JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

30 June 2021 ( )

(EU trade mark – Opposition proceedings – Application for EU word mark SKYLINERS – Earlier EU word marks SKY – Relative ground for refusal – Article 8(1)(b) and Article 41(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 46(1)(a) of Regulation (EU) 2017/1001) – Entitlement to file the opposition)

In Case T‑15/20,

Skyliners GmbH, established in Frankfurt am Main (Germany), represented by A. Renck and C. Stöber, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and V. Ruzek, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Sky Ltd, established in Isleworth (United Kingdom), represented by A. Zalewska, lawyer, and A. Brackenbury, Solicitor,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 29 October 2019 (Case R 798/2018‑4) relating to opposition proceedings between Sky and Skyliners,





THE GENERAL COURT (Sixth Chamber),

composed of A. Marcoulli, President, S. Frimodt Nielsen and J. Schwarcz (Rapporteur), Judges,

Registrar: A. Juhász-Tóth, Administrator,

having regard to the application lodged at the Court Registry on 10 January 2020,

having regard to the response of EUIPO lodged at the Court Registry on 25 March 2020,

having regard to the response of the intervener lodged at the Court Registry on 25 March 2020,

further to the hearing on 11 November 2020,

gives the following

Judgment

Background to the dispute

1 On 21 September 2015, the applicant, Skyliners GmbH, 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 SKYLINERS.

3 The goods and services in respect of which registration was sought are in Classes 16, 25, 35 and 41 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 2015/218 of 17 November 2015.

5 On 17 February 2016, the intervener, Sky plc, which became Sky Ltd on 19 December 2018, 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 all the goods and services covered.

6 The opposition was based, in particular, on the following earlier marks:

– the United Kingdom word mark SKY, filed on 20 October 2008 and registered on 7 September 2012 under No 2 500 604, covering, inter alia, goods and services in Classes 16, 25, 35 and 41;

– the EU word mark SKY, filed on 18 April 2008 and registered on 8 August 2012 under No 6870992, covering, inter alia, the same goods and services as those covered by the abovementioned earlier United Kingdom word mark SKY;

– the EU word mark SKY, filed on 2 March 2009 and registered on 22 May 2014 under No 8178436, covering, inter alia, the same goods and services as those covered by the abovementioned earlier United Kingdom word mark SKY.

7 The earlier United Kingdom trade mark SKY No 2 500 604 was registered in the name of Sky plc. By contrast, the two earlier EU marks SKY, No 6870992 and No 8178436 (‘the earlier EU marks’), were registered in the name of Sky International AG. In the form used to file the opposition, under the heading ‘Entitlement of opponent’, Sky plc stated, in relation to the earlier EU marks, that it was a licensed company, authorised by the proprietor for the purposes of Article 41(1)(a) of Regulation No 207/2009 (now Article 46(1)(a) of Regulation 2017/1001).

8 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(4) and (5) of Regulation No 207/2009. The opposition was directed against all the goods and services referred to in the trade mark application and was based on all the goods and services covered by the earlier marks.

9 On 3 March 2016, EUIPO informed the parties that the opposition had been found to be admissible, ‘at least in so far as it [was] based on the following earlier right: [EU trade mark No] 6870992’. It set the time limits for the opposition proceedings and a period within which Sky plc was required to provide evidence of the existence of earlier rights, namely, until 8 July 2016. Lastly, in an information sheet, EUIPO stated that, where the opposition was filed in the name of a licensee, that licensee had to prove its authorisation, by the proprietor of the marks at issue, to file an opposition.

10 On 7 July 2016, EUIPO granted Sky plc an extension of time until 8 September 2016.

11 On 5 March 2018, the Opposition Division upheld the opposition in its entirety on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 on the sole basis of the registration of the earlier United Kingdom word mark.

12 On 30 April 2018, the applicant brought an appeal before EUIPO against the decision of the Opposition Division.

13 On 27 June 2019, the intervener provided the Board of Appeal of EUIPO, as an annex to the observations on the appeal, with an extract from the register of United Kingdom Companies House concerning the change of its name from Sky plc to Sky Ltd and a copy of an updated version of the relevant sections of a licence agreement relating to the earlier EU marks, dated 30 November 2012, concluded between Sky International AG and British Sky Broadcasting Group plc, which is the intervener’s former name, used from 1 July 1994 to 21 November 2014 (‘the licence agreement’).

14 By decision of 29 October 2019 (‘the contested decision’), the Board of Appeal of EUIPO dismissed the appeal in its entirety, on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009. Unlike the Opposition Division, the Board of Appeal relied on the earlier EU marks. In addition, it considered that there was no need to examine the other earlier rights and the other grounds on which the opposition was based.

Forms of order sought

15 The applicant claims that the Court should:

– annul the contested decision;

– order EUIPO and the intervener to pay the costs.

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:

– reinstate and confirm the contested decision, ‘in that there is a likelihood of confusion for the reasons set out by [the Board of Appeal]’;

– ‘dismiss all the applicant’s arguments relating to procedural matters for the reasons set out in [its response], and confirm [the contested decision] in all such respects’;

– award it all the costs incurred in the present proceedings and in the proceedings before the Opposition Division and the Board of Appeal of EUIPO.

