Pinto Eliseu Baptista Lopes Canhoto v EUIPO - University College London (CITRUS SATURDAY) (Judgment) [2016] EUECJ T-400/15 (28 September 2016)

Judgment Background to the dispute On 2 May 2013, University College London filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1). Registration as a mark was sought for the word sign CITRUS SATURDAY. The goods in respect of which registration was sought are in, inter alia, Class 25 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, and correspond to the following description: ‘clothing; headgear; footwear; t-shirts; polo shirts; shirts; blouses; sweatshirts; jumpers; hooded jumpers; aprons; caps; hats; wrist bands; headbands; socks; jackets; scarves’. The EU trade mark application was published in Community Trade Marks Bulletin No 113/2013 of 18 June 2013. On 16 September 2013, the applicant, Ana Isabel Pinto Eliseu Baptista Lopes Canhoto, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based on the earlier Portuguese word mark CITRUS, registered on 21 September 2007 under No 415 842 and designating goods in Class 25 corresponding to the following description: ‘clothing; footwear; headgear; belts’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009. The document submitted by the applicant and intended to prove the existence, validity and scope of protection of the earlier trade mark on which the opposition was based, namely a registration certificate drawn up in Portuguese and issued by the Portuguese Institute of Industrial Property, was not translated into the language of the proceedings, namely English. On 7 January 2014, EUIPO granted the applicant a period within which to submit documents in support of her opposition, accompanied, where appropriate, by a translation into the language of the proceedings. That period expired on 12 May 2014. By registered letter sent on 7 May 2014 and received by EUIPO on 21 May 2014, the applicant submitted, inter alia, a translation into the language of the proceedings of the document referred to in paragraph 8 above. On 23 June 2014, the Opposition Division rejected the opposition. It explained that the applicant was required to furnish, within the time limit set by EUIPO, proof of the existence, validity and scope of protection of her earlier trade mark by submitting a copy of the relevant registration certificate, accompanied by a translation into the language of the proceedings. The Opposition Division concluded that, under Rule 20(1) and Rule 19 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended by, inter alia, Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4), the opposition had to be rejected as unfounded, as the applicant had not submitted a translation of that certificate into the language of the proceedings within the period prescribed for that purpose. On 14 August 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision. By decision of 29 April 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. In particular, it noted that, upon expiry of the period referred to in Rule 19(1) of Regulation No 2868/95, the applicant had not proved the existence, validity and scope of protection of the earlier trade mark in accordance with the requirements laid down in Rule 19(2), (3) and (4) of that regulation. In addition, it considered that the applicant had not put forward any legitimate reasons to explain her failure to submit the required document within the prescribed period. It concluded that the Opposition Division had correctly rejected the opposition as unfounded pursuant to Rule 20(1) of Regulation No 2868/95. Forms of order sought The applicant claims that the Court should annul the contested decision and remit the case to the Opposition Division. EUIPO contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law The applicant relies on two pleas in law, the first alleging infringement of Rule 19 and Rule 20 of Regulation No 2868/95 and of Article 76 of Regulation No 207/2009 and the second alleging infringement of Article 21, Article 41(1) and Article 47 of the Charter of Fundamental Rights of the European Union and of Article 18 TFEU. First plea in law: infringement of Rule 19 and Rule 20 of Regulation No 2868/95 and of Article 76 of Regulation No 207/2009 In support of the first plea in law, the applicant submits, in essence, that the Board of Appeal incorrectly found that the documents which she had sent on 7 May 2014 were inadmissible, on the ground that EUIPO had received them on 21 May 2014, that is, after the expiry of the period laid down in Rule 19(4) and Rule 20(1) of Regulation No 2868/95, in the present case, 12 May 2014. In that regard, the applicant argues that those documents should have been regarded as admissible evidence, given that (i) they had been sent before the expiry of that period, (ii) the context in which they had been submitted justified the delay in their being received by EUIPO and (iii) the Board of Appeal should, in any event, have proceeded to examine those documents of its own motion, pursuant to Article 76 of Regulation No 207/2009. EUIPO disputes the applicant’s arguments. In