JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
4 May 2018 (*)
(EU trade mark — Revocation proceedings — EU figurative mark SKYLEADER — Failure to take into account evidence adduced before the Board of Appeal — Article 76(2) of Regulation (EC) No 207/2009 [now Article 95(2) of Regulation (EU) No 2017/1001] — Article 51(1)(a) of Regulation No 207/2009 [now Article 58(1)(a) of Regulation 2017/1001] — Rule 40(5) of Regulation (EC) No 2868/95 [now Article 19(1) of Delegated Regulation (EU 2017/1430])
In Case T‑34/17,
Skyleader a.s., established in Ústí nad Labem (Czech Republic), represented by K. Malmstedt, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Walicka, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Sky International AG, established in Zug (Switzerland), represented by J. Barry, Solicitor,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 21 November 2016 (Case R 805/2016-4), relating to revocation proceedings between Sky International and Skyleader,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, E. Bieliūnas and A. Marcoulli (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 20 January 2017,
having regard to the response of EUIPO lodged at the Court Registry on 25 April 2017,
having regard to the response of the intervener lodged at the Court Registry on 11 April 2017,
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 1 November 2007 the predecessor in title to Skyleader a.s., the applicant, 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 following figurative sign:
3        The goods in respect of which registration was sought are in Classes 12 and 41 under 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 12: ‘Vehicles; apparatus for locomotion by land, air or water’;
–        Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities’.
4        The mark at issue was registered on 14 October 2008. The transfer of that trade mark to the applicant was published in European Union Trade Marks Bulletin No 2008/050 of 15 December 2008.
5        On 24 June 2015 the intervener, Sky International AG, filed an application for revocation in respect of the mark at issue, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), on the ground that that mark had not been put to genuine use for an uninterrupted five-year period. That application was directed against all the goods and services covered by the mark at issue.
6        On 7 July 2015 the Cancellation Division, applying Rule 40(5) of Commission Regulation No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 19(1) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation No 207/2009 and repealing Regulations No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1)), set the applicant a time limit of three months to submit proof of genuine use of the mark at issue. That period expired on 13 October 2015.
7        On 12 October 2015 the applicant submitted a two-page fax to EUIPO seeking to challenge the application for revocation filed by the intervener (‘the fax of 12 October 2015’). In that fax, the applicant listed, via annexes, proof of genuine use of the mark at issue (‘proof of use’) that was to be sent to EUIPO by courier.
8        On 15 October 2015 EUIPO received a letter from the applicant, which included the proof of use referred to in the fax of 12 October 2015. Those documents amounted to 211 pages.
9        On 12 November 2015 the Cancellation Division informed the parties that the proof of use would not be taken into account since it was received outside the time limit set.
10      On 8 December 2015 the applicant argued, first, that the letter at issue had been faxed within the time limit set and, second, that that letter and the proof of use had been dispatched by an official post office of the Czech Republic on 7 October 2015 and that it could not influence the delivery time.
11      On 4 March 2016 the Cancellation Division upheld the intervener’s application and revoked the mark at issue in its entirety as from 24 June 2015 (‘the decision of the Cancellation Division’).
12      On 29 April 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 Cancellation Division.
13      By decision of 21 November 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. It considered that, pursuant to Rule 40(5) of Regulation No 2868/95, the applicant was required to provide proof of genuine use of the EU trade mark at issue within the time limit set. The peremptory nature of that time limit prevents EUIPO from taking account of evidence submitted late. The proof of use itself must arrive at EUIPO within the time limit set, not simply a letter listing it. In the case at hand, the original documents containing the proof of use were received outside the time limit set. Moreover, the applicant did not take up the opportunity it was given of requesting an extension of the time limit or the continuation of proceedings, or of filing a request for restitutio in integrum.
14      The Board of Appeal also highlighted that the applicant could not rely on the discretion of EUIPO provided for in Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001). Rule 40(5) of Regulation No 2868/95 specifies the legal consequence of a failure to provide proof of use within the time limit set, namely revocation of the mark at issue, without EUIPO needing to exercise the discretion provided for in Article 76(2) of Regulation No 207/2009. That principle is compatible with the case-law of the Court of Justice. EUIPO is supposed to exercise its discretion where proof of use has been submitted within the time limit set. However, that is not the case here. In those circumstances, the proof submitted late by the applicant could be disregarded by the Board of Appeal, without it having to exercise its discretion.
