Case T‑530/21

Pierre Lannier

v

European Union Intellectual Property Office

Judgment of the General Court (Tenth Chamber), 14 December 2022

(EU trade mark – Opposition proceedings – Application for an EU figurative mark representing the superposed capital letters ‘P’ and ‘L’ – Earlier EU figurative mark representing a mirror image combination of the superposed capital letters ‘P’ and ‘L’ – Admissibility of the appeal before the Board of Appeal – Locus standi – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))

1. EU trade mark – Appeals procedure – Appeal against a decision of the Opposition Division of EUIPO – Incorrect identification of the appellant in the notice of appeal – Defect capable of being rectified

   (European Parliament and Council Regulation 2017/1001, Art. 68(1); Commission [Delegated] Regulation 2018/625, Arts 2(1)(b), 21(1)(a) and 23(1)(c))

   (see paragraphs 31, 34-40)

2. EU trade mark – Appeals procedure – Persons entitled to appeal and to be parties to the proceedings – Persons concerned by a decision adversely affecting them – Successor to the company which filed the notice of opposition and proprietor of the earlier mark on the date on which the appeal was brought – Included

   (European Parliament and Council Regulation 2017/1001, Art. 67)

   (see paragraphs 46, 47)

Résumé

On 13 December 2016, Pierre Lannier filed an application for registration of a figurative mark representing the superposed capital letters ‘P’ and ‘L’ as an EU trade mark.

In 2017, Pierre Lang Europe Handelsges.m.b.H. filed a notice of opposition to registration of the mark applied for, arguing that there was a likelihood of confusion. ( 1 ) The opposition was rejected in its entirety by the Opposition Division of the European Union Intellectual Property Office (EUIPO) in 2020. During those proceedings, Pierre Lang Europe Handelsges.m.b.H. was acquired by Pierre Lang Trading GmbH.

The Board of Appeal of EUIPO, having declared the appeal admissible, annulled the decision of the Opposition Division and upheld the opposition. The notice of the appeal against the decision of the Opposition Division was filed with the Board of Appeal under the name of Pierre Lang Europe Handelsges.m.b.H. However, the statement setting out the grounds of appeal also filed with the Board of Appeal indicated the name Pierre Lang Europe Ges.m.b.H. Noting that that statement had been filed in the name of an undertaking designated by a name different from that entered in the EUIPO Register, the Registry of the Boards of Appeal requested the party which had instituted the appeal proceedings to submit observations in that regard. That error was corrected by Pierre Lang Trading GmbH in its capacity as successor to the company which filed the notice of opposition. ( 2 )

Hearing an action brought by Pierre Lannier, the Court dismisses that action and examines, for the first time, the legal consequences of a failure to register the transfer of an EU trade mark in the EUIPO Register for the new proprietor of the trade mark as regards that person’s ability to continue opposition proceedings at the stage of the appeal before the Board of Appeal. In addition, the Court assesses whether clerical errors in the name stated in the notice of appeal, on the one hand, and the statement setting out the grounds of that appeal before the Board of Appeal, on the other, are capable of being rectified.

Findings of the Court

First of all, the Court recalls that a notice of appeal must contain the name of the appellant before the Board of Appeal. ( 3 ) Where the notice of appeal does not comply with the requirements laid down, ( 4 ) the Board of Appeal must reject the appeal as inadmissible, if, despite having been informed thereof, the appellant has not remedied the deficiency within the prescribed time limit.

Next, the Court states that the incorrect identification of the appellant in the notice of appeal filed is a defect capable of being rectified. ( 5 )

In the present case, Pierre Lang Trading GmbH has established that it was the proprietor of the earlier mark at the time when the appeal was brought before the Board of Appeal. In addition, that company corrected the notice of appeal within the prescribed period. Therefore, the Court finds that the response given to EUIPO was satisfactory and that the notice of appeal was corrected.

Lastly, as regards the ability of Pierre Lang Trading GmbH to continue opposition proceedings at the stage of the appeal before the Board of Appeal, the Court notes, first, that the observations submitted by that company and the evidence produced in support thereof were sufficient to enable the Board of Appeal to rule on the admissibility of the appeal. Secondly, Pierre Lang Trading GmbH, in its capacity as successor to the company which filed that notice of opposition and as proprietor of the earlier mark on the date on which the appeal was brought, was in fact the person harmed by the decision of the Opposition Division and, consequently, was entitled to bring an appeal against that decision.

( 1 ) Within the meaning of Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

( 2 ) In accordance with Article 21(1)(a) and Article 23(1)(c) 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).

( 3 ) The name of that party must appear in the form prescribed in Article 2(1)(b) of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37).

( 4 ) Article 21(1)(a) of Delegated Regulation 2018/625.

( 5 ) In accordance with Article 2(1)(b), Article 21(1)(a) and Article 23(1)(c) of Delegated Regulation 2018/625, as well as Article 68(1) of 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).