Court of Justice of the European Communities (including Court of First Instance Decisions)

ORDER OF THE GENERAL COURT (Fourth Chamber)

9 October 2019(*)

(EU trade mark — Opposition proceedings — Application for EU word mark ESIM Chemicals — Earlier national word mark ESKIM — Relative ground for refusal — Failure to comply with the obligation to pay the appeal fee within the period prescribed — Decision of the Board of Appeal declaring that the appeal is deemed not to have been filed — Action manifestly lacking any foundation in law)

In Case T–713/18,

Esim Chemicals GmbH, established in Linz (Austria), represented by I. Rungg and I. Innerhofer, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Sigma-Tau Industrie Farmaceutiche Riunite SpA, established in Rome (Italy),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 2 October 2018 (Case R 1267/2018-5) relating to opposition proceedings between Sigma-Tau Industrie Farmaceutiche Riunite and Esim Chemicals,

THE GENERAL COURT (Fourth Chamber),

composed, at the time of the deliberation, of H. Kanninen, President, C. Iliopoulos and I. Reine (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 3 December 2018,

having regard to the response lodged at the Court Registry on 28 March 2019,

makes the following

Order

 Background to the dispute

1        On 14 August 2015, the applicant, Esim Chemicals GmbH, 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), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        The trade mark in respect of which registration was sought is the word mark ESIM Chemicals.

3        The goods and services in respect of which registration was sought are in Classes 1, 5, 31 and 42 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.

4        The trade mark application was published in European Union Trade Marks Bulletin No 2015/182 of 25 September 2015.

5        On 28 December 2015, Sigma-Tau Industrie Farmaceutiche Riunite SpA filed a notice of opposition, under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001), to registration of the trade mark applied for in respect of some of the abovementioned goods and services, namely those in Classes 1 and 5.

6        The opposition was based on the earlier Italian word mark ESKIM designating goods in Class 5.

7        On 3 May 2018, the Opposition Division upheld the opposition in part on account of a likelihood of confusion with the earlier trade mark in respect of the goods in Class 5.

8        On 2 July 2018, the applicant filed a notice of appeal before EUIPO against the Opposition Division’s decision.

9        By notification of 6 July 2018, EUIPO informed the applicant that its notice of appeal had been received and assigned to the Fifth Board of Appeal. That notification indicated that it replaced a notification dated 2 July 2018.

10      On 20 July 2018, the Registry of the Boards of Appeal informed the applicant that the appeal fee of EUR 720 had been received by EUIPO only on 13 July 2018, namely after the expiry, on 9 July 2018, of the two-month appeal period during which that fee should have been paid. Nevertheless, the Registry informed the applicant that that period for payment of the fee would be considered to have been observed if, until 20 August 2018, the applicant were to provide evidence that it had paid the fee or had given an order to a banking establishment to transfer the amount of the payment of the fee before the expiry of that period for payment. Moreover, the Registry informed the applicant that if the payment had been made within the last 10 days of the appeal period, the applicant would also be required to pay a 10% surcharge of the appeal fee and provide proof of that additional payment within one month.

11      On 6 August 2018, the applicant provided proof of payment of the 10% surcharge mentioned in the previous paragraph.

12      On the same day, the applicant filed a statement setting out the grounds for its appeal.

13      On 3 September 2018, EUIPO acknowledged receipt of the proof of payment of the 10% surcharge and of the statement setting out the grounds of appeal.

14      By decision of 2 October 2018, the Fifth Board of Appeal of EUIPO found that the appeal was deemed not to have been filed and ordered that the appeal fee and the 10% surcharge be refunded to the applicant (‘the contested decision’).

15      In the contested decision, the Board of Appeal recalled that, in accordance with Article 68(1) of Regulation 2017/1001, the appeal fee must be paid before the expiry of the appeal period, namely two months after the date of notification of the decision which is the subject of the appeal. It also stated that, according to Decision No EX‑13‑2 of the President of EUIPO of 26 November 2013 concerning the conditions applicable to communication by electronic means in relation to notification of decisions to users, applicable at the material time, notification is deemed to have taken place before the end of the fifth calendar day following the day on which EUIPO places the decision in the user’s inbox. In those circumstances, the period for payment of the appeal fee expired on 9 July 2018. However, the payment of that fee was not received by EUIPO until 13 July 2018. According to the Board of Appeal, despite being invited by EUIPO to do so, the applicant did not comply with Article 180 of that regulation and failed to provide evidence that the order to transfer the payment of that fee had been given within the period for payment.

16      On 9 October 2018, the applicant sent a letter of clarification to EUIPO in which it requested that the appeal proceedings be resumed.

