JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

29 June 2016 (*)

(EU trade mark — Invalidity proceedings — EU figurative marks animal –Unregistered earlier national word mark ANIMAL — Relative ground for refusal — Application of national law by EUIPO — Article 53(1)(c) and Article 8(4) of Regulation (EC) No 207/2009 — Particulars of the right on which the application for a declaration of invalidity is based — Rule 37(b)(ii) of Regulation (EC) No 2868/95)

In Joined Cases T‑727/14 and T‑728/14,

Universal Protein Supplements Corp., established in New Brunswick, New Jersey (United States), represented by S. Malynicz, Barrister,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by P. Bullock and A. Folliard-Monguiral, acting as Agents,

defendant,

the other party to the proceedings before EUIPO, intervener before the General Court, being,

H Young Holdings plc, established in Newbury (United Kingdom), represented by D. Parrish, Solicitor, and A. Roughton, Barrister,

ACTION brought against the decisions of the First Board of Appeal of EUIPO of 31 July 2014 (Cases R 2054/2013-1 and R 2058/2013-1), relating to invalidity proceedings between Universal Protein Supplements and H Young Holdings,

THE GENERAL COURT (Fourth Chamber),

composed of M. Prek, President, I. Labucka (Rapporteur) and V. Kreuschitz, Judges,

Registrar: I. Dragan, Administrator,

having regard to the applications lodged at the Court Registry on 10 October 2014,

having regard to the responses of EUIPO and the intervener, lodged at the Court Registry on 16 February 2015,

having regard to the order of 16 April 2015 joining cases T‑727/14 and T‑728/14 for the purposes of the written procedure, the oral procedure and the decision closing the case,

further to the hearing on 15 January 2016,

gives the following

Judgment

 Background to the dispute

1        On 16 August 2002, the intervener, H Young Holdings plc, filed two applications for registration of EU trade marks with the European Union Intellectual Property Office (EUIPO), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

2        The marks in respect of which registration was sought were the following figurative signs:

–        in Case T‑727/14:

–        in Case T‑728/14:

3        The goods and services for which registration was sought fall within Classes 3, 6, 8, 9, 12, 14, 16, 18, 20 to 22, 24, 25, 27, 28, 35, 36, 39 and 42 within the meaning 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 particular, for goods within Class 25, to the following description: ‘Clothing, footwear, headgear, baseball caps, sweatshirts, t-shirts; sports clothing; wet suits; gloves; headbands; sports hats and helmets; sports footwear; sports shoes; gymnastic clothing; bandannas.’

4        The applications for marks were published in the Community Trade Marks Bulletin No 36/2003, of 28 April 2003 (in Case T‑727/14), and No 71/2003, of 1 September 2003 (in Case T‑728/14), and registered on 7 December 2006 (in Case T‑727/14) and on 13 April 2006 (in Case T‑728/14). The two EU trade marks were renewed on 2 September 2012.

5        On 11 June 2012, the applicant, Universal Protein Supplements Corp., filed applications for declarations of invalidity against those EU trade marks on the basis of Article 53(1)(c), read in conjunction with Article 8(4), of Regulation No 207/2009. The applications for declarations of invalidity referred to goods within Class 25 covered by the contested marks and were based on the unregistered word mark ANIMAL used in the course of trade for ‘clothing’ falling within Class 25.

6        In the application forms seeking declarations of invalidity filed with EUIPO, the applicant stated that its unregistered mark had been used ‘in the territory of the European Union’. In the explanations attached to those forms, the applicant stated that it had used the mark ANIMAL for clothing in the European Union, and in specific countries thereof, since 1993.

7        In its statement of grounds of appeal lodged with the Cancellation Division on 20 October 2012, after the latter made requests for regularisation, the applicant produced various documents seeking to demonstrate that its unregistered sign ANIMAL had been used for clothing in various European Union countries. However, it did not give details of the provisions of national law on which it based its applications for declarations of invalidity.

