ORDER OF THE GENERAL COURT (Fifth Chamber)
20 June 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark nailicin — Earlier Benelux word mark NAILCLIN — Relative ground for refusal — Copy of the certificate of registration of the earlier mark — Rule 19(2)(a)(ii) of Regulation (EC) No 2868/95 (now Article 7(2)(a)(ii) of Delegated Regulation (EU) 2017/1430) — Taking into account of a document submitted in conjunction with the notice of opposition — Rule 19(4) Regulation No 2868/95 (now Article 7(5) of Delegated Regulation 2017/1430) — Action manifestly lacking any foundation in law)
In Case T‑587/17,
Unigroup ApS, established in Lyngby (Denmark), represented by M. Rijsdijk, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Rajh, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Pronova Laboratories BV, established in Muiden (Netherlands), represented by S. Wertwijn, lawyer,
ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 9 June 2017 (Case R 2359/2016-5), relating to opposition proceedings between Pronova Laboratories and Unigroup,
THE GENERAL COURT (Fifth Chamber),
composed of D. Gratsias, President, A. Dittrich (Rapporteur) and P.G. Xuereb, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 28 August 2017,
having regard to the response of EUIPO lodged at the Court Registry on 20 November 2017,
having regard to the response of the intervener lodged at the Court Registry on 14 September 2017,
makes the following
Order
Background to the dispute
1        On 18 May 2015, the applicant, Unigroup ApS, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the word sign nailicin.
3        The goods in respect of which registration was sought are in Classes 3 and 5 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.
4        The trade mark application was published in Community Trade Marks Bulletin No 2015/096 of 27 May 2015.
5        On 21 August 2015, the intervener, Pronova Laboratories BV, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods covered by the mark.
6        The opposition was based, inter alia, on the Benelux word mark NAILCLIN, registered on 11 April 2011 with the number 894557 for goods in Classes 3, 5 and 8 (‘the earlier Benelux mark’).
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        As an annex to the notice of opposition, the intervener submitted, inter alia, a copy of a certificate of registration for the earlier Benelux mark, accompanied by an English translation of the list of goods referred to in paragraph 6 above.
9        On 25 October 2016, the Opposition Division upheld the opposition in respect of all the goods at issue on the ground that there was a likelihood of confusion between the marks at issue and rejected the application for registration.
10      On 16 December 2016, 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.
11      By decision of 9 June 2017 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. It found that there was a likelihood of confusion between the marks at issue. In that context, it found, inter alia, that the copy of the certificate of registration of the earlier Benelux mark that the intervener had annexed to the notice of opposition was sufficient to prove the existence, validity and scope of protection of that mark. The Board of Appeal took the view that the intervener was not required to produce such a copy again in the adversarial part of the opposition proceedings.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        declare the earlier Benelux mark unsubstantiated and remit the matter to the Opposition Division or Board of Appeal of EUIPO;
–        order EUIPO to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
14      The intervener contends that the Court should:
–        dismiss the action;
–        uphold the contested decision;
–        order the applicant to pay the costs.
Law
15      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the General Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
16      In the present case, the Court, considering that it has sufficient information from the documents in the file, has decided to give a decision without taking further steps in the proceedings.
17      In support of its action, the applicant relies on a single plea in law alleging that the intervener had failed to establish the existence, validity and scope of the earlier Benelux mark in accordance with Rule 19(2)(a)(ii) 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), as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (‘Regulation No 2868/95, as amended’) (now Article 7(2)(a)(ii) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Commission Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)).
18      The applicant does not dispute that, in conjunction with the notice of opposition, the intervener did indeed produce the document referred to in that provision, namely a copy of the certificate of registration of the earlier Benelux mark. However, it submits that, as the intervener failed to produce that document during the adversarial phase of the opposition proceedings, within the time limit set out in Rule 19(1) of Regulation No 2868/95, as amended (now Article 7(1) of Delegated Regulation 2017/1430), EUIPO should not have taken it into consideration.
19      EUIPO and the intervener dispute the applicant’s arguments. EUIPO contends, inter alia, that the applicant’s second head of claim is inadmissible.
20      As a preliminary point, it must be noted that, pursuant to Rule 15(2)(b)(i) of Regulation No 2868/95, as amended (now Article 2(2)(b)(i) of Delegated Regulation 2017/1430), the opposition notice must, inter alia, clearly identify the earlier mark on which the opposition is based. If it is a registered Benelux mark, such document must, inter alia, specify that the mark is registered in Benelux and state the registration number. However, that document need not necessarily also include a copy of the certificate of registration of that mark.
21      Rule 15(3)(b) of Regulation No 2868/95, as amended (now Article 2(4) of Delegated Regulation 2017/1430), provides that, in addition to the elements that it must contain, the notice of opposition may also contain a reasoned statement setting out the main facts and arguments on which the opposition relies, and evidence to support the opposition.