17      On 29 October 2018, EUIPO rejected that request on the ground that a decision had already been rendered in the appeal and therefore no further comments on the substance were necessary.

 Forms of order sought

18      The applicant claims that the Court should:

–        annul the contested decision;

–        resume the appeal proceedings and follow the arguments put forward in those proceedings;

–        alternatively, permit the application to reopen the proceedings of 29 October 2018, for a substantive decision by the Fifth Board of Appeal;

–        order EUIPO to pay the costs.

19      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

20      As set out in Article 126 of the Rules of Procedure of the General Court, where the action is manifestly lacking any foundation in law, the Court may by reasoned order, and without taking further steps in the proceedings, give a decision on the action.

21      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided, pursuant to Article 126 of the Rules of Procedure, to give its decision without taking further steps in the proceedings.

22      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 68 of Regulation 2017/1001.

23      The applicant claims that it had instructed the payment of the appeal fee on 9 July 2018, namely the date on which the period for payment of that fee expired. It states that due to unforeseen delays and errors in ‘[its] billing department’, the payment could be made only on 11 July 2018, and EUIPO received it only on 13 July 2018. Moreover, the applicant submits that the surcharge was paid within the one-month time limit from EUIPO’s notification of 20 July 2018. Furthermore, that notification implies that EUIPO recognised and accepted the payment of the appeal fee. EUIPO did not send any other notification concerning the payment of the appeal fee which would have indicated that the payment of that fee was not made within the prescribed time limit. Moreover, the notification of 6 July 2018, stating that it replaced a notification dated 2 July 2018, further misled the applicant. The applicant did not receive any notification on 2 July 2018. By contrast, the applicant did receive a notification on 4 July 2018 the content of which was not destined for it. The applicant adds that its belief that EUIPO had accepted payment of the appeal fee and that no further evidence in that respect was requested from the applicant, was reinforced by EUIPO’s notification dated 3 September 2018. Thus, according to the applicant, the contested decision is in contradiction with what was previously notified to it by EUIPO. Lastly, EUIPO denied the applicant the possibility for restitutio in integrum.

24      EUIPO contests the applicant’s arguments and contends that they are manifestly unfounded.

25      In the present case, it should be borne in mind that, under Article 68 of Regulation 2017/1001, a notice of appeal must be filed in writing with EUIPO within two months of the date of notification of the decision which is the subject of that appeal. That notice is deemed to have been filed only when the fee for appeal has been paid.

26      In accordance with Article 180(1) of Regulation 2017/1001, the date on which the payment is considered to have been made to EUIPO is the date on which the amount of the payment or of the transfer is actually entered in a bank account held by EUIPO. Moreover, Article 180(3) of that regulation states that where, under paragraph 1 of that article, payment of a fee is not considered to have been made until after the expiry of the period in which it was due, it is considered that this period has nevertheless been observed if evidence is provided to EUIPO that the persons who made the payment in a Member State, within the period within which the payment should have been made, duly gave an order to a banking establishment to transfer the amount of the payment, and paid a surcharge of 10% of the fee. However, no surcharge is payable if the relevant order to the banking establishment has been given not later than 10 days before the expiry of the period for payment. Under Article 180(4) of that regulation, if the evidence is insufficient, or if the required surcharge is not paid in due time, the period for payment is considered not to have been observed.

27      Furthermore, pursuant to Article 23(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), if the appeal fee has been paid after the expiry of the appeal period provided for in Article 68 of Regulation 2017/1001, the Board of Appeal is to declare that the appeal is deemed not to have been filed.

28      In the present case, it is common ground between the parties that the time limit for filing the appeal and, consequently, for the payment of the appeal fee was 9 July 2018. Moreover, it is not contested that EUIPO received the payment of that fee on 13 July 2018. Consequently, the applicant did not comply with the period prescribed for payment of that fee.

29      Nevertheless, as is apparent from Article 180(3) of Regulation 2017/1001 and from EUIPO’s notification of 20 July 2018, the applicant could have provided evidence, within the period during which that payment should have been made, that it had duly given an order to a banking establishment to transfer the amount due.

30      However, as regards the payment of the appeal fee, the applicant did not provide EUIPO with any evidence to substantiate its claim that an order to transfer the payment was given on 9 July 2018. Proof of payment of the surcharge of 10% of the amount of the appeal fee is, from that point of view, irrelevant, since payment of the appeal fee itself was not made within the prescribed period (see, to that effect, judgment of 21 January 2014, Wilmar Trading v OHIM — Agroekola (ULTRA CHOCO), T‑232/12, not published, EU:T:2014:18, paragraph 36).