Forms of order sought by the parties
15      The applicant claims that the Court should:
–        declare the decision of the Cancellation Division and the contested decision void by virtue of Articles 263 and 264 TFEU;
–        order EUIPO and the intervener to pay the costs of the present proceedings, including those incurred during the proceedings before EUIPO.
16      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
17      The intervener contends that the Court should:
–        confirm the decision of the Board of Appeal;
–        order the applicant to pay the costs of the present proceedings, including those incurred during the proceedings before EUIPO.
Law
Subject matter of the action and admissibility
18      As a preliminary point, it must be noted that, by its first head of claim, the applicant requests the Court to ‘declare’ the decision of the Cancellation Division and the contested decision void by virtue of Articles 263 and 264 TFEU.
19      In that regard, it is appropriate to recall that the General Court has no jurisdiction, in the context of a review of legality on the basis of Article 263 TFEU, to issue declaratory judgments (see judgment of 22 May 2012, Olive Line International v OHIM — Umbria Olii International (O·LIVE), T‑273/10, not published, EU:T:2012:246, paragraph 19 and the case-law cited).
20      However, it is clear from the application that the applicant essentially invokes, inter alia, an infringement of Article 76(2) of Regulation No 207/2009 and of Rule 40(5) of Regulation No 2868/95. Moreover, the application states that the action, lodged under Article 263 TFEU, is an action ‘for annulment’.
21      Accordingly, it should be considered that the present action seeks to have annulled the contested decision as well as, in the context of the General Court’s power to alter decisions under Article 65(3) of Regulation No 207/2009 (now Article 72(3) of Regulation 2017/1001), the decision of the Cancellation Division.
Substance
22      In support of its action, the applicant alleges infringement of EU law and essential procedural requirements and violation of the principle of sound administration. In that context, the applicant submits that the Board of Appeal misinterprets Rule 40(5) of Regulation No 2868/95. It claims that that provision does not prevent the Board of Appeal from taking into account, pursuant to Article 76(2) of Regulation No 207/2009, documents submitted late. Such an interpretation would be too harsh and contrary to the principle of sound administration. Were such an interpretation of Rule 40(5) of Regulation No 2868/95 to be applied, the applicant would deem that rule to be unlawful in the light of Article 76(2) of Regulation No 207/2009. In addition, the applicant argues that it proved that there were special circumstances justifying the acceptance of proof of use submitted late. Moreover, that proof was merely supplementary proof, in so far as the initial proof had already been provided in the fax of 12 October 2015, which mentioned the name of the applicant and the website it operated. EUIPO did not take those elements into account. Furthermore, the Board of Appeal did not take into account the principles identified by the Court of Justice in the judgment of 13 March 2007, OHIM v Kaul (C‑29/05 P, EU:C:2007:162). Last, regarding the other means offered by the Board of Appeal for rectifying the late submission of proof of use, they were not notified to the applicant before the adoption of the contested decision, contrary to the principle of sound administration.
23      EUIPO and the intervener dispute the applicant’s arguments.
24      As a preliminary point, it must be noted that, in support of the pleas alleging infringement of EU law and essential procedural requirements and violation of the principle of sound administration, the applicant puts forward, in essence, two complaints. In a first complaint, the applicant considers the Board of Appeal to have misinterpreted and misapplied Rule 40(5) of Regulation No 2868/95, in the light inter alia of Article 76(2) of Regulation No 207/2009. In a second complaint, the applicant takes the view that EUIPO erred in not informing it of the means for rectifying the late submission of proof of use.
25      As regards the first complaint, it should be borne in mind that Article 76(2) of Regulation No 207/2009 provides that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.
26      It follows from the wording of that provision that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced out of time (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 42; of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 22, and of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 77).
27      In stating that EUIPO ‘may’ decide to disregard such evidence, that provision grants EUIPO a wide discretion to decide, while giving reasons for its decision in that regard, whether or not to take it into account (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 43; of 18 July 2013, New Yorker SHK Jeans v OHIM, C‑621/11 P, EU:C:2013:484, paragraph 23; and of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 78).
28      Regarding more specifically the submission of proof of genuine use of the mark in revocation proceedings brought on the basis of Article 51(1)(a) of Regulation No 207/2009, it should be pointed out that that regulation does not contain any provisions specifying the time period in which such proof must be adduced.