8        Following the intervener’s observations alleging that the applicant had not provided any information as to the national law that could confer on it the right to prohibit the use of a more recent mark, the applicant, in the rejoinder before the Cancellation Division submitted on 4 June 2013, stated that it had demonstrated use of its unregistered trade mark in Belgium, the Czech Republic, Germany, France, Italy, Luxembourg, Hungary, the Netherlands, Austria, Romania, Slovakia and Sweden. As regards the relevant national legislation, the applicant attached an extract of the guidelines concerning procedures before EUIPO (‘the EUIPO Guidelines’), namely the table entitled ‘National rights which constitute “earlier rights” within the sense of Article 8(4) of [Regulation No 207/2009]’ (hereafter referred to as ‘the table of national rights’ or ‘the table annexed to the EUIPO guidelines’). The applicant stated that the table explained the protection of unregistered rights in the Member States of the European Union.

9        On 29 August 2013, the Cancellation Division rejected the applications for declarations of invalidity of the EU trade marks at issue and ordered the applicant to pay the costs. It held, in essence, that the applicant had not produced any information relating to the rights relied on or to the conditions that must be satisfied in order to prohibit use of the contested marks in accordance with the rights in force in each of the Member States referred to. It found in particular that a general reference to the national legislation listed for information purposes in the table included in the EUIPO guidelines concerning opposition proceedings on the basis of Article 8(4) of Regulation No 207/2009 could not be regarded as sufficient.

10      On 21 October 2013, the applicant filed a notice of appeal against the Cancellation Division’s decision.

11      By two decisions of 31 July 2014 (‘the contested decisions’), the First Board of Appeal of EUIPO dismissed the appeals and ordered the applicant to pay the costs. It held, in essence, that the applicant had not shown the existence, nature and scope of the unregistered national rights that it relied on in support of its applications for declarations of invalidity since it did not satisfy the obligation laid down in Rule 37(b)(ii) of Commission Regulation (EC) No 2868/95 of 13 December 1995, implementing Regulation No 40/94 (OJ 1995, L 303, p. 1). More specifically, the Board of Appeal held that by merely asserting that its unregistered mark had been used in Belgium, the Czech Republic, Germany, France, Italy, Luxembourg, Hungary, the Netherlands, Austria, Romania, Slovakia and Sweden, and producing the table of national rights to which it made general reference, the applicant had not satisfied the requirement laid down in Rule 37(b)(ii) of Regulation No 2868/95 under which the application for a declaration of invalidity must contain particulars of the right on which that application is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity. According to the Board of Appeal, the applicant did not rely on any provision or any right. It considered that a general reference to the table in the EUIPO guidelines does not enable EUIPO to identify the national right upon which the application for a declaration of invalidity is based.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decisions;

–        order EUIPO and the intervener to pay the costs.

13      EUIPO contends that the Court should:

–        dismiss the applications;

–        order the applicant to pay the costs EUIPO has incurred.

14      The intervener claims that the Court should:

–        uphold the contested decisions;

–        order the applicant to bear its own costs and those of the intervener.

 Law

15      In support of its applications, the applicant relies on two pleas, alleging, first, infringement of Article 8(4) of Regulation No 207/2009 and Rule 37(b)(ii) of Regulation No 2868/95 and, second, the fact that EUIPO did not of its own motion obtain information on the rights in the Member States concerned, in breach of Article 76 of Regulation No 207/2009.

 The first plea, alleging infringement of Article 8(4) of Regulation No 207/2009 and Rule 37(b)(ii) of Regulation No 2868/95

16      By its first plea, the applicant submits that the Board of Appeal infringed Article 8(4) of Regulation No 207/2009 and Rule 37(b)(ii) of Regulation No 2868/95 in so far as it held that the applicant had not indicated the Member States concerned by the unregistered mark, the relevant applicable laws and how those laws conferred the right to prohibit the later EU trade marks.

17      The applicant considers that it satisfied the conditions laid down by Rule 37(b)(ii) of Regulation No 2868/95 since it indicated the countries concerned, the relevant legal provisions, and even how those provisions worked in each country to prohibit later rights by supplying the table annexed to the EUIPO guidelines. It submits, in particular, that the obligation to show the content of the law applicable may be satisfied citing the table annexed to the EUIPO guidelines.

