Background to the dispute
1 On 23 March 1998 an application for a Community trade mark filed by the intervener, Scala Inc., was published in Community Trade Marks Bulletin No 20/98 at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (hereinafter the Office) 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, relating to the word mark SCALA for computer software in Class 9 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.
2 The application was filed in English. French was designated as the second language under Article 115(3) of Regulation No 40/94.
3 On 15 June 1998 the applicant, Strongline Software A/S, also known as Strongline A/S, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 against the mark sought for all goods designated on the ground that it was identical to two earlier national trade marks, namely the word marks SCALA registered in Denmark in 1989 and in Germany in 1994 for goods in Classes 9 and 16 of the Nice Agreement. The applicant particularly based its opposition on some of the goods for which the earlier trade marks were registered, described as computerprogrammes stored on data carriers (sic) in Class 9.
4 In its notice of opposition the applicant chose English as the language of procedure before the Office. It annexed to that notice a document in German relating to the registration in Germany and a translation into English of a complete list of the goods for which, according to it, each of the two earlier trade marks is registered.
5 On 17 June 1998 the applicant supplied the Office with a standard Office form in Danish granting authorisation for the purposes of the opposition procedure to an approved agent. It also annexed two documents in Danish, described in the accompanying letter as a copy of the Danish registration, showing Strongline ApS as proprietor, and a copy of the letter to the Patent- og Varemærkestyrelsen (Danish Patent and Trade Mark Office) requesting recordal of its change of name to Strongline Software A/S.
6 On 19 June 1998 the applicant supplied the Office with a document in Danish, the headings of which were translated into English, described as a copy of the Danish registration, issued in the name of Strongline Software, and a translation similar to that previously supplied of the goods for which the mark was registered.
7 On 2 September 1998 the Office drew the applicant's attention to the fact that, notwithstanding Rule 76(3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), no authorisation had been provided in any of the languages of the Office. The applicant supplied a standard form the next day in English.
8 On 16 April 1999 the Office informed the applicant of the opening of the inter partes procedure and laid down a period of four months, extended at the parties' request to 16 April 2000, for submitting any facts, evidence or arguments necessary to substantiate the opposition. The Office stated expressly that all documents had to be submitted in the language of the opposition proceedings.
9 On 17 February 2000 the intervener requested that the applicant file proof of genuine use of the Danish mark pursuant to Article 43 of Regulation No 40/94, noting that the evidence had to be translated into English.
10 On 30 August 2000 the applicant submitted observations and a number of documents in Danish relating to proof of use of the Danish mark.
11 On 15 December 2000 the intervener filed its observations on the material sent on 30 August 2000. It noted, inter alia, that some of the items of evidence had not been translated and that no translation of the documents relating to the marks relied on had yet been produced. It pointed out that, as a result of the inadequacy of the evidence adduced, the concerns as to the validity of the earlier marks could not be allayed and that the opposition must consequently be automatically rejected. Those observations were communicated to the applicant.
12 On 13 February 2001 the Office expressly requested the applicant to file translations of certain items of evidence relating to use of the Danish mark in accordance with Rule 22 of Regulation No 2868/95. On 22 March 2001 the applicant provided the translations requested but omitted to respond to the intervener's objections and in particular failed to provide any further translation of the documents relating to the marks relied on.
13 On 14 July 2001 the intervener submitted a new set of observations following the filing of the further translations and, amongst other things, maintained its assertion that the opposition must be rejected on the ground that the registrations of the marks relied on had not been substantiated.
14 By decision of 20 July 2001 the Opposition Division rejected the opposition on the ground that the applicant had failed to file evidence, in the language of the opposition proceedings, of the validity and legal status of the earlier national marks on which the opposition was founded.
15 On 11 September 2001 the applicant brought an appeal before the Office under Article 59 of Regulation No 40/94 against the decision of the Opposition Division. On 16 November 2001 the intervener filed its observations on the appeal.
16 By decision of 27 May 2002 (hereinafter the contested decision), served on the applicant on 6 June 2002, the Board of Appeal dismissed the appeal.
17 The Board of Appeal essentially found that the applicant had failed adequately to substantiate, in the language of the opposition proceedings, the validity and its ownership of the earlier marks on which it sought to rely in support of the opposition. It further found that it was not for the Office to draw the applicant's attention to that failure, especially where, as in this case, that failure had been specifically highlighted in the intervener's observations, which were communicated to the applicant.
Forms of order sought
18 The applicant claims that the Court should:
- annul the contested decision;
- refer the case back to the First Board of Appeal;
- order each party to pay its own costs.
19 The Office contends that the Court should:
- declare the action inadmissible;
- in the alternative, dismiss the action as unfounded;
- order the applicant to pay the costs.
