JUDGMENT
OF THE GENERAL COURT (Ninth Chamber)
22 September 2021
In Case
T‑169/20,
Marina
Yachting Brand Management Co. Ltd, established in Dublin
(Ireland), represented by A. von Mühlendahl, C. Eckhartt and
P. Böhner, lawyers,
applicant,
v
European
Union Intellectual Property Office (EUIPO), represented
by M. Capostagno, acting as Agent,
defendant,
the
other party to the proceedings before the Board of Appeal of EUIPO, intervener
before the General Court, being
Industries
Sportswear Co. Srl, established in Venice
(Italy), represented by P. Cervato, lawyer,
ACTION
brought against the decision of the Second Board of Appeal of EUIPO of
10 February 2020 (Joined Cases R 252/2019-2 and R 253/2019-2),
relating to proceedings between Industries Sportswear and Marina Yachting Brand
Management regarding the cancellation of entries,
THE
GENERAL COURT (Ninth Chamber),
composed
of M.J. Costeira, President, D. Gratsias and M. Kancheva
(Rapporteur), Judges,
Registrar:
A. Juhász-Tóth, Administrator,
having
regard to the application lodged at the Court Registry on 23 March 2020,
having
regard to the response of EUIPO lodged at the Court Registry on 13 August
2020,
having
regard to the response of the intervener lodged at the Court Registry on
5 August 2020,
further
to the hearing on 5 May 2021,
gives
the following
Judgment
Background
to the dispute
1 On
10 August 2012, Moncler Srl filed an application for registration of an EU
trade mark with the European Union Intellectual Property Office (EUIPO)
pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009
on the European Union trade mark (OJ 2009 L 78, p. 1), as amended
(replaced by 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)).
2 Registration
as a mark was sought for the word sign MARINA YACHTING.
3 The
goods and services in respect of which registration was sought are in
Classes 18, 25 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.
4 After
a number of transfers of the application for registration, the mark applied for
was registered on 28 September 2014 under the number 11111317 in the name
of the intervener, Industries Sportswear Co. Srl.
5 On
13 October 2017, the intervener was declared insolvent by judgment
No 142/2017 of the Tribunale di Venezia (District Court, Venice, Italy),
which was delivered in insolvency proceedings No 138/2017.
6 On
18 October 2017, the transfer of the mark at issue, from the intervener to
Spring Holdings SARL, was entered in EUIPO’s register at the request of a
representative common to both of those parties (‘the representative in
common’).
7 On
25 October 2017, the appointed liquidator of the intervener (‘the
liquidator’) informed EUIPO that the intervener had been declared insolvent,
providing a copy of the judgment of the Tribunale di Venezia (District Court,
Venice) of 13 October 2017, and that the insolvency had become effective
as of 13 October 2017 on account of the entry of that judgment in the Italian
Companies Register (registro delle imprese). The liquidator also requested that
the insolvency proceedings relating to the intervener be entered in EUIPO’s
register, in accordance with Article 24 of Regulation 2017/1001, and that
the recordal of the transfer of the mark at issue to Spring Holdings be
cancelled, in accordance with Article 103 of that regulation.
8 On
9 April 2018, EUIPO informed the liquidator and the representative in
common of its decision to cancel the recordal of that transfer, because it
was erroneous, and to publish the correction on the same day.
9 On
16 April 2018, the applicant, Marina Yachting Brand Management Co. Ltd,
filed a recordal application for the transfer of the mark at issue to itself.
It claimed that that mark, which had initially been assigned by the intervener
to Spring Holdings, had subsequently been assigned to it by Spring Holdings.
It produced, as regards the first transfer, a certified copy, dated
21 March 2018, of a deed of assignment bearing the date of 26 June
2014 and, as regards the second transfer, a certified copy, dated 1 March
2018, of a deed of assignment bearing the date of 15 December 2017.
10 On
the same day, that is to say, on 16 April 2018, the transfers of ownership
of the mark at issue to Spring Holdings (recordal T 014185659) and then to the
applicant (recordal T 014188703) were entered in EUIPO’s register.
11 On
23 June 2018, the liquidator reiterated his request for the insolvency
proceedings relating to the intervener to be entered in the register and
requested the cancellation, in accordance with Article 103 of Regulation
2017/1001, of recordals T 014185659 and T 014188703, on the basis of
Article 42 of Regio decreto n. 267 (Royal Decree No 267/1942) of
16 March 1942 (GU No 81, of 6 April 1942) (‘the Italian Law on
bankruptcy’), which deprives a company in liquidation of the right to
administer its assets and of the right to use them as from the date on which it
is declared insolvent, namely, as regards the intervener, 13 October 2017.
The liquidator also stated that he had already submitted such a request for
cancellation on 5 and 14 June 2018, but had received no acknowledgement of
receipt from EUIPO.
12 On
11 July 2018, regarding the request for recordal of the insolvency
proceedings relating to the intervener, which had been submitted on
25 October 2017, EUIPO informed the liquidator that that request had been
accepted, but stated that it had ‘never [been] recorded in [its] database due
to technical problems at that time’.
13 On
12 July 2018, EUIPO informed the applicant of cancellation requests
T 014552205 (cancellation of register entry T 014185659) and T 014480019
(cancellation of register entry T 014188703) and requested that it submit its
observations. On 8 August 2018, the applicant submitted its observations.
14 On
21 August 2018, EUIPO forwarded a copy of those observations to the
liquidator, asked him to provide ‘official proof of ownership of the …
trade mark [at issue] by [the intervener] at the time of the insolvency
proceeding’ and requested that he submit his observations. On 20 and
21 September 2018, the liquidator complied with that request and provided
documents seeking to satisfy EUIPO’s request for proof.
15 On
25 September 2018, EUIPO informed the applicant that, in view of the
documents filed by the liquidator, it considered that the intervener was the
proprietor of the mark at issue at the time of the insolvency proceedings and
that recordals T 014185659 and T 014188703 should therefore be cancelled. The
applicant was requested to submit its observations.
16 On
20 November 2018, the applicant submitted its observations, in which it
referred, inter alia, to an ‘assignment agreement’ concluded between the
intervener and Spring Holdings on 26 June 2014 and to an ‘Intellectual
Property Licence Agreement’ concluded on 30 December 2014 between Spring
Holdings, as the new proprietor of the mark at issue since 26 June 2014,
and the intervener, as licensee. On 17 January 2019, the liquidator
submitted his observations in reply.
17 On
30 January 2019, in accordance with Article 162 of Regulation
2017/1001, the department in charge of EUIPO’s register, which was established
under Article 159(c) of that regulation, adopted two decisions
retroactively cancelling register entries T 014185659 and T 014188703, which
had been made on 16 April 2018, since they postdated 13 October 2017.
It found that EUIPO had made an obvious error in omitting ‘an essential
procedural step’ which had been drawn to its attention on 25 October 2017,
namely the request for the recordal of insolvency proceedings concerning the
intervener, a request which was based on a final decision of the Tribunale di
Venezia (District Court, Venice) which had taken effect on 13 October 2017.
Furthermore, it ordered that the request for the recordal of those insolvency
proceedings on the basis of that decision of the Tribunale di Venezia (District
Court, Venice), be registered with retroactive effect from 13 October 2017
(recordal file No T 014459807), in accordance with Article 24(3) of
Regulation 2017/1001.
18 On
31 January 2019, the applicant filed two notices of appeal, pursuant to
Articles 66 to 71 of Regulation 2017/1001, against the decisions of the
department in charge of EUIPO’s register cancelling register entries T
014185659 and T 014188703.