29      However, Rule 40(5) of Regulation No 2868/95 provides in that regard that EUIPO is to invite the proprietor of the EU trade mark to furnish proof of genuine use of the mark, within such period as it may specify. The rule further provides, in the second sentence, that if the proof of use of the mark is not provided within the time limit set by EUIPO, the mark must be revoked.
30      It follows that, where no proof of use of the mark concerned is submitted within the time limit set by EUIPO, the opposition must automatically be rejected by it. This is not required, however, where evidence of that use that is not entirely irrelevant is adduced within that time (see, to that effect, judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraphs 86, 87 and 98, and of 4 May 2017, Kasztantowicz v EUIPO — Gbb Group (GEOTEK), T‑97/16, not published, EU:T:2017:298, paragraph 29).
31      That also means that it remains possible to submit proof of use of the mark in addition to the evidence adduced within the time period set by EUIPO under Rule 40(5) of Regulation No 2868/95 after expiry of that time limit and that EUIPO is in no way prohibited from taking account of additional evidence which is submitted after that time (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM andcentrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 88; see also, to that effect, judgment of 21 July 2016, EUIPO v Grau Ferrer, C‑597/14 P, EU:C:2016:579, paragraphs 26 to 28).
32      In the present case, in essentially considering that, where no proof of use is submitted within the time limit, the mark at issue should be revoked of its own motion, the Board of Appeal based the contested decision on a correct interpretation of Rule 40(5) of Regulation No 2868/95, in the light of the principles recalled in paragraphs 25 to 31 above. The arguments advanced by the applicant, according to which the Board of Appeal misinterpreted Rule 40(5) of Regulation 2868/95, must therefore be rejected.
33      It is also appropriate to reject, for the same reasons, the applicant’s arguments relating to the principle of sound administration, assuming such a principle were applicable in the present case, since the Board of Appeal did not misinterpret Article 40(5) of Regulation No 2868/95.
34      Similarly, it is necessary to reject the applicant’s arguments that, if the Board of Appeal’s interpretation of Rule 40(5) were correct, that provision would be contrary to Article 76(2) of Regulation No 207/2009. The principles recalled in paragraphs 25 to 31 above, as derived from the case-law, follow from a combined reading, first, of Article 76(2) of Regulation No 207/2009 and, second, of the rules governing proof of genuine use of a trade mark in revocation proceedings. In particular, it may be inferred from a combined reading of Articles 15, 42(2), 51(1) and 57(2) of Regulation No 207/2009 (now Articles 18, 47(2), 58(1) and 64(2) of Regulation 2017/1001) that, in proceedings for revocation of a mark, it is for the proprietor of the mark to establish genuine use of that mark (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 63). In that context, Rule 40(5) of Regulation No 2868/95 seeks to implement, from a procedural point of view, the rule according to which it is for the proprietor to establish genuine use of the mark at issue. Accordingly, the principle whereby EUIPO must revoke a mark where no proof of use has been provided within the time limit set cannot be regarded as contrary to Regulation No 207/2009.
35      As regards the specific application of Rule 40(5) of Regulation No 2868/95 to the case at hand, also disputed by the applicant, it is settled that only the letter contained in the fax of 12 October 2015 was provided to the Cancellation Division within the time limit it had set.
36      In that regard, first, it should be pointed out that that letter consisted of two pages and was intended as a reply to the application for revocation lodged by the intervener. Second, it was explicitly mentioned that a copy of that letter was being sent by fax and that the original was being sent by post together with the annexes. Third, the applicant specified that it had put the mark at issue to genuine use and indicated that it sent EUIPO proof of use. Fourth, regarding proof of use, the applicant merely referred to a list of 19 annexes. Fifth, it is settled that the 19 annexes mentioned in the fax of 12 October 2015 were received by EUIPO on 15 October 2015, namely after the expiry of the time limit set for the applicant.
