Case T‑854/19

Franz Schröder GmbH & Co. KG

v

European Union Intellectual Property Office

Judgment of the General Court (Third Chamber), 2 June 2021

(EU trade mark – Invalidity proceedings – EU word mark MONTANA – Absolute ground for refusal – Descriptiveness – Article 7(1)(c) of Regulation (EC) No 207/2009 (now Article 7(1)(c) of Regulation (EU) 2017/1001) – Right to be heard – Article 94(1) of Regulation 2017/1001 – Examination of the facts by EUIPO of its own motion – Admission of evidence submitted for the first time before the Board of Appeal – Article 95(1) and (2) of Regulation 2017/1001)

1. EU trade mark – Appeals procedure – Action brought against a decision of the Cancellation Division of EUIPO – Examination by the Board of Appeal – Scope – Evidence submitted for the first time before the Board of Appeal – Account taken – Discretion of the Board of Appeal – Limits

   (European Parliament and Council Regulation 2017/1001, Art. 95(2); Commission Regulation 2018/625, Art. 27(4))

   (see paragraphs 24-26)

2. EU trade mark – Procedural provisions – Examination of the facts by EUIPO of its own motion – Invalidity proceedings concerning absolute grounds for refusal – Examination limited to the grounds put forward – Well-known facts taken into account

   (European Parliament and Council Regulation 2017/1001, Arts 7, 59, 62 and 95(1))

   (see paragraphs 38-41, 48, 49)

3. EU trade mark – Appeals procedure – Appeals before the Boards of Appeal – Competence of the Boards of Appeal – New full examination of the merits – Scope

   (European Parliament and Council Regulation 2017/1001, Arts 71(1) and 95(1))

   (see paragraphs 42, 45, 50, 56)

Résumé

The intervener, RDS Design ApS, is the proprietor of the EU word mark MONTANA. The applicant, Franz Schröder GmbH & Co. KG, filed with the European Union Intellectual Property Office (EUIPO) an application for a declaration that that mark was invalid on the ground that it had been registered in breach of Article 7(1)(c) of Regulation No 207/2009. ( 1 )

The Cancellation Division of EUIPO upheld the application for a declaration of invalidity. As a result of an appeal on the part of the intervener, the Board of Appeal of EUIPO annulled that decision and rejected the application for a declaration of invalidity. It allowed the evidence which the parties had submitted for the first time before it and took the view that it could examine ‘of its own motion’ whether the absolute ground relied on in support of the application for a declaration of invalidity was present. The applicant brought an action before the General Court seeking the annulment of the Board of Appeal’s decision.

The Court dismissed that action and, first, provided clarification regarding the Board of Appeal’s discretion to take into account evidence submitted for the first time before it. Secondly, it developed the case-law relating to the limitation of EUIPO’s examination to the grounds and arguments of the parties in invalidity proceedings based on absolute grounds for invalidity.

Findings of the Court

In the first place, the Court stated that Article 95(2) of Regulation 2017/1001 ( 2 ) grants EUIPO a broad discretion to decide whether or not to take into account facts and evidence which are submitted late. However, it pointed out that the exercise of that discretion, as regards facts and evidence submitted for the first time before the Board of Appeal, is now circumscribed by Article 27(4) of Regulation 2018/625, ( 3 ) according to which the Board of Appeal may accept them only if they are, on the face of it, likely to be relevant for the outcome of the case and if they have not been produced in due time for valid reasons. The Court stated that the Board of Appeal had not ascertained whether those two requirements had been satisfied. However, that did not entail the annulment of the contested decision, because it had not been established that that decision might have been substantively different.

In the second place, the Court stated that, in invalidity proceedings based on an absolute ground for refusal, EUIPO is to limit its examination, under Article 95(1) of Regulation 2017/1001, to the grounds and arguments submitted by the parties. The Board of Appeal may, however, exercise any power within the competence of the department that was responsible for the contested decision and conduct a new, full examination as to the merits of the appeal, in terms of both law and fact. ( 4 ) The Court pointed out that, in the present case, in spite of the Board of Appeal’s infelicitous statement that it could examine, ‘ex officio’, the presence of the absolute ground for refusal in question, the Board of Appeal had examined only whether that absolute ground, which the applicant had specifically relied on, was capable of resulting in the invalidity of the contested mark. It had not examined of its own motion relevant facts which might have led it to apply other absolute grounds for refusal that were capable of calling into question the validity of the mark at issue. Furthermore, the Court took the view that the Board of Appeal had not examined ‘additional facts’ of its own motion, because its findings were part of its assessment of the matters put forward by the applicant in support of the application for a declaration of invalidity and of its assessment of the grounds for the Cancellation Division’s decision. That approach showed that the Board of Appeal had conducted a new, full examination as to the merits of the appeal, at the end of which it was entitled to reach a different decision from that sought by the applicant and from that of the Cancellation Division. Consequently, the Court held that the Board of Appeal had not failed to observe the limits of its examination which are set out in Article 95(1) of Regulation 2017/1001.

( 1 ) Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1).

( 2 ) 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).

( 3 ) 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).

( 4 ) In accordance with Article 71(1) of Regulation 2017/1001.