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URL: http://www.bailii.org/eu/cases/EUECJ/2011/T8309.html
Cite as: [2011] EUECJ T-83/9, [2011] EUECJ T-83/09

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JUDGMENT OF THE GENERAL COURT (First Chamber)

9 September 2011 (*)

(Community trade mark – Community word mark CRAIC – Assignments – Registration of the transfer of the mark – Revocation – Articles 16, 17, 23 and 77a of Regulation (EC) No 40/94 (now Articles 16, 17, 23 and 80 of Regulation (EC) No 207/2009) and Rule 31 of Regulation (EC) No 2868/95

In Case T-�83/09,

David Chalk, residing in Canterbury, Kent (United Kingdom), represented by W. James, M. Gilbert, C. Balme, Solicitors, and S. Malynicz, Barrister,

applicant,

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Reformed Spirits Company Holdings Ltd, established in Saint Helier (United Kingdom), represented by C. Morcom QC,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 13 November 2008 (Case R 1888/2007-2) relating to an application for registration of the transfer of a Community trade mark following an assignment,

THE GENERAL COURT (First Chamber),

composed of J. Azizi (Rapporteur), President, E. Cremona and S. Frimodt Nielsen, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court on 20 February 2009,

having regard to the response of OHIM lodged at the Registry of the Court on 12 June 2009,

having regard to the response of the intervener lodged at the Registry of the Court on 12 May 2009,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,

gives the following

Judgment

Background to the dispute

1 On 6 June 2001, Arthur Crack Ltd (‘the initial proprietor’), filed a Community trade mark application with 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 CRAIC.

3 The goods in respect of which registration was sought, in particular after the restriction made during the proceedings before OHIM, fall within Classes 32 and 33 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, in respect of each of those classes, to the following description:

– Class 32: ‘Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and preparations for making beverages’;

– Class 33: ‘Poteen; alcoholic beverages containing poteen.’

4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 20/2001 of 11 March 2002. The Community trade mark was registered under number 2245306 on 31 October 2002 and the registration was published in the Community Trade Marks Bulletin No 98/2002 of 9 December 2002.

5 On 2 April 2007, the intervener, Reformed Spirits Company Holdings Ltd, sought to register the assignment of that Community trade mark, concluded on 12 March 2007 between the intervener as transferee and the UK Treasury Solicitor, as nominee for the Crown, acting as transferor.

6 According to the act of assignment, the company that was initially the proprietor had been dissolved on 4 July 2006 and, in accordance with Article 654 of the Companies Act 1985, on the dissolution of the company, all property and rights held on trust for it immediately before its dissolution became the property of the Crown and vested in the Crown as bona vacantia. Again according to the act of assignment, under Article 655 of the Companies Act, the Crown may dispose of such property and rights. Consequently, the Crown, as the new proprietor of the Community trade mark, assigned and transferred the property to the intervener in return for the sum for two thousand pounds sterling (GBP).

7 The registration for the transfer was accepted, carried out and notified by OHIM to the intervener on 16 April 2007.

8 On 7 May 2007, the applicant, Mr David Chalk, sought the registration of an assignment to him of the Community trade mark agreed by the initial proprietor. The applicant indicated that the Community trade mark had been assigned to him before it was transferred to the intervener. By way of evidence, the applicant presented an act of assignment of 21 January 2006. According to the applicant, he signed the assignment himself on behalf of the transferor, the initial proprietor, and the transferee, since he was, at that time, Chairman of the Board of Directors and shareholder in the initial proprietor.

9 On 24 May 2007, OHIM notified the parties of its intention to revoke its notification of 16 April 2007 registering the intervener as the proprietor of the Community trade mark. The assignment concluded on 21 January 2006 (‘the first assignment’) in favour of the applicant was before that of 12 March 2007 (‘the later assignment’) in favour of the intervener. Consequently, the applicant was already the proprietor of the mark at the time of the conclusion of the later assignment.

10 By letters of 25 and 28 May 2007, the intervener made its observations on the proposed revocation, maintained that the registration in the register of the later assignment in its favour was valid and requested that its registration as rightful proprietor be maintained.