Law

18 In support of its action, the applicant relies, in essence, on two pleas in law. The first plea alleges infringement of Article 46(1)(a) of Regulation 2017/1001, read in conjunction with Rule 19(2) and Rule 15(2)(h)(iii) 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). In the applicant’s submission, EUIPO erred in finding that the intervener had established, to the requisite legal standard and within the time limit set by the Opposition Division, its entitlement to file the opposition.

19 The second plea alleges infringement of the third subparagraph of Rule 50(1) of Regulation No 2868/95, read in conjunction with Article 94(1) and Article 95(2) of Regulation 2017/1001. That plea comprises, in essence, two parts. As regards the first part of the second plea, the applicant maintains that the Board of Appeal had no discretion to take into consideration the evidence adduced for the first time on 27 June 2019. As regards the second part of the second plea, the applicant submits, on the basis of Article 94(1) of Regulation 2017/1001, that the Board of Appeal did not state any reasons for taking that evidence into consideration.

Preliminary observations

20 As a preliminary point, it should be recalled that, given the date on which the application for registration at issue was filed, namely 21 September 2015, which is decisive for the purposes of identifying the substantive law applicable, the present dispute is governed by the substantive provisions of Regulation No 207/2009, in its original version (judgment of 4 March 2020, EUIPO v Equivalenza Manufactory, C‑328/18 P, EU:C:2020:156, paragraph 2; see, also, judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the rules applicable to the procedure before the Opposition Division and before the Board of Appeal should be indicated.

21 As regards the procedure before the Opposition Division, the procedural provisions of Regulation No 2868/95 on opposition proceedings, namely Rules 15 to 20, are applicable to the present case, in accordance with a combined reading of the transitional provisions laid down in Article 81(2)(a) and (b) of Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation (EC) No 207/2009 and repealing Regulations (EC) No 2868/95 and (EC) No 216/96 (OJ 2017 L 205, p. 1) and in Article 82(2)(a) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation 2017/1430 (OJ 2018 L 104, p. 1).

22 Lastly, since the appeal before the Board of Appeal was filed on 30 April 2018, first, the relevant procedural provisions are those laid down in Regulation 2017/1001, which is applicable from 1 October 2017. Second, it was appropriate to apply, for a limited period up to 13 May 2018, the procedural provisions listed under Title V of Delegated Regulation 2017/1430, given that, in accordance with Article 81(2)(j) of that regulation, those provisions were applicable to appeals brought before the Boards of Appeal of EUIPO after 1 October 2017. That regulation was subsequently repealed on 13 May 2018 by Delegated Regulation 2018/625, of which, in particular, Article 82(2)(j), concerning the application of the rules applicable to proceedings before the Board of Appeal, must be emphasised.

23 Thus, it must be held, in particular, that it is Article 27(4) of Delegated Regulation 2018/625 that applies to proceedings before the Board of Appeal and not Rule 50 of Regulation No 2868/95, on which the applicant relied.

24 However, it should be recalled that, according to the case-law, the Court must interpret the pleas in law on which an applicant relies in terms of their substance rather than of their classification (see judgment of 6 June 2019, Torrefazione Caffè Michele Battista v EUIPO – Battista Nino Caffè (Battistino), T‑220/18, not published, EU:T:2019:383, paragraph 23 and the case-law cited). Accordingly, and also taking into account the fact that the provisions referred to in paragraph 23 above are, in essence, identical, it must be held that the applicant was referring, by its claims, to Article 27(4) of Delegated Regulation 2018/625.

The first plea in law, alleging infringement of Article 46(1)(a) of Regulation 2017/1001, read in conjunction with Rule 19(2) and Rule 15(2)(h)(iii) of Regulation No 2868/95

25 The applicant submits, in essence, that the intervener has not proved that it was entitled to file an opposition on the basis of the earlier EU marks, in accordance with Article 46(1)(a) of Regulation 2017/1001, read in conjunction with Rule 15(2)(h)(iii), Rule 19(1) and (2) and Rule 20(1) of Regulation No 2868/95. It claims that, notwithstanding EUIPO’s request addressed to it in its communication of 3 March 2016 (see paragraph 9 above), the intervener did not provide any evidence of such entitlement within the period prescribed by the Opposition Division, which expired on 8 September 2016. It was only before the Board of Appeal that it provided the licence agreement on 27 June 2019. Therefore, it is argued, the Board of Appeal erred in law by basing its finding ass to the existence of a likelihood of confusion on the earlier EU marks. The applicant submits that, in the absence of proof of entitlement to file an opposition, the opposition must be rejected as inadmissible at least in relation to the earlier EU marks that form the basis of the contested decision.

26 In the first place, EUIPO submits that, on 20 November 2015, that is to say, before the filing of the opposition, Sky International AG had requested EUIPO to register the intervener, then called Sky plc, in EUIPO’s register as licensee of several trade marks, including the earlier EU marks, in respect of the territory of the United Kingdom and Ireland. In response to a request from EUIPO of 1 December 2015, Sky International AG’s representative stated, on 16 February 2016, that the licence was exclusive. According to EUIPO, since the application for registration of a licence had been formally submitted through a representative common to the proprietor of the earlier EU marks and to the licensee, the filing of the licence agreement was not required, in accordance with Rule 33(1)(b) of Regulation No 2868/95 – EUIPO also refers to Article 26(1)(b) of Regulation 2017/1001. Consequently, that licence agreement was not annexed to the application for registration.

