CJEU Order C-309/15 Real Express / OHMI

ORDER OF THE COURT (Ninth Chamber)

8 September 2016 (*)

(Appeal — Article 181 of the Rules of Procedure of the Court — EU trade mark — Regulation (EC) No 207/2009 — Blue and red figurative mark containing the word element ‘real’ — Opposition of the proprietor of the black and white national figurative marks containing the word elements ‘Real’ and ‘Real mark’ — Rejection of the opposition)

In Case C-309/15 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 18 June 2015,

Real Express SRL, established in Bucharest (Romania), represented by C. Anitoae, avocat?,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO), represented by D. Botis and D. Hanf, acting as Agents,

defendant at first instance,

MIP Metro Group Intellectual Property GmbH & Co. KG, represented by J.-C. Plate and R. Kaase, Rechtsanwälte,

intervener at first instance,

THE COURT (Ninth Chamber),

composed of C. Lycourgos, President of Chamber, E. Juhász (Rapporteur) and C. Vajda, Judges,

Advocate General: M. Wathelet,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court,

makes the following

Order

1 By its appeal, Real Express SRL seeks to have set aside the order of the General Court of the European Union of 21 April 2015 in Real Express v OHIM — MIP Metro (real) (T-580/13, not published, ‘the order under appeal’, EU:T:2015:245), by which that Court dismissed the action brought against the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 September 2013 (Case R 1519/2012-4), relating to opposition proceedings between Real Express and MIP Metro Group Intellectual Property GmbH & Co. KG (‘the contested decision’).

Legal context

2 Under the heading ‘Relative grounds for refusal’, Article 8 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1, and corrigenda OJ 2015 L 312, p. 28, and OJ 2016 L 71, p. 322), provides:

‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

(a) if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected;

(b) if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

2. For the purposes of paragraph 1, “earlier trade marks” means:

(a) trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the EU trade mark, taking account, where appropriate, of the priorities claimed in respect of those trade marks:

(i) EU trade marks;

(ii) trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property;

(iii) trade marks registered under international arrangements which have effect in a Member State;

(iv) trade marks registered under international arrangements which have effect in the Union;

(b) applications for the trade marks referred to in subparagraph (a), subject to their registration;

(c) trade marks which, on the date of application for registration of the EU trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the EU trade mark, are well known in a Member State, in the sense in which the words “well known” are used in Article 6bis of the Paris Convention.

3. Upon opposition by the proprietor of the trade mark, a trade mark shall not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

4. Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the EU trade mark, or the date of the priority claimed for the application for registration of the EU trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

5. Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’

3 Article 41 of Regulation No 207/2009, entitled ‘Opposition’, provides:

‘1. Within a period of three months following the publication of an EU trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8:

(a) by the proprietors of earlier trade marks referred to in Article 8(2) as well as licensees authorised by the proprietors of those trade marks, in respect of Article 8(1) and (5);

...

3. Opposition must be expressed in writing and must specify the grounds on which it is made. It shall not be treated as duly entered until the opposition fee has been paid. Within a period fixed by the Office, the opponent may submit in support of his case facts, evidence and arguments.’

4 Article 63 of that regulation, entitled ‘Examination of appeals’, is worded as follows:

‘1. If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable.

2. In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself.’

5 Article 64 of Regulation No 207/2009, entitled ‘Decisions in respect of appeals’, provides in paragraph 1:

‘Following the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.’

6 Article 75 of Regulation No 207/2009, entitled ‘Statement of reasons on which decisions are based’, is worded as follows:

‘Decisions of the Office shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments.’

7 Article 76 of that regulation, entitled ‘Examination of the facts by the Office of its own motion’, provides:

‘1. In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

2. The Office may disregard facts or evidence which are not submitted in due time by the parties concerned.’

8 Article 78 of that regulation, entitled ‘Taking of evidence’, provides in paragraph 1:

‘In any proceedings before the Office, the means of giving or obtaining evidence shall include the following:

(a) hearing the parties;

(b) requests for information;

...’

