Source: EURLEX
Language: en
Format: md

Case T‑848/16

Deichmann SE

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — Application for EU figurative mark V — Earlier international figurative marks V — Proof of the existence, validity and scope of the protection of an earlier trade mark — Rule 19(2)(a)(ii) of Regulation (EC) No 2868/95 (now Article 7(2)(a)(ii) of Delegated Regulation (EU) 2018/625))

Summary — Judgment of the General Court (Ninth Chamber), 6 December 2018

1. EU trade mark — Observations of third parties and opposition — Facts, evidence and observations submitted in support of the opposition — Proof of the existence, validity and scope of the protection of an earlier international trade mark — Scope

   (Council Regulation No 207/2009, Art. 151(2); Commission Regulation No 2868/95, Art. 1, Rule 19(2)(a)(ii))
2. EU trade mark — Observations of third parties and opposition — Facts, evidence and observations submitted in support of the opposition — Proof of the existence, validity and scope of the protection of an earlier international trade mark — Publication on the CTM-Online database (now eSearch plus) — Effect

   (Council Regulation No 207/2009, Arts 151(2) and 152; Commission Regulation No 2868/95, Art. 1, Rule 19(2)(a))
3. EU trade mark — Decisions of the Office — Legality — Examination by the EU judicature — Criteria — EUIPO's examination guidelines — Effect

   (Council Regulation No 207/2009)
4. EU trade mark — Observations of third parties and opposition — Facts, evidence and observations submitted in support of the opposition — Proof of the existence, validity and scope of the protection of an earlier international trade mark — Extract from EUIPO’s CTM-Online database concerning an international registration designating the European Union — Not included

   (Commission Regulation No 2868/95, Art. 1, Rule 19(2)(a)(ii))
5. EU trade mark — Observations of third parties and opposition — Facts, evidence and observations submitted in support of the opposition — Proof of the existence, validity and scope of the protection of an earlier international trade mark — Extract from EUIPO’s TMview database concerning an international registration designating the European Union — Included

   (Commission Regulation No 2868/95, Art. 1, Rule 19(2)(a)(ii))

1. It follows from the provisions of Rule 19(2)(a) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark, which apply to international registrations designating the European Union in accordance with Article 145 of Regulation No 207/2009 on the European Union trade mark, that the opposing party must provide proof of the filing or registration of the earlier mark where the opposition is based on a mark other than an EU trade mark. The need to submit that proof therefore also applies to international registrations designating the European Union, which do not constitute EU trade marks.

   The fact that Article 151(2) of Regulation No 207/2009 provides that the international registration of a trade mark designating the European Union shall, from the date referred to in Article 151(1), have the same effect as the registration of a mark as an EU trade mark does not affect the need for the opposing party to submit proof of the earlier international registration designating the European Union, pursuant to the provisions of Rule 19(2)(a)(ii) of Regulation 2868/95. The requirement for proof of the earlier mark under Rule 19 of Regulation No 2868/95 relates to the ability of the proprietor of an earlier mark, including an international registration designating the European Union, to oppose the registration of an EU trade mark, and does not relate to the effects of the EU trade mark, which are set out in Articles 9 to 14 of Regulation No 207/2009 (now Articles 9 to 17 of Regulation 2017/1001), in Section 2 of Title II of Regulation No 207/2009, entitled ‘Effects of an EU trade mark’.

   Therefore, in so far as Rule 19(2)(a)(ii) of Regulation No 2868/95 provides that the opposing party must submit proof of the protection of an international registration designating the European Union, it is not contrary to the provisions of Article 151(2) of Regulation No 207/2009 which themselves do not concern the rules of procedure for opposing the registration of an EU trade mark.

   (see paras 34-36)
2. The opposing party cannot validly claim that submitting proof of the earlier marks is not necessary in the case of international registrations designating the European Union, on the basis that the European Union Intellectual Property Office (EUIPO) possesses information capable of substantiating the existence, validity and scope of protection of international registrations designating the European Union in view of the publication of the particulars of the international registration designating the European Union on the CTM-Online database (now eSearch plus) pursuant to Article 152 of Regulation No 207/2009 on the European Union trade mark.

   Even assuming that EUIPO does possess information relating to the protection of international registrations designating the European Union, the wording of Rule 19(2) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark — which is not contrary to Article 151(2) of Regulation No 207/2009 — makes it clear that it is for the opposing party to submit proof of his earlier right.

   (see paras 37, 38)
3. See the text of the decision.

   (see paras 51, 52)
4. In specifying that the documents in question must ‘emanat[e] from the administration by which the trade mark was registered’, Rule 19(2)(a)(ii) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark excludes the possibility of submitting extracts from a database that provides access to documents that do not emanate from the administration by which the trade mark was registered. Therefore, extracts from the CTM-Online database of the European Union Intellectual Property Office (EUIPO) do not constitute proof of the protection of an international registration designating the European Union, since EUIPO, which is not the competent authority for the registration of international trade marks, is not the administration to which the trade mark application was made.

   (see para. 58)
5. Even though Rule 19(2)(a)(ii) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark provides that the documents must ‘emanat[e]’ from the competent authority, it does not preclude access to the documents emanating from the competent authority taking place through the intermediary of a computer system which is managed by EUIPO but in which the competent authority participates by transmitting and updating the relevant information.

   It is apparent from the documents in the file, in particular the explanations provided by EUIPO in its pleadings and at the hearing, that the TMview database is a computerised tool managed by EUIPO in which third party trade mark offices participate, including the World Intellectual Property Organisation (WIPO). The tool gathers together trade mark applications and registrations from the participating trade mark offices and allows them to be accessed. The information is provided by the trade mark offices, which maintains the content and the responsibility for daily updating. The TMview database allows information to be consulted about trade marks registered by the trade mark offices participating in the database as it appears in their respective trade mark registers. An extract from the TMview database reflects the state of the register of the competent authority at the time that the database is consulted by the user.

   Given the nature of the TMview database, an extract from the database, in relation to international registrations designating the European Union, constitutes a document equivalent to a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, emanating from WIPO, within the meaning of Rule 19(2)(a)(ii) of Regulation No 2868/95, provided that the extract supplied by the opposing party contains all the relevant information. Where that condition is met, an extract from the TMview database is, as the applicant and EUIPO rightly point out, comparable to an extract from WIPO’s Romarin database or to a copy of the registration certification from WIPO.

   The fact that the TMview database is managed by EUIPO does not affect that finding since WIPO, which is the competent authority for the registration of international trade marks, participates in the functioning of the database, supplying and updating on a daily basis data relating to international trade marks.

   (see paras 59-62)

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