18      Furthermore, the applicant submits that the term ‘particulars’ used in Rule 37(b)(ii) of Regulation No 2868/95 means that it was required to indicate the legal provisions that it relied on.

19      EUIPO submits that the Board of Appeal had rightly held that the applicant had not identified with the necessary precision the alleged earlier rights relied on or the applicable provisions of national laws and that, therefore, the applications for declarations of invalidity did not comply with Rule 37(b)(ii) of Regulation No 2868/95 or, consequently, the substantive provisions of Article 53(1)(c) read in conjunction with Article 8(4) of Regulation No 207/2009. It states that merely indicating the applicable law is not considered to be sufficient, as it is not for EUIPO to make the relevant argument on behalf of the applicant.

20      The intervener agrees with the Board of Appeal’s findings in the contested decisions. It submits that it was not able to exercise its right of defence since the applicant had not indicated which countries were regarded as relevant for the purposes of its applications for declarations of invalidity, which rights and which laws were relied on, and how those rights might prohibit it from using the EU trade marks at issue.

21      Under Article 53(1)(c) of Regulation No 207/2009, an EU trade mark is to be declared invalid, on an application to EUIPO, where there is an earlier right as referred to in Article 8(4) of that regulation and the conditions set out in Article 8(4) are satisfied.

22      Pursuant to Article 8(4) of Regulation No 207/2009 the proprietor of a sign, other than a registered mark, may oppose the registration of an EU trade mark, if that sign satisfies four cumulative conditions: the sign must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired in accordance with EU law or the law of the Member State in which the sign was used prior to the date of application for registration of the EU trade mark; and, lastly, the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark. Those four conditions limit the number of signs other than marks which may be relied on to dispute the validity of an EU trade mark throughout the European Union under Article 1(2) of Regulation No 207/2009 (judgment of 24 March 2009 in Moreira da Fonseca v OHIM — General Óptica (GENERAL OPTICA), T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 32).

23      The first two conditions, namely those concerning the use and significance of the sign relied on, the latter having to be not merely local, arise from the very wording of Article 8(4) of Regulation No 207/2009 and must therefore be interpreted in the light of EU law. Regulation No 207/2009 thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (judgment of 24 March 2009 in GENERAL OPTICA, T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 33).

24      By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to […] the law of the Member State governing that sign’, that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation No 207/2009, constitute conditions laid down by the regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is entirely justified, given that Regulation No 207/2009 makes it possible for signs which fall outside the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark (judgment of 24 March 2009 in GENERAL OPTICA, T‑318/06 to T‑321/06, EU:T:2009:77, paragraph 34). In accordance with Article 76(1) of Regulation No 207/2009, the burden of proving that that condition is met lies with the opponent before EUIPO (judgment of 29 March 2011 in Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 189).

25      With regard to the application of the fourth condition set out in Article 8(4)(b) of Regulation No 207/2009, regard must be had, in particular, to the national rules relied on and to the judicial decisions delivered in the Member State concerned. On that basis, the opponent must establish that the sign in question falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited (see judgment of 29 March 2011 in Anheuser-Busch v Budějovický Budvar, C‑96/09 P, EU:C:2011:189, paragraph 190).

26      Rule 37(b)(ii) of Regulation No 2868/95 provides that an application for a declaration of invalidity of an EU trade mark lodged with EUIPO pursuant to Article 56 of Regulation No 207/2009 is to include, where it is an application made under Article 53(1)(c) of Regulation No 207/2009, as regards the grounds relied on in the application, particulars of the right on which the application for a declaration of invalidity is based, and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity.

27      As regards the role of the applicant for a declaration of invalidity, the Court of Justice has stated that Rule 37 of Regulation No 2868/95 requires the applicant to provide EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law (judgments of 5 July 2011 in Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 50, and 27 March 2014 in OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 34).

