Corte di giustizia UE n. 207/2018

62018CO0326 [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 4 October 2018 ( *1 ) (Appeal — Article 181 of the Rules of Procedure of the [OSCURATO:PERSONA] — EU trade mark — [OSCURATO:PERSONA] (EC) No 207/2009 — Article 52(1)(a) — Invalidity proceedings — Word mark [OSCURATO:PERSONA] — Rejection of the application for a declaration of invalidity — Relevant date for the examination of an absolute ground for nullity — Appeal in part manifestly inadmissible and in part manifestly unfounded) [OSCURATO:PERSONA] C‑326/18 P, APPEAL under Article 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 17 May 2018, [OSCURATO:PERSONA] LLC, established in [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), represented by V. Schwepler, Rechtsanwältin, appellant, the other parties to the proceedings being: [OSCURATO:PERSONA] (EUIPO), defendant at first instance, [OSCURATO:PERSONA]., established in Windermere ([OSCURATO:PERSONA]), intervener at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of A. [OSCURATO:PERSONA], [OSCURATO:PERSONA] of the [OSCURATO:PERSONA], A. Prechal and E. Jarašiūnas (Rapporteur), [OSCURATO:PERSONA], [OSCURATO:PERSONA]: P. [OSCURATO:PERSONA], [OSCURATO:PERSONA]: A. [OSCURATO:PERSONA], having decided, after hearing the [OSCURATO:PERSONA], to give a decision by reasoned order, pursuant to Article 181 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, makes the following [OSCURATO:PERSONA] 1 By its appeal, [OSCURATO:PERSONA] LLC asks the [OSCURATO:PERSONA] to set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] of 22 March 2018, [OSCURATO:PERSONA] v EUIPO — [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) ( T‑60/17 , not published, EU:T:2018:164 , ‘the judgment under appeal’), by which the [OSCURATO:PERSONA] dismissed its action for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 24 November 2016 ([OSCURATO:PERSONA] R 233/2016-4) relating to invalidity proceedings brought by [OSCURATO:PERSONA] against [OSCURATO:PERSONA]. 2 In support of its appeal, the appellant relies on a single ground, alleging infringement of Article 52(1)(a) of [OSCURATO:PERSONA] (EC) No 207/2009 of 26 February 2009 on the [OSCURATO:PERSONA] trade mark ( OJ 2009 L 78, p. 1 ) as amended by [OSCURATO:PERSONA] (EU) 2015/2424 of the [OSCURATO:PERSONA] and of the [OSCURATO:PERSONA] of 16 December 2015 ( OJ 2015 L 341, p. 21 ) (‘[OSCURATO:PERSONA] 207/2009’). The appeal 3 Pursuant to Article 181 of the Rules of Procedure of the [OSCURATO:PERSONA], where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the [OSCURATO:PERSONA] may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the [OSCURATO:PERSONA], decide by reasoned order to dismiss that appeal in whole or in part. 4 That provision must be applied in the present case. 5 On 4 September 2018, the [OSCURATO:PERSONA] took the following position: ‘1. For the reasons set out below, I propose that the [OSCURATO:PERSONA], in accordance with Article 181 of the Rules of Procedure, dismiss the appeal by which [OSCURATO:PERSONA] asks it to set aside the judgment under appeal, by which the [OSCURATO:PERSONA] dismissed its action seeking annulment of the decision of the [OSCURATO:PERSONA] of Appeal of EUIPO of 24 November 2016, as being, in part, manifestly inadmissible and, in part, manifestly unfounded. In those circumstances, the appellant should bear its own costs, in accordance with Article 137 of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 184(1) of those rules. 2. According to the appellant’s single ground of appeal, in paragraph 25 of the judgment under appeal, the [OSCURATO:PERSONA] infringed Articles 7 and 52 of [OSCURATO:PERSONA] 207/2009 by finding that the only relevant date for the purpose of assessing whether there are absolute grounds for refusal of registration of the mark at issue in invalidity proceedings is that of the filing of the application for registration of that mark. 3. In the judgment under appeal, the [OSCURATO:PERSONA] held that the only relevant date for the purpose of assessing whether there are absolute grounds for refusal in invalidity proceedings is that of the filing of the application for registration of the contested mark. In addition, the [OSCURATO:PERSONA] held that the possibility of taking into consideration material dated after the filing of the application for registration, far from weakening that interpretation, reinforces it. In applying that reasoning, the [OSCURATO:PERSONA], in paragraph 26 of the judgment under appeal, excluded from the assessment of the contested mark’s conformity with Article 7 of [OSCURATO:PERSONA] 207/2009 the pieces of evidence dated after the filing of the application for registration of the contested mark and which contained material which did not concern the situation at that date. 4. First, the appellant complains that the [OSCURATO:PERSONA] did not take account of the evidence dated after the date of filing of the application for registration of the contested mark but before that registration. According to the appellant, the possibility recognised by case-law to take account of material dated after the application for registration of a mark confirms the relevance not only of the circumstances at the date that application is filed but also the circumstances at the date the mark in question is registered. The appellant thus seeks to claim that the relevant date for the purpose of assessing whether there are absolute grounds for refusal in invalidity proceedings is the date of registration of the mark at issue. 