Nike International v OHMI- Munoz Molina (R10) (Intellectual property) [2010] EUECJ T-137/09 (24 November 2010)

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(Community trade mark – Opposition proceedings – Application for Community word mark R10 – Non-registered national word mark R10 – Assignment of the national mark – Procedural defect)

Nike International Ltd, established in Beaverton, Oregon (United States), represented by M. de Justo Bailey, lawyer,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

1 On 2 January 2006, Aurelio Muñoz Molina filed an application for registration of a Community trade mark at 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2 The trade mark in respect of which registration was sought is the word sign R10.

3 The Community trade mark application was published in Community Trade Marks Bulletin No 30/2006 of 24 July 2006.

4 On 24 October 2006, DL Sports & Marketing Ltda filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to the registration of the trade mark applied for. That opposition was based on the non-registered mark or the sign used in the course of trade, R10, and was directed against all of the goods covered by the trade mark applied for. The grounds put forward in support of the opposition were those referred to in Article 8(2)(c) and Article 8(4) of Regulation No 40/94 (now Article 8(2)(c) and Article 8(4) of Regulation No 207/2009).

5 On 28 November 2006, the Opposition Division allowed DL Sports & Marketing a period of four months, until 29 March 2007, in order, inter alia, to prove the existence and validity of the earlier right relied on. On 29 March 2007, DL Sports & Marketing requested an extension of the deadline, which, on 8 June 2007, was extended until 9 August 2007. On 24 October 2007, the Opposition Division noted that no evidence had been submitted in support of the opposition.

6 By letter of 31 October 2007, the lawyers acting for the applicant, Nike International Ltd, informed the Opposition Division that, by a contract dated 20 June 2007, DL Sports & Marketing had assigned to the applicant – through Nike, Inc. – ownership of numerous trade marks and industrial property rights (‘the transfer agreement’). The applicant’s lawyers stated that they had been instructed by the new owner of the earlier right to pursue the opposition proceedings and, accordingly, asked to be entered as representatives in those proceedings.

7 On 19 February 2008, the Opposition Division rejected the opposition on the ground that DL Sports & Marketing had not substantiated, within the prescribed period, the existence of the earlier right relied on in support of the opposition (‘the Opposition Division’s decision’).

8 On 28 March 2008, the applicant appealed to OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Opposition Division’s decision.

9 By decision of 21 January 2009 (‘the contested decision’), the First Board of Appeal of OHIM dismissed that appeal as inadmissible on the ground that the applicant had not produced proof of its status as a party to the opposition proceedings and, consequently, that it was not entitled to appeal the Opposition Division’s decision. The Board of Appeal found that, at that stage of the proceedings, the applicant’s lawyers had not claimed – much less produced proof – that the earlier right relied on in support of the opposition was among the trade marks transferred to the applicant. It stated that, during the appeal also, the applicant had not been in a position to prove that it was the owner of the earlier right. The Board of Appeal therefore concluded that the transfer agreement merely showed that the applicant had acquired certain Community trade marks, but not, specifically, the earlier right relied on.

12 The applicant raises, in essence, four pleas in law alleging (i) infringement by the Opposition Division of the obligation to state reasons; (ii) infringement both by the Opposition Division and by the Board of Appeal of the rights of the defence recognised by Article 73 of Regulation No 40/94 and of other provisions applicable; (iii) infringement by the Board of Appeal of the guidelines relating to proceedings before OHIM (‘the OHIM Guidelines’); and (iv) error of assessment with regard to the assignment of the earlier right.

13 The first and second pleas in law must be rejected at the outset in so far as they relate to the Opposition Division’s decision. By virtue of Article 63(1) of Regulation No 40/94 (now Article 65(1) of Regulation No 207/2009), actions may be brought before the Community judicature only against decisions of the Boards of Appeal. Accordingly, it is only pleas directed against the decision of the Board of Appeal itself which are admissible in such an action (Case T-303/03 Lidl Stiftung v OHIM – REWE-Zentral (Salvita) [2005] ECR II'1917, paragraph 59).

14 Next, the Court must examine the third plea in so far as the applicant submits, in essence, that, according to the OHIM Guidelines, the Board of Appeal was not legally entitled to consider whether the applicant had actually acquired the earlier right relied on in support of the opposition.

15 The applicant submits that the Board of Appeal was not entitled to dismiss its appeal as inadmissible on the ground that it was not the owner of the right on which the opposition was based. It states that, according to the OHIM Guidelines, in particular point A.V.2.5.3 of ‘Part 1: Procedural Matters’ in ‘Part C: Opposition’, if the copy of the registration certificate of the trade mark on which an opposition is based mentions as owner a company other than that which filed the opposition, the opposition is accepted as admissible on the assumption that the earlier mark was transferred to the opponent before the opposition was filed. The applicant takes the view that that presumption ought to be applied in the context of an appeal against an Opposition Division decision.