that regard, it should first of all be borne in mind that Rule 19(2)(ii) of Regulation No 2868/95 provides that, if the earlier trade mark on which an opposition is based is registered, proof of the existence, validity and scope of the protection afforded to that mark must be furnished by the submission of a copy of the relevant registration certificate or any equivalent document emanating from the administration by which the trade mark was registered. Rule 19(3) of that regulation states that such a document must be in the language of the proceedings or accompanied by a translation. In addition, under Rule 19(4) of that regulation, EUIPO is not to take into account documents that have not been translated into the language of the proceedings within the prescribed period. Next, it follows from Rule 20(1) of Regulation No 2868/95 that, if the existence, validity and scope of protection of the earlier trade mark on which the opposition is based are not proved before the expiry of the prescribed period, the opposition is to be rejected as unfounded. Lastly, Rule 50(1) of Regulation No 2868/95 provides that, where an appeal is directed against a decision of an Opposition Division, the Board is to limit its examination of the appeal to facts and evidence presented within the time limits set or specified by the Opposition Division in accordance with Regulations Nos 207/2009 and 2868/95, unless the Board considers that additional or supplementary facts and evidence should be taken into account pursuant to Article 76(2) of Regulation No 207/2009. In the first place, the fact that the translation of the documents intended to establish the existence, validity and scope of protection of the applicant’s earlier trade mark were sent, by registered letter, on 7 May 2014, that is, within the prescribed period, is irrelevant, given that only the receipt of those documents by EUIPO is to be taken into account. Indeed, Rule 20(1) of Regulation No 2868/95 must be interpreted as meaning that the date to be taken into account for determining compliance with the period, referred to in Rule 19(1) of that regulation, within which documents intended to prove the existence, validity and scope of protection of the earlier trade mark must be submitted is not that on which those documents were sent to EUIPO, but the date on which they were received by that Office. In that regard, it should be emphasised, first, that that interpretation is borne out by the text of Rule 20(1) of Regulation No 2868/95. That provision expressly states that proof of the existence, validity and scope of protection of the earlier trade mark must be furnished ‘until expiry’ of the period referred to in Rule 19(1) of that regulation, which means the required documents must be filed within that period, and necessarily refers to the receipt of those documents by EUIPO and not to their being sent (see, to that effect and by analogy, judgment of 10 April 2013, Fercal — Consultadoria e Serviços v OHIM — Parfums Rochas (PATRIZIA ROCHA) , T‑360/11, not published, EU:T:2013:162, paragraph 26). Second, although neither Regulation No 207/2009 nor Regulation No 2868/95 contain a provision equivalent to Article 72(2) of the Rules of Procedure of the General Court, pursuant to which only the date of lodgment at the Registry is to be taken into account in the calculation of procedural time limits, the interpretation that it is the date on which a document is filed with EUIPO which is to be taken into account is consistent with the general scheme of those two regulations, numerous specific provisions of which state that, in the calculation of procedural time limits, the date of a document is the date on which it is received and not that on which it is sent. This is true, for example, of Rule 70(2) of Regulation No 2868/95, pursuant to which, where a procedural step is notified, the ‘receipt’ of the document notified is the relevant event. The same is true of Rule 72 of Regulation No 2868/95, pursuant to which, if a time limit expires on a day on which EUIPO is not open for ‘receipt’ of documents, the time limit is to be extended until the first day thereafter on which EUIPO is open for ‘receipt’ of documents, and of Rule 80(2) of that regulation, pursuant to which the date of ‘receipt’ of the retransmission or of the original of a document is to be deemed to be the date of the ‘receipt’ of the original communication where the latter has proved deficient (see, to that effect, judgment of 10 April 2013, PATRIZIA ROCHA , T‑360/11, not published, EU:T:2013:162, paragraph 27). The same is also true of Rule 98 of Regulation No 2868/95, pursuant to which a document for which a translation is to be filed is to be deemed not to have been received by EUIPO where the translation is ‘received’ by EUIPO after the expiry of the prescribed period. It follows that the principle that documents must be received is the principle governing proceedings before EUIPO (see, to that effect, order of 30 January 2014, Fercal v OHIM , C‑324/13 P, not published, EU:C:2014:60 , paragraph 43). In the present case, given that it