5. In that regard, it is necessary to note, as did the [OSCURATO:PERSONA] in paragraph 25 of the judgment under appeal, that it is settled case-law that the only relevant date for the purpose of assessing an application for a declaration of invalidity based on Article 52(1)(a) of [OSCURATO:PERSONA] 207/2009 is that of the filing of the application for registration of the contested mark (see, to that effect, judgment of 3 June 2009, [OSCURATO:PERSONA] v OHIM — DSR touristik (FLUGBÖRSE), T‑189/07 , EU:T:2009:172 , paragraphs 18 and 19 and the case-law cited). 6. I would note that the [OSCURATO:PERSONA] explained that such a conclusion is based on a parallelism between Article 52(1)(a) of [OSCURATO:PERSONA] 207/2009 and Article 7(3) of that regulation. Indeed, Article 7(3) of [OSCURATO:PERSONA] 207/2009, to which Article 52(1)(a) of that regulation refers, must be interpreted as meaning that the distinctive character of a mark must have been acquired through use before the filing of the application. Thus, an applicant cannot rely, during the registration procedure, on the distinctive character acquired through use after the filing of the application for registration (order of 23 April 2010, OHIM v [OSCURATO:PERSONA], C‑332/09 P , not published, EU:C:2010:225 , paragraph 52 and the case-law cited). That interpretation concerning the relevant date for the purpose of assessing whether there are absolute grounds for refusal is, according to the [OSCURATO:PERSONA], also applicable in invalidity proceedings, as provided for in Article 52 of [OSCURATO:PERSONA] 207/2009, when a mark has been registered contrary to the provisions of Article 7 of that regulation (see, to that effect, order of 23 April 2010, OHIM v [OSCURATO:PERSONA], C‑332/09 P , not published, EU:C:2010:225 , paragraph 54 ). 7. Although it is true that the [OSCURATO:PERSONA], in its order of 5 October 2004, Alcon v OHIM ( C‑192/03 P , EU:C:2004:587 , paragraph 41 and the case-law cited), agreed that the [OSCURATO:PERSONA] could take account of material which, despite post-dating the filing of the application for registration of the mark at issue, enabled the drawing of conclusions on the situation as it was on the date of the application, it made it clear that doing so served only to confirm or better assess the scope of the use of that mark during the relevant period, as well as the real intentions of the proprietor of that mark during the same period. 8. In those circumstances, the [OSCURATO:PERSONA] was fully entitled to consider, in paragraph 25 of the judgment under appeal, that the fact that the case-law allows material subsequent to the filing of the application for registration of the contested mark to be taken into account, far from weakening the interpretation that the only relevant date for assessing whether there are absolute grounds for refusal in invalidity proceedings is that of the filing of the application, reinforces it (see, to that effect, judgment of 3 June 2009, [OSCURATO:PERSONA] v OHIM — DSR touristik (FLUGBÖRSE), T‑189/07 , EU:T:2009:172 , paragraphs 18 and 19 and the case-law cited). 9. It follows that the appellant’s argument cannot succeed and must, in my opinion, be rejected as manifestly unfounded. 10. Second, the appellant claims that the [OSCURATO:PERSONA] finding that the only relevant date for the purpose of assessing whether there are absolute grounds for refusal in invalidity proceedings is the date of filing of the application for registration is contrary to the wording of Articles 52 and 7 of [OSCURATO:PERSONA] 207/2009. According to the appellant, it can be inferred from the express reference in those articles to the registration of the mark that EUIPO must also take into account new developments during the period of registration. 11. It must be noted, in that regard, that, as the [OSCURATO:PERSONA] had already held in paragraph 57 of the order of 23 April 2010, OHIM v [OSCURATO:PERSONA] ( C‑332/09 P , not published, EU:C:2010:225 ), Article 52 of [OSCURATO:PERSONA] 207/2009, which refers to Article 7 of that regulation, merely sets out the various situations in which an EU mark may be declared invalid but does not give any indication as to the relevant date for assessing the absolute grounds for invalidity. By using the wording “shall not be registered” in Article 7(1) of [OSCURATO:PERSONA] 207/2009, and the trade mark “has been registered” in Article 52(1)(a) of that regulation, the EU legislature sets out the circumstances in which a mark must be refused registration or declared invalid and not the material date for the examination of absolute grounds for refusal or absolute grounds for invalidity (see, to that effect, judgment of 3 June 2009, [OSCURATO:PERSONA] v OHIM — DSR touristik (FLUGBÖRSE), T‑189/07 , EU:T:2009:172 , paragraph 23 , confirmed by order of 23 April 2010, OHIM v [OSCURATO:PERSONA], C‑332/09 P , not published, EU:C:2010:225 , paragraph 57 ). 12. Accordingly, the appellant’s arguments relating to the wording of the relevant provisions are, to my mind, manifestly unfounded. 