11 On 3 October 2007, the examiner upheld the intervener’s arguments, rejected the applicant’s request and decided not to revoke the registration of 16 April 2007 of the intervener as proprietor of the Community trade mark. In particular, the examiner indicated, in essence, that no legal provision of Regulation No 40/94 or of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ EC 1995 L 303, p. 1; OJ OHIM 2-3/95, p. 258), as amended, empowered OHIM to change a decision that had been correctly adopted. The only provision that provides for the possibility of revoking a decision adopted by OHIM is Article 77a of Regulation No 40/94 (now Article 80 of Regulation No 207/2009), which envisages the possibility of revocation of decisions which contain obvious procedural errors attributable to OHIM. In the present case, the request for registration of the transfer was filed in accordance with Rule 31 of Regulation No 2868/95. The intervener submitted an assignment deed meeting the conditions required in order to register a transfer. Thus OHIM had not made an error in registering the later assignment.

12 On 27 November 2007, the applicant lodged an appeal with OHIM under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the examiner’s decision.

13 By decision of 13 November 2008 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. In particular, the Board of Appeal made reference to Articles 16, 17 and 23 of Regulation No 40/94 (now Articles 16, 17 and 23 of Regulation No 207/2009) (points 18 to 20 of the contested decision) and endorsed the reasons given by the examiner (point 21 of the contested decision). Accordingly, in its view, no legal provision of Regulation No 40/94 or of Regulation No 2868/95 allows OHIM to amend a decision formally taken. The sole legal provision providing for the possibility of revoking a decision taken by OHIM is Article 77a of Regulation No 40/94. In the present case, the application for registration of the transfer had been lodged in accordance with Rule 31 of Regulation No 2868/95. The applicant’s application, however, was not supported by any legal provision. The Board of Appeal added that the applicant’s application for registration of the transfer had been lawfully rejected, given that the registered proprietor of the Community trade mark was the intervener, who could not be affected by an earlier transfer not entered in the register (point 22 of the contested decision). The applicant’s arguments against the examiner’s decision were based on the validity of the earlier assignment in his favour, and, therefore, on the nullity and the lack of legal effect of the later assignment in favour of the intervener. This raised issues of contract and property law, matters governed by national law, which are not within OHIM’s jurisdiction, but within the ‘national jurisdiction’ pursuant to Article 16 of Regulation No 40/94 (point 23 of the contested decision).

Forms of order sought by the parties

14 The applicant claims that the Court should:

– annul the contested decision;

– order the removal from the register of the intervener’s name as proprietor of the Community trade mark and register, in its place, the applicant’s name;

– in the alternative, remit the case to the Board of Appeal for consideration afresh in the light of the Court’s findings;

– order OHIM and the intervener to pay the costs, including those of the present proceedings and those of the proceedings before the Board of Appeal.

15 OHIM contends that the Court should:

– dismiss the action in its entirety;

– order the applicant to pay the costs.

16 The intervener contends that the Court should:

– dismiss the action;

– confirm the contested decision;

– order the applicant to pay the costs, including those relating to the present proceeding and the costs incurred before the Board of Appeal.

Law

Admissibility of the applicant’s second and third heads of claim

17 OHIM contests the admissibility of the applicant’s second and third heads of claim whereby the applicant requests the Court to order that the intervener’s name be removed from the register as the proprietor and that the applicant be entered in its place, or in the alternative, that the case be remitted to the Board of Appeal. According to OHIM, these are inadmissible under Article 63(3) of Regulation No 40/94 (now Article 65(3) of Regulation No 207/2009), which provides that the Court has jurisdiction solely to review the legality of the decisions of the Boards of Appeal and to annul or alter them.

Admissibility of the second head of claim, requesting the Court to order that the intervener’s name be removed from the register as the proprietor and that the applicant be entered in its place

18 As has been recognised in settled case-law, in an action before the Courts of the European Union against the decision of a Board of Appeal of OHIM, the latter is required, under Article 63(6) of Regulation No 40/94 (now, Article 65(6) of Regulation No 207/2009), to take the measures necessary to comply with the judgment of the Court. Accordingly, it is not for the General Court to issue directions to OHIM, it being for OHIM to draw the appropriate inferences from the operative part and grounds of the Court’s judgments (see Case T-�443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-�2579, paragraph 20 and the case-law cited). Therefore, the applicant’s second head of claim, to the effect that the General Court should issue directions to OHIM that the intervener’s name be removed from the register as the proprietor of Community trade mark No 2245306 and that the applicant be entered in his place, is inadmissible.