27 In the second place, EUIPO submits that, by a notification of 11 February 2016, that is to say, before the filing of the opposition, it confirmed the registration of the licence in its register to the common representative of SKY International AG and the intervener. The publication in the Community Trade Marks Bulletin took place on 15 February 2016.

28 In the third place, EUIPO submits that it cannot automatically be inferred from the mere existence of a licence, such as the exclusive licence entered in the register maintained by EUIPO, that the proprietor of the earlier EU marks authorised the intervener to file a notice of opposition, within the meaning of Article 41(1)(a) of Regulation No 207/2009.

29 In that regard, EUIPO distinguishes between rendering the opposition admissible, in accordance with Rule 17(2) of Regulation No 2868/95, and substantiating the standing to bring opposition proceedings. In the present case, since the intervener ticked the ‘authorised licensee’ box in the opposition form, the condition of admissibility is satisfied. However, an opposing party must also submit evidence of its entitlement to file the opposition, in accordance with Rule 19(2) of Regulation No 2868/95. EUIPO notes that none of the applicable provisions establishes that a licence, even an exclusive one, necessarily entails an authorisation to file an opposition. The fact that a licence has been entered in EUIPO’s register does not give rise to any presumption as to the extent and content of the contract. In the present case, the application to have the licence registered was not supported by the licence agreement itself and therefore does not, according to EUIPO, exempt the intervener from its obligation to prove that it is entitled to file an opposition.

30 In the fourth place, EUIPO submits, however, that neither Article 41(1)(a) of Regulation No 207/2009 nor Rule 19(2) of Regulation No 2868/95 sets out formal requirements concerning the submission of evidence showing that a licensee is authorised to file an opposition. The applicable principle, it argues, is that of the free evaluation of the evidence.

31 EUIPO claims that, in the present case, the proprietor’s consent may be inferred from a number of objective circumstances which led the Board of Appeal to find that the intervener was duly entitled to bring an opposition on the basis of, inter alia, the two earlier EU marks.

32 According to EUIPO, analogies may be drawn from the Court’s case-law relating to Article 15(2) of Regulation No 207/2009 (now Article 18(2) of Regulation 2017/1001), on the possibilities of inferring the proprietor’s consent to third-party use of its mark. Similarly, the present case is comparable to that covered by the second sentence of Article 22(3) of Regulation No 207/2009 (now Article 25(3) of Regulation 2017/1001), from which it is apparent that, in certain circumstances, the trade mark proprietor’s consent to the infringement proceedings brought by its exclusive licensee may be inferred from the proprietor’s silence, even in a context in which the proprietor of the licensed mark may be exposed to significant consequences, linked in particular with a possible counterclaim, that would exceed the foreseeable risks in administrative opposition proceedings. Thus, according to EUIPO, it must be held that, in opposition proceedings, there is implied consent by the licensor to the licensee’s action.

33 EUIPO contends that that interpretation is supported by the fact that, in opposition proceedings, the licensee does not need to be expressly authorised by the proprietor, although such authorisation is a legal requirement in trade mark renewal proceedings. As an example of implied authorisation, EUIPO highlights the case of an opposition filed jointly by the proprietor of a mark and its licensee.

34 EUIPO submits that, in the present case, five sets of objective circumstances support the conclusion that the proprietor’s authorisation was established even before the intervener cleared all doubts by producing the licence agreement before the Board of Appeal.

35 First, according to EUIPO, the proprietor of the earlier EU marks and the intervener, its licensee, are members of the same group of companies and are economically linked.

36 Second, the existence of close economic links is evident, since the two companies have the same representative before EUIPO. According to EUIPO, it is possible to presume that the proprietor of the marks in question is aware of any procedural steps taken by the common representative on behalf of the intervener.

37 Third, EUIPO submits that the application for registration of the licence was submitted through that common representative, who also filed the opposition. The consent of the proprietor of the earlier EU marks could be inferred from the fact that it did not object to that common representative’s deliberate choice to rely on those registrations. Moreover, any lack of consent might have meant that the common representative would incur professional liability and might have given rise to suspicions of professional misconduct. EUIPO’s obligation is limited to assuming that an approved representative is acting within the limits of the powers delegated to the representative by his or her principal (see Rules 76 and 77 of Regulation No 2868/95 (now Articles 74 and 60(3) of Delegated Regulation 2017/1430).

38 Fourth, EUIPO highlights the fact that the intervener is the proprietor of the United Kingdom registration of the word ‘sky’, which designates a large number of goods and services identical to those designated by the earlier EU marks. Since the intervener was free to file an opposition on the basis of that earlier United Kingdom registration, and since the earlier EU marks relate specifically to the United Kingdom and to Ireland, it is logical to infer that their proprietor had authorised the intervener to file an opposition on the basis of parallel marks.

39 Fifth, the applicant never challenged, either before the Opposition Division or in the appeal against the Opposition Division’s decision, the intervener’s entitlement to file the opposition during the administrative proceedings, a fact which, EUIPO argues, supports the view that it was common ground both for the parties and for the Board of Appeal that the proprietor had authorised the intervener to file an opposition on the basis of the earlier EU marks.