9 Under the heading ‘Notice of opposition’, Rule 15 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 355/2009 of 31 March 2009 (OJ 2009 L 109, p. 3) (‘Regulation No 2868/95’), is worded as follows:

‘1. A notice of opposition may be entered on the basis of one or more earlier marks within the meaning of Article 8(2) of the Regulation (earlier marks) and one and/or more other earlier rights within the meaning of Article 8(4) of the Regulation (earlier rights), provided that the earlier marks or earlier rights all belong to the same proprietor or proprietors. If an earlier mark and/or an earlier right has more than one proprietor (co-ownership), the opposition may be filed by any or all of them.

2. The notice of opposition shall contain:

...

(b) a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

(i) where the opposition is based on an earlier mark …, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is an EU trade mark;

...

(h) as concerns the opposing party:

(i) the name and address of the opposing party in accordance with Rule 1(1)(b);

(ii) where the opposing party has appointed a representative, the name and business address of the representative in accordance with Rule 1(1)(e);

(iii) where the opposition is entered by a licensee or by a person who is entitled under the relevant national law to exercise an earlier right, a statement to that effect and indications concerning the authorisation or entitlement to file the opposition.

…’

10 Rule 17 of Regulation No 2868/95, entitled ‘Examination of admissibility’, states:

‘1. If the opposition fee has not been paid within the opposition period, the opposition shall be deemed not to have been entered. If the opposition fee has been paid after the expiry of the opposition period, it shall be refunded to the opposing party.

2. If the notice of opposition has not been filed within the opposition period, or if the notice of opposition does not clearly identify the application against which opposition is entered or the earlier mark or the earlier right on which the opposition is based in accordance with Rule 15(2)(a) and (b), or does not contain grounds for opposition in accordance with Rule 15(2)(c), and if those deficiencies have not been remedied before the expiry of the opposition period, the Office shall reject the opposition as inadmissible.

...

4. If the notice of opposition does not comply with the other provisions of Rule 15, the Office shall inform the opposing party accordingly and shall invite him to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time-limit expires, the Office shall reject the opposition as inadmissible.

...’

11 Rule 19 of Regulation No 2868/95, entitled ‘Substantiation of the opposition’, is worded as follows:

‘1. The Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time-limit specified by it and which shall be at least 2 months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1).

2. Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:

(a) if the opposition is based on a trade mark which is not an EU trade mark, evidence of its filing or registration, by submitting:

...

(ii) if the trade mark is registered, a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time-limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered;

...

4. The Office shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time-limit set by the Office.’

12 Rule 20 of Regulation No 2868/95, entitled ‘Examination of the opposition’, states:

‘1. If until expiry of the period referred to in Rule 19(1) the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well his entitlement to file the opposition, the opposition shall be rejected as unfounded.

2. If the opposition is not rejected pursuant to paragraph 1, the Office shall communicate the submission of the opposing party to the applicant and shall invite him to file his observations within a period specified by the Office.

...’

Background to the dispute

13 On 26 October 2010, MIP Metro Group Intellectual Property GmbH & Co. KG (‘MIP’) filed with EUIPO, pursuant to Regulation No 207/2009, an application for registration as an EU trade mark of the figurative sign reproduced below:

14 The goods and services in respect of which registration was sought are in, inter alia, Classes 3 and 35 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, for each of those classes, to the following description:

– Class 3: ‘Washing preparations and laundry bleach; furbishing, polishing, degreasing and grinding preparations; soaps; scouring solutions, antistatic preparations for household purposes, polish for furniture and flooring, detergents other than for use in manufacturing operations and for medical purposes, scale removing preparations for household purposes, shining preparations (polish), lacquer removing preparations, leather preservatives (polishes), windscreen cleaning liquids, cleaning preparations, rust removing preparations, washing up liquid, cleaning preparations for cars, cleaning sprays mainly for use in dashboards and plastic surfaces, lacquer cleaning agent, car wax, car shampoo, car polishing preparations, toilet cleaning preparations’, and

– Class 35: ‘Advertising; procurement services for others (purchasing goods and services for other businesses); professional business consultancy; compilation of various goods (except the transport thereof) for third parties, in order to make viewing and purchasing of the goods easier for the users; cleaning and washing products, namely chemical preparations for industrial purposes (chemical), laundry and bleach preparations, furbishing, polishing and degreasing preparations and abrasives, soaps (toiletries), detergents other than for use in manufacturing operations and for medical purposes, cleaning preparations, towel dispensers, machines and apparatus for cleaning, vacuum cleaners; towels of paper, handkerchiefs of paper, toilet paper; sponges, cleaning utensils, toilet brushes, gloves for household purposes, cleaning instruments, hand-operated, rags (cloth) for cleaning, carpet sweepers, toilet paper holders, toilet sponges’.