20 The intervener contends that the Court should:
- uphold the contested decision;
- dismiss the opposition and allow the mark sought to be registered;
- order the applicant to pay the costs.
Admissibility
21 The Office claims that this action ought to be dismissed as inadmissible under Article 135(4) of the Rules of Procedure of the Court of First Instance, which states that [t]he parties' pleadings may not change the subject-matter of the proceedings before the Board of Appeal. In its application the applicant refers to the infringement of Article 8(1)(a) or (b) of Regulation No 40/94. However the subject-matter of the proceedings before the Board of Appeal, according to the document initiating the proceedings before the Board, related solely to the failure to comply with Rule 17(2) of Regulation No 2868/95.
22 The Court of First Instance finds that in this case, contrary to the Office's claim, the subject-matter of the proceedings before the Board of Appeal related directly to the application of Article 8(1) of Regulation No 40/94 and was therefore not altered by the applicant's pleadings. First of all, these proceedings were unquestionably initiated by the opposition brought pursuant to that Article. Secondly, the rules directly referred to by the Board of Appeal in the contested decision, which is to say Rules 16(2) and 17(2) of Regulation No 2868/95, are formal or procedural conditions for that article to apply. Thirdly, the conclusion of the Board of Appeal to the effect that the appeal should be dismissed on the grounds that the applicant failed to substantiate the rights upon which it relied in its opposition clearly constitutes an instance where Article 8 applies.
23 The action must therefore be considered to be admissible.
24 Finally, under Article 63(6) of Regulation No 40/94, the Office is required to take the necessary measures to comply with the judgment of the Community Court. In that regard it is settled law that it is not for the Court of First Instance to issue directions to the Office (see, inter alia, Case T-247/01 eCopy v OHIM (ECOPY) [2002] ECR II-5301, paragraph 13). The intervener's application seeking an order that the mark sought be registered must therefore be rejected by the Court of its own motion as inadmissible.
Substance
Arguments of the parties
25 The applicant observes first of all that the documents supplied to the Office in support of its opposition, namely the copies of the registrations in Germany and Denmark, satisfy the criteria in Rule 16(2) of Regulation No 2868/95. Those copies must be regarded as certificates of registration within the meaning of that provision. In that connection the applicant emphasises that the Danish Patent and Trade Mark Office does not provide a document entitled certificate of registration but only the extracts provided in this case. In any event those extracts are undeniably official documents or copies thereof, issued by the authority in charge of the registration of the trade mark concerned.
26 The applicant acknowledges that it failed to comply with the requirements of Rule 17(2) of Regulation No 2868/95.
27 The applicant claims that the registration in the intervener's name of the SCALA trade mark constitutes an infringement of Article 8 of Regulation No 40/94, as the signs in question are identical and the goods identical or at least similar. The fact that Rule 17(2) of Regulation No 2868/95 was not complied with cannot justify that infringement of Article 8 of Regulation No 40/94.
28 The Office argues that the action is clearly unfounded as there is no need to consider the application of Article 8(1)(a) or (b) of Regulation No 40/94 because the applicant explicitly admits its failure to comply with Rule 17(2) of Regulation No 2868/95. In any event the opposition must be rejected pursuant to Rule 20(3) of Regulation No 2868/95 because of lack of substantiation of the earlier rights.
29 The Office points out that even if the application is rejected the applicant may still apply for a declaration of invalidity under Article 52(1) of Regulation No 40/94.
30 The intervener considers that the applicant failed, within the period prescribed by the Office in accordance with Rules 16(3) and 20(2) of Regulation No 2868/95, to provide sufficient evidence of the validity of the German and Danish marks, of its ownership of them, of their use, and of translations of that evidence into the language of the proceedings. The evidence it did adduce in the application and the translation thereof must be regarded as out of time since the applicant did not produce these before the Office, even though it had had ample opportunity to do so. The opposition must therefore be rejected.
31 The intervener underlines the importance of supplying translations of the documents in question both for the Office and for the trade mark applicant in order to be able to assess the quality of an opposition and observes in that connection that the applicant has admitted its failure to comply with Rule 17(2) of Regulation No 2868/95.
32 If the Court were to consider the foregoing arguments insufficient, the opposition must in any event be dismissed on the ground that the number of goods specified in the trade mark application is greater than the number covered by the earlier marks, and the marks are therefore not identical for the purposes of Article 8(1)(a) of Regulation No 40/94.
Findings of the Court
33 Under Article 111 of the Rules of Procedure, where the application is manifestly lacking any foundation in law, the Court of First Instance may, without taking any further step in the proceedings, rule by way of reasoned order.
34 In this case the Court considers that it has sufficient information in the documents on file and hereby decides, pursuant to that Article, to determine the case without taking any further step in the proceedings.
