JUDGMENT OF THE GENERAL COURT (Third Chamber)

2 June 2021 ( *1 )

(EU trade mark – Invalidity proceedings – EU word mark MONTANA – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) – Right to be heard – Article 94(1) of Regulation 2017/1001 – Examination of the facts by EUIPO of its own motion – Admission of evidence submitted for the first time before the Board of Appeal – Article 95(1) and (2) of Regulation 2017/1001)

In Case T‑854/19,

Franz Schröder GmbH & Co. KG, established in Delbrück (Germany), represented by L. Pechan and N. Fangmann, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

defendant,

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

RDS Design ApS, established in Allerød (Denmark), represented by J. Viinberg, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 14 October 2019 (Case R 2393/2018‑4), relating to invalidity proceedings between Franz Schröder and RDS Design,

THE GENERAL COURT (Third Chamber),

composed of A.M. Collins, President, V. Kreuschitz and G. De Baere (Rapporteur), Judges,

Registrar: J. Pichon, Administrator,

having regard to the application lodged at the Court Registry on 17 December 2019,

having regard to the response of EUIPO lodged at the Court Registry on 6 March 2020,

having regard to the response of the intervener lodged at the Court Registry on 7 March 2020,

having regard to the written questions put to the parties by the Court and their replies to those questions, which were lodged at the Court Registry on 5 and 16 October 2020,

having regard to the decision of 22 October 2020 joining Cases T‑854/19 to T‑856/19 for the purposes of the oral part of the procedure,

further to the hearing on 26 November 2020,

gives the following

Judgment ( 1 )

[…]

Forms of order sought

10 The applicant claims that the Court should: – annul the contested decision; – uphold the application for a declaration of invalidity and declare the contested mark invalid in respect of the goods and services at issue; – order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.

11 At the hearing, the applicant declared that it was withdrawing its second head of claim, formal note of which was taken in the minutes of the hearing.

12 EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs.

13 The intervener contends that the Court should dismiss the action.

Law

[…]

The first plea, alleging infringement of Article 95(1) and (2) of Regulation 2017/1001

17 By the first plea, the applicant complains that the Board of Appeal, in essence, first, accepted, under Article 95(2) of Regulation 2017/1001, evidence submitted belatedly by the intervener and, secondly, examined certain facts of its own motion contrary to Article 95(1) of Regulation 2017/1001. The first plea can therefore be divided into two separate complaints, alleging infringement of the abovementioned two provisions.

The first complaint in the first plea, alleging infringement of Article 95(2) of Regulation 2017/1001

[…]

23 According to Article 95(2) of Regulation 2017/1001, EUIPO ‘may disregard facts or evidence which are not submitted in due time by the parties concerned’.

24 It follows from the wording of Article 95(2) of Regulation 2017/1001 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 that regulation, and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 42; of 19 April 2018, EUIPO v Group, C‑478/16 P, not published, EU:C:2018:268, paragraph 34; and of 21 March 2019, Pan v EUIPO – Entertainment One UK (TOBBIA), T‑777/17, not published, EU:T:2019:180, paragraph 21).

25 In stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, Article 95(2) of Regulation 2017/1001 grants EUIPO a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take it into account (see, to that effect, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 43; of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraph 56; and of 21 March 2019, TOBBIA, T‑777/17, not published, EU:T:2019:180, paragraph 22).

26 Furthermore, Article 27(4) of Regulation 2018/625 circumscribes the exercise of the discretion which is provided for in Article 95(2) of Regulation 2017/1001 as regards facts and evidence submitted for the first time before the Board of Appeal. That provision reads as follows: ‘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: (a) they are, on the face of it, likely to be relevant for the outcome of the case; and (b) 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.’ […]

The second complaint in the first plea, alleging infringement of Article 95(1) of Regulation 2017/1001

34 The applicant submits that, according to Article 95(1) of Regulation 2017/1001, in invalidity proceedings based on absolute grounds for invalidity, EUIPO is to limit its examination to the grounds and arguments submitted by the parties. It argues that an EU trade mark which has been registered enjoys a presumption of validity and it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call its validity into question.

35 The applicant therefore submits that the Board of Appeal was not entitled to rely on its own factual findings. It argues that, in the contested decision, the Board of Appeal relied on ‘additional facts’ which the parties had not pleaded.

36 According to the applicant, those facts concern, first, the population of the state of Montana (paragraph 29 of the contested decision), secondly, the popularity of other tourist destinations such as the states of California or Florida (paragraph 31 of the contested decision), thirdly, the reference to terms related to the word ‘montana’ in certain European languages and the association of that word with the Swiss municipality of Crans-Montana (paragraphs 32 and 33 of the contested decision), fourthly, the percentage of forests in the United States and in certain Member States of the European Union (paragraphs 42 and 43 of the contested decision) and, fifthly, information from the Encyclopaedia Britannica relating to the vegetation of Montana and to its economy (paragraphs 40, 51 and 52 of the contested decision).

37 EUIPO and the intervener dispute the applicant’s arguments.

38 According to settled case-law, under Article 95(1) of Regulation 2017/1001, when examining absolute grounds for refusal, EUIPO examiners and, on appeal, the Boards of Appeal of EUIPO are required to examine the facts of their own motion in order to determine whether the mark in respect of which registration is sought comes under one of the absolute grounds for refusal of registration set out in Article 7 of that regulation. It follows that the competent bodies of EUIPO may be led to base their decisions on facts which have not been put forward by the applicant for the mark (see, to that effect, judgments of 29 March 2019, All Star v EUIPO – Carrefour Hypermarchés (Shape of a shoe sole), T‑611/17, not published, EU:T:2019:210, paragraph 43, and of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258, paragraph 21).