17 It must be observed that, unlike the situation in which the assignment occurred before the opposition was filed, if the assignment of the trade mark relied on occurred after the opposition was filed and before the adoption of OHIM’s final decision, OHIM must ensure that the rights of the party which originally filed the opposition or the trade mark application are protected, since the purpose of admitting the assignee of the trade mark is to conclude, so far as the aforementioned party is concerned, proceedings initiated by that party. Furthermore, the Board of Appeal is required to ensure that the person who brought the appeal has locus standi with regard to the Opposition Division’s decision (see, to that effect and by analogy, Case T-301/03 Canali Ireland v OHIM – Canal Jean (CANAL JEAN CO. NEW YORK) [2005] ECR II'2479, paragraphs 19 and 20). Consequently, contrary to the applicant’s submission, it must be concluded that the OHIM guideline invoked cannot be applied by analogy to the admissibility of an appeal against an Opposition Division decision and, moreover, that the Board of Appeal was legally entitled to examine the applicant’s locus standi.

The second plea in law, alleging infringement of the rights of the defence recognised by Article 73 of Regulation No 40/94 and of other provisions applicable in so far as they relate to the contested decision

19 The applicant submits that the contested decision was adopted (i) in breach of the applicant’s rights of defence, since it is based on an interpretation of the transfer agreement on which the applicant was unable to submit observations, and (ii) in breach of other provisions applicable, including Rule 31(6) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), since the applicant did not have the opportunity to correct deficiencies in relation to proof of the transfer of the earlier right.

20 OHIM contends that the Board of Appeal was not in a position to infringe the applicant’s rights of defence since the latter was not a party to the proceedings before the Opposition Division. OHIM states, in this respect, that the applicant asked to be regarded as such only after 10 August 2007, the date on which those proceedings had come to an end following the expiry of the last extension of time for submission of evidence concerning the existence, validity and scope of the earlier right invoked, notwithstanding the fact that the decision rejecting the opposition was not delivered until several months later. In addition, the applicant produced no evidence of the assignment in its favour of the earlier right relied on in support of the opposition. Nor, according to OHIM, did the Board of Appeal infringe Rule 31(6) of Regulation No 2868/95 or other provisions applicable, since it could have invited the parties to correct deficiencies identified only if the opposition proceedings had not already been concluded.

21 In any event, OHIM takes the view that, even on the assumption that the applicant’s rights of defence had been infringed, that infringement could not result in the annulment of the contested decision since, even if the applicant had been invited to submit observations regarding the expiry of the deadline and closure of the opposition proceedings, those proceedings could not have resulted in anything other than a rejection of the opposition and the inadmissibility of the appeal.

22 The applicant submits, in essence, that the Board of Appeal was not entitled to dismiss its appeal as inadmissible without, in particular, giving it the opportunity to respond to the doubts as to the sufficiency of the evidence produced by the applicant to show that it had acquired the right on which the opposition was based.

23 Rule 31(6) of Regulation No 2868/95 provides, with regard to the transfer of trade marks or of applications for Community trade marks, that, where the conditions applicable to the registration of a transfer, which include the obligation to produce documents duly establishing that transfer, are not fulfilled, OHIM is required to notify the applicant of the deficiencies and that, ‘[i]f the deficiencies are not remedied within a period specified by [OHIM], it shall reject the application for registration of the transfer’.

24 In the absence of a legal provision concerning evidence of the transfer of the earlier national right relied on in support of an opposition, the OHIM Guidelines – with which OHIM is, in principle, required to comply (see, to that effect, Case T-410/07 Jurado Hermanos v OHIM (JURADO) [2009] ECR II'1345, paragraph 20) – are based in that respect on the provisions laid down by Rule 31(6) of Regulation No 2868/95. Thus, in ‘Part 1: Procedural Matters’ in ‘Part C: Opposition’, those guidelines – which, as the applicant observes in connection with its third plea, are applicable in the present case – provide that if the new owner of the earlier national right ‘informs [OHIM] of the transfer, but does not submit (sufficient) evidence thereof, the opposition proceedings have to be suspended while the new owner is given two months to provide evidence of the transfer’ (point E.VIII.1.3.1). The application of Rule 31(6) of Regulation No 2868/95 to the assignment of national trade marks cannot be challenged since, where national law makes no provision for a procedure for registration of transfers of ownership of registered marks, the examination carried out by the Opposition Division or the Board of Appeal in order to check that the transfer of the trade mark relied on in support of the opposition actually occurred is, in essence, the same as the examination carried out by the appropriate OHIM departments when examining transfer applications relating to Community trade marks. Furthermore, although that procedure specifically relates to registered national marks, it must be applied by analogy to the transfer of national non-registered marks, since the type of examination to be carried out by OHIM is the same.

25 Finally, under Rule 50(1) of Regulation No 2868/95, the provisions relating to proceedings before the department which has made the decision against which the appeal is brought are to be applicable to appeal proceedings mutatis mutandis.