22      Rule 18(1) of Regulation No 2868/95, as amended (now Article 6(1) of Delegated Regulation 2017/1430), states that, where the opposition is found to be admissible, EUIPO is to send a communication to the parties informing them that the opposition proceedings are to be deemed to commence two months after receipt of the communication. That period may be extended up to a total of 24 months if both parties submit requests for such an extension before the period expires.
23      Pursuant to Rule 19(1) of Regulation No 2868/95, as amended, EUIPO is to give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3) of that regulation, within a time limit specified by it and which is to be at least two months starting on the date on which the opposition proceedings are to be deemed to commence in accordance with Rule 18(1) of that regulation.
24      Rule 19(2)(a)(ii) of Regulation No 2868/95, as amended, provides that in order to prove the existence, validity and scope of protection of a registered Benelux mark, the opposing party is to submit a copy of the certificate of registration of that mark within the time limit referred to in paragraph 1 of that rule.
25      Pursuant to Rule 19(4) of Regulation No 2868/95, as amended (now Article 7(5) of Delegated Regulation 2017/1430), EUIPO is not to take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by EUIPO.
26      Rule 20(1) of Regulation No 2868/95, as amended (now Article 8(1) of Delegated Regulation 2017/1430) provides, inter alia, that if until expiry of the period referred to in Rule 19(1) of that regulation the opposing party has not proven the existence, validity and scope of protection of his earlier mark, the opposition is to be rejected as unfounded.
27      Contrary to what is put forward by the applicant, it cannot be deduced from the provisions referred to above that the copy of the certificate of registration of the earlier Benelux mark that the intervener had submitted in conjunction with the notice of opposition could not be taken into consideration by the Board of Appeal.
28      It is true that Rule 19(1) of Regulation No 2868/95, as amended, provides that, after the settlement stage established in Rule 18(1) of that regulation, EUIPO is to specify a time limit that must be at least two months starting on the date on which the opposition proceedings are to be deemed to commence, and Rule 19(2)(a)(ii) of that regulation provides that, where the earlier mark on which the opposition is based is a registered Benelux mark, the opposing party is to produce a copy of the certificate of registration of that mark within that period. It must also be noted that, pursuant to Rule 19(4) of that regulation, EUIPO does not take into account documents that have not been submitted within the time limit.
29      However, those provisions cannot reasonably be interpreted as preventing the Board of Appeal from taking into account a copy of a certificate of registration of an earlier mark that has already been submitted in conjunction with a notice of opposition.
30      Rule 19(4) of Regulation No 2868/95, as amended, must be read in context and therefore in the light of, first, Rule 15(3)(b) of that regulation, from which it is apparent that the notice of opposition may also contain evidence supporting the opposition and, second, Rule 19(1) of that regulation, from which it is apparent that, during the adversarial phase starting on the date on which the opposition proceedings are to be deemed to commence until the time limit specified by EUIPO pursuant to that provision, the opposing party may complete evidence already submitted in accordance with Rule 15(3) of Regulation No 2868/95, as amended. In view of those provisions, Rule 19(4) of that regulation must be interpreted as referring to documents that are not submitted before the time limit specified by EUIPO pursuant to Rule 19(1) of that regulation. However, it cannot reasonably be interpreted as preventing documents intended to establish the existence, validity and scope of protection of an earlier mark that have already been submitted in conjunction with the notice of opposition from being taken into account by EUIPO.
31      That interpretation of Rule 19 of Regulation No 2868/95, as amended, is confirmed by Rule 20(1) of that regulation. The latter provision simply provides that where the opposing party has not proven the existence, validity and scope of protection of his earlier mark before the expiry of the period referred to in Rule 19(1) of that regulation, the opposition is to be rejected as unfounded. By contrast, it must be noted that Rule 20(1) does not apply to documents that have already been submitted in conjunction with the notice of opposition.
32      In that context, it must also be pointed out that an interpretation of the provisions referred to above, according to which EUIPO may take into account a copy of a certificate of registration of an earlier mark that has already been submitted in conjunction with the notice of opposition, does not adversely affect the interests of the applicant, who, in any event, has the option of challenging the validity of that notice or the probative value of the documents submitted before the competent bodies of EUIPO.
33      In the light of the foregoing, the applicant’s single plea in law must be rejected as manifestly lacking any foundation in law.
34      In such circumstances, the first and second heads of claim must be dismissed as manifestly lacking any foundation in law, without it being necessary to adjudicate on the admissibility of the second head of claim.
Costs
35      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, it must be ordered to pay the costs incurred by EUIPO and by the intervener, in accordance with the forms of order sought by those parties.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Unigroup ApS is ordered to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by Pronova Laboratories BV.
Luxembourg, 20 June 2018.
E. Coulon
D. Gratsias
Registrar
President
*      Language of the case: English.