15 The EU trade mark application was published in Community Trade Marks Bulletin No 69/2011 of 8 April 2011.

16 On 24 June 2011, Real Express filed a notice of opposition to registration of the mark applied for, pursuant to Article 41 of Regulation No 207/2009, in respect of the goods and services referred to in paragraph 14 above.

17 The opposition was based on the following earlier marks:

– the figurative mark registered in Romania under No 38089 represented below:

(Real Lichid), and

– the figurative mark registered in Romania under No 80065 represented below:

(Real Mark).

18 The earlier marks designate, amongst others, the following goods and services:

– so far as the mark registered under No 38089 is concerned, the goods and services in Classes 3 and 35 corresponding, for each of those classes, to the following description:

– Class 3: ‘Bleaching products and other washing chemicals, cleaning products, degreasing soaps, dish-washing and universal detergents’, and

– Class 35: ‘Marketing, import, export, publicity and advertising’;

– so far as the mark registered under No 80065 is concerned, the goods in Class 3 corresponding to the following description ‘Cleaning products (detergents)’.

19 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

20 On 27 June 2011, Real Express sent EUIPO a file in support of its opposition.

21 As regards the earlier mark registered under No 38089, it submitted, inter alia, the following documents together with English translations thereof:

– a copy of the registration certificate issued by Oficiul de Stat pentru Inven?ii ?i M?rci (OSIM, State Office for Inventions and Trade Marks, Romania) stating that the earlier mark had been filed in the name of SC Unimark Export Import SRL;

– a copy of OSIM’s decision No 561678 of 13 January 2009 approving the assignment of the earlier mark registered under No 38089 to SC Unibrand SRL;

– a copy of a letter that Real Express claimed to have sent to OSIM on 21 June 2011 informing it that SC Unibrand had changed its name and had become Real Express and requesting that OSIM amend its database accordingly in respect of the earlier marks.

22 As regards the earlier mark registered under No 80065, Real Express submitted, inter alia, the following documents together with English translations thereof:

– a copy of the registration certificate issued by OSIM stating that the earlier mark registered under No 80065 had been filed in the name of SC Unibrand;

– the letter of 21 June 2011 referred to in paragraph 21 above.

23 By a communication of 14 July 2011 received by Real Express and addressed to SC Unibrand, EUIPO stated that the opposition had been found to be admissible. In addition, in accordance with Rule 19(2) of Regulation No 2868/95, EUIPO had set the time-limit for substantiating the earlier rights on which the opposition was based at 26 November 2011. The explanatory note attached to that communication stated that the registration certificate or any equivalent official document had to show all the formal and substantive particulars relating to the earlier registration and, in particular, the applicant’s ownership. That note also stated that EUIPO would not inform the opponent whether evidence was missing and that the opposition would be rejected without any examination of its merits should the evidence not be filed within the prescribed period.

24 Following that communication, no documents designed to establish the existence of the earlier marks — other than those mentioned in paragraphs 21 and 22 above — were submitted before the expiry of the prescribed period.

25 By a communication of 2 December 2011, received by Real Express and addressed to SC Unibrand, EUIPO stated, pursuant to Rule 19(1) of Regulation No 2868/95, that the opposition file had been communicated to MIP.

26 On 13 February 2012, MIP submitted its observations in which, in essence, it observed that an opponent had to be the proprietor of the earlier right and that, in the present case, the notice of opposition had been filed in the name of Real Express whereas the proprietor of the earlier marks was SC Unibrand. It added that, since Real Express had not adduced evidence of a transfer or a change of company name, the opposition had to be rejected as unfounded. Furthermore, MIP requested that Real Express furnish proof of use of the earlier marks.