19 On
9 April 2019, the liquidator filed a request for recordal of a judgment
delivered on 13 March 2019 by the Tribunale di Venezia (District Court,
Venice), which was responsible for the insolvency proceedings relating to the
intervener, authorising the judicial seizure of the mark at issue as a
precautionary measure under the Italian Code of Civil Procedure. The liquidator
stated that, on 22 February 2019, he had filed an application before that
court in which he had informed it that, in the course of the proceedings before
EUIPO, he had become aware of the ‘assignment agreement’ and the licence
agreement of 2014 relied on by the applicant (see paragraph 16 above) and
had demanded the judicial seizure of the mark at issue on account of the
invalidity and fraudulent nature of those documents. On 5 July 2019,
after hearing all the parties concerned, the Tribunale di Venezia (District
Court, Venice) confirmed that judgment of 13 March 2019.
20 By
decision of 10 February 2020 (‘the contested decision’), after joining
them, the Board of Appeal dismissed the appeals
referred to in paragraph 18 above.
21 In
the first place, in paragraphs 43 to 49 of the contested decision, the
Board of Appeal, first of all, found that, in the present case, on
13 October 2017, the intervener, which had its seat in Italy, had been
declared insolvent by the Tribunale di Venezia (District Court, Venice). It
concluded that the insolvency proceedings relating to the intervener were
subject to Italian law, namely the Italian Law on bankruptcy, as argued by the
liquidator. It stated that, according to that law, the insolvency judgment
produced effects vis-à-vis the debtor (the insolvent company, in the present
case the intervener) from the moment it was filed at the registry of the Italian
court and vis-à-vis third parties (therefore vis-à-vis the assignees of the
mark at issue, namely Spring Holdings and the applicant) from the moment it was
entered in the Italian Companies Register, under Article 16 of the Italian
Law on bankruptcy, which referred to Article 133 of the Italian Code of
Civil Procedure.
22 Next,
the Board of Appeal found that, in the present case, the judgment declaring the
intervener insolvent had been delivered, filed and entered in the Italian
Companies Register on the same date, namely 13 October 2017, as was
apparent from that judgment and from the extract from the report from that
register. It concluded that, as of that date, the intervener had been deprived
of the right to administer and dispose of the assets in its possession, in
accordance with Article 42 of the Italian Law on bankruptcy, and that all
acts carried out by it after that judgment were ineffective vis-à-vis its
creditors under Article 44 of the same law. It also pointed out that, on
that date, the intervener appeared as the proprietor of the mark at issue in
EUIPO’s register and, moreover, that that mark appeared in the insolvency
inventory list, which reproduced the data in EUIPO’s register.
23 Furthermore,
the Board of Appeal stated that, on 25 October 2017, the liquidator had
requested the recordal of the insolvency proceedings relating to the intervener
in EUIPO’s register, that EUIPO had failed to take that request into account,
which was still pending on 16 April 2018 when the application for
registration of the transfer of the mark at issue to the applicant was
submitted, and that EUIPO had nonetheless registered the change in ownership of
that mark by entering in the register two successive recordals of transfer of
that mark (in favour of Spring Holdings and then in favour of the applicant) on
the same day. The Board of Appeal also observed that, some days before, namely
on 9 April 2018, EUIPO had decided to cancel a previous recordal of the
first of those transfers, in favour of Spring Holdings, after having been
informed by the liquidator, first, that the intervener was insolvent and,
secondly, that the representative in common could not represent the intervener
as the assignor.
24 In
the second place, in paragraphs 50 to 58 of the contested decision, the
Board of Appeal, first of all, replied to the applicant’s argument that EUIPO
should not have cancelled those recordals because, irrespective of the
intervener’s insolvency, the mark at issue had already been transferred to Spring
Holdings in the course of the month of June 2014. The Board of Appeal found, in
that regard, that, pursuant to Article 45 of the Italian Law on
bankruptcy, the formalities that were required for a deed to be enforceable
against third parties were ineffective vis-à-vis the insolvency proceedings if
they had been executed after the declaration of insolvency. It stated that, in
accordance with Article 27(1) of Regulation 2017/1001, the alleged
transfers of the mark at issue had not been entered in the register before the
intervener was declared insolvent and therefore had no effect vis-à-vis third
parties, namely, in the present case, the liquidator. It observed that it was
therefore irrelevant to determine whether the date of 26 June 2014
indicated on the first assignment agreement relating to the mark at issue was
certain within the meaning of Italian law, a point which the parties had
discussed at length, as long as the transfer had not been entered in EUIPO’s
register. The Board of Appeal took the view that, in any event, as the
applicant itself had admitted, it was not competent to decide upon that issue,
which fell within the jurisdiction of the national courts. According to the
Board of Appeal, although it was indeed true that the entry of a transfer in EUIPO’s
register was not a condition of the validity of that transfer between the
parties, as the applicant had argued, it was nevertheless a condition for the
transfer of the mark to have effects vis-à-vis third parties, namely, in the
present case, the liquidator.
25 Next,
the Board of Appeal stated that the alleged deed of ‘extension’ of the
licence agreement (which, according to the applicant, had confirmed Spring
Holdings’ ownership rights in the mark at issue) had not been signed by the
liquidator, with the result that the applicant could not validly claim that the
liquidator had acknowledged the rights of Spring Holdings in that mark.
Furthermore, it pointed out that the liquidator had challenged the assignment
agreement of 26 June 2014 between the intervener and Spring Holdings
before the Tribunale di Venezia (District Court, Venice).
26 In
addition, the Board of Appeal found that, since the mark at issue had been
mentioned in the inventory list annexed to the judgment declaring the intervener
insolvent, a list which EUIPO had no competence to challenge, since it could
not substitute itself for the national courts, EUIPO was required to take that
fact into account and enter the insolvency proceedings relating to that mark in
the register, as requested by the liquidator. According to the Board of
Appeal, the application for recordal of the successive transfers of the mark at
issue submitted by the applicant after the intervener’s insolvency was belated
and did not provide evidence that the insolvency judgment was erroneous. It
stated that it would have been for the applicant to present to EUIPO evidence
that that judgment had no effect against that mark on the basis of a national
court decision, something which it had failed to do.
27 Lastly,
the Board of Appeal found that EUIPO had made an obvious error in entering the
successive transfers of the mark at issue in the register on 16 April
2018, since the intervener, which was the assignor in the first of those
transfers, had been an insolvent company since 13 October 2017 and EUIPO
had been informed of that fact. It stated that the obvious error had therefore
been made in the recordals which were entered on 16 April 2018, and not
only in 2017 as the applicant claimed. It added that the cancellation of the
entries in the register had been decided on within one year of the date on
which those entries had been made, namely on 30 January 2019, with the
result that the conditions for the application of Article 103 of Regulation
2017/1001 were satisfied. Consequently, it found that the decisions cancelling
register entries T 014185659 and T 014188703 were correct.
Forms
of order sought
28 The
applicant claims that the Court should:
– annul
the contested decision;
– order
EUIPO and the intervener to pay the costs.
29 EUIPO
contends that the Court should:
– dismiss
the action;
– order
the applicant to pay the costs.
30 The
intervener contends that the Court should:
– dismiss
the action;
– uphold
the contested decision, with the consequences that EUIPO must, first, cancel
the entries in the register made on 16 April 2018 recording the transfers
of the mark at issue and re-register the intervener as the exclusive proprietor
of that mark and, secondly, enter the insolvency proceedings relating to the
intervener in the register as from 13 October 2017;
– order
the applicant to pay the costs.