40 EUIPO contends that an overall examination of those circumstances enabled the Board of Appeal to conclude, beyond any reasonable doubt, that the intervener had been authorised by the proprietor of the earlier EU marks to file an opposition on the basis of those marks. In addition, EUIPO notes the differences between the present case and the case which gave rise to the judgment of 16 May 2019, KID-Systeme v EUIPO – Sky (SKYFi) (T‑354/18, not published, EU:T:2019:333). The latter case did not concern entitlement to file an opposition, since that point was irrelevant, as stated in paragraph 27 of that judgment. In addition, the arguments put forward by EUIPO in the present proceedings had not been raised in that case. According to EUIPO, the force of res judicata extends only to the grounds of the judgment which constitute the necessary support for its operative part and are therefore inseparable from it, which did not apply to paragraphs 25 and 26 of that judgment.

41 Lastly, EUIPO accepts that none of the arguments set out in paragraphs 30 to 40 above is included in the contested decision. That does not mean, however, according to EUIPO, that the Board of Appeal infringed the first sentence of Article 94(1) of Regulation 2017/1001. Moreover, the applicant has not claimed such an infringement in respect of the assessment of the authorisation by the proprietor of the marks in question, but only as regards the taking into account of the licence agreement. However, the Board of Appeal did not regard that contract as admissible. In any event, the Board of Appeal was under no obligation to state reasons as regards the intervener’s entitlement to file the opposition, since it reached the positive conclusion that that entitlement had been established. Conversely, the Board of Appeal would have been required to state reasons for its conclusion if the applicant had challenged the entitlement during the administrative proceedings.

42 The intervener submits, in essence, that it holds an exclusive licence for the earlier EU marks and that it correctly filed a notice of opposition on that basis, in accordance with Article 46(1)(a) of Regulation 2017/1001. In its view, the licence agreement was duly registered and was enforceable against third parties. It thus cannot be considered that no evidence of entitlement was submitted before the Opposition Division within the time limits prescribed or that the intervener was required to submit further evidence of the existence of the licence agreement. EUIPO was required of its own motion to take that fact into account. The copy of the licence agreement, presented for the first time before the Board of Appeal, merely supplemented the facts already demonstrated in the proceedings before the Opposition Division. Therefore, according to the intervener, the Board of Appeal was entitled to admit that agreement, in the exercise of its discretion. One of the reasons underlying that discretion of the Boards of Appeal is the principle of legal certainty and sound administration. It is necessary to exclude situations in which, as in the present case, if the intervener’s entitlement to file an opposition on the basis of the earlier EU marks were to be regarded as unfounded, the mark applied for would eventually be refused on the basis of the other earlier rights. The Board of Appeal may accept additional or supplementary, but not entirely new, evidence, even in substantiation matters. Thus, all the documents which the intervener submitted before the Board of Appeal, proving its entitlement to file the opposition, could have been taken into account.

43 In any event, according to the intervener, the question whether it was entitled has no impact on the outcome of the opposition proceedings, in so far as the opposition was also based on a number of earlier rights owned by the intervener, covering identical goods and services, and on the basis of which the opposition had to be upheld. Furthermore, the Opposition Division upheld the opposition on the basis of United Kingdom registration No 2 500 604, without that decision entailing any procedural errors. In its action, the applicant has not contested the finding of a likelihood of confusion between the earlier marks containing the word ‘sky’ and the mark applied for. A likelihood of confusion must, a fortiori, exist in relation to the other earlier marks which contain the element ‘skyline’. Thus, the annulment of the contested decision by the Court would unnecessarily prolong the proceedings without altering the final outcome.

44 Lastly, according to the intervener, the proceedings in the case leading to the judgment of 16 May 2019, SKYFi (T‑354/18, not published, EU:T:2019:333) differ from those in the present case on a number of points, in particular in that the opposing party in that case had not presented evidence of entitlement, not even at the stage of the proceedings before the Board of Appeal.

45 First, it must be borne in mind that, under Article 41(1)(a) of Regulation No 207/2009, within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of a trade mark may be given on the grounds that it may not be registered under Article 8 of that regulation. In respect of Article 8(1) and 8(5) of Regulation No 207/2009, notice of opposition may be given by the proprietors of earlier trade marks referred to in Article 8(2) of that regulation as well as by licensees authorised by the proprietors of those trade marks (see, to that effect, judgment of 16 May 2019, SKYFi, T‑354/18, not published, EU:T:2019:333, paragraph 21).

46 Second, it should be noted that, under Rule 15(2)(h)(iii) of Regulation No 2868/95, where the opposition is entered by a licensee or by a person who is entitled under the relevant national law to exercise an earlier right, the notice of opposition must contain a statement to that effect and indications concerning the authorisation or entitlement to file the opposition. Rule 19(2) of Regulation No 2868/95 adds that, within the period set by EUIPO, the opposing party must file proof of the existence, validity and scope of protection of his or her earlier mark or earlier right, as well as evidence proving his or her entitlement to file the opposition. Lastly, Rule 20(1) of that regulation provides that if, before the expiry of the period set by EUIPO under Rule 19(1) of that regulation, the opposing party has not proven the existence, validity and scope of protection of his or her earlier mark or earlier right, as well as his or her entitlement to file the opposition, the opposition must be rejected as unfounded (judgment of 16 May 2019, SKYFi, T‑354/18, not published, EU:T:2019:333, paragraph 22).