27 On 22 February 2012, Real Express received a notification addressed to SC Unibrand, pursuant to Article 42(1) to (3) of Regulation No 207/2009 and Rule 20(4), Rule 22 and Rule 79(a) of Regulation No 2868/95, requesting it to submit proof of use of the earlier marks.

28 By a notification of 27 March 2012 pursuant to Rule 20(7) and Rule 21(2) of Regulation No 2868/95, received by Real Express and addressed to SC Unibrand, EUIPO stated that the opposition proceedings were suspended.

29 By a notification of 23 April 2012 pursuant to Rule 20(1) of Regulation No 2868/95, received by Real Express and addressed to SC Unibrand, EUIPO stated that the opposition would be rejected since the existence of the earlier rights relied on in support of the opposition had not been proved.

30 By a notification of 20 June 2012 addressed to Real Express, EUIPO forwarded the decision of the Opposition Division of the same date rejecting the opposition in its entirety (‘the decision of the Opposition Division’). As regards the earlier marks, the reason given by the Opposition Division for its decision was that the evidence produced by Real Express was not sufficient to prove the existence of the marks, since Real Express had not produced any evidence from the administration that had registered the marks, namely OSIM, or from any other official source, confirming either that the changes of name of the proprietor of the marks had in fact been registered or that OSIM had found the requests for a change of name in respect of the proprietor of the marks to be admissible. The Opposition Division concluded that, in accordance with Rule 20(1) of Regulation No 2868/95, read in conjunction with Rule 19 of that regulation, the opposition had to be rejected as unfounded, since the applicant had not submitted evidence to show that it was the proprietor of the earlier marks.

31 On 16 July 2012, the President of EUIPO received a fax from OSIM, addressed to EUIPO at the request of Real Express’s representative, informing EUIPO that Real Express, the proprietor of the marks registered under Numbers 38089 and 80065, had requested — on 21 June 2011 — that the name of the proprietor of those marks be changed from SC Unibrand to Real Express. OSIM confirmed, moreover, that the change requested had been entered into the Trade Marks Register, that the proprietor of the marks was Real Express as from June 2011 and that, for technical reasons, the change of name had been published belatedly on OSIM’s website.

32 On 15 August 2012, the appellant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

33 By the contested decision, the Fourth Board of Appeal of EUIPO dismissed that appeal.

The procedure before the General Court and the order under appeal

34 By application lodged at the General Court Registry on 4 November 2013, Real Express brought an action for annulment of the contested decision.

35 By that action, as is apparent from the order under appeal, Real Express complained, in particular, that the Fourth Board of Appeal of EUIPO found that:

– the documents proving the change of name had been submitted after the expiry of the prescribed period;

– the acceptance by EUIPO of the payment of the opposition fee by Real Express could not prove that EUIPO had found that Real Express had produced evidence to show the change of name of the proprietor of the earlier marks from SC Unibrand to Real Express;

– the communication of 2 December 2011 and the notifications of 22 February and 27 March 2012 could not mean that EUIPO had accepted that the opposition lodged by Real Express was substantiated by sufficient evidence as regards that change of name;

– the evidence was insufficient to establish that Real Express was the proprietor of the earlier marks and that, therefore, Real Express had standing to bring proceedings as an opponent.

36 By the order under appeal, the General Court dismissed the action as, in part, manifestly inadmissible and, in part, manifestly lacking any foundation in law.

The forms of order sought

37 Real Express claims that the Court should set aside the order under appeal and order EUIPO and MIP to pay the costs of the proceedings.

38 EUIPO and MIP contend that the Court should dismiss the appeal and order the appellant to pay the costs of the proceedings.

The appeal

39 Under Article 181 of its Rules of Procedure, where the appeal or cross-appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal or cross-appeal in whole or in part.

40 That option should be exercised in the present case.

41 First of all, it must be pointed out that MIP contends that the appeal brought by Real Express should be declared inadmissible in its entirety, since that appeal does not indicate precisely the contested elements of the order and the legal arguments on which the appellant’s complaints are based.

42 In the present case, while certain arguments in the appeal are evidently lacking in precision and clarity, the fact remains that other arguments enable the contested grounds of the order under appeal and pleas in law relied upon by the appellant to be identified, so that the appeal must not be declared inadmissible in its entirety.