31      In those circumstances, the Board of Appeal was entitled to consider that the appeal fee had not been paid within the period provided for in Article 68 of Regulation 2017/1001 and that the appeal was deemed not to have been filed.

32      That finding is not called into question by the applicant’s arguments.

33      First, the applicant’s argument that the payment of the appeal fee was instructed on 9 July 2018 but was only effected 2 days later due to unforeseen delays and errors in the applicant’s billing department must be rejected.

34      In that connection, it should be recalled that, according to settled case-law, no derogation from the European Union rules on procedural time limits may be made save where the circumstances are quite exceptional, since the strict application of those rules serves the requirements of legal certainty and the need to avoid any discrimination or arbitrary treatment in the administration of justice. Regardless of whether such circumstances are considered unforeseeable or to amount to force majeure or excusable error, they include, in any event, a subjective element involving the obligation, on the part of the party acting in good faith, to exercise all the care and diligence required of a normally well-informed trader to monitor the course of the procedure set in motion and to comply with the prescribed time limits (see judgment of 21 May 2014, Melt Water GmbH v OHIM (NUEVA), T‑61/13, EU:T:2014:265, paragraph 38 and the case-law cited).

35      In the present case, it is sufficient to note that the applicant did not demonstrate the care and diligence required for the purposes of monitoring and complying with the period prescribed for payment of the appeal fee.

36      Indeed, the applicant relies solely on the fact that its billing department was understaffed due to the holiday period. However, in the present case, such a period is largely predictable, as are the consequences of staff shortages. In that context, the applicant was required to anticipate those circumstances and take the necessary precautions to ensure that payment was made within the prescribed period. It follows from the lack of care and diligence on the part of the applicant that it cannot properly rely on any unforeseeable circumstance or force majeure, or on any excusable error, in order to justify its failure to pay the appeal fee within the prescribed period (see, to that effect, judgment of 21 May 2014, NUEVA, T‑61/13, EU:T:2014:265, paragraph 42).

37      Second, with regard to the notification of 6 July 2018, it should be noted that, in that notification, EUIPO merely informed the applicant that its appeal had been received and assigned to the Fifth Board of Appeal. By contrast, EUIPO did not comment on the payment of the appeal fee in that notification. Consequently, even if that notification contained ambiguities, that would not affect the applicant’s obligations with regard to the payment of that fee.

38      Third, in the notification of 20 July 2018, requesting the applicant to pay the surcharge of 10% of the amount of the appeal fee, the applicant was, first of all, formally requested to provide evidence that it had paid the appeal fee or that it had given an order to a banking establishment to transfer the amount of the payment before the expiry of the appeal period. Therefore, the applicant cannot validly claim that, by means of that notification, EUIPO accepted payment of the appeal fee.

39      Fourth, as regards EUIPO’s notification of 3 September 2018 confirming receipt of payment of the surcharge of 10% of the amount of the appeal fee, it is sufficient to note that (i) that notification does not concern whatsoever payment of the appeal fee; and (ii) that notification postdates the expiry of the one-month period for providing proof of payment of that fee, and, therefore, cannot justify the applicant’s failure to do so.

40      Fifth, the applicant submits that EUIPO did not send any further notification regarding payment of the appeal fee which indicated that the payment of that fee had not been made within the prescribed period. In that regard, it is sufficient to note that the notification of 20 July 2018 is sufficiently clear and that, given that the applicant did not provide proof of payment of the appeal fee within the period prescribed in that notification, it cannot validly claim that EUIPO should have requested it to do so again. Moreover, the applicant could not be unaware of the extent of its obligations under Article 180(3) of Regulation 2017/1001, cited in paragraph 26 above.

41      Sixth, as regards the possibility of restitutio in integrum, it is sufficient to state that the applicant has not shown that it submitted an application under Article 104(1) of Regulation 2017/1001 to have its rights re-established, an application which would have been addressed in the contested decision.

42      It follows that the single plea in law must be rejected as manifestly unfounded.

43      The action must therefore be dismissed in its entirety as manifestly lacking any foundation in law without it being necessary to rule on the admissibility of the second and third heads of claim by which the applicant submits, in essence, that the proceedings before EUIPO should be resumed.

 Costs

44      Under Article 134(1) 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. Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby orders:

1.      The action is dismissed.

2.      Esim Chemicals GmbH shall bear its own costs and pay the costs incurred by the European Union Intellectual Property Office (EUIPO).

Luxembourg, 9 October 2019.

*      Language of the case: English.

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