47 It follows from those provisions that a licensee who brings opposition proceedings against an EU trade mark must adduce evidence in order to establish that he or she possesses the authorisation or entitlement to file the opposition (judgment of 16 May 2019, SKYFi, T‑354/18, not published, EU:T:2019:333, paragraph 23).

48 In the present case, the intervener presented no proof of its entitlement to file the notice of opposition under Rule 19(2) of Regulation No 2868/95, whether before the set time limit passed or, moreover, at any time during the proceedings before the Opposition Division, notwithstanding the fact that, as is apparent from paragraph 9 above, EUIPO’s communication of 3 March 2016 had informed the intervener in clear terms that it was required to present material to prove (i) its capacity as licensee and (ii) that it was authorised by the proprietor of the earlier marks to file the notice of opposition (see, by analogy, judgment of 21 June 2017, GP Joule PV v EUIPO – Green Power Technologies (GPTech), T‑235/16, EU:T:2017:413, paragraph 46).

49 The intervener submits, however, in essence, that the licence agreement was duly registered with EUIPO and that it was enforceable against third parties. According to the intervener, it thus cannot be held that no evidence of entitlement had been submitted before the Opposition Division within the time limits prescribed or that the intervener was required to submit further evidence of the existence of the licence agreement. The Board of Appeal, it argues, then took into account the evidence submitted to it on 27 June 2019, supplementing the facts already established in the proceedings before the Opposition Division (see paragraphs 13 and 42 above).

50 In that regard, in the first place, it must be stated that the grant of an exclusive licence to the intervener by the proprietor of the earlier EU marks was entered in EUIPO’s register on 11 February 2016, without, however, the licence agreement itself having been annexed. As the applicant and EUIPO rightly submit, there is no legal basis for finding that the mere existence of an exclusive licence relating to a trade mark may be interpreted as entitling the licensee to file an opposition on that basis. The question whether a licence is exclusive or non-exclusive is not decisive in that regard, since the question of entitlement is an independent question, subject, on a case-by-case basis, to agreements between the proprietor and the licensee (see, by analogy, judgment of 12 May 2009, Jurado Hermanos v OHIM (JURADO), T‑410/07, EU:T:2009:153, paragraphs 21 to 24).

51 In the second place, EUIPO submits before the Court that evidence is freely adduced and that, in the present case, sufficient evidence enabled, as a whole, the Board of Appeal to take a position on the intervener’s authorisation by the proprietor of the earlier EU marks to file an opposition.

52 In order to argue that the proprietor’s consent may even be inferred in the present case from certain objective circumstances, by analogy, first, EUIPO refers to the Court’s case-law relating to Article 15(2) of Regulation No 207/2009, on the possibilities of inferring the proprietor’s consent to third-party use of its mark. However, on that point, it should be noted that that provision, which concerns use ‘with the consent’ of the proprietor of a mark, has been interpreted by the Court in the context of the judgment of 5 March 2019, Meblo Trade v EUIPO – Meblo Int (MEBLO) (T‑263/18, not published, EU:T:2019:134, paragraph 80), on the basis of very specific factors which, first, made it possible to demonstrate genuine cooperation between a production company and a distribution company which was economically linked to it and, second, constituted clear indications that the first of those companies, the proprietor of the mark in question, had knowledge of the use of its mark by the other company, without having claimed infringement of its right in respect of that mark. Even if that case-law were applicable to opposition proceedings, such explicit factors relating to knowledge of the conduct in question are absent from the present case.

53 More specifically, EUIPO seeks to infer, from the fact that the same representative acted before it both for the proprietor of the EU trade marks at issue and for the intervener, that the first of those companies was aware of the actions of the second, including as regards the fact that it had filed an opposition to registration of the mark at issue. Such reasoning must be rejected, since it disregards the number of undertakings which may be represented by the same professional and in no way makes it possible to ensure objectively, in a verifiable manner, that the proprietor of the marks in question has knowledge of the opposition filed by the intervener in the present case. In particular, the legislature did not provide for any exception, in such circumstances, to the obligation to prove authorisation. The reference made by EUIPO to Rules 76 and 77 of Regulation No 2868/95 concerning the authorisation of the representative and, more generally, the representation before EUIPO does not in any way alter the abovementioned finding.

54 Second, according to EUIPO, the present case may be compared to that covered by the second sentence of Article 22(3) of Regulation No 207/2009, concerning infringement proceedings brought by the holder of an exclusive licence. However, it must be stated that that provision differs from those relevant to the present case in that it expressly provides for ‘formal notice’ on the part of ‘the proprietor of the trade mark’, and it is only if, subsequently, that proprietor ‘does not himself bring infringement proceedings within an appropriate period’ that the licence holder may bring infringement proceedings. It is in that specific case that it may be inferred from the silence of the proprietor of the mark that it has authorised the infringement proceedings. By contrast, in the present case, Rule 15(2)(h)(iii) of Regulation No 2868/95 lays down an explicit obligation (‘The notice of opposition shall contain’), as regards an opposing party which is a licensee, to provide, inter alia, ‘a statement to that effect and indications concerning the authorisation or entitlement to file the opposition’.