13. Third, the appellant complains that, in paragraph 26 of the judgment under appeal, the [OSCURATO:PERSONA] excluded certain evidence from the assessment of the contested mark’s conformity with Article 7 of [OSCURATO:PERSONA] 207/2009. 14. As regards the evidence dated after the filing of the application for registration of the contested mark but before the registration of that mark, the appellant claims that such evidence should have been taken into consideration for the purpose of assessing the conformity of that mark. 15. In doing so, the appellant attempts to call into question the date held by the [OSCURATO:PERSONA] as being the relevant date for the purpose of assessing absolute grounds of refusal in invalidity proceedings, namely the date of filing of the application for registration of the contested mark, and to replace it with the date of registration of that mark. Such an argument manifestly contradicts the case-law cited above. 16. Regarding the documents dated after the date of registration of the contested mark, the appellant alleges that, contrary to what the [OSCURATO:PERSONA] has held, all evidence which establishes the circumstances at the date of filing of the application for registration of the contested mark or at the date of its registration should have be considered relevant. 17. In that regard, it is necessary to draw a distinction between the documents allowing conclusions to be drawn as to the circumstances at the date of registration of the mark at issue and those allowing conclusions to be drawn as to the circumstances at the date of filing of the application for registration of that mark. 18. As regards the evidence allowing conclusions to be drawn as to the circumstances at the date of registration of the mark at issue, it must be noted once again that the only relevant date for the purpose of the assessment in invalidity proceedings is the date of filing of the application for registration of the mark at issue. It follows that evidence dated after the application for registration of that mark, which allows conclusions to be drawn as to the situation at the date of that mark’s registration, is irrelevant with respect to the assessment of grounds of absolute refusal in invalidity proceedings. 19. As regards the evidence which allows conclusions to be drawn as to the circumstances at the date of filing of the application for registration of the mark at issue, I note that the appellant does not contest the interpretation made by the [OSCURATO:PERSONA] in paragraph 25 of the judgment under appeal, according to which account may be taken of evidence which, despite being dated after the filing of the application for registration of that mark, allows conclusions to be drawn as to the circumstances at the time of filing. In actual fact, the appellant criticises the [OSCURATO:PERSONA] for having wrongly considered that certain evidence submitted by the appellant was unable to provide information on the situation at the time of the filing of the application for registration of the contested mark. 20. In my opinion, by that argument, the appellant does not raise a question of law but simply contests the [OSCURATO:PERSONA] assessment of the facts in finding that the documents in question contained material that did not relate to the situation at the date of filing of the application for registration of the contested mark. 21. In that regard, it must be borne in mind that, in accordance with Article 256 TFEU and the first paragraph of Article 58 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], an appeal lies on points of law only. The appraisal of the facts and the assessment of evidence do not, save where they distort the evidence, constitute a point of law which is subject, as such, to review by the [OSCURATO:PERSONA] of Justice on appeal (order of 26 May 2016, [OSCURATO:PERSONA] v EUIPO, C‑639/15 P , not published, EU:C:2016:376 ). In the present case, no allegation of distortion has been made by the appellant. 22. As a result, the appellant’s third argument is, to my mind, in part, manifestly inadmissible and, in part, manifestly unfounded. 23. Since it is certain that none of the appellant’s arguments can succeed, the appeal in its entirety should be found to be, in part, manifestly inadmissible and, in part, manifestly unfounded.’ 6 For the same reasons as those given by the [OSCURATO:PERSONA], the appeal must be dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded. Costs 7 Pursuant to Article 137 of the Rules of Procedure, which is applicable to the procedure on appeal pursuant to Article 184(1) thereof, a decision as to costs is to be given in the order which closes the proceedings. Since the present order was adopted before the appeal was served on the other parties to the proceedings and, therefore, before they could have incurred costs, it is appropriate to decide that the appellant is to bear its own costs. On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders: 1. The appeal is dismissed as, in part, manifestly inadmissible and, in part, manifestly unfounded. 2. [OSCURATO:PERSONA] LLC shall bear its own costs. Luxembourg, 4 October 2018. A. [OSCURATO:PERSONA] A. [OSCURATO:PERSONA] ( *1 ) Language of the case: English.