37      It follows from those elements that the fax of 12 October 2015 contained no proof of use of the mark at issue and that EUIPO received the proof of use after the expiry of the time limit set. The reasons given by the applicant to explain that lateness, particularly the alleged slowness of the Spanish postal service, cannot call that finding into question. For the sake of completeness, assuming that, by its arguments, the applicant had wished to rely, before EUIPO, on circumstances which could be categorised as unforeseeable circumstances or amount to force majeure or excusable error, they would, in any event, have included a subjective element involving the obligation, on the part of the party acting in good faith, to exercise all the care and diligence required of a normally well-informed operator to monitor the course of the procedure set in motion and to comply with the prescribed time limits (judgment of 6 December 2016, Groupe Go Sport v EUIPO — Design Go (GO SPORT), T‑703/15, not published, EU:T:2016:707, paragraph 68; see also, to that effect, judgment of 21 May 2014, Melt Water v OHIM (NUEVA), T‑61/13, EU:T:2014:265, paragraph 38 and the case-law cited). In the case at hand, however, there is nothing to suggest that that would be the case given, inter alia, the time and means available to the applicant providing it an opportunity to send proof of use within the time limit set or, at the very least, some of it. The Board of Appeal moreover noted, in paragraph 24 of the contested decision, that the applicant had not intended, let alone tried, to send proof of use by the fax of 12 October 2015. In addition, as the Board of Appeal correctly stated, the applicant refrained from using, inter alia, the restitutio in integrum procedure, provided for by Article 81 of Regulation No 207/2009 (now Article 104 of Regulation 2017/1001), and the continuation of proceedings procedure, provided for by Article 82 of Regulation No 207/2009 (now Article 105 of Regulation 2017/1001), both of which were available to it. It therefore cannot be said that the Board of Appeal did not take into account the reasons given by the applicant to explain the lateness in question. In that context, the revocation could be effected by EUIPO of its own motion.
38      The other arguments put forward by the applicant cannot call that conclusion into question.
39      So far as concerns the circumstance put forward that the letter sent by fax of 12 October 2015 mentioned the name of the applicant and the website it operated, it must first of all be pointed out that the applicant never indicated, in its letter, that there was proof of use contained in the body of the letter itself. On the contrary, it is apparent from that letter that proof of use, listed as annexes, was to be sent to EUIPO by post. Next, it should be recalled that, in proceedings for revocation of a mark, it is for the proprietor of the mark, and not EUIPO of its own motion, to establish genuine use of that mark (judgment of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 63). EUIPO cannot, therefore, be criticised for not investigating, in the body of that letter, whether proof of use might be contained therein.
40      For the sake of completeness, it should be recalled that, pursuant to Rule 22(3) and (4) of Regulation No 2868/95 (now Article 10(3) and (4) of Delegated Regulation 2017/1430), applicable to revocation proceedings by virtue of Rule 40(5) of the same regulation, the proof of use must relate to the place, time, extent and nature of use of the mark and is to be limited, in principle, to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements, and statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001). The sole purpose of the Annex 3 mentioned in the fax of 12 October 2015, which referred to a website, was, as is apparent from its title, to provide information about the applicant. That element is thus completely irrelevant for establishing the genuine use of the mark at issue, which is, moreover, a figurative mark. The same is true of the mere mention of the applicant’s name.
41      In view of all those elements, it is necessary to reject the arguments put forward by the applicant, in its first complaint, according to which the Board of Appeal misinterpreted and misapplied Rule 40(5) of Regulation No 2868/95.
42      As regards the second complaint, it should be examined whether, as the applicant claims, EUIPO violated the principle of sound administration in not informing the applicant of the means for rectifying the late submission of proof of use.
43      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 Articles 81 and 82 of Regulation No 207/2009 and Rule 71 of Regulation No 2868/95 (now Article 71 of Delegated Regulation 2017/1430), referred to by the Board of Appeal in the contested decision. Nor, a fortiori, is it incumbent on it to advise that party to pursue any particular legal remedy (see, by analogy, judgment of 23 March 2004, Ombudsman v Lamberts, C‑234/02 P, EU:C:2004:174, paragraph 80). Moreover, as EUIPO notes in its submissions, information for the parties is contained in the Guidelines for Examination in the Office, particularly in the event of expiry of a time limit. The applicant’s arguments must therefore be rejected.
44      In view of all those elements, it is necessary to reject as unfounded the complaints and, therefore, the pleas put forward by the applicant and, accordingly, to dismiss the action in its entirety.
Costs
45      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
46      In addition, the intervener has submitted that the applicant should be ordered to pay the costs incurred by the intervener in the administrative proceedings before EUIPO. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Cancellation Division. Consequently, the intervener’s request that the applicant, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before EUIPO can be allowed only in regard to the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Skyleader a.s. to pay the costs, including those necessarily incurred by Sky International AG for the purposes of the proceedings before the Board of Appeal of the European Union Intellectual Property Office (EUIPO).
Tomljenović
Bieliūnas
Marcoulli
Delivered in open court in Luxembourg on 4 May 2018.
E. Coulon
V. Tomljenović
Registrar
President
*      Language of the case: English.