CELEX: 62003TO0131
Language: en
Date: 2004-07-27 00:00:00
Title: Order of the Court of First Instance (Second Chamber) of 27 July 2004. # Gerolsteiner Brunnen GmbH & Co. v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). # Community trade mark - Court procedure - Substitution of one party to the dispute - Transfer of rights from the holder of an earlier trade mark. # Case T-131/03.

Case T-131/03
      Gerolsteiner Brunnen GmbH & Co.
      v
      Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)
      (Community trade mark – Court procedure – Substitution of one party to the dispute – Transfer of rights from the holder of an earlier trade mark)
      Order of the Court of First Instance (Second Chamber), 27 July 2004  
      Summary of the Order
      Community trade mark – Appeals procedure – Appeals before the Community judicature – Transfer of the intellectual property
            right in question – Successor substituted for the former holder of the right – Order of the Court of First Instance needed
      (Rules of Procedure of the Court of First Instance, Arts 115 and 116; Council Regulation No 40/94, Art. 63)
      Where an intellectual property right at issue in an appeal against a decision of a Board of Appeal of the Office for Harmonisation
         in the Internal Market (Trade Marks and Designs) concerning opposition proceedings is transferred, the new owner of that right,
         claiming through the party before the Board of Appeal, may be authorised by order to substitute itself for the transferor
         in the proceedings before the Court of First Instance, where the former owner of the right has no objection and the Court
         of First Instance, having consulted the other parties to the action, considers it appropriate.
      
      In the absence of any provisions in the Statute of the Court of Justice and the Rules of Procedure of the Court of First Instance
         expressly governing the substitution of one party for another, the provisions of Articles 115 and 116 of the Rules of Procedure
         should be applied by analogy. In particular, the party claiming through the previous litigant must accept the dispute in the
         state in which it is at the time of the substitution.
      
      (see paras 8-9)

      
      
      
      
      
      
      
      
      
      
      
      
      
      
      
            
            ORDER OF THE COURT OF FIRST INSTANCE (Second Chamber)27 July 2004(1)
            
            
         
            (Community trade mark  –  Court procedure  –  Substitution of one party to the dispute  –  Transfer of rights from the holder of an earlier trade mark)
            
          In Case T-131/03,
         
         
         Gerolsteiner Brunnen GmbH & Co.,  established in Gerolstein (Germany), represented by A. Ebert-Weidenfeller, lawyer,
         
         
         applicant,
         
         v
         Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM),  represented by U. Pfleghar and G. Schneider, acting as agents,
         
         defendant,
         
          APPEAL against the decision of the First Board of Appeal of the OHIM of 13 February 2003 (Case R 275/2002-1), concerning opposition
         proceedings between Gerolsteiner Brunnen GmbH & Co. and Kerry Group plc,
         
         
         
         
         
         THE COURT OF FIRST INSTANCEOF THE EUROPEAN COMMUNITIES (Second Chamber),
         
         
          composed of: J. Pirrung, President, A.W.H. Meij and S.S. Papasavvas, Judges,
         
          Registrar: H. Jung,
         
         makes the following
         
         
         Order
         1
            
          On 3 January 1997, Kerry Group plc (‘the intervener’) submitted an application for a Community trade mark to the Office for
         Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) 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.
         
         
         
         2
            
          On 12 June 1998, Gerolsteiner Brunnen GmbH & Co. filed a notice of opposition to registration of the trade mark sought. The
         opposition was rejected by decision of the Opposition Division of OHIM of 29 January 2002, and the appeal against that decision
         was also rejected by a decision of the First Board of Appeal of OHIM of 13 February 2003.
         
         
         
         3
            
          By application lodged at the Registry of the Court of First Instance on 17 April 2003, Gerolsteiner Brunnen GmbH & Co. (hereinafter
         ‘the applicant’ or ‘Gerolsteiner Brunnen’) applied to the Court of First Instance for the annulment of that latter decision
         and for an order that OHIM pay the costs.
         
         
         
         4
            
          By letter lodged at the Registry of the Court of First Instance on 5 December 2003, the applicant’s representative informed
         the Court of First Instance that the applicant had transferred the earlier trade mark on which the opposition was based to
         Sinziger Mineralbrunnen GmbH. He also indicated that that company had instructed him to represent it before the Court of First
         Instance and that, as the new owner of the trade mark, it was seeking leave to be substituted for Gerolsteiner Brunnen as
         applicant in the present dispute.
         
         
         
         5
            
          By letter of 10 December 2003, the parties to the dispute were invited to submit their observations on the request of Sinziger
         Mineralbrunnen.
         
         
         
         6
            
          By letters lodged at the Registry of the Court of First Instance on 17 and 23 December 2003 respectively, the defendant and
         the intervener indicated that they had no objection to Sinziger Mineralbrunnen being authorised to substitute itself for the
         applicant.
         
         
         
         7
            
          By letter lodged at the Registry of the Court of First Instance on 8 January 2004, the applicant signified its agreement that
         Sinziger Mineralbrunnen be substituted for it.
         
         
         
         8
            
          As the Court of First Instance has held in its order of 5 March 2004 in Case T‑94/02 BOSS v OHIM – Delta Holding (BOSS) [2004] ECR II‑0000 where an intellectual property right at issue in the dispute is transferred, the new owner of that right,
         claiming through the party before the Board of Appeal, may be authorised by order to substitute itself for the transferor
         in the proceedings before the Court of First Instance, where the former owner of the right has no objection and the Court
         of First Instance, having heard the other parties to the action, considers it appropriate.
         
         
         
         9
            
          In the absence of any provisions in the Statute of the Court of Justice and the Rules of Procedure of the Court of First Instance
         expressly governing the substitution of one party for another, the provisions of Articles 115 and 116 of the Rules of Procedure
         should be applied by analogy. In particular, the party claiming through the previous litigant must accept the dispute in the
         state in which it is at the time of the substitution.
         
         
         
         10
            
          In this case, Gerolsteiner Brunnen, the former owner of the intellectual property right on which the opposition to the application
         for a Community trade mark is based, has declared its agreement with the substitution, and neither OHIM nor the intervener
         have raised any objections in that regard. In those circumstances, Sinziger Mineralbrunnen should be authorised to substitute
         itself for Gerolsteiner Brunnen as applicant in this case.
         
         
         On those grounds,
         
         
         
            
            THE COURT OF FIRST INSTANCE (Second Chamber)
         
         
          hereby orders:
         
            
            
             
               1.
                  Sinziger Mineralbrunnen GmbH is authorised to substitute itself for Gerolsteiner Brunnen GmbH & Co. as applicant.
               
            
            
            
             
               2.
                  Costs are reserved.	
               
            
             Delivered in Luxembourg, 27 July 2004.
         
         
         
                  H. Jung
               
               
                  J. Pirrung
               
            
         
         
         
                  Registrar
               
               
                  President
               
            
      
      
          1 –
            
            Language of the case: German.