is common ground that proof of the existence, validity and scope of protection of the earlier trade mark, accompanied by a translation into the language of the proceedings, was received by EUIPO on 21 May 2014, it must be found that it was filed after the expiry, on 12 May 2014, of the time limit set under Rule 19(1) of Regulation No 2868/95. Accordingly, the Board of Appeal did not err in considering, in paragraph 23 of the contested decision, that the applicant had submitted the documents intended to prove the existence, validity and scope of protection of the earlier trade mark after the expiry of the period prescribed for that purpose. In the second place, regarding the question whether the Board of Appeal was nonetheless required to take those documents into account pursuant to Article 76(2) of Regulation No 207/2009, it should be borne in mind that it follows from the wording of that provision 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 Regulation No 207/2009 and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late. In stating that the latter ‘may’, in such a case, decide to disregard facts, Article 76(2) grants EUIPO broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such facts into account (see judgment of 3 October 2013, Rintisch v OHIM , C‑120/12 P, EU:C:2013:638 , paragraphs 22 and 23 and the case-law cited). Indeed, were EUIPO compelled to take into consideration, in all circumstances, facts and evidence submitted by the parties to opposition proceedings outside of the periods prescribed for that purpose under the provisions of Regulation No 207/2009, those provisions would be rendered redundant (see judgment of 9 April 2014, MHCS v OHIM — Ambra (DORATO) , T‑249/13, not published, EU:T:2014:193 , paragraph 26 and the case-law cited). Where EUIPO is called upon to give a decision in the context of opposition proceedings, taking such facts or evidence into account is particularly likely to be justified where EUIPO considers, first, that the material which has been produced late is, on the face of it, likely to be relevant to the outcome of the opposition brought before it and, second, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (judgments of 13 March 2007, OHIM v Kaul , C‑29/05 P, EU:C:2007:162 , paragraph 44, and 9 April 2014, DORATO , T‑249/13, not published, EU:T:2014:193 , paragraph 25). However, where an opposition is based on an earlier national registered trade mark, it is common ground that the evidence of the existence, validity and scope of protection of that mark which must be submitted during the opposition proceedings is set out precisely and exhaustively in Rule 19(2)(a)(ii) and Rule 19(3) of Regulation No 2868/95, so that an opponent is in a position to be aware, even before filing its notice of opposition, of the specific documents which it must produce in support of that opposition. Consequently, the Board of Appeal must, in those circumstances, exercise its discretion restrictively and may allow the late submission of such documents only if the surrounding circumstances are likely to justify the delay that has occurred in the submission of proof (see, to that effect, judgment of 3 October 2013, Rintisch v OHIM , C‑122/12 P, EU:C:2013:628 , paragraph 40). In the present case, in order to justify its decision not to take into account the evidence received on 21 May 2014, the Board of Appeal emphasised, in particular, in paragraph 44 of the contested decision, that, by letter of 7 January 2014 (see paragraph 9 above), the applicant had been requested to submit documents in support of her opposition, accompanied where appropriate by a translation into the language of the proceedings, before 12 May 2014. The Board of Appeal also held, in paragraphs 35 and 46 of the contested decision, that the applicant had not put forward any legitimate reasons to explain her failure to submit evidence of the existence, validity and scope of protection of her earlier trade mark before the expiry of the period prescribed for that purpose. In that regard, the Board of Appeal contended, first, that the documents had been sent by post a mere three working days before the expiry of the prescribed period, although the applicant had been granted a period of two months within which to submit those documents and, second, that the applicant could not have been unaware of the fact that the indicative delivery time for an international registered letter was three working days, so that she should have taken appropriate measures to ensure that the documents reached EUIPO before the expiry of the prescribed period. To that end, according to the Board of Appeal, the applicant could, for example, have sent the documents in question via fax, as she in fact did on 21 May 2014, after the expiry of the prescribed period. In addition, after carrying out a detailed examination of the circumstances surrounding the late receipt of the documents in question, as submitted by the applicant, the Board of Appeal considered, in paragraph 46 of the contested decision, that postal constraints resulting from an unusual volume of