Law
The
issue of whether the intervener’s second head of claim is admissible
31 By
its second head of claim, the intervener claims that the Court should uphold
the contested decision, with the consequences that EUIPO must, first, cancel
the entries in the register made on 16 April 2018 recording the transfers
of the mark at issue and re-register the intervener as the exclusive proprietor
of that mark and, secondly, enter the insolvency proceedings relating to the
intervener in the register as from 13 October 2017.
32 As
regards the claim that the Court should uphold the contested decision, it must
be stated that that claim must be understood as seeking, in essence, the
dismissal of the action (see, to that effect, judgment of 5 February
2016, Kicktipp v OHIM – Italiana Calzature
(kicktipp), T‑135/14, EU:T:2016:69, paragraph 19 (not published) and
the case-law cited). It is therefore, in fact, indissociable from the first
head of claim, which seeks the dismissal of the action.
33 As
regards the inferences which the intervener claims that the Court should draw
from the dismissal of the action, which constitute, in essence, claims that the
Court should order EUIPO to carry out various operations in its register, it is
sufficient to point out that it is not for the Court to issue directions to
EUIPO. It is for the latter to draw the appropriate inferences from the
operative part and grounds of the Court’s judgments (see judgment of
11 July 2007, El Corte Inglés v OHIM –
Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05,
EU:T:2007:219, paragraph 20 and the case-law cited).
34 The
intervener’s second head of claim must therefore be rejected, in so far as it
requests that the Court issue directions to EUIPO, on the grounds of lack of
jurisdiction.
Substance
35 In
support of its action, the applicant relies, in essence, on a single plea in
law alleging infringement of Article 103 of Regulation 2017/1001, read in
conjunction with Articles 20, 24 and 27 of that regulation. It
submits, in essence, that the Board of Appeal erred in finding that the
conditions for revocation of a decision or cancellation of an entry which
contains an ‘obvious error’, within the meaning of Article 103 of that
regulation, were satisfied, even though the entries made on 16 April 2018
recording the transfers of the mark at issue complied with all the legal
requirements.
36 That
single plea consists formally of four closely connected parts, by which the
applicant claims, first, that those entries were made in accordance with the
applicable law and do not contain any ‘obvious error’ within the meaning of
Article 103 of Regulation 2017/1001, secondly, that that provision is not
applicable in the present case as there is no ‘obvious error’, thirdly, that
Article 27 of that regulation is not applicable and, fourthly, that, even
if Article 27 of that regulation were applicable, the intervener and the
liquidator knew of the transfers of the mark at issue.
37 In
that regard, the Court takes the view that the claims, in the first two parts
of the applicant’s single plea, relating to the absence, on the part of EUIPO,
of any obvious error within the meaning of Article 103 of Regulation
2017/1001, in actual fact constitute an independent fifth part, which must
logically be examined after the other four parts, which relate to
Articles 20, 24 and 27 of that regulation.
38 The
Court also takes the view that the five parts of the applicant’s single plea
must be rephrased, according to their respective contents, as alleging, in
essence, first, that EUIPO failed to have regard to its competence under
Articles 20 and 24 of Regulation 2017/1001, secondly, that EUIPO and the
Board of Appeal erred in taking into account the insolvency judgment of
13 October 2017, thirdly, that Article 27(1) of Regulation 2017/1001
is not applicable in the present case, fourthly, that the exception regarding
knowledge which is provided for in Article 27 of Regulation 2017/1001 and
the alleged knowledge, on the part of the intervener and the liquidator, of the
assignment agreement of 2014 are applicable in the present case and, fifthly,
that the Board of Appeal misapplied Article 103 of Regulation 2017/1001 to
EUIPO’s decisions to cancel the entries of 16 April 2018.
39 EUIPO
and the intervener contend that the applicant’s single plea should be rejected
and dispute its arguments.
Preliminary
observations
40 It
must be pointed out at the outset, as observed by the intervener, that
family A, consisting of, inter alia, B and her son C, which manages the
applicant, previously managed the intervener, whereas the liquidator represents
the general body of creditors of the insolvent intervener.
41 In
the present case, it is for the Court to decide whether the Board of Appeal was
right in finding that the decisions of the department in charge of EUIPO’s
register cancelling the entries of 16 April 2018, relating to the
successive transfers of the mark at issue, were lawful under Article 103
of Regulation 2017/1001. In that regard, account must be taken of the relevant
provisions of that regulation, in particular Articles 103, 20, 24 and
27, and of Articles 3, 7 and 19 of Regulation (EU) 2015/848 of the
European Parliament and of the Council of 20 May 2015 on insolvency
proceedings (OJ 2015 L 141, p. 19, corrigendum OJ 2016
L 349, p. 9).
42 Article 103
of Regulation 2017/1001, which is entitled ‘Revocation of decisions’, but which
also concerns the cancellation of entries, provides in paragraphs 1 and 2
thereof:
‘1. Where
[EUIPO] has made an entry in the Register or taken a decision which contains an
obvious error attributable to [EUIPO], it shall ensure that the entry is
cancelled or the decision is revoked. Where there is only one party to the
proceedings and the entry or the act affects its rights, cancellation or
revocation shall be determined even if the error was not evident to the party.
2. Cancellation
or revocation as referred to in paragraph 1 shall be determined, ex
officio or at the request of one of the parties to the proceedings, by
the department which made the entry or took the decision. The cancellation of
the entry in the Register or the revocation of the decision shall be effected
within one year of the date on which the entry was made in the Register or that
decision was taken, after consultation with the parties to the proceedings and
any proprietor of rights to the EU trade mark in question that are entered in
the Register. [EUIPO] shall keep records of any such cancellation or revocation.’
43 Article 20
of Regulation 2017/1001, which is entitled ‘Transfer’, provides in
paragraphs 1, 3 to 5 and 11 thereof:
‘1. An
EU trade mark may be transferred, separately from any transfer of the
undertaking, in respect of some or all of the goods or services for which it is
registered.
…
3. …
an assignment of the EU trade mark shall be made in writing and shall require
the signature of the parties to the contract, except when it is a result of a
judgment; otherwise it shall be void.
4. On
request of one of the parties a transfer shall be entered in the Register and
published.
5. An
application for registration of a transfer shall contain [the] information
[specified].
…
11. As
long as the transfer has not been entered in the Register, the successor in
title may not invoke the rights arising from the registration of the EU trade
mark.’
44 Article 13
of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying
down detailed rules for implementing certain provisions of Regulation
2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018
L 104, p. 37), specifies the information which an application for
registration of a transfer of a mark which is submitted under
Article 20(5) of Regulation 2017/1001 must contain.
45 Article 24
of Regulation 2017/1001, which is entitled ‘Insolvency proceedings’, lays down
in the first subparagraph of paragraph 1 and in paragraph 3 thereof:
‘1. The
only insolvency proceedings in which an EU trade mark may be involved are those
opened in the Member State in the territory of which the debtor has his centre
of main interests.
…
3. Where
an EU trade mark is involved in insolvency proceedings, on request of the
competent national authority an entry to this effect shall be made in the
Register and published in the European Union Trade Marks Bulletin referred
to in Article 116.’
46 Article 27
of Regulation 2017/1001, which is entitled ‘Effects vis-à-vis third parties’,
provides in paragraphs 1 and 4 thereof:
‘1. Legal
acts referred to in Articles 20, 22 and 25 concerning an EU trade mark
shall have effects vis-à-vis third parties in all the Member States only after
entry in the Register. Nevertheless, such an act, before it is so entered,
shall have effect vis-à-vis third parties who have acquired rights in the trade
mark after the date of that act but who knew of the act at the date on which
the rights were acquired.
…
4. Until
such time as common rules for the Member States in the field of bankruptcy
enter into force, the effects vis-à-vis third parties of bankruptcy or similar
proceedings shall be governed by the law of the Member State in which such
proceedings are first brought within the meaning of national law or of
conventions applicable in this field.’