Admissibility of the third head of claim seeking, in the alternative, that the Court remit the case to the Board of Appeal

19 Under Article 63(3) of Regulation No 40/94 the Court has jurisdiction both to annul and to alter a decision of OHIM and that, under Article 63(6) of that regulation, OHIM is required to take the measures necessary to comply with the judgment of the Court.

20 Although it is true that, under Article 63(6) of Regulation No 40/94, it is not for the Court to issue directions to OHIM, the Court, by remitting the case to the examiner or to the Board of Appeal, does not impose on OHIM any obligation to take action or refrain from doing so and is not therefore issuing directions to OHIM (see, to that effect, Case T–106/00 Streamserve v OHIM (STREAMSERVE) [2002] ECR II-�723, paragraphs 17 to 19).

21 It follows that the claim that the case be remitted to OHIM, in particular to the Board of Appeal, is not inadmissible under Article 63(6) of Regulation No 40/94.

22 The plea of inadmissibility concerning the third head of claim submitted by the applicant must therefore be rejected.

Substance

Summary of the pleas in law

23 The applicant disputes the contested decision, which, he claims, was based on incorrect interpretations of Article 16, 23 and 77a of Regulation No 40/94 and Rule 31 of Regulation No 2868/95.

24 The applicant argues that the Board of Appeal was wrong to refuse to revoke the decision by which OHIM had registered the intervener as proprietor of the Community trade mark in the register and to find that Regulation No 40/94 and Regulation No 2868/95 did not permit OHIM to register the applicant as proprietor of the Community trade mark concerned.

Article 16 of Regulation No 40/94

25 The applicant argues that Article 16(1) of Regulation No 40/94 requires OHIM to consider and apply the laws of the Member States – in the present case, the law of the United Kingdom – when making any decision concerning the transfer of a Community trade mark. In that regard, the Court notes that Article 16(1) of Regulation No 40/94 states that a Community trade mark as an object of property is to be dealt with as a national trade mark registered in a Member State. It follows that it is the national law of the Member State concerned which applies to questions regarding ownership of a Community trade mark. Accordingly, the competent authority to deal with questions relating to the ownership of Community trade marks is the competent authority for national marks of the Member State in question.

26 However, Article 16 of Regulation No 40/94 does not govern the law applicable to a contract, which includes the rules on the validity and interpretation of contracts concerning a Community trade mark, such as, in particular, assignments. In those cases the rights and obligations concerned are inter partes, namely between the parties to a contract.

27 The Board of Appeal was therefore right to find, contrary to the applicant’s arguments, that Article 16 of Regulation No 40/94 does not in any way require that OHIM consider and apply the national laws of the Member States concerning a Community trade mark as an object of property. It is not apparent from Article 16 of Regulation No 40/94 that OHIM or the Courts of the European Union must consider or rule on contractual or legal questions arising under national law.

Article 17 of Regulation No 40/94 and Rule 31 of Regulation No 2868/95 on the transfer of a Community trade mark

28 The applicant claims that Rule 31 of Regulation No 2868/95 requires that OHIM consider the validity and effect of documents that are provided to it if the legal effects of those documents are challenged. In that regard, in this case, the Court must determine the powers of OHIM regarding the registration of a transfer of a Community trade mark following an assignment. Accordingly, it is appropriate first to consider the legal provisions on transfers, namely Article 17 of Regulation No 40/94 read together with Rule 31 of Regulation No 2868/95.

29 Under Article 17(3) of Regulation No 40/94 (now Article 17(3) of Regulation No 207/2009), the assignment of a Community trade mark is to be made in writing and is to be signed by the parties to the contract, except when it is a result of a judgment. Under Rule 31 of Regulation No 2868/95, an application for registration of a transfer for the purpose of Article 17 of Regulation No 40/94 is to contain the documents establishing the transfer.