35 Rule 16(2) and (3) of Regulation No 2868/95 provides as follows:
(2) If the opposition is based on an earlier mark which is not a Community trade mark, the notice of opposition shall preferably be accompanied by evidence of the registration or filing of that earlier mark, such as a certificate of registration ...
(3) The particulars of the facts, evidence and arguments and other supporting documents as referred to in paragraph 1, and the evidence referred to in paragraph 2 may, if they are not submitted together with the notice of opposition or subsequent thereto, be submitted within such period after commencement of the opposition proceedings as the Office may specify pursuant to Rule 20(2).
36 Rule 17(2) of Regulation No 2868/95 provides as follows: Where the evidence in support of the opposition as provided for in Rule 16(1) and (2) is not filed in the language of the opposition proceedings, the opposing party shall file a translation of that evidence into that language within a period of one month from the expiry of the opposition period or, where applicable, within the period specified by the Office pursuant to Rule 16(3).
37 In this case, as the Board of Appeal found in the contested decision and as the applicant acknowledges in its application, contrary to Rule 17(2) of Regulation No 2868/95, the applicant did not, within the period prescribed, provide the Office with an adequate translation of the evidence and supporting documents relating to its rights in the earlier national marks on which its opposition is based.
38 It must be recalled that the burden which Rule 17(2) of Regulation No 2868/95 places on the party originating inter partes proceedings is justified by the necessity to observe fully the principle of the right to be heard and to ensure equality of arms between the parties in inter partes proceedings (Case T-232/00 Chef Revival USA v OHIM - Massagué Marín (Chef) [2002] ECR II-2749, paragraph 42).
39 If the opponent does not present the evidence and documents in support of the opposition and a translation thereof into the language of the opposition proceedings before the expiry of the period laid down for that purpose by the Office, the Office may lawfully reject the opposition as unfounded unless, in accordance with Rule 20(3) of Regulation No 2865/95, it can give a ruling on it by other means on the basis of the evidence which it may already have before it. The rejection of the opposition in such a case is not merely the result of the opponent's failure to comply with the period laid down by the Office but is also the consequence of his failure to comply with a substantive condition of the opposition, since the opponent, by failing to present, within the period laid down, the relevant evidence and supporting documents - which must also be presented for the reasons set out in paragraph 38 above - fails to prove the existence of the facts or the rights on which his opposition is based (Chef, cited at paragraph 38, paragraph 44).
40 The applicant confines itself to claiming that the evidence it supplied complies with Rule 16 of Regulation No 2865/95, and that the opposition ought therefore to be upheld.
41 It must first of all be observed that regard cannot be had to the documents and translations relating to the earlier marks relied on in support of the opposition annexed to the application, submitted for the first time before the Court of First Instance, and which the Board of Appeal was not therefore able to examine. Those documents must thus be disregarded, and there is no need to assess their probative value (see to that effect ECOPY, cited at paragraph 24 above, paragraphs 45 to 49, and Case T-237/01 Alcon v OHIM Dr. Robert Winzer Pharma (BSS) [2003] ECR II-0000, paragraphs 61 and 62).
42 Next, it must be observed that the applicant's argument cannot lead to the annulment of the contested decision.
43 Even if, which is far from proven by the applicant, the documents adduced before the Office meet the requirements of Rule 16 of Regulation No 2868/95, contrary to what is stated in the contested decision, that would not invalidate the conclusion of the Board of Appeal to the effect that, without a translation, it is not possible on the basis of the evidence supplied to verify the legal status and ownership of the earlier marks relied on.
44 The Board of Appeal essentially found that [the applicant] did not submit, within the time-limit set by the Opposition Division, a translation of the document filed as proof of the ownership and existence of the German registration, nor a sufficient translation of the Danish certificate of registration, upon each of which it based its opposition (contested decision, paragraph 39). In particular, that failure to provide a translation was not sufficient to allay the concerns of the intervener, the Opposition Division and the Board of Appeal with regard to the origin of those documents, the true owner of the marks relied on or the exact scope of those marks.
45 Consequently the applicant's self-confessed failure to comply with Rule 17 of Regulation No 2868/95 justified the dismissal by the Board of Appeal of the appeal brought before it, since that failure did not permit the intervener to exercise its rights of defence in the inter partes proceedings, or the Board of Appeal to satisfy itself with sufficient certainty that the rights relied on were real.
46 This action must therefore be dismissed as manifestly unfounded.
Costs
47 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they are applied for in the successful party's pleadings. Since the applicant has been unsuccessful, and the Office and the intervener have applied for costs, it must be ordered to pay the costs incurred by the latter.
On those grounds,
THE COURT OF FIRST INSTANCE (Second Chamber),
hereby orders:
1. The action is dismissed.
2. The applicant shall pay the costs.