47 Article 3
of Regulation 2015/848, which is entitled ‘International jurisdiction’,
provides in the first and second subparagraphs of paragraph 1 thereof:
‘The
courts of the Member State within the territory of which the centre of the
debtor’s main interests is situated shall have jurisdiction to open insolvency
proceedings … The centre of main interests shall be the place where the
debtor conducts the administration of its interests on a regular basis and
which is ascertainable by third parties.
In the
case of a company or legal person, the place of the registered office shall be
presumed to be the centre of its main interests in the absence of proof to the
contrary …’
48 Article 7
of Regulation 2015/848, which is entitled ‘Applicable law’, provides in
paragraphs 1 and 2 thereof:
‘1. Save
as otherwise provided in this Regulation, the law applicable to insolvency
proceedings and their effects shall be that of the Member State within the
territory of which such proceedings are opened (the “State of the opening of
proceedings”).
2. The
law of the State of the opening of proceedings shall determine the conditions
for the opening of those proceedings, their conduct and their closure. In
particular, it shall determine the following:
…
(b) the
assets which form part of the insolvency estate and the treatment of assets
acquired by or devolving on the debtor after the opening of the insolvency
proceedings;
…
(m) the
rules relating to the voidness, voidability or unenforceability of legal acts
detrimental to the general body of creditors.’
49 Article 19
of Regulation 2015/848, which is entitled ‘Principle’, lays down in the first
subparagraph of paragraph 1 thereof:
‘Any
judgment opening insolvency proceedings handed down by a court of a Member
State which has jurisdiction pursuant to Article 3 shall be recognised in
all other Member States from the moment that it becomes effective in the State
of the opening of proceedings.’
50 It
must thus be pointed out that, under Regulation 2017/1001, the Italian Law on
bankruptcy is applicable to certain aspects of the present case.
51 First
of all, under Article 24(1) of Regulation 2017/1001 and also under
Article 7 of Regulation 2015/848, the Italian Law on bankruptcy, as the law
of the Member State in the territory of which the intervener had its centre of
main interests at the time when it was declared insolvent, governs the
insolvency proceedings in which the mark at issue is involved. Furthermore,
under Article 27(4) of Regulation 2017/1001, it also governs the issues
relating to the effects vis-à-vis third parties of those insolvency
proceedings.
52 In
addition, under Article 7(2) of Regulation 2015/848, the Italian
Law on bankruptcy determines, inter alia, under subparagraph (b) of
Article 7(2) of that regulation, ‘the assets which form part of the
insolvency estate and the treatment of assets acquired by or devolving on the
debtor after the opening of the insolvency proceedings’ and, under subparagraph
(m) of Article 7(2) of that regulation, ‘the rules relating to the
voidness, voidability or unenforceability of legal acts detrimental to the
general body of creditors’. Likewise, under Article 19 of that regulation,
the insolvency judgment handed down by the Tribunale di Venezia (District
Court, Venice) is automatically effective throughout the European Union with
regard to all the third parties and therefore, in the present case, with regard
to the applicant and EUIPO.
53 The
Italian Law on bankruptcy provides, in essence, in Articles 16 and 17,
that the insolvency judgment produces effects vis-à-vis the debtor (the natural
or legal person declared bankrupt or insolvent) from the moment it is filed at
the registry of the court and vis-à-vis third parties from the moment it is
entered in the Italian Companies Register (in the present case on
13 October 2017); in Article 42, relating to the dispossession of the
debtor, that the management of the debtor’s assets is entrusted to the person
responsible for the liquidation of the insolvent company; in Article 44,
that all the acts carried out by the debtor after the declaration of
insolvency, or without a date which has become certain before the declaration
of insolvency, are ineffective by law and unenforceable against third parties,
including the general body of creditors, and, in Article 45, that the
formalities that are required for an act to be enforceable against third
parties, including the general body of creditors, are ineffective if they have
been carried out after the declaration of insolvency.
54 It
is in the light of those provisions that the five parts of the applicant’s
single plea must be examined.
The
first part of the single plea, alleging that EUIPO failed to have regard to its
competence under Articles 20 and 24 of Regulation 2017/1001
55 By
the first part of the single plea, the applicant claims, in essence, that,
under, in particular, Article 20 of Regulation 2017/1001, EUIPO must only
verify the formal requirements with regard to an application for registration
of the transfer of a mark and that it is not for it to examine the substantive
issues, which do not fall within its competence.
56 In
the present case, the applicant submits that EUIPO went beyond its competence
and exceeded its powers, first, in examining questions of ownership under
Italian law and, secondly, in not confining itself to a formal examination of
the documents provided in support of the requests for recordal of the transfers
of the mark at issue, namely agreements in writing bearing the signatures of
the parties concerned. It argues that EUIPO should therefore only have examined
whether sufficient evidence of those transfers had been submitted and whether
the documents provided contained what was stated in the applications for
registration of those transfers. It claims that it also follows from the
case-law of the Court that EUIPO is not entitled to consider the validity and
legal effects of a transfer of a mark under the applicable national law. It
submits that the Board of Appeal went beyond its competence and exceeded its
powers by carrying a substantive assessment as to whether the inventory list
annexed to the judgment declaring the intervener insolvent proved ownership of
the mark at issue.
57 According
to the applicant, it is not disputed that the application for registration of
the transfers of that mark which was submitted on 16 April 2018 satisfied
all the substantive and formal requirements, since the transfer agreements were
in writing and were signed by both of the parties concerned by each of those
transfers. Although the applicant admits that, on that date, on which the
entries recording those transfers were made, the registered proprietor of that
mark was the intervener, it claims that the register did not, however, reflect
the legal situation, since the intervener had transferred the mark at issue to
Spring Holdings in 2014, and Spring Holdings had, in turn, transferred that
mark to the applicant in the course of the month of December 2017. It concludes
that those transfers were registered on 16 April 2018 in accordance with
the applicable legal requirements and that EUIPO could not examine whether the
agreements concluded in 2014 (the transfer to Spring Holdings) or in 2017 (the
transfer to itself) were valid under Italian or Irish law.
58 It
must be pointed out at the outset, first, that, according to settled case-law,
which is applicable to EUIPO, the competent institution or agency is required
to examine carefully and impartially all the relevant factual and legal aspects
of the individual case (see, to that effect, judgments of 21 November
1991, Technische Universität München, C‑269/90, EU:C:1991:438,
paragraph 14; of 15 July 2011, Zino Davidoff v OHIM –
Kleinakis kai SIA (GOOD LIFE), T‑108/08, EU:T:2011:391, paragraph 19;
and of 25 September 2018, Grendene v EUIPO –
Hipanema (HIPANEMA), T‑435/17, not published, EU:T:2018:596,
paragraph 79 and the case-law cited). In particular, EUIPO, which keeps a
public register, must, in this respect, diligently take into account facts that
are capable of having legal implications for the entries it makes in that
register.
59 Secondly,
it must be pointed out that, according to the case-law referred to by the
applicant, Article 19 of Regulation 2017/1001 does not, in principle,
require that EUIPO consider and apply the laws of the Member States concerning
an EU trade mark as an object of property. In particular, it is not apparent
from that provision that EUIPO or the Courts of the European Union must
consider or rule on contractual or legal questions arising under national law
(see, to that effect, judgment of 9 September 2011, Chalk v OHIM –
Reformed Spirits Company Holdings (CRAIC), T‑83/09, not published,
EU:T:2011:450, paragraph 27).
60 According
to that case-law, a potential conflict between two assignments of a trade
mark raises questions in relation to the law of contract and the law of
property which exceed the scope of Article 20 of Regulation 2017/1001 and
of Implementing Regulation 2018/626 and the solution to which does not fall
within EUIPO’s competence. It follows that it is not for EUIPO to consider the
validity and the legal effects of a transfer of an EU trade mark under the
applicable national law (see, to that effect, judgment of 9 September
2011, CRAIC, T‑83/09, not published, EU:T:2011:450,
paragraphs 30 and 31).
61 Consequently,
as EUIPO, moreover, points out in its response, it is apparent from that
case-law that, when dealing with a request for recordal of a transfer of an EU
trade mark, EUIPO’s competence is, in principle, confined to examining the
formal requirements set out in Article 20 of Regulation 2017/1001 and
Article 13 of Implementing Regulation 2018/626 and does not imply an
assessment of substantive issues that may arise under the applicable national
law.
62 However,
according to settled case-law, in interpreting a provision of EU law, it is
necessary to consider not only its wording but also the context in which it
occurs and the objectives pursued by the legislation of which it is part (see
judgment of 4 February 2016, Hassan, C‑163/15, EU:C:2016:71,
paragraph 19 and the case-law cited).
63 In
particular, Article 20 of Regulation 2017/1001 must be interpreted in the
light of the provisions in the same section of Regulation 2017/1001, which is
entitled ‘EU trade marks as objects of property’ (Chapter II, Section 4,
Articles 19 to 29), the purpose of which is to ensure that such a mark is
capable of ‘being transferred, of being charged as security in favour of a
third party and of being the subject matter of licences’ (see recital 26
of that regulation).
64 Consequently,
in applying Article 20 of Regulation 2017/1001, EUIPO must take account,
in particular, of Article 27(1) of that regulation, under which transfers
of an EU trade mark are to have effects vis-à-vis third parties, in principle,
only after entry in the EU trade marks register, from which it is, moreover,
apparent that such an entry does not have retroactive effect.
65 Furthermore,
as the case may be, where, as in the present case, insolvency proceedings
have been opened against the proprietor of a mark, EUIPO must take into account
the provisions of Article 27(4) of Regulation 2017/1001, from which it is
apparent that the effects vis-à-vis third parties of such proceedings are
governed by national law.
66 In
the present case, the proceedings relating to the insolvency of the intervener
are governed by Italian law, a point which the applicant does not dispute. In
particular, it is apparent from the information which the liquidator provided
EUIPO with that, first of all, Articles 16 and 17 of the Italian Law on
bankruptcy provide, in essence, that the insolvency judgment produces effects,
first, vis-à-vis the debtor, that is to say, the natural or legal person
declared bankrupt or insolvent, from the moment that that judgment is filed at
the registry of the court and, secondly, vis-à-vis third parties from the
moment it is entered in the Italian Companies Register. Secondly, it is
apparent from Article 42 of that law that the management of the insolvent
company is entrusted to the liquidator. Lastly, it is apparent from
Articles 44 and 45 of that law, first, that all the acts carried out by
the debtor after the declaration of insolvency, or without a date which has
become certain before the declaration of insolvency, are ineffective by law and
unenforceable against third parties, including the general body of creditors,
and, that, secondly, the formalities that are required for an act to be
enforceable against those third parties are ineffective if they have been
carried out after the declaration of insolvency.
67 Thus,
in the present case, in accordance with Article 27(4) of Regulation
2017/1001, the implications of the insolvency proceedings must be drawn from
Italian law, in particular by duly taking into account its effect on the acts
which were carried out by the debtor after that declaration of insolvency or
which were without dates which had become certain before that declaration.
68 Consequently,
in view of the foregoing, it must be held that, although it is true that EUIPO
must confine itself to examining the formal requirements for the validity of an
application for registration of a transfer of a mark under Article 20(5)
of Regulation 2017/1001 and Article 13 of Implementing Regulation
2018/626, that examination nonetheless implies that it must diligently take
into account facts that are capable of having legal implications for the
application for registration of such a transfer, including the existence of
insolvency proceedings.
69 The
duty of diligence incumbent on EUIPO pursuant to the principle referred to in
paragraph 58 above is all the more imperative where, as in the present
case, before receiving an application for registration of the transfer of an EU
trade mark, EUIPO was informed, by an earlier request for recordal which had
been submitted in accordance with Article 24(3) of Regulation 2017/1001,
that that mark was involved in insolvency proceedings, that is to say,
proceedings seeking the realisation of the assets of the proprietor of that
mark for the benefit of its creditors. In such a case, it is for EUIPO to deal
with that application for registration of a transfer with particular diligence,
in order to take into consideration the objective of ‘guarantee[ing] the
effectiveness’ of the insolvency proceedings which is referred to in
recital 36 of Regulation 2015/848, in particular if the existence,
validity or certain date of that transfer is disputed by the liquidator.
70 The
applicant, however, submits, in essence, that an application for registration
of a transfer of an EU trade mark is totally independent of any earlier
application for recordal of insolvency proceedings affecting that same mark. It
claims that EUIPO is only competent to verify the formal requirements of the
transfer and that it should refrain from any assessment of the possible
implications of the first application for the subsequent applications.
71 However,
in the light of the considerations set out in paragraphs 58 to 69 above,
such a line of argument must be rejected. Once it has been informed of
the opening of insolvency proceedings involving an EU trade mark by a national
court, EUIPO cannot disregard that fact where, at a later date, an application
for registration of a transfer regarding the same mark is submitted, especially
where, moreover, the person responsible for the liquidation of the assets which
form part of the insolvency estate expressly disputes the existence or the
validity of the document produced in support of that application and legal
proceedings have been brought in that regard.
72 Furthermore,
in the present case, as has been pointed out in paragraph 66 above, under
the applicable Italian law, the insolvency proceedings at issue had the effect
of making ineffective the formalities required to ensure that an act by the
debtor was enforceable against third parties, since those formalities had been
carried out after the declaration of insolvency. Consequently, since that
declaration produced its effects prior to the application for registration of
the transfers at issue and EUIPO had been informed of it prior to that
application, EUIPO was required to suspend the registration of those transfers
until the national court had examined the substance of the case.
73 By
contrast, following the applicant’s line of argument would result not only, in
practice, in a circumvention of the national provisions concerning insolvency
and their objective, namely the protection of creditors, but would also to a
great extent render Article 24(3) of Regulation 2017/1001 redundant.
74 The
Board of Appeal was therefore right in, inter alia, finding, in
paragraph 56 of the contested decision, that, since the mark at issue
was mentioned in the inventory list annexed to the judgment declaring the
intervener insolvent, EUIPO was required to take that fact into account and
enter the insolvency proceedings relating to that mark in the register, as
requested by the liquidator
. In so
doing, the Board of Appeal simply referred to the duty of diligence which was
incumbent on EUIPO, as explained in paragraphs 58 to 69 above.
Furthermore, the Board of Appeal was also right in stating, in the same
paragraph of its decision, that EUIPO had no competence to challenge that
inventory list, since it could not substitute itself for the national courts.
75 The
first part of the single plea must therefore be rejected.
The
second part of the single plea, alleging that EUIPO and the Board of Appeal
erred in taking into account the insolvency judgment of 13 October 2017
76 By
the second part of the single plea, the applicant submits, in essence, that the
Board of Appeal erred when it found that an essential procedural step had not
been taken on the ground that, when EUIPO had registered the transfers of the
mark at issue on 16 April 2018, it had not taken into account the fact
that it had itself overlooked the earlier request for the insolvency
proceedings relating to the intervener to be entered in the register, a request
which had been submitted by the liquidator on 25 October 2017 pursuant to
Article 24 of Regulation 2017/1001. The applicant takes the view that, at
the time of the application for registration of those transfers, the intervener
could no longer be considered to be the proprietor of that mark, since it had
previously been transferred by the intervener to Spring Holdings by an
assignment agreement of 26 June 2014 and that company had subsequently
transferred it to the applicant. According to the applicant, the recordal of
the insolvency proceedings under Article 24 of Regulation 2017/1001 could
not therefore have any effect, because, in October 2017 and April 2018, the
intervener could no longer be considered to be the proprietor of that mark.
77 The
applicant submits that, even if EUIPO had entered the insolvency proceedings in
the register, the transfers of the mark at issue, first to Spring Holdings and
then to the applicant, would nevertheless have had to be registered, since,
first, all the requirements for the registration of a transfer set out in
Article 20 of Regulation 2017/1001 (agreement in writing, signatures,
application for registration) had been satisfied and the required evidence had
been submitted and since, secondly, the intervener was, at the time of such an
entry in the register, no longer the proprietor of that mark, which it had
assigned to Spring Holdings. It argues that the entry of the insolvency
proceedings in the register could not have had the effect that the assets of
the intervener, an insolvent company, again included something – such as
that mark – which, at the time of the opening of the insolvency
proceedings, was no longer part of its assets. It adds that the insolvency
itself and the entry of the insolvency proceedings in the register produce
effects for the future, as is apparent from Article 27(4) of Regulation
2017/1001.
78 It
must be pointed out at the outset that it is common ground between the parties
that the intervener was declared insolvent by an insolvency judgment which was
delivered on 13 October 2017 by the Tribunale di Venezia (District Court,
Venice) under the Italian Law on bankruptcy and became effective vis-à-vis
third parties on the same day under that law, which, pursuant to
Article 27(4) of Regulation 2017/1001, governs the effects vis-à-vis third
parties of those proceedings. Consequently, as of that date, the intervener was
no longer entitled to transfer the mark at issue under Article 20 of that
regulation and EUIPO could not carry out the registration of a transfer which
was applied for after that date.
79 The
Board of Appeal, in paragraphs 46 and 47 of the contested decision, simply
referred to the consequences of such an insolvency judgment for the party which
was entered in the register as the proprietor of an EU trade mark at the time
when that judgment was delivered, that is to say, the prohibition of
administering its assets (property and titles to property entered in the
register) and the invalidity or ineffectiveness of any subsequent acts
vis-à-vis creditors (including the formalities required to ensure that an act
has effects vis-à-vis third parties, which are ineffective if they are carried
out after the declaration of insolvency). It observed that, in the present
case, at the time when that judgment was delivered, namely on 13 October
2017, the intervener appeared in EUIPO’s register as the proprietor of the mark
at issue and that that mark appeared on the insolvency inventory list.
80 In
that regard, it must be stated that, contrary to what the applicant claims, the
Board of Appeal did not carry a substantive assessment as to whether the
inventory list proved ownership of the mark at issue. The Board of Appeal
simply took into consideration an official document that had been approved by
the Tribunale di Venezia (District Court, Venice), which was responsible for
the insolvency proceedings, and found, in paragraph 56 of the contested
decision, that no evidence had been provided to show that that document had
been challenged before a court. Furthermore, in paragraphs 48 and 49 of
that decision, the Board of Appeal pointed out that EUIPO had not dealt with
the liquidator’s request, which had been received on 25 October 2017, for
the insolvency proceedings relating to the intervener to be entered in the
register and that that request was still pending on 16 April 2018, the
date on which the application for registration of the transfers of that mark
from the intervener to Spring Holdings and from Spring Holdings to the
applicant was submitted.
81 The
Board of Appeal was therefore right in finding, in paragraphs 50 to 54 of
the contested decision, that the applicant’s argument that the transfer of the
mark at issue by the intervener to Spring Holdings had taken place on
26 June 2014 (that is to say, before the intervener was declared
insolvent) did not permit the inference that the recordals of transfer of
16 April 2018 were lawful and in finding, in essence, that that argument
was ineffective.
82 In
that regard, the Board of Appeal was right in relying on Article 27(1)
of Regulation 2017/1001, regarding the effects vis-à-vis third parties of legal
acts such as transfers of a trade mark, effects which those acts have only
after entry in the register. It found that the alleged transfer of the mark at
issue by the intervener, regardless of whether it was valid and its date was
certain, had not, in any event, been entered in EUIPO’s register before the
insolvency judgment of 13 October 2017 and that, as a result, it could not
have any effect with regard to the liquidator, who had to be classified as a
‘third party’ because he was not a party to that alleged transfer.
Furthermore, in the light of Article 27(4) of Regulation 2017/1001, the
Board of Appeal was right in relying on Article 45 of the Italian Law on
bankruptcy, which provides that all the formalities that are required to ensure
that an act is enforceable against third parties are ineffective if they have
been carried out after the declaration of insolvency, as is the case here.
83 It
is therefore apparent from the contested decision that the Board of Appeal did
not rule on the substantive legal issues which fell within the jurisdiction of
the national courts and were a matter for national law, such as the ownership
of the mark at issue under Italian law or the substantive validity of the
transfers of that mark which had been registered on 16 April 2018. On the
contrary, in paragraphs 53 and 56 of the contested decision, it expressly
stated that it did not have any competence in that regard and duly recognised
the jurisdiction of the relevant national courts.
84 Lastly,
in so far as the applicant relies on paragraph 30 of the judgment of
9 September 2011, CRAIC (T‑83/09, not published,
EU:T:2011:450), it must be pointed out that, in that paragraph of that judgment,
the Court held that the first application for registration of a transfer of the
mark concerned in the case which gave rise to that judgment satisfied the
requirements of Rule 31 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) (now Article 13 of
Implementing Regulation 2018/626), because it was accompanied by a document
assigning the trade mark in accordance with the requirements of that rule, with
the result that that application and the registration of the transferee as the
new proprietor of the trade mark at issue were valid. By contrast, the Court
held that a second application for registration of a transfer of the same mark
did not meet those requirements, since the transferor was not the registered
proprietor, which at that time was already the transferee in the context of the
earlier transfer of that mark. In that regard, the Court pointed out that a
potential conflict between the two assignments of which that mark had been the
subject matter raised questions in relation to the law of contract and the law
of property, which exceeded the scope of that rule and the examination of which
did not fall within EUIPO’s competence.
85 However,
those findings do not imply that, in the present case, the Board of Appeal
assessed the substantive validity of the transfers of the mark at issue, as the
applicant seems to suggest. In that regard, it is sufficient to point out that,
in the dispute on which the Court ruled in the judgment of 9 September
2011, CRAIC (T‑83/09, not published, EU:T:2011:450), the
applicant did not rely, in support of his application for registration of the
transfer of the mark, on a decision of a national court relating to insolvency
proceedings that is analogous to the judgment delivered by the Tribunale di
Venezia (District Court, Venice) in the present case. EUIPO was not therefore
required to apply the national law and the reference to the judgment cited is
thus irrelevant. In any event, in the contested decision, the Board of
Appeal confined itself to taking note of that Italian judgment and, as has
already been pointed out in paragraph 83 above, it did not itself rule on
the ownership of the mark at issue under Italian law or assess the substantive
validity of the transfers of that mark.
86 The
second part of the single plea must therefore be rejected.