55 In those circumstances, even though EUIPO submits that it is possible to infer from the silence of the proprietor of a trade mark that it authorised a licensee’s infringement proceedings, it should be noted, in the present case, that such a ‘formal notice’, as contemplated in paragraph 54 above, had not been provided for by the legislature for the purposes of filing an opposition.

56 Third, as regards EUIPO’s reference, in paragraph 62 of its response, to Rule 15 of Regulation No 2868/95 not preventing an opposition from being jointly filed by both the proprietor of an earlier mark and its licensee, it is in no way relevant in the present case, in the absence of a joint opposition.

57 Since the factors analysed in paragraphs 51 to 56 above, based on alleged analogies with the case-law cited by EUIPO, do not allow the inference to be drawn that the proprietor consented to the opposition filed by the intervener, it is still necessary to assess the objective elements on which EUIPO relies before the Court, maintaining that the Board of Appeal inferred from these that such consent existed (see paragraphs 35 to 39 above).

58 First of all, it should be noted that, as the applicant submitted in its request for a hearing, in which it argued that it had no means of acquainting itself with such ‘objective’ elements, it is in no way apparent from the contested decision that the Board of Appeal took account of all or some of those elements.

59 It should be noted that, in the contested decision, no implicit or explicit reference is made to the objective elements on which EUIPO relies before the Court to demonstrate that the intervener was entitled to file an opposition on the basis of the earlier EU marks. The contested decision does not even set out the reasons why the Board of Appeal, in examining the opposition filed by the intervener in relation to the earlier EU marks, departed from the choice of the Opposition Division to base its examination solely on the earlier United Kingdom trade mark.

60 In that regard, although EUIPO submits that it was not necessary for the Board of Appeal to rule expressly on whether the intervener had been entitled to file an opposition in the absence of any criticism by the applicant, it must be held that it was for the Board of Appeal of its own motion to assess that issue, in accordance with the rules set out in paragraphs 45 to 47 above. Admittedly, it is clear from the communication of 3 March 2016 (see paragraph 9 above) that EUIPO had informed the intervener of the need to provide evidence that it was entitled to file an opposition. However, the file of the proceedings before EUIPO does not contain any additional evidence from which it may be inferred that any of the competent bodies took a position on that issue.

61 Furthermore, the fact that the applicant never disputed, in the administrative proceedings, the intervener’s entitlement to file an opposition, may be regarded as comprehensible in the light of the conduct of the proceedings before EUIPO, taking into account, first, the fact that it was apparent from the communication of 3 March 2016 that the administration had itself required the intervener to prove that entitlement and, second, that it was only at the stage of the contested decision that the applicant had been able to take note of the fact that the Board of Appeal had relied solely on the earlier EU marks for the purposes of assessing whether there was a likelihood of confusion.

62 Moreover, in any event, as regards the analysis of the relevance of the various objective factors, first, in respect of EUIPO’s claims that the proprietor of the earlier EU marks and the intervener, its licensee, were members of the same group of companies and that they were economically linked, that does not in any way exempt the intervener from the obligation to prove its entitlement to bring opposition proceedings. It is not possible to rely on the contrary premiss, in the absence of any legislative basis. As stated in paragraph 53 above, that same reasoning applies to the fact that the two companies have the same representative before EUIPO, who filed the application for registration of the licence.

63 Second, as regards EUIPO’s claims that the intervener is the proprietor of a United Kingdom registration of the word ‘sky’ for goods and services similar to those covered by the earlier EU marks, it cannot be inferred from this that the proprietor of those marks authorised the intervener to file an opposition on the basis of those marks. Furthermore, it is common ground that the contested decision was not based on that United Kingdom registration, unlike the decision of the Opposition Division.

64 Therefore, the information in EUIPO’s administrative file in the present proceedings and the other objective elements raised by EUIPO, other than the licence agreement which was provided by the intervener for the first time only before the Board of Appeal, were insufficient to establish the intervener’s entitlement to file an opposition, in its own name, on the basis of the earlier EU marks.

65 In those circumstances, the outcome of the proceedings depends on the treatment given by the Board of Appeal to the licence submitted on 27 June 2019, which is the subject of the applicant’s second plea in law. Furthermore, it is in that context that account will have to be taken of the intervener’s other claims, raised in response to the first plea in law, in the light of the overlap between the questions raised.

66 The first plea in law is upheld in so far as it relates to the absence of evidence, other than the licence submitted for the first time before the Board of Appeal on 27 June 2009, which would have made it possible to prove the intervener’s entitlement to raise an opposition on the basis of the earlier EU marks, in breach of Article 46(1)(a) of Regulation 2017/1001, read in conjunction with Rule 19(2) and Rule 15(2)(h)(iii) of Regulation No 2868/95.