traffic that had led to delays in the management of postal traffic in Spain could not, even if proved, constitute exceptional circumstances capable of interrupting or disrupting the proper functioning of EUIPO for the purposes of Rule 72 of Regulation No 2868/95; nor could they constitute a legitimate reason capable of justifying the submission of the documents after the expiry of the period prescribed for that purpose. It is sufficiently clear from that statement of reasons that the Board of Appeal verified whether the circumstances surrounding the late submission of evidence of the existence, validity and scope of protection of the applicant’s earlier trade mark were capable of justifying that delay. Furthermore, it is apparent from case-law that the Board of Appeal is not required, when exercising its discretion under Article 76(2) of Regulation No 207/2009, to examine all three of the criteria referred to in paragraph 30 above when one of those criteria alone is sufficient to establish that it must not take into account the evidence submitted late (see, to that effect, judgment of 3 October 2013, Rintisch v OHIM , C‑122/12 P, EU:C:2013:628 , paragraph 45 and the case-law cited). It follows that the Board of Appeal was justified, under Article 76(2) of Regulation No 207/2009, to refuse to take into account the documents submitted by the applicant after the expiry of the period prescribed by the Opposition Division for that purpose, and did not need to give a ruling on the possible relevance of that evidence nor to determine whether the stage of the proceedings at which that late submission had taken place argued against its being taken into account. That conclusion is not undermined by the applicant’s assertion that the Board of Appeal infringed Article 76(1) of Regulation No 207/2009 by refusing to examine the facts of its own motion. In that regard, it is sufficient to note that it is apparent from that provision that the obligation for EUIPO to examine facts of its own motion is restricted to relevant facts that could lead to it applying absolute grounds for refusal to the examination of an EU trade mark application carried out by the examiners and, on appeal, by the Boards of Appeal during the procedure for the registration of that mark. However, in the context of opposition proceedings, such as the proceedings at issue in the present case, it is for the proprietor of the earlier trade mark to prove the existence, validity and scope of protection of that mark. Thus, in the present case, the Board of Appeal was not required to examine the documents received on 21 May 2014 of its own motion. It follows from all of the foregoing that the first plea in law must be rejected. Second plea in law: infringement of Article 21, Article 41(1) and Article 47 of the Charter of Fundamental Rights and of Article 18 TFEU Admissibility While not raising a formal objection of inadmissibility pursuant to Article 130 of the Rules of Procedure, EUIPO primarily contends that the second plea in law is inadmissible on the ground, in essence, that it is unintelligible. In that regard, it should be borne in mind that, pursuant to the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to proceedings before the General Court by virtue of the first paragraph of Article 53 of that Statute, and pursuant to Article 76(d) of the Rules of Procedure, all applications must contain the subject matter of the dispute and a brief statement of the pleas in law on which the application is based. Irrespective of any question of terminology, that statement must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to give a ruling on the action, if necessary without any further information. In order to guarantee legal certainty and the sound administration of justice it is necessary, in order for an action to be admissible under the aforementioned provisions, that the basic legal and factual particulars relied on be indicated, at least in summary form, coherently and intelligibly in the application itself (see order of 28 April 1993, De Hoe v Commission , T‑85/92, EU:T:1993:39 , paragraph 20 and the case-law cited). More specifically, whilst it should be acknowledged, first, that the statement of the pleas in law in the application need not conform with the terminology and layout of the Rules of Procedure and, second, that those pleas may be expressed in terms of their substance rather than of their legal classification, the application must nonetheless set out those pleas with sufficient clarity. Moreover, a mere abstract statement of the pleas in law in the application does not satisfy the requirements of the Statute of the Court of Justice of the European Union or the Rules of Procedure, and the expressions ‘brief statement of the pleas in law’ and ‘summary of those pleas in law’ used therein mean that the application must specify on what pleas the action is based (see order of 28 April 1993, De Hoe v Commission , T‑85/92, EU:T:1993:39 , paragraph 21 and the case-law cited). In the present case, it is apparent from the application that the subject matter of the second