43 In support of its appeal, Real Express relies, in essence, on six grounds.

The first ground of appeal

Arguments of the parties

44 By its first ground of appeal, the appellant criticises the application by the General Court of Article 44(1)(c) of its Rules of Procedure of 2 May 1991 (OJ 1991 L 136, p. 1, and corrigendum OJ 1991 L 317, p. 34), as amended on 19 June 2013 (OJ 2013 L 173, p. 66), in finding that most of the arguments raised by it failed to satisfy the minimum requirements of clarity and coherence required by that provision.

45 To that effect, the appellant submits that had its line of argument actually lacked coherence and clarity, the other parties ought to have raised a plea of inadmissibility, which they failed to do. It further submits that MIP also failed to request the opening of an oral procedure before the General Court in order to discuss the merits of the opposition, from which it may be inferred that the arguments developed in support of the appellant’s opposition were sufficiently clear to enable the other parties to respond to them. Real Express concludes from this that those factors are sufficient in order to consider that ‘the claims of inadmissibility made by the General Court … are grossly exaggerated’.

Findings of the Court

46 It is apparent from paragraphs 34, 36 and 37 of the order under appeal that, after analysing Real Express’s application and, in particular, its arguments under the heading ‘Principal Arguments’, the General Court rejected overall as inadmissible certain arguments relied upon by the appellant, on the ground that they ‘lack[ed] clarity and coherence and that …they fail[ed] to satisfy the minimum requirements set out in Article 44(1)(c) of the Rules of Procedure [of the General Court of 2 May 1991, as amended on 19 June 2013]’.

47 It is common ground that since the provisions of Article 44(1)(c) of those rules of procedure are mandatory, the General Court was fully entitled to raise of its own motion the inadmissibility of the arguments relied upon by the appellant (see, to that effect, order of 17 July 2014 in Melkveebedrijf Overenk and Others v Commission, C-643/13 P not published, EU:C:2014:2118, paragraph 38).

48 The appellant fails to identify the arguments which the General Court is alleged to have incorrectly rejected as inadmissible. In addition, it is established that the appellant’s assertion that, in declaring those arguments inadmissible, the General Court’s assessment ‘was grossly exaggerated’ in no way proves how the General Court erred in law. It follows that those arguments must be rejected as inadmissible.

49 The first ground of appeal must, therefore, be rejected as in part inadmissible and in part manifestly unfounded.

The second ground of appeal

Arguments of the parties

50 By its second ground of appeal, the appellant criticises paragraph 38 of the order under appeal in that the General Court confirmed the contested decision, even though that decision did not state the reasons for which EUIPO’s Board of Appeal found that the appellant did not adduce evidence of the change of name of the proprietor of the earlier marks. The appellant submits that, in confirming the contested decision, the General Court infringed the obligation to state reasons under Article 75 of Regulation No 207/2009.

51 In addition, the appellant submits that, by failing to give it the opportunity to present its comments and failing to raise the procedural irregularities, the Board of Appeal infringed Article 75 and Article 78(1)(a) and (b) of that regulation and also Rule 17(4) of Regulation No 2868/95.

52 To that effect, Real Express states, first, that it asked EUIPO for an oral hearing to no avail and, secondly, that the notification of its change of name, received and stamped by OSIM on 21 June 2011 and sent to EUIPO within the time period, had been treated by EUIPO as a ‘mere request’, whereas reading that document, together with its registration certificate, was capable of substantiating its change of name.

53 EUIPO contends that the second ground of appeal should be declared inadmissible or, in any event, unfounded. MIP contends that that ground of appeal should be rejected as unfounded.

Findings of the Court

54 In so far as the ground of appeal simply asserts that the Board of Appeal of EUIPO infringed Article 75 and Article 78(1)(a) and (b) of Regulation No 207/2009 and Rule 17(4) of Regulation No 2868/95, that ground of appeal must be declared manifestly inadmissible. Indeed, that ground is not directed against the order under appeal in the present proceedings.

55 As regards the appellant’s argument that the General Court confirmed EUIPO’s decision even though that decision was not properly reasoned, it must be held that, as the General Court correctly noted in paragraph 38 of the order under appeal, the Board of Appeal had found that the documents provided by the appellant did not correspond to the required documentation from the administration by which the marks had been registered and that the appellant had not, therefore, proved to the requisite legal standard the change of name from SC Unibrand to Real Express. Consequently, EUIPO’s contested decision included an adequate statement of reasons, so that it cannot be objected that the General Court failed to annul that decision on the basis of an infringement of Article 75 of Regulation No 207/2009.

56 In addition, it should be noted that, under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, the General Court has exclusive jurisdiction to assess the evidence submitted to it and that, apart from where there is distortion, which, in the present case, the appellant does not plead, the review by the Court of Justice cannot extend to the assessment of that evidence in an appeal (see, to that effect, order of 14 April 2016 in Roland v EUIPO, C-515/15 P, not published, EU:C:2016:298, paragraph 26 and the case-law cited). Consequently, the appellant’s argument relating to the lack of proof of the change of name of the proprietor of the earlier marks cannot be upheld.

57 In the light of all those factors, the second ground of appeal must be rejected as in part manifestly inadmissible and in part manifestly unfounded.

The third ground of appeal

Arguments of the parties

58 By its third ground of appeal, the appellant submits that the General Court erred in rejecting as manifestly unfounded, in paragraph 39 of the order under appeal, the plea in law according to which EUIPO accepted the evidence of the change of name of the proprietor of the mark, since it accepted the payment of the opposition fee by Real Express without issuing a deficiency note to it beforehand or declaring the opposition inadmissible.

59 In support of that ground of appeal, the appellant submits that EUIPO infringed Rule 15(2)(h)(iii) and Rule 17(1) and (4) of Regulation No 2868/95 and the guidelines issued by EUIPO relating to the examination carried out by it and that the General Court erred in law in reasoning, in the order under appeal, that no consequences arise, by reason of Regulation No 2868/95, from the payment of the opposition fee.

60 EUIPO contends that the third ground of appeal should be declared inadmissible or, in any event, unfounded. MIP contends that that ground of appeal should be declared unfounded.

Findings of the Court

61 It is not in dispute that all the provisions relied upon by the appellant in support of its third ground of appeal are solely procedural provisions which do not govern the establishment of the existence of a right conferred by an earlier mark in the course of proceedings before EUIPO.

62 In that regard, Rule 17(1) of Regulation No 2868/95 makes the commencement of opposition proceedings conditional upon the payment of the opposition fee. That fee must be paid before expiry of the opposition period, failing which the notice of opposition is deemed not to have been entered.

63 Consequently, that provision makes exercising the right of opposition subject to the completion of a prior formal requirement.

64 The fact remains that, as found in paragraph 61 above, such a rule is solely procedural in nature and cannot, therefore, establish that EUIPO recognises the existence of a right conferred by an earlier mark in favour of the person paying the opposition fee, all the more so since, contrary to the appellant’s claims, that rule is intended solely to require the prior payment of that fee as a condition of commencing the opposition proceedings and does not concern the identity of the person who has paid that fee.

65 The third ground of appeal must, therefore, be rejected as manifestly unfounded.

The fourth ground of appeal

Arguments of the parties

66 By its fourth ground of appeal, the appellant criticises paragraph 40 of the order under appeal in that the General Court rejected as wholly unfounded the argument that EUIPO had, by its communication of 2 December 2011 and the notifications of 22 February and 27 March 2012, accepted that the opposition was substantiated by evidence and that the obligation to prove the change of name had thereby been fulfilled.

67 In support of that ground of appeal, the appellant submits that it is clear from Rule 20(1) and (2) of Regulation No 2868/95 that, by continuing the procedure for examining the opposition and inviting MIP to file its observations regarding the opposition, EUIPO took the view that the change of name of the proprietor of the earlier marks was proved. The appellant further submits that the communications of 22 February 2012 and 27 March 2012, which are based on Rule 20(4) and (7), Rule 21(2), Rule 22 and Rule 79(a) of Regulation No 2868/95 and Article 42(1) to (3) of Regulation No 207/2009, also confirm that, in EUIPO’s view, the appellant had proved that change.