The second plea in law, alleging infringement of the third subparagraph of Rule 50(1) of Regulation No 2868/95, interpreted as alleging infringement of Article 27(4) of Delegated Regulation 2018/625, read in conjunction with Article 94(1) and Article 95(2) of Regulation 2017/1001

67 In the first place, the applicant maintains that, if the Board of Appeal took into consideration the licence agreement submitted for the first time before it on 27 June 2019, taking the view that the late submission of an entitlement by the intervener was still possible, despite the clear wording of Rules 19 and 20 of Regulation No 2868/95, it infringed Article 27(4) of Delegated Regulation 2018/625 and Article 95(2) of Regulation 2017/1001. According to the applicant, the Board of Appeal erred in taking that evidence into consideration and therefore exercised its discretion wrongly. Since the licence agreement was in force during the proceedings before the Opposition Division, there was no valid reason for submitting proof of entitlement out of time, notwithstanding EUIPO’s formal request of 3 March 2016.

68 In the second place, the applicant submits that the Board of Appeal failed to provide reasons for taking into account the documents provided on 27 June 2019, including the licence agreement.

69 EUIPO contends, in essence, that the second plea is unfounded, since the Board of Appeal did not rule on the observations submitted by the intervener on 27 June 2019. According to EUIPO, since the contested decision was not based on the licence agreement which was submitted for the first time before it, there was no reason for the Board of Appeal to determine whether or not that evidence should be accepted under Article 95(2) of Regulation 2017/1001 and Article 27(4) of Delegated Regulation 2018/625. EUIPO submits that the information in the administrative file in the present proceedings, other than the licence agreement, was sufficient to establish the intervener’s entitlement to file an opposition on the basis of the earlier EU marks. As it did not use its discretionary power to accept documents submitted outside the time limits set by EUIPO, the Board of Appeal did not, according to EUIPO, have to state the reasons why the licence agreement was admissible or inadmissible.

70 The intervener submits that sufficient evidence was provided before the Opposition Division as to the entitlement to file an opposition on the basis of the earlier EU marks. The Board of Appeal was, it argues, therefore fully entitled to take into account the additional evidence submitted before it. The statement of reasons on which the contested decision is based allowed the applicant to understand the reasons for the contested decision. According to the intervener, there was no need to elaborate on the entitlement to file an opposition, since the applicant did not raise that argument before the Board of Appeal, or previously, before the Opposition Division. Even if the Court were to find that the Board of Appeal did not provide sufficient reasons in that regard, such a procedural mistake could not lead to the annulment of the contested decision. In accordance with well-established principles, a procedural irregularity will entail the annulment of a decision only if it is shown that, had it not been for that irregularity, the contested decision might have been substantively different (judgment of 8 June 2005, Wilfer v OHIM (ROCKBASS), T‑315/03, EU:T:2005:211, paragraph 33). According to the intervener, that is not the case. Lastly, the intervener repeats all of the observations which it submitted before EUIPO.

71 From the outset, it should be noted that, as was found in the analysis of the first plea, the various objective elements referred to by EUIPO before the Court (see paragraphs 35 to 39 above) do not make it possible to establish the intervener’s entitlement to raise a notice of objection on the basis of the earlier EU marks.

72 Accordingly, it is only if the Board of Appeal had relied on the licence agreement submitted to it on 27 June 2019, and provided that it had correctly exercised its discretion in relation to that evidence in accordance with Article 27(4) of Delegated Regulation 2018/625, read in conjunction with Article 95(2) of Regulation 2017/1001, that it could be held that it had correctly assessed that entitlement.

73 In that regard, it should be noted that Article 95(2) of Regulation 2017/1001 is worded as follows: ‘2. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.’

74 Article 27(4) of Delegated Regulation 2018/625 is worded as follows:

‘4. In accordance with Article 95(2) of Regulation … 2017/1001, the Board of Appeal may accept facts or evidence submitted for the first time before it only where those facts or evidence meet the following requirements:

– they are, on the face of it, likely to be relevant for the outcome of the case; and

– they have not been produced in due time for valid reasons, in particular where they are merely supplementing relevant facts and evidence which had already been submitted in due time, or are filed to contest findings made or examined by the first instance of its own motion in the decision subject to appeal.’

75 Even before assessing the merits of the contested decision in the light of the applicant’s criticisms based on the provisions set out in paragraphs 73 and 74 above, it should be noted that, under the first sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO must state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. Its purpose is twofold: first, to enable the persons concerned to ascertain the reasons for the measure taken in order to defend their rights and, second, to enable the EU Courts to exercise their power to review the legality of the decision. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question as to whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (see, to that effect, judgment of 21 October 2004, KWS Saat v OHIM, C‑447/02 P, EU:C:2004:649, paragraphs 63 to 65).

76 Furthermore, the duty to state reasons does not require the Boards of Appeal to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them. It is sufficient to set out the facts and the legal considerations having decisive importance in the context of the decision (judgment of 15 January 2015, MEM v OHIM (MONACO), T‑197/13, EU:T:2015:16, paragraph 19).

77 In addition, the reasoning may be implicit, on condition that it enables the persons concerned to know the reasons for the Board of Appeal’s decision and provides the competent Court with sufficient material for it to exercise its power of review (see judgment of 12 March 2020, Maternus v EUIPO – adp Gauselmann (Jokers WILD Casino), T‑321/19, not published, EU:T:2020:101, paragraph 17 and the case-law cited).

