Case C-53/11 P

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

v

Nike International Ltd

‛Appeal — Community trade mark — Regulation (EC) No 40/94 — Article 58 — Regulation (EC) No 2868/95 — Rules 49 and 50 — Word mark R10 — Opposition — Assignment — Admissibility of an appeal — Concept of ‘person entitled to appeal’ — Applicability of the OHIM Guidelines’

Summary of the Judgment

Community trade mark — Appeals procedure — Appeal brought against a decision of the Opposition Division of the Office — Assignment of the earlier mark after the opposition was filed and before the decision was adopted by the Office — Assignee obliged to adduce proof of transfer in order to show that he has locus standi — Time allowed

(Council Regulation No 40/94, Arts 58 and 59; Commission Regulation No 2868/95, Art. 1, Rules 48(1)(a) and (b), and 49(1) and (2))

Rule 49(1) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark states that, if the appeal does not comply with, inter alia, Article 58 of Regulation No 40/94, the Board of Appeal is to reject it as inadmissible, unless each deficiency has been remedied before the relevant period laid down in Article 59 of the regulation has expired.

However, Article 59 provides for two different periods. In order to provide a real opportunity to remedy the deficiencies referred to in Rule 49(1), the period of four months from the date of notification of the decision appealed against is to be taken into account.

Not only does the wording of Rule 49(1) not provide for the possibility of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) granting the person bringing the appeal an additional period in order to remedy a deficiency related to proof of locus standi, but Rule 49(2) also rules out such a possibility.

Rule 49(2) states that, if the Board of Appeal finds that the appeal does not comply with other provisions of Regulation No 40/94 or with other provisions of the Rules in Regulation No 2868/95, in particular Rule 48(1)(a) and (b), it is to inform the appellant accordingly and is to request him to remedy the deficiencies noted within such period as it may specify. If the appeal is not corrected in good time, the Board of Appeal is to reject it as inadmissible.

It is clear from the reference to ‘other provisions’ in Rule 49(2) of Regulation No 2868/95 that the Board of Appeal of the Office may not grant an additional period in the case of a deficiency linked to failure to comply with the provisions expressly mentioned in Rule 49(1) of that rule, in particular, with Article 58 of Regulation No 40/94.

It follows that a person who brings an appeal before the Board of Appeal of the Office must show that he has locus standi within the period of four months provided for in Article 59 of Regulation No 40/94, otherwise the appeal will be declared inadmissible. That person has the right to remedy, on his own initiative, any ground of inadmissibility within the same period.

Therefore, if there has been an assignment of the sign on which the opposition was based without that assignment’s being taken into account during the procedure before the Opposition Division of the Office, the assignee must adduce, within the period of four months provided for in Article 59 of Regulation No 40/94, before the Board of Appeal of the Office the necessary proof that he has become the owner of that sign by transfer in order to show that he has locus standi, otherwise the appeal will be declared inadmissible.

(see paras 48-52, 54, 55)

Case C-53/11 P

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

v

Nike International Ltd

‛Appeal — Community trade mark — Regulation (EC) No 40/94 — Article 58 — Regulation (EC) No 2868/95 — Rules 49 and 50 — Word mark R10 — Opposition — Assignment — Admissibility of an appeal — Concept of ‘person entitled to appeal’ — Applicability of the OHIM Guidelines’

Summary of the Judgment

Community trade mark — Appeals procedure — Appeal brought against a decision of the Opposition Division of the Office — Assignment of the earlier mark after the opposition was filed and before the decision was adopted by the Office — Assignee obliged to adduce proof of transfer in order to show that he has locus standi — Time allowed

(Council Regulation No 40/94, Arts 58 and 59; Commission Regulation No 2868/95, Art. 1, Rules 48(1)(a) and (b), and 49(1) and (2))

Rule 49(1) of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark states that, if the appeal does not comply with, inter alia, Article 58 of Regulation No 40/94, the Board of Appeal is to reject it as inadmissible, unless each deficiency has been remedied before the relevant period laid down in Article 59 of the regulation has expired.

However, Article 59 provides for two different periods. In order to provide a real opportunity to remedy the deficiencies referred to in Rule 49(1), the period of four months from the date of notification of the decision appealed against is to be taken into account.

Not only does the wording of Rule 49(1) not provide for the possibility of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) granting the person bringing the appeal an additional period in order to remedy a deficiency related to proof of locus standi, but Rule 49(2) also rules out such a possibility.

Rule 49(2) states that, if the Board of Appeal finds that the appeal does not comply with other provisions of Regulation No 40/94 or with other provisions of the Rules in Regulation No 2868/95, in particular Rule 48(1)(a) and (b), it is to inform the appellant accordingly and is to request him to remedy the deficiencies noted within such period as it may specify. If the appeal is not corrected in good time, the Board of Appeal is to reject it as inadmissible.

It is clear from the reference to ‘other provisions’ in Rule 49(2) of Regulation No 2868/95 that the Board of Appeal of the Office may not grant an additional period in the case of a deficiency linked to failure to comply with the provisions expressly mentioned in Rule 49(1) of that rule, in particular, with Article 58 of Regulation No 40/94.

It follows that a person who brings an appeal before the Board of Appeal of the Office must show that he has locus standi within the period of four months provided for in Article 59 of Regulation No 40/94, otherwise the appeal will be declared inadmissible. That person has the right to remedy, on his own initiative, any ground of inadmissibility within the same period.

Therefore, if there has been an assignment of the sign on which the opposition was based without that assignment’s being taken into account during the procedure before the Opposition Division of the Office, the assignee must adduce, within the period of four months provided for in Article 59 of Regulation No 40/94, before the Board of Appeal of the Office the necessary proof that he has become the owner of that sign by transfer in order to show that he has locus standi, otherwise the appeal will be declared inadmissible.

(see paras 48-52, 54, 55)