28      It should be recalled in the present case that the applicant, during the administrative procedure before EUIPO (see paragraph 8 above), first, indicated the countries in which it claimed that it used its unregistered mark and, second, made a general reference to the table annexed to the EUIPO guidelines. It is therefore for the Court to decide whether, in those circumstances, the applicant must be regarded as having satisfied the conditions under Rule 37(b)(ii) of Regulation No 2868/95.

29      The Board of Appeal, in paragraphs 30 and 31 of the contested decisions, held that a general reference to the table, which, for certain Member States of the European Union at least, indicates different categories of earlier national rights that could be relied on under Article 8(4) of Regulation No 207/2009, did not allow EUIPO to identify the provision and right claimed by the applicant for a declaration of invalidity, and was not therefore specific enough to comply with the requirement laid down by Rule 37(b)(ii) of Regulation No 2868/95. Furthermore, it held that the table published by EUIPO in its guidelines, which cannot in any event derogate from the legal provisions of Regulation No 207/2009 or Regulation 2868/95, was only indicative, was not necessarily complete, and not necessarily up to date.

30      In that regard, it must be borne in mind that, as EUIPO submits, the information about the applicable right, provided by the applicant for a declaration of invalidity, must allow EUIPO to understand and apply the content of that right, the conditions for obtaining protection and the extent of that protection, and allow the other party to the proceedings to exercise its rights of defence.

31      It should be noted that the table of national rights, as produced by the applicant, contains, for each of the Member States of the European Union, a list of the rights that could constitute earlier rights within the meaning of Article 8(4) of Regulation No 207/2009, reference to the national legislation and a summary of the conditions, in particular as regards the acquisition and the rights conferred on the proprietor of the right. However, that table does not contain citations of the provisions of the national laws referred to in it.

32      In the present case, the applicant relied on the use of the sign ANIMAL, as an unregistered mark, in several European Union countries and made a general reference to the table annexed to the EUIPO guidelines. Accordingly, even though the table contains all the information relating to one or several applicable national rights necessary to comply with the obligation arising under Rule 37(b)(ii) of Regulation No 2868/95 to provide the particulars of the right on which the application for a declaration of invalidity is based, it must however be observed that, in the present case, the applicant, during the administrative procedure, did not identify, in a precise and unambiguous manner, the provisions of the various national laws on which it based its applications for declarations of invalidity. As the Board of Appeal held, in paragraph 29 of the contested decisions, that general reference to the table annexed to the EUIPO guidelines did not allow EUIPO to identify the provisions of national law on which the applicant’s applications for declarations of invalidity were based or to apply the content of those rights, or the intervener to exercise his rights of defence.

33      Consequently, it must be held that the applicant has not provided the evidence establishing the content of the national rights relied on.

34      In that regard, it should be added that, even if the form of words used by the Board of Appeal in paragraph 23 of the contested decisions, namely that the applicant had indicated no provision or right, which the applicant disputes, might seem maladroit, the fact remains that the Board of Appeal’s conclusion that the applicant had not satisfied the conditions laid down in Rule 37(b)(ii) of Regulation No 2868/95 is well founded.

35      Furthermore, as is clear from the case-law cited in paragraph 27 above, in accordance with Rule 37(b)(ii) of Regulation No 2868/95, the applicant was not only obliged to provide information showing the content of the national laws, but also evidence demonstrating that it fulfilled the conditions required, in accordance with those national laws, in order to have use of an EU trade mark prohibited pursuant to that earlier right.

36      In the present case, as the Board of Appeal rightly held at paragraph 36 of the contested decisions, the applicant has also not demonstrated that it fulfilled the necessary conditions to be able to have use of the EU trade marks at issue prohibited pursuant to various national laws mentioned in the table to which the applicant referred. It therefore did not satisfy the second requirement under Rule 37(b)(ii) of Regulation No 2868/95.

37      In that regard, the applicant submitted, in particular, that an applicant for a declaration of invalidity must give particulars of the right on which it relies and how that right confers the right to prohibit an EU trade mark.