26 In the present case, the Board of Appeal found that the applicant had not been in a position to prove that it was the owner of the earlier right and, consequently, that it had not produced proof of its status as a party to the opposition proceedings and was not entitled to appeal the Opposition Division’s decision. The Board of Appeal failed, however, contrary to the rules referred to above, to give the applicant an opportunity to produce additional evidence of the transfer of the earlier right on which it had relied in order to show that it had locus standi.

27 The Court cannot accept OHIM’s arguments seeking to justify this approach taken by the Board of Appeal and asserting that the applicant applied to be substituted for the original opponent after the closure of the opposition proceedings. It must be observed that, even on the assumption that the substitution application made by the assignee of the earlier national mark between closure of the opposition examination procedure and adoption of the Opposition Division’s decision could not be accepted and could even be entirely disregarded without specifically being rejected as inadmissible, that circumstance cannot deprive that assignee of the right to bring an appeal against the Opposition Division’s decision. As the owner of the trade mark relied on in support of the opposition, the assignee necessarily has locus standi with regard to the decision by which the opposition proceedings are concluded (see, to that effect and by analogy, CANAL JEAN CO. NEW YORK, cited in paragraph 17 above, paragraphs 18 and 19), irrespective of whether it made a substitution application to the Opposition Division and whether such an application was admissible. While the Board of Appeal is indeed required to satisfy itself that the assignee is actually the owner of the earlier mark, its examination must be carried out in accordance with the applicable procedural rules, including the OHIM Guidelines.

28 Nor can the Court accept OHIM’s argument that the applicant produced no evidence of the assignment to it of the earlier right relied on in support of the opposition. It must be noted that the applicant’s objection is precisely that the Board of Appeal ought to have allowed it to comment on the interpretation of the evidence produced or to remedy the insufficiency of that evidence.

29 That being the case, the Court must examine OHIM’s argument that the infringement committed by the Board of Appeal cannot, in the present case, give rise to annulment of the contested decision since that infringement has no bearing on the substance, the opposition having to be rejected in any event on the ground that the original opponent had failed to produce evidence of the existence of the earlier right relied on in support of the opposition.

30 It must be noted that it is, admittedly, clear from the case-law that a procedural irregularity can justify the annulment of a legislative act only if it is shown that, had it not been for that irregularity, the act might have been substantively different (see, to that effect, Case T-24/01 Staelen v Parliament [2003] ECR-SC I'A'79 and II'423, paragraph 53). In the present case, however, the contested decision dismissed the applicant’s appeal as inadmissible, without ruling on the substance of the applicant’s arguments concerning the Opposition Division’s decision to reject the opposition. In those circumstances, the fact, invoked by OHIM, that that decision rejecting the opposition is, in its view, manifestly correct is irrelevant. It cannot be denied that a decision rejecting an appeal as inadmissible does not have the same substance as a decision on the merits. Furthermore, the Court cannot directly examine the legality of the Opposition Division’s decision, and thereby examine the arguments which the Board of Appeal did not address, in order to ascertain whether the infringement of the procedural rules by the Board of Appeal could have had any influence on the ultimate rejection of the opposition (see, to that effect, Case T-402/07 Kaul v OHIM – Bayer (ARCOL) [2009] ECR II'737, paragraphs 47 and 49).

31 The present plea must, therefore, be upheld in so far as it concerns the contested decision, and there is no need to consider whether the applicant’s rights of defence, considered independently of the provisions referred to above, were infringed.

32 As regards the consequences to be drawn from this, it must be recalled that the applicant requests the Court, in essence, principally to amend the contested decision by ruling that its appeal is admissible and, in the alternative, to annul that decision.

33 However, even on the assumption that the power to amend decisions is such that the Court could adopt a decision contrary to that taken by the Board of Appeal, it cannot, in this instance, make good the infringement committed by the latter. The Court cannot properly invite the applicant to put forward additional arguments and evidence concerning the assignment to it of the national right relied on in support of the opposition and give a ruling on the admissibility of the appeal before the Board of Appeal in the light of that new evidence (see, to that effect, Case C-29/05 P OHIM v Kaul [2007] ECR I'2213, paragraph 54, and Case T-128/01 DaimlerChrysler v OHIM (Calandre) [2003] ECR II'701, paragraph 18). In those circumstances, the Court must annul the contested decision and reject the claim for amendment of that decision, without there being any need to examine the fourth plea in law put forward by the applicant.

34 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. In the present case, since OHIM has been essentially unsuccessful but the applicant has not applied for costs, each party must be ordered to bear its own costs.

1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 21 January 2009 (Case R 551/2008'1);

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Nike International v OHMI- Munoz Molina (R10) (Intellectual property) [2010] EUECJ T-137/09 (24 November 2010) URL: http://www.bailii.org/eu/cases/EUECJ/2010/T13709.html Cite as: [2010] EUECJ T-137/09, [2010] EUECJ T-137/9

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