Judgment of the General Court (Ninth Chamber) of 8 September 2021 –

Qx World v EUIPO – Mandelay (EDUCTOR)

(Case T‑85/20)

(EU trade mark – Invalidity proceedings – EU word mark EDUCTOR – Earlier non-registered mark EDUCTOR – Article 53(1)(b) of Regulation (EC) No 207/2009 (now Article 60(1)(b) of Regulation (EU) 2017/1001) – Article 8(3) of Regulation No 207/2009 (now Article 8(3) of Regulation 2017/1001) – Article 71(1) of Regulation 2017/1001 – Article 72(1) of Regulation 2017/1001 – Article 95(1) of Regulation 2017/1001 – Article 16(1) of Delegated Regulation (EU) 2018/625 – Article 6bis of the Paris Convention)

1. EU trade mark – Appeals procedure – Appeal brought against a decision of a unit of the Office ruling at first instance and referred to the Board of Appeal – Functional continuity between those two bodies – Examination of the appeal by the Board of Appeal – Scope (European Parliament and Council Regulation 2017/1001, Art. 71(1)) (see para. 26)

2. EU trade mark – Procedural provisions – Statement of reasons for decisions – Scope (European Parliament and Council Regulation 2017/1001, Art. 94) (see para. 30)

3. EU trade mark – Appeals procedure – Action before the EU judicature – Condition of admissibility – Grounds of appeal directed only against decisions of the Boards of Appeal (European Parliament and Council Regulation 2017/1001, Art. 72(1)) (see para. 31)

4. EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Use of the mark capable of being prohibited by virtue of another earlier right – Review by the competent bodies of EUIPO and by the Court as to the national law applicable – Scope (Council Regulation No 207/2009, Art. 53(1); Commission Regulation 2018/625, Art. 16(1)(b)) (see paras 40-44)

5. EU trade mark – Procedural provisions – Examination of the facts of the Office’s own motion – Invalidity proceedings concerning relative grounds for refusal – Examination restricted to the facts, evidence and arguments provided – Examination of a legal question of the Office’s own motion – Condition (European Parliament and Council Regulation 2017/1001, Art. 95(1)) (see paras 46, 47)

6. EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Absence of consent on the part of the proprietor of a mark to the registration applied for by an agent or a representative under its own name – Agent or representative – Aim (Council Regulation No 207/2009, Arts 8(3) and 53(1)(a)) (see paras 60, 61)

7. EU trade mark – Surrender, revocation and invalidity – Relative grounds for invalidity – Non-registered mark or another sign used in the course of trade – Word mark EDUCTOR and non-registered mark EDUCTOR (Council Regulation No 207/2009, Arts 8(3) and 53(1)(b)) (see paras 63, 64, 69, 72, 73, 77, 78)

8. Acts of the institutions – Statement of reasons – Obligation – Scope – Correction of an error of reasoning during the proceedings before the Court – Not permissible (Art. 296 TFEU) (see para. 74)

9. EU trade mark – Appeals procedure – Action before the EU judicature – Power of the General Court to alter the contested decision – Limits (Council Regulation No 207/2009, Art. 65(3)) (see para. 79)

Re:

Action brought against the decision of the Fifth Board of Appeal of EUIPO of 2 December 2019 (Case R 1311/2019-5), relating to invalidity proceedings between Qx World and Mandelay.

Operative part

The Court:

1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 December 2019;