38      However, contrary to what the applicant appears to submit, in order to satisfy the requirements of Rule 37(b)(ii) of Regulation No 2868/95, it is not sufficient for a party relying on rights flowing from Article 8(4) of Regulation No 207/2009 merely to set out or indicate, in abstracto, the conditions for the application of national provisions, but on the contrary requires, that it shows, in concreto, in the instant case, that it satisfies those conditions of application. In the present case, as held in paragraph 36 above, the applicant has not provided such information.

39      It follows that, having regard to the foregoing, the Board of Appeal was fully entitled to find that the applicant had not satisfied the requirements under Rule 37(b)(ii) Regulation No 2868/95.

40      Consequently, the present plea must be rejected.

 The second plea, alleging that EUIPO did not of its own motion obtain information on the rights in the Member States concerned, in breach of Article 76 of Regulation No 207/2009

41      The applicant submits that, during the administrative procedure, it had clearly provided particulars as to the content of the relevant provisions and that a line of case-law of the General Court and the Court of Justice places EUIPO under a duty to obtain further information as necessary as regards the national legislation and its field of application. In that regard, the applicant refers, in particular, to the judgment of 27 March 2014 in OHIM v National Lottery Commission (C‑530/12 P, EU:C:2014:186). The applicant considers that the Board of Appeal failed in its duty to obtain of its own motion information on the national law of the Member States concerned.

42      EUIPO and the intervener dispute those allegations.

43      Article 76(1) of Regulation No 207/2009 provides that in proceedings before it EUIPO is to examine the facts of its own motion. However, in proceedings relating to relative grounds for refusal of registration, the examination is limited to the facts, evidence and arguments provided by the parties and the relief sought.

44      As has already been recalled in paragraph 26 above, Rule 37(b)(ii) of Regulation No 2868/95 provides that an application for a declaration of invalidity of an EU trade mark, filed with EUIPO pursuant to Article 56 of Regulation No 207/2009, is to contain, in the case of an application made pursuant to Article 53(1)(c) of Regulation No 207/2009, particulars of the right on which the application for a declaration for invalidity is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity.

45      Similarly, it is apparent from the case-law of the Court of Justice, as recalled in paragraph 27 above, that Rule 37 of Regulation No 2868/95 requires the applicant to provide EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of an EU trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law (judgments of 5 July 2011 in Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 50, and 27 March 2014 in OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 34).

46      It follows that, in proceedings for a declaration of invalidity pursuant to Article 53(1)(c), read in conjunction with Article 8(4), of Regulation No 207/2009, it is specifically the applicant for a declaration of invalidity relying on an earlier right within the meaning of Article 8(4) of Regulation No 207/2009 that is required to provide particulars of the relevant national law.

47      On the other hand, since the application of national law can lead to a finding that there is a ground for invalidation of a duly registered EU trade mark, it is necessary for EUIPO to be able, before granting the application for a declaration of invalidity of such a mark, to ascertain the relevance of the evidence produced by the opponent with regard to the taking of evidence, which is incumbent upon it, concerning the content of that national law (judgment of 27 March 2014 in OHIM v National Lottery Commission, C‑530/12 P, EU:C:2014:186, paragraph 41).

48      However, that requirement to carry out a verification, in the manner recalled by the Court of Justice in paragraph 35 of the judgment of 27 March 2014 in OHIM v National Lottery Commission (C‑530/12 P, EU:C:2014:186), as EUIPO rightly submits, must be exercised by EUIPO only if the applicant for a declaration of invalidity has provided the particulars necessary regarding the applicable national rights.

49      In the present case, as is clear from paragraph 33 above, the applicant has not provided to EUIPO particulars regarding the applicable national rights. The Board of Appeal was therefore fully entitled to hold, in paragraph 35 of the contested decisions, that it was not required, in the present case, to exercise its power of verification.

50      Consequently, the present plea must be rejected and the action must be dismissed in its entirety.

 Costs

51      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.

52      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Dismisses the applications;

2.      Orders Universal Protein Supplements Corp. to pay the costs.

Prek

Labucka

Kreuschitz

Delivered in open court in Luxembourg on 29 June 2016.

[Signatures]