78 Finally, the duty to state reasons is an essential procedural requirement which must be distinguished from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, the latter will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect (see judgment of 26 September 2017, La Rocca v EUIPO (Take your time Pay After), T‑755/16, not published, EU:T:2017:663, paragraph 42 and the case-law cited).

79 In the present case, it must be stated that, contrary to the intervener’s assertions, there is nothing in the reasoning of the contested decision to support its claim that the Board of Appeal took account of the licence agreement submitted on 27 June 2019. As the contested decision is silent on the issue of the intervener’s entitlement to raise an opposition on the basis of the earlier EU marks, and as it does not refer in any way to that licensing agreement or, a fortiori, to one of its clauses from which such entitlement might have been derived, the Court cannot presume that the Board of Appeal took it into account and move directly to the analysis of whether that decision is lawful. Since a different approach is also not apparent from the context of the contested decision, it is impossible for the Court to assess the merits of the contested decision on that point (see paragraphs 75 to 78 above).

80 That is all the more so the case since, should the Board of Appeal have relied on the licence agreement, it would necessarily have had to state, in accordance with the first sentence of Article 94(1) of Regulation 2017/1001, the reasons which led it to take the view that the provision laid down in Article 27(4)(b) of Delegated Regulation 2018/625 was satisfied. First, such a statement of reasons would have had to include, inter alia, an answer to the question as to which relevant facts and evidence which had already been submitted by the intervener in good time were merely supplemented by the licence agreement. Second, the Board of Appeal would have had to comment, if necessary, on possible valid reasons allowing the intervener to submit the licence agreement at a late stage of the proceedings before the Board of Appeal, even though that agreement dated from 2012, as is apparent from the file, and EUIPO had already requested the intervener, by the communication of 3 March 2016, to prove its entitlement to file an opposition on the basis of the earlier EU marks.

81 Having regard to those matters, it must be concluded that, in breach of the first sentence of Article 94(1) of Regulation 2017/1001, the contested decision contains no statement of reasons making it possible to understand, in general, the basis on which the Board of Appeal found that the intervener was entitled to file an opposition based on the earlier EU marks and, more particularly, what its procedural approach was in regard to the licence agreement presented on 27 June 2019, or even its reasons for implicitly accepting that evidence as a basis proving entitlement.

82 Since it has already been found, in the analysis of the applicant’s first plea, that the Board of Appeal could not rely on the objective elements raised by EUIPO before the Court (see paragraphs 35 to 39 above), as those elements do not form a basis for the intervener’s entitlement to file an opposition based on the earlier EU marks, the lack of reasoning established in paragraph 81 above is not a simple procedural irregularity with no bearing on the actual outcome of the dispute, contrary to what the intervener claims (see paragraph 70 above).

83 It is clear from settled case-law that, in an action before the EU Courts against the decision of a Board of Appeal of EUIPO, EUIPO is required, under Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001), to take the measures necessary to comply with judgments of the EU Courts (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).

84 In so far as the contested decision is based exclusively on the likelihood of confusion between the mark applied for and the earlier EU marks, it is not possible to predict the outcome of the proceedings before EUIPO, in particular if the Board of Appeal were to base its new decision on the registration of the earlier United Kingdom trade mark. In addition, it cannot be ruled out that the applicant may raise relevant procedural claims concerning that United Kingdom trade mark registration. Furthermore, it should be noted that the failure to take into account the registration of the earlier United Kingdom trade mark in the contested decision distinguishes the present proceedings from those which gave rise to the judgment of 16 May 2019, SKYFi (T‑354/18, not published, EU:T:2019:333).

85 Lastly, as regards the intervener’s assertion that it repeats all of the observations which it made at every stage of the opposition proceedings before EUIPO, such a reference must be declared inadmissible. Pursuant to Article 21 of the Statute of the Court of Justice of the European Union and Article 177(1)(d) of the Rules of Procedure of the General Court, the application must contain a summary of the pleas in law on which it is based. It is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents annexed to it, a general reference to other documents cannot compensate for a failure to set out the essential elements of the legal argument, which must, under the provisions recalled above, appear in the application itself (see judgment of 8 July 2020, Scorify v EUIPO – Scor (SCORIFY), T‑328/19, not published, EU:T:2020:311, paragraph 20 and the case-law cited). That case-law is applicable, by analogy, to the intervener’s response.

86 Likewise, it is not for the Court to assume the role of the parties by seeking to identify the relevant material in the documents to which they refer (see judgment of 8 July 2020, SCORIFY, T‑328/19, not published, EU:T:2020:311, paragraph 21 and the case-law cited).

87 In the light of all of the foregoing, the applicant’s second plea must be upheld and the action dismissed in its entirety, without it being necessary to comment on the admissibility of the intervener’s heads of claim.

Costs

88 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. In the present case, EUIPO and the intervener have been unsuccessful and the applicant has applied for costs to be awarded against them. Consequently, EUIPO and the intervener must be ordered to pay jointly, in addition to their own costs, all of the costs incurred by the applicant in the present proceedings.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 October 2019 (Case R 798/2018‑4);

2. Orders EUIPO and Sky Ltd to bear their own costs and, in addition, to pay jointly those incurred by Skyliners GmbH.

Marcoulli Frimodt Nielsen Schwarcz

Delivered in open court in Luxembourg on 30 June 2021.

E. Coulon S. Papasavvas