The
third part of the single plea, alleging that Article 27(1) of Regulation
2017/1001 is not applicable in the present case
87 By
the third part of the single plea, the applicant claims, in essence, that
Article 27(1) of Regulation 2017/1001 cannot apply in the present case,
since it concerns only situations in which more than one party claims a right
to an EU trade mark, that is to say, relies on legal acts which have as their
object or effect the creation or transfer of rights in such a mark. By
contrast, it submits that it is not applicable to a situation, such as that in
the present case, in which an entity is no longer the proprietor of the mark
concerned at the time when insolvency proceedings concerning it are opened,
because it has transferred that mark to another entity years previously.
88 In
that regard, it must be borne in mind that the first sentence of
Article 27(1) of Regulation 2017/1001 provides that legal acts referred to
in Articles 20, 22 and 25 of that regulation concerning an EU trade mark
are to have effects vis-à-vis third parties in all the Member States only after
entry in the register.
89 It
must be stated that, contrary to what the applicant claims, the Board of Appeal
was right in finding that that provision was applicable in the present case.
90 In
paragraphs 47 to 54 of the contested decision, the Board of Appeal pointed
out that the ownership of the mark at issue on 13 October 2017, the date
on which the registered proprietor of that mark, namely the intervener, had
been declared insolvent, was the subject matter of a dispute between the
applicant and the liquidator, representing the general body of the intervener’s
creditors, and that the alleged transfer of that ownership, which, according to
the applicant, had taken place in 2014, did not, in any event, have any effect
vis-à-vis third parties, including the liquidator, because it had not been
entered in EUIPO’s register before 13 October 2017.
91 It
follows that Article 27(1) of Regulation 2017/1001 is applicable in the
present case, in particular to the alleged agreement of 2014 to transfer the
mark at issue, which was not made effective vis-à-vis third parties in
accordance with that provision prior to 13 October 2017, the date on which
the judgment declaring the intervener insolvent in accordance with the Italian
Law on bankruptcy, which is applicable under Article 27(4) of that
regulation and Article 19(1) of Regulation 2015/848, took effect and had
effects vis-à-vis third parties.
92 The
third part of the single plea must therefore be rejected.
The
fourth part of the single plea, alleging that the exception regarding knowledge
which is provided for in Article 27(1) of Regulation 2017/1001 and the
alleged knowledge, on the part of the intervener and the liquidator, of the
assignment agreement of 2014 are applicable in the present case
93 By
the fourth part of the single plea, the applicant submits, in essence, that the
Board of Appeal erred in not taking into consideration the fact that the
intervener and the liquidator knew of the transfer of the mark at issue which
had taken place in 2014, a fact which it claims is proved by the existence of
the licence agreement relating to that mark, which the intervener and Spring
Holdings had entered into on 30 December 2014, and the liquidator’s extension
of that licence agreement by email of 7 December 2017. It argues that that
is also apparent from a ‘letter agreement’ of 24 November 2017, by which
Spring Holdings proposed to extend the duration of the licence agreement until
30 November 2022.
94 In
any event, the applicant submits that the liquidator could not be considered to
be a third party (even acting in the interests of the intervener’s creditors),
because he had, as a party to the licence agreement, entered into a contractual
relationship with the applicant. The latter concludes that, even if
Article 27(1) of Regulation 2017/1001 were to apply to the present case,
the intervener and the liquidator himself could not rely on that provision
because they had actual knowledge of the previous transfer of the mark at issue
to Spring Holdings in 2014.
95 It
must be pointed out that those arguments are based on the exception regarding
knowledge which is provided for in the second sentence of Article 27(1) of
Regulation 2017/1001, according to which, even before it is entered in EUIPO’s
register, a legal act concerning an EU trade mark is to have effect vis-à-vis
third parties who have acquired rights in the trade mark after the date of that
act if they knew of the act at the date on which the rights were acquired.
96 It
must, however, be stated that, in the present case, EUIPO was not in a position
to apply that exception regarding knowledge.
97 As
has already been pointed out in paragraph 74 above, the Board of Appeal
was right in finding, in paragraph 56 of the contested decision, that,
since the mark at issue was mentioned in the inventory list annexed to the
insolvency judgment of 13 October 2017, it was not for EUIPO to challenge
that list, as it could not substitute itself for the national courts and was
required to enter the insolvency proceedings relating to that mark in the
register. The Board of Appeal was also right in finding, in the same paragraph
of that decision, that the application for registration of the transfers of
that mark which had been submitted by the applicant after the intervener had
been declared insolvent was belated and that the applicant had not provided
evidence that the insolvency judgment was erroneous on the basis of a national
court decision.
98 Consequently,
it was not for EUIPO to ascertain whether, as at the date of the judgment
declaring the intervener insolvent, the exception regarding knowledge could be
raised against the intervener and the liquidator. It follows that the present
part is ineffective.
99 In
any event, as regards the intervener’s and the liquidator’s alleged knowledge,
on 13 October 2017, of the transfer of the mark at issue by the intervener
to Spring Holdings, which had allegedly taken place in 2014, it is necessary to
make the following observations.
100 First,
as regards the intervener, it must be pointed out that the Court of Justice,
with regard to the purpose of the rule laid down in the first sentence of
Article 27(1) of Regulation 2017/1001, has stated that the lack of
effects, vis-à-vis third parties, of the legal acts referred to in
Articles 20, 22 and 25 of that regulation which have not been entered in
the register is intended to protect a person who has, or may have, rights in an
EU trade mark as an object of property (see, to that effect, judgment of
4 February 2016, Hassan, C‑163/15, EU:C:2016:71,
paragraph 25).
101 It
must therefore be held that Article 27(1) of Regulation 2017/1001 is
intended, in the present case, to protect any person who has, or may have,
rights in the mark at issue as an object of property, that is to say, the
creditors of the intervener, the company which has been declared insolvent.
Consequently, the knowledge of the transfer of that mark on the part of the
intervener itself is not relevant and cannot affect the rights of its creditors
to its liquidated assets.
102 Secondly,
as regards the liquidator, it must be examined whether he actually confirmed
that he knew of the transfer of 2014 before 13 October 2017, as the
applicant claims.
103 In
that regard, it is important to point out that, under Article 27(1) of
Regulation 2017/1001, the exception regarding knowledge applies to those who,
having subsequently acquired rights in the trade mark concerned, knew of the
act ‘at the date on which the rights were acquired’, that is to say, in the
present case, on 13 October 2017, as the applicant itself admits in
paragraph 74 of the application.
104 First
of all, it is common ground that the liquidator was not involved either in the
assignment agreement or in the licence agreement relied on by the applicant,
which were allegedly entered into in 2014.
105 Next,
it is apparent from the case file that the liquidator challenged the validity
of that assignment agreement and licence agreement before the Tribunale di
Venezia (District Court, Venice). In the actual document on which the applicant
relies, namely the application initiating proceedings which the liquidator
submitted to that court on 13 June 2019, it is expressly stated that the
liquidator knew of the assignment agreement ‘for the first (and only) time’ in
the course of June 2018 (that is to say, after the insolvency judgment of
13 October 2017), on account, specifically, of the proceedings before
EUIPO.
106 In
support of its claims, the applicant simply refers to the ‘letter agreement’,
namely correspondence dating from the months of November and December 2017
regarding the extension of the licence agreement. In that regard, it is
important to point out that the correspondence relied on by the applicant
postdates the insolvency judgment, which is dated 13 October 2017. In any
event, it is apparent from the case file that the liquidator rejected the
applicant’s claims, stating that the proposal for the extension of the licence
agreement submitted by Spring Holdings on 24 November 2017 was ‘purely
temporary, provisional and obviously excluded the actions against the alleged
assignment of the trade marks’, one of which is the mark at issue. As is
expressly stated in the liquidator’s request seeking to obtain the authorisation
to accept that extension, the authorisation was ‘without prejudice to any
actions initiated to ascertain whether the assignment of the marks was lawful,
for an appropriate price and any other circumstance in relation to the object’.