68 EUIPO and MIP contend that the fourth ground of appeal should be rejected as unfounded.

Findings of the Court

69 It is common ground that Rule 19 and Rule 20(1) and (2) of Regulation No 2868/95 provide that EUIPO gives the opposing party the opportunity to submit the evidence in support of his opposition within a specified period and that, where the opposing party fails to prove the existence, validity and scope of his earlier right within that period, EUIPO rejects the opposition as unfounded. Where an opposition is not rejected, the opposing party’s observations are communicated to the applicant, who is invited to submit his own observations.

70 Admittedly, the General Court erred in finding that ‘[t]here [wa]s no basis … in Regulation No 2868/95’ for the appellant’s interpretation of the continuation of the procedure for examining the opposition by EUIPO, and in particular sending the opposition file to MIP. It is apparent from interpreting paragraphs 1 and 2 of Rule 20 of that regulation together that the communication of the opposing party’s observations to the applicant makes clear that, at that stage of the proceedings, EUIPO considers that the opposing party has provided proof of ‘the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition’.

71 The General Court erred, therefore, in failing to find that EUIPO itself had erred in law in not rejecting the opposition directly on the basis of Rule 20(1) of that regulation and in communicating the opposing party’s observations to the trade-mark applicant.

72 The fact remains that the error of law by the General Court cannot entail the setting aside of the order under appeal.

73 On the ground already stated in paragraph 61 above, and since Rules 19 and 20 of Regulation No 2868/95 are solely intended to govern opposition proceedings before EUIPO, an infringement of those rules is capable of affecting only the proper conduct of the proceedings conducted before it, not the substance of the right relied upon by the opposing party in support of his opposition.

74 Consequently, since in exercising its discretion the General Court found, without erring in law, that the evidence produced was insufficient to prove the existence of a substantive right of the appellant over the earlier marks, it was fully entitled to find that the opposition brought by it before EUIPO was unfounded.

75 The fourth ground of appeal must, therefore, be rejected as manifestly unfounded.

The fifth ground of appeal

Arguments of the parties

76 By its fifth ground of appeal, the appellant criticises paragraph 42 of the order under appeal in that the General Court found that the notification of 23 April 2012 had brought to an end the suspension of the opposition proceedings and concluded that the decision of the Fourth Board of Appeal of EUIPO had been lawfully given.

77 In that regard, the appellant submits that the General Court failed to take into account its line of argument that the opposition was incorrectly rejected on 23 April 2012, although the proceedings were suspended and Communication No 11/98 of the President of EUIPO states that an ‘Opposition decision rendered while the proceedings were suspended constitutes an obvious procedural error demanding revocation’. The appellant further submits that the General Court erred in stating that the notification of 23 April 2012 related to the lack of proof of use of the earlier marks, even though that notification was based on Rule 20(1) of Regulation No 2868/95, not Rule 22(2) of that regulation.

78 EUIPO contends that the complaint raised by the appellant is inadmissible since it criticises a ground given in the order under appeal for the sake of completeness. EUIPO and MIP add that the appellant does not put forward any evidence capable of establishing a possible abuse of process, which gives good grounds, in any event, for rejecting the fifth ground of appeal as manifestly unfounded.

Findings of the Court

79 Contrary to the appellant’s claims, the opposition was not rejected by the Opposition Division on 23 April 2012, the date of the notification by which the appellant was informed that its opposition would be rejected, but by a decision dated 20 June 2012, which was duly notified to the appellant and which it appealed on 13 August 2012.

80 It must be found, first, that the notification of 23 April 2012 duly stated that the opposition would be rejected on the basis of Article 20(1) of Regulation No 2868/95, since the appellant had not adduced proof of the existence of its rights over the earlier marks and, secondly, that the Opposition Division’s decision was taken on that basis.

81 Consequently, the General Court was fully entitled to find, in paragraph 42 of the order under appeal, that the notification of 23 April 2012 entailed the resumption of the proceedings before the decision of 20 June 2012 had been taken. In that regard, it must be found that, in stating that that notification was based upon the failure to prove use of the earlier marks, not a failure to prove the opposing party’s rights, the General Court made a simple clerical mistake which is not capable of seriously undermining the comprehension of the order under appeal.