39 However, in invalidity proceedings based on an absolute ground for refusal, the Board of Appeal cannot be required to carry out afresh the examination of the relevant facts which the competent EUIPO bodies conducted, of their own motion, at the time of registration. It follows from the provisions of Articles 59 and 62 of Regulation 2017/1001 that the EU trade mark is regarded as valid until it has been declared invalid by EUIPO following invalidity proceedings. It therefore enjoys a presumption of validity, which is the logical consequence of the check carried out by EUIPO in the examination of an application for registration (see, to that effect, judgments of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 44, and of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 22).

40 By virtue of that presumption of validity, EUIPO’s obligation, under the first sentence of Article 95(1) of Regulation 2017/1001, to examine of its own motion the relevant facts which may lead it to apply absolute grounds for refusal, is restricted to the examination of the application for an EU trade mark carried out by the examiners and, on appeal, by the Boards of Appeal during the procedure for registration of that mark. In invalidity proceedings based on an absolute ground for refusal, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question. Thus, the second sentence of Article 95(1) of Regulation 2017/1001, which consolidates the Court’s previous case-law (judgment of 13 September 2013, Fürstlich Castell’sches Domänenamt v OHIM – Castel Frères (CASTEL), T‑320/10, EU:T:2013:424, paragraph 28), provides that, in invalidity proceedings pursuant to Article 59 of that regulation, EUIPO is to limit its examination to the grounds and arguments submitted by the parties (see judgment of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 23 and the case-law cited).

41 However, while the presumption of validity of the registration restricts EUIPO’s obligation to examine the relevant facts, it does not, however, preclude it, in particular as regards the matters put forward by the party challenging the validity of the contested mark, from relying on well-known facts (see, to that effect, judgments of 29 March 2019, Shape of a shoe sole, T‑611/17, not published, EU:T:2019:210, paragraph 46, and of 10 June 2020, Representation of a chequerboard pattern, T‑105/19, not published, EU:T:2020:258, paragraph 24).

42 Furthermore, although, in invalidity proceedings based on an absolute ground for refusal, EUIPO is to limit its examination to the grounds and arguments submitted by the parties, that does not, however, preclude the Board of Appeal, in its own examination of the facts, arguments and evidence submitted by the applicant for a declaration of invalidity, from reaching a different conclusion from that proposed by the latter (see, to that effect, judgment of 24 October 2019, Rubik’s Brand v EUIPO – Simba Toys (Shape of a cube with surfaces having a grid structure), T‑601/17, not published, EU:T:2019:765, paragraph 82). In that regard, it follows from Article 71(1) of Regulation 2017/1001 that, through the effect of the appeal brought before it, the Board of Appeal may exercise any power within the competence of the department that was responsible for the contested decision and is therefore called upon, in this respect, to conduct a new, full examination as to the merits of the appeal, in terms of both law and fact (see, to that effect, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 57; of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 97; and of 28 March 2019, Robert Bosch v EUIPO (Simply. Connected.), T‑251/17 and T‑252/17, EU:T:2019:202, paragraph 27).

43 In the present case, it is common ground that the dispute is part of invalidity proceedings based on an absolute ground for invalidity. The Board of Appeal was thus required to carry out an examination which was limited to the grounds and arguments of the parties, without prejudice to the possibility of taking well-known facts into account.

44 However, it cannot be held that the Board of Appeal failed to observe the limits of its examination, in breach of Article 95(1) of Regulation 2017/1001.

45 It is important to point out that the Board of Appeal examined only whether the absolute ground which the applicant had specifically relied on was capable of resulting in the invalidity of the contested mark. […]

47 Furthermore, by the contested decision, the Board of Appeal found that the mark MONTANA had been validly registered, thus confirming its validity.

48 Consequently, in accordance with the case-law cited in paragraph 40 above, the Board of Appeal did not examine of its own motion relevant facts which might have led it to apply other absolute grounds for refusal that were capable of calling into question the validity of the contested mark.

49 Furthermore, the applicant cannot maintain that the Board of Appeal, in its assessment of the absolute ground in question, examined certain ‘additional facts’ of its own motion (see paragraphs 35 and 36 above).

50 It must be pointed out that the findings of the Board of Appeal which have been set out in paragraph 36 above are part of its assessment of the matters put forward by the applicant in support of its application for a declaration of invalidity and of its assessment of the grounds for the Cancellation Division’s decision. They seek to put into perspective the facts, evidence and arguments which the applicant had put forward in its application for a declaration of invalidity and which the Board of Appeal regarded as inaccurate or insufficiently conclusive and to refute the findings which the Cancellation Division had reached in upholding the application for a declaration of invalidity. […]

56 It follows that, in accordance with the case-law referred to in paragraph 42 above, the Board of Appeal’s findings show only that it conducted a new, full examination as to the merits of the appeal, in terms of both law and fact, at the end of which it reached a different conclusion from that sought by the applicant.

57 It follows from the foregoing that the second complaint in the first plea must be rejected and that, consequently, the first plea must be rejected in its entirety. […]

On those grounds, THE GENERAL COURT (Third Chamber) hereby:

1. Dismisses the action;

2. Orders Franz Schröder GmbH & Co. KG to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO);

3. Orders RDS Design ApS to bear its own costs.

Collins Kreuschitz De Baere Delivered in open court in Luxembourg on 2 June 2021. [Signatures]

( *1 ) Language of the case: English.

( 1 ) Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.