Furthermore, the liquidator disputed before the Board of Appeal the veracity of
the email which had allegedly been sent by him in response to that proposal and
was relied on by the applicant, and the applicant has not proved that the
liquidator ever signed that proposal. Consequently, such evidence cannot prove
that the liquidator knew, on 13 October 2017, of the alleged assignment
agreement of 26 June 2014.
107 The
Board of Appeal was therefore right in finding, in essence, that the exception
regarding knowledge provided for in Article 27(1) of Regulation 2017/1001
did not apply in the present case and that the alleged assignment agreement and
licence agreement of 2104, irrespective of whether they were valid and their
dates were certain under Italian law, were, in any event, unenforceable
vis-à-vis the intervener and the liquidator on 13 October 2017.
108 The
fourth part of the single plea must therefore be rejected.
The
fifth part of the single plea, alleging that the Board of Appeal misapplied
Article 103 of Regulation 2017/1001 to EUIPO’s decisions to cancel the
entries of 16 April 2018
109 By
the fifth part of the single plea, the applicant claims, in essence, that
Article 103 of Regulation 2017/1001 is not applicable in the present case,
since there was no ‘obvious error’ when EUIPO entered the transfer of the mark
at issue to the applicant in the register on 16 April 2018, in compliance
with the legislative conditions. It reasserts that the intervener, before being
declared insolvent, had transferred that mark to Spring Holdings, which had, in
turn, transferred the mark to it. Furthermore, it submits that the error
alleged by the intervener, namely the omission of a procedural step, was not
made at the time when that transfer was entered in the register, but dated back
to October 2017.
110 In
that regard, it must be pointed out that the wording of Article 103 of
Regulation 2017/1001, which came into force on 1 October 2017, differs
from that of Article 80 of Regulation No 207/2009 in that it covers
any ‘obvious error’ that is attributable to EUIPO, and not only any ‘obvious
procedural error’ which is attributable to EUIPO, which has been defined by the
Court of Justice as a flagrant error of a procedural nature made by EUIPO (see,
to that effect, judgment of 31 October 2019, Repower v EUIPO,
C‑281/18 P, EU:C:2019:916, paragraph 29). The procedural nature of
the obvious error is not therefore a condition for the application of
Article 103 of Regulation 2017/1001.
111 As
regards the ‘obvious’ or flagrant nature of the error justifying the adoption
of a decision revoking an earlier decision or justifying the cancellation of an
entry, it refers to errors which are highly obvious and do not allow the
operative part of that earlier decision to be maintained or that entry to be
maintained without a new analysis which will be carried out subsequently by the
department which took that decision or made that entry (see, to that effect,
judgment of 28 May 2020, Aurea Biolabs v EUIPO –
Avizel (AUREA BIOLABS), T‑724/18 and T‑184/19, EU:T:2020:227,
paragraphs 29 and 30 and the case-law cited).
112 More
generally, according to the case-law, an error may only be classified as
obvious where it can readily be detected, in the light of the criteria to which
the legislature intended the administration’s exercise of its discretion to be
subject, and where the evidence adduced is sufficient to make that
administration’s assessment implausible and that assessment cannot be accepted
as justified and consistent (see, to that effect, judgment of 2 April
2019, Fleig v EEAS, T‑492/17, EU:T:2019:211,
paragraph 55 and the case-law cited).
113 In
the present case, it must be pointed out, as regards the failure to enter the
insolvency proceedings in the register, that an insolvency must be considered
to be effective and enforceable as from the date fixed by the applicable
national law, in the present case 13 October 2017 under Articles 44
and 45 of the Italian Law on bankruptcy (see, in particular, paragraphs 53
and 66 above). Furthermore, EUIPO knew of the intervener’s insolvency and, by
decision of 9 April 2018 (see paragraph 8 above), had already
expressly announced its intention of giving effect to it. Consequently, since
the first recordal of the transfer of the mark at issue by the intervener to
Spring Holdings, a recordal which had been requested on 18 October 2017 by
their representative in common, was cancelled by EUIPO on 9 April 2018
with retroactive effect, that mark had to be regarded as belonging to the
intervener on 13 October 2017 and, a fortiori, on 16 April 2018.
114 It
must therefore be held that the ‘obvious error’ attributable to EUIPO, within
the meaning of Article 103 of Regulation 2017/1001, was made when EUIPO,
on 16 April 2018, entered the transfers of the mark at issue in the
register at the applicant’s request without taking into account the existence
and the enforceability of the judgment of 13 October 2017 declaring the
intervener insolvent, a judgment which it had failed to enter in the register
following the request to do so which the liquidator had submitted on
25 October 2017.
115 The
entries in the register on 16 April 2018 of the successive transfers of
the mark at issue thus constituted ‘obvious errors’ attributable to EUIPO, for
the purposes of Article 103 of Regulation 2017/1001, since, first, the
intervener had previously been declared insolvent, namely on 13 October
2017, and, secondly, at the time when those entries were made, EUIPO knew of
the opening of the insolvency proceedings relating to the registered proprietor
of that mark, namely the intervener.
116 In
normal circumstances in which errors had not been made, if the judgment
declaring the registered proprietor of the mark at issue insolvent had been
duly entered in the register at the time when the liquidator requested that it
be entered, namely on 25 October 2017, any subsequent application for
registration of a transfer concerning the same mark would have been
automatically suspended and could have been acted upon only with the express
authorisation of the liquidator or the national court responsible for the
insolvency proceedings.
117 In
entering the contested transfers in the register at the request of the
applicant on 16 April 2018, after having failed to enter the insolvency
proceedings concerning the proprietor of the mark at issue in the register in
accordance with the liquidator’s request of 25 October 2017, EUIPO made an
obvious error, with the result that it was required to cancel those entries of
16 April 2018, which contained that obvious error, as soon as possible.
118 In
that regard, the Court of Justice has stated, in essence, that the purpose of
the obligation to revoke a decision or cancel an entry that contains an obvious
error attributable to EUIPO, which is currently imposed on EUIPO by
Article 103 of Regulation 2017/1001, is to guarantee sound administration
and procedural economy (see, to that effect and by analogy, judgment of
31 October 2019, Repower v EUIPO, C‑281/18 P,
EU:C:2019:916, paragraph 32).
119 Furthermore,
the period of one year from the date on which the entry was made in the
register, as laid down in Article 103(2) of Regulation 2017/1001, was duly
complied with when, on 30 January 2019, the department in charge of
EUIPO’s register adopted the two decisions cancelling register entries T
014185659 and T 014188703, which had been made on 16 April 2018.
120 It
follows that the necessary conditions for the application of Article 103
of Regulation 2017/1001 by EUIPO, in particular by the department in charge of
EUIPO’s register, were satisfied.
121 The
Board of Appeal was therefore right in upholding that department’s decision of
30 January 2019 to cancel the entries which had been made on 16 April
2018 relating to the successive transfers of the mark at issue.
122 The
fifth part of the single plea must therefore be rejected.
123 In
the light of all of the foregoing considerations, the single plea must be
rejected and consequently the action must be dismissed in its entirety.
Costs
124 Under
Article 134(1) of the Rules of Procedure of the General Court, the
unsuccessful party is to be ordered to pay the costs if they have been applied
for in the successful party’s pleadings.
125 Since
the applicant has been unsuccessful, it must be ordered to pay the costs, in
accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE
GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses
the action;
2. Orders
Marina Yachting Brand Management Co. Ltd to bear its own costs and to pay those
incurred by the European Union Intellectual Property Office (EUIPO) and by
Industries Sportswear Co. Srl.