82 The fifth ground of appeal must, therefore, be rejected as manifestly unfounded.

The sixth ground of appeal

Arguments of the parties

83 By its sixth ground of appeal, the appellant complains that, in paragraphs 43 to 45 of the order under appeal, the General Court failed to observe the principles of legal certainty and procedural economy and also infringed Articles 63(2) and 64(1) of Regulation No 207/2009.

84 In that regard, the appellant submits that the Fourth Board of Appeal of EUIPO and the General Court, in confirming the contested decision, ‘did [not] take in consideration facts[,] circumstances and evidences provided … which were relevant to the out[come] of the opposition’.

85 EUIPO and MIP contend that that ground of appeal should be declared in part inadmissible and in part unfounded on the ground that the appellant simply repeats the arguments on which it had already relied before the General Court and that it fails to show how the General Court did not assess correctly the facts and evidence submitted to it concerning the appellant’s entitlement to file the opposition.

Findings of the Court

86 In paragraphs 43 to 45 of the order under appeal, the General Court held, in essence, that the appellant had had the opportunity to present, during the proceedings before EUIPO, the facts and evidence concerning its entitlement to file the opposition and that they had been correctly examined by the Fourth Board of Appeal. For the sake of completeness, the General Court found that the Fourth Board of Appeal had been perfectly entitled not to take into account the fax of 16 July 2012, since that document, produced out of time, had been rejected by the Board of Appeal ‘in a reasoned manner and having regard to all the relevant circumstances’.

87 The appellant’s line of argument in support of that ground of appeal cannot be upheld.

88 On the grounds already mentioned in paragraphs 54 to 57 above, the General Court was fully entitled to find that the documents sent before 16 July 2012 were insufficient to establish that the appellant was the proprietor of the earlier marks.

89 As regards the fact that the document of 16 July 2012 was not taken into account, according to the settled case-law of the Court of Justice, where EUIPO is called upon to give judgment in the context of opposition proceedings, taking into account facts or evidence produced late is particularly likely to be justified where EUIPO considers, first, that the material which has been produced is, on the face of it, likely to be genuinely relevant to the outcome of the opposition brought before it and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against such matters being taken into account (see, to that effect, judgment of 3 October 2013 in Rintisch v OHIM, C-120/12 P, EU:C:2013:638, paragraph 38 and the case-law cited).

90 In this case, since Real Express based its opposition on two registered Romanian marks, the evidence of the existence, validity and scope of protection of those two marks which it had to submit during the opposition proceedings is set out precisely and exhaustively in Rule 19(2)(a)(ii) of Regulation No 2868/95. Real Express was, therefore, deemed to be aware, even before filing its opposition, of the precise documents which it had to produce in support of it. Consequently, the Fourth Board of Appeal and the General Court, had, in those circumstances, to exercise their discretion restrictively and could allow the late submission of such evidence only if the surrounding circumstances were likely to justify the delay in the submission of proof required of Real Express (see, by analogy, judgment of 3 October 2013 in Rintisch v OHIM, C-120/12 P, EU:C:2013:638, paragraph 39).

91 In the light of the factors mentioned in the preceding paragraph, it must be held that the Fourth Board of Appeal was fully entitled not to take into account the document which had been sent to EUIPO on 16 July 2012 and did not fail to observe the principle of legal certainty.

92 The sixth ground of appeal must, therefore, be rejected as unfounded.

Costs

93 Under Article 138(1) of the Rules of Procedure of the Court of Justice, which applies to appeal proceedings by virtue of Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

94 Since Real Express has been unsuccessful, it must be ordered to pay the costs, as applied for by EUIPO and MIP.

On those grounds, the Court (Ninth Chamber) hereby orders:

1. The appeal is dismissed.

2. Real Express SRL shall bear its own costs and pay the costs of the European Union Intellectual Property Office (EUIPO) and of MIP Metro Group Intellectual Property GmbH & Co. KG.

[Signatures]

* Language of the case: English.

Order of 8 Sep 2016, C-309/15 (Real Express / OHMI - MIP Metro), ECLI:EU:C:2017:977.