30 In the present case, the intervener’s request for the transfer satisfies the requirements of Rule 31 of Regulation No 2868/95, for it was accompanied by a document assigning the trade mark in accordance with the requirements of that rule. It follows that the first request for registration of a transfer and the registration of the intervener as the new proprietor of the Community trade mark at issue were valid. By contrast, the second request for a transfer did not meet those requirements, since the applicant was not the registered proprietor of the Community trade mark, who at that time was already the intervener. In that regard, as was argued by OHIM, a potential conflict between the two assignments at issue raises questions in relation to the law of contract and property, which exceed the scope of Rule 31 of Regulation No 2868/95 and the solution to which does not fall within OHIM’s jurisdiction.

31 It follows that OHIM was neither required nor entitled to consider the validity and the legal effects of a transfer under the applicable national law.

Article 77a of Regulation No 40/94

32 The applicant claims that Article 77a of Regulation No 40/94 allows OHIM to consider the validity of its decisions not only at the time when they are made, but also in the light of further facts and evidence supplied to OHIM subsequently. The Court observes, in that regard, that Article 77a(1) of Regulation No 40/94 (now Article 80(1) of Regulation No 207/2009) provides for the revocation of a decision or the cancellation of an entry in the register which contain an obvious procedural error attributable to OHIM. As provided in Article 77a(2) of Regulation No 40/94 (now Article 80(2) of Regulation No 207/2009), such a revocation of a decision or cancellation of an entry are to be determined ex officio or at the request of one of the parties to the proceedings within six months from the date on which the entry was made in the register or the decision was taken.

33 However, this case does not concern an obvious procedural error attributable to OHIM. Indeed, at the time the decision was taken to enter the transfer of the Community trade mark to the intervener, OHIM relied on the documents submitted, which gave rise to no doubts about their validity and content. Indeed, the application to register the transfer was accompanied by a written document of transfer signed by the transferor and the transferee, allowing identification of the transfers of ownership from the initial proprietor to the Crown and, then, to the intervener.

34 Consequently, the documents submitted complied with Article 17 of Regulation No 40/94 and Rule 31 of Regulation No 2868/95 and therefore were correctly accepted by OHIM. There was no apparent irregularity which should have been perceived by OHIM. Therefore, in this case there was no manifest error attributable to OHIM.

35 It should also be noted that, as OHIM and the intervener submit, OHIM was in no way obliged to consider the documents submitted subsequently in order to call into question the validity of a transfer which had been notified to it earlier and the corresponding transfer of which had been registered.

Article 23 of Regulation No 40/94

36 Under Article 23 of Regulation No 40/94, a transfer of a Community trade mark is in principle to have effects vis-a-vis third parties only after entry in the register, save where third parties have acquired rights in the trade mark after the date of the transfer and they knew of that transfer at the date on which the rights were acquired. It follows that, in order to be able to assert his rights vis-à-vis third parties, the new proprietor after the transfer of the trade mark must register that transfer. In the absence of such registration, third parties having no knowledge of the transfer cannot have that transfer raised against them. In the present case, the applicant, as the alleged proprietor of the Community trade mark following the alleged earlier assignment, did not register the transfer of the Community trade mark in the register at OHIM. Moreover, there is no indication or claim that the intervener knew of the earlier assignment of the mark at issue to the applicant. In such a situation, the transfer of the Community trade mark to the applicant may not be raised against the intervener.

37 It follows that the Board of Appeal was justified in holding that OHIM had lawfully registered the transfer of the mark at issue to the intervener on the basis of the evidence which was submitted to it.

38 It follows from all the foregoing considerations that the application must be dismissed in its entirety.

Costs

39 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.

40 As the applicant has been unsuccessful, he must be ordered to pay the costs in accordance with the form of order sought by OHIM and the intervener.

41 Furthermore, under Article 136(2) of the Rules of Procedure, costs necessarily incurred for the purposes of the proceedings before the Board of Appeal of OHIM are to be regarded as recoverable costs. Consequently, it is appropriate to order the applicant to pay the costs incurred on that occasion by the intervener, in accordance with the form of order sought by the intervener.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1. Dismisses the action;

2. Orders Mr David Chalk to pay the costs, including the costs necessarily incurred by Reformed Spirits Company Holdings Ltd for the purposes of the proceedings before the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

Azizi

Cremona

Frimodt Nielsen

Delivered in open court in Luxembourg on 9 September 2011.

[Signatures]

* Language of the case: English.