article 106(1)(b) of Regulation 2017/1001 was unfounded, without there being any need to examine the other arguments raised in the contested decision.
48      The second plea in law must therefore be rejected. As a result, as none of the pleas raised by the applicant is founded, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the second part of the applicant’s first head of claim.
Costs
49      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.
50      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Dermavita Company S.a.r.l. to pay the costs.
Collins
Kreuschitz
Csehi
Delivered in open court in Luxembourg on 6 October 2021.
E. Coulon
A. M. Collins
Registrar
President
*      Language of the case: English.