plea in law is clearly defined, in that it seeks annulment of the contested decision and alleges infringement of Article 21, Article 41(1) and Article 47 of the Charter of Fundamental Rights and of Article 18 TFEU. It thus follows from the application that, by that plea, the applicant submits, in essence, that the contested decision is vitiated by an infringement of the aforementioned provisions, in that, first, the Board of Appeal disregarded her right to an effective remedy and a fair hearing and, second, EUIPO infringed the principle of non-discrimination on grounds of nationality. Accordingly, that plea in law is set out in the application with sufficient clarity and, consequently, the objection of inadmissibility must be dismissed as unfounded. Substance In support of the second plea in law, the applicant argues, first, that the Board of Appeal disregarded her right to an effective remedy and a fair trial by refusing to examine the documents received on 21 May 2014 and, second, that EUIPO infringed the principle of non-discrimination on grounds of nationality, in that the parties established, like EUIPO, in Spain, enjoy an advantage over the parties established in other Member States or in third States, owing to the shorter delivery times for letters sent via the Spanish post. EUIPO disputes the applicant’s arguments. First of all, it should be borne in mind that the Court has excluded the possibility of relying on the right to a fair ‘trial’ in proceedings before the Boards of Appeal of EUIPO, since proceedings before the Boards of Appeal are administrative and not judicial in nature (see, to that effect, judgment of 11 July 2013, Metropolis Inmobiliarias y Restauraciones v OHIM — MIP Metro (METRO) , T‑197/12, not published, EU:T:2013:375, paragraph 54 and the case-law cited). Next, regarding the right to an effective remedy, it should be noted that the Opposition Division’s decision constitutes a decision regarding the admissibility of the opposition that may be either revoked under the conditions laid down in Article 80 of Regulation No 207/2009 or annulled in the context of an appeal brought under Article 58 of that regulation. It follows from the above considerations that the EU legislature has provided mechanisms to enable the opponent to contest the decision by which EUIPO has found the opposition inadmissible (see, to that effect and by analogy, judgment of 18 October 2012, Jager & Polacek v OHIM , C‑402/11 P, EU:C:2012:649 , paragraph 69). Thus, it is evident that the applicant’s right to an effective remedy is protected both by the revocation mechanism laid down in Article 80 of Regulation No 207/2009 and by the appeal mechanism laid down in Article 58 of that regulation. Lastly, regarding the assertion that EUIPO infringed the principle of non-discrimination on grounds of nationality, in order to reject that assertion it is sufficient to note that EUIPO rejected the opposition brought by the applicant purely on the ground that the documents submitted in support of that opposition had been submitted after the expiry of the period prescribed for that purpose. As that fact is entirely unrelated to the applicant’s nationality or her place of establishment, EUIPO cannot be accused of having treated the applicant, whose responsibility it was to take account of the likely delivery time for the documents in question, differently from other operators established in other Member States or in third States, on the basis of her nationality. In any event, establishment in a Member State or a third State distant from EUIPO’s headquarters is not capable of placing a party in an objectively different situation, for the purposes of applying the period prescribed by EUIPO pursuant to Rule 19(1) of Regulation No 2868/95 for submitting documents, from that of another party established in the Member State in which EUIPO is located. Indeed, regardless of its place of residence or establishment, it is for each party to proceedings before EUIPO to take account of postal delivery times when sending items which must be received within a certain period. In any event, it should be borne in mind that the applicant also had the possibility, under Rule 79 of Regulation No 2868/95, of sending EUIPO proof of the existence, validity and scope of protection of her earlier trade mark by personal delivery, by fax or by any other means, including electronically, so that an alleged discrimination on grounds of nationality, connected with the delivery times for communications sent by post, is excluded. Accordingly, the second plea in law must be rejected. Having regard to all of the foregoing, the action must be dismissed. Costs Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, she must be ordered to pay the costs, in accordance with the form of order sought by EUIPO. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders Ana Isabel Pinto Eliseu Baptista Lopes Canhoto to pay the costs. Frimodt Nielsen Collins Valančius Delivered in open court in Luxembourg on 28 September 2016. [Signatures] * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII