(Community trade mark – Word mark GERONIMO STILTON – Opposition – Stay of proceedings – Restriction of the list of goods designated by the mark for which registration is sought – Withdrawal of the opposition)

Summary of the Judgment

(Rules of Procedure of the Court of First Instance, Art. 133(2))

(Council Regulation No 40/94, Art. 44(1); Commission Regulation No 2868/95, Art. 1, Rule 20(5))

3. Community trade mark – Observations of third parties and opposition – Withdrawal of the opposition

(Council Regulation No 40/94, Arts 42 and 43)

1.In proceedings concerning an action brought against a decision of a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) adjudicating in opposition proceedings, OHIM does not have power to alter, by the position it adopts before the Court, the terms of the dispute as delimited in the respective claims and contentions of the applicant for registration and of the party who has lodged the opposition. However, OHIM is not obliged to contend that an action brought against a decision of one of its Boards of Appeal should be dismissed. While OHIM does not have the requisite capacity to bring an action against a decision of a Board of Appeal, conversely it cannot be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed. There is nothing to prevent OHIM from endorsing a head of claim of the applicant’s or from simply leaving the decision to the discretion of the Court, while putting forward all the arguments that it considers appropriate for giving guidance to the Court. On the other hand, it may not seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application or put forward pleas in law not raised in the application.

(see paras 29-33)

2.Under Rule 20(5) of Commission Regulation (EC) No 2868/95 implementing Regulation No 40/94 on the Community trade mark if, pursuant to Article 44(1) of Regulation No 40/94, the applicant restricts the list of goods and services, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) is to communicate this to the opposing party and call upon him, within such period as it may specify, to submit to it observations stating whether he maintains the opposition and, if so, against which of the remaining goods and services. According to case-law, the power provided for in that provision to restrict the list of goods or services is vested solely in the applicant for the Community trade mark who may, at any time, apply to OHIM for that purpose. In that context, the withdrawal, in whole or part, of an application for a Community trade mark must be made expressly and unconditionally.

(see paras 38-39)

3.In opposition proceedings brought against the registration of a Community trade mark pursuant to Article 42 et seq. of Regulation No 40/94 on the Community trade mark, the opposition may in principle be withdrawn at any time. Although it is true that in the first sentence of Article 44(1) of Regulation No 40/94 the legislature has made express provision for withdrawal only of a trade mark application, the applicant for a Community trade mark and the opponent are however, according to the scheme of the regulation, placed on an equal footing in opposition proceedings with the result that that equality must extend to the possibility of withdrawing procedural documents.

(see para. 40)

1 February 2006 (*)

(Community trade mark – Word mark GERONIMO STILTON – Opposition – Stay of proceedings – Restriction of the list of goods designated by the mark for which registration is sought – Withdrawal of the opposition)

In Joined Cases T-466/04 and T-467/04,

Elisabetta Dami, residing in Milan (Italy), represented by P. Beduschi and S. Giudici, lawyers,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

the other party to the proceedings before the OHIM Board of Appeal having been

The Stilton Cheese Makers Association, established in Surbiton, Surrey (United Kingdom),

TWO ACTIONS against the decisions of the Second Board of Appeal of OHIM of 20 September 2004 (Cases R 973/2002-2 and R 982/2002‑2) concerning opposition proceedings between Mrs Elisabetta Dami and The Stilton Cheese Makers Association,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),

composed of H. Legal, President, P. Lindh and V. Vadapalas, Judges,

Registrar: B. Pastor, Deputy Registrar,

having regard to the applications lodged at the Registry of the Court of First Instance on 19 November 2004,

having regard to the order of 2 May 2005 made by the President of the Fourth Chamber of the Court of First Instance joining Case T-466/04 and Case T-467/04,

having regard to the response lodged at the Court Registry on 10 June 2005,

further to the hearing on 27 October 2005,

gives the following

Background to the dispute

1.On 13 October 1999, the applicant, Mrs Elisabetta Dami, filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.

2.The mark for which registration was sought is the word mark GERONIMO STILTON.

3.The goods and services in respect of which registration was sought are in Classes 16, 25, 28, 29, 30 and 41 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.The goods in Classes 29 and 30 correspond, for each of those classes, to the following description:

– Class 29: ‘Meat; fish; non-living molluscs and crustaceans; poultry and game; meat extracts; tinned meat; preserved, dried and cooked fruits and vegetables; jellies; jams; eggs; milk; milk products; dairy products; cheese; butter; yoghurt; milk beverages; edible oils and fats; pickles; fruit preserves; vegetable preserves; meat preserves; fish preserves’;

– Class 30: ‘Cake pastry; pasta, sweets; coffee; tea; cocoa; sugar; rice; tapioca; artificial coffee; flour; preparations made from cereals; bread; biscuits; tarts; pastries; pralines; ices and ice-cream; honey; syrup; pepper; vinegar; sauces; spices; ice; coffee-, cocoa- and chocolate-based beverages.’

5.On 5 June 2000 the application for the trade mark was published in Community Trade Marks Bulletin No 45/00.

6.On 5 September 2000, The Stilton Cheese Makers Association lodged an opposition, under Article 8(1)(b) and Article 8(4) of Regulation No 40/94, against the registration of the mark for the goods in Classes 16, 29 and 30. In support of its opposition, the opposing party relied on marks registered in a number of Member States which correspond to the word ‘stilton’ and all relate to milk products.

7.In its decision of 30 September 2002, the Opposition Division of OHIM allowed the opposition as regards the goods in Classes 29 and 30 and rejected the remainder of the opposition.

8.On 29 November 2002, the applicant appealed against that decision under Article 59 of Regulation No 40/94; the appeal was given the case number R 982/2002-2 and assigned to the Second Board of Appeal of OHIM. She requested that the Board of Appeal reject the opposition not only as regards the goods in Class 16, but also those in Classes 29 and 30.

9.On the same day, the opposing party also appealed against the same decision, its appeal was given the case number R 973/2002-2 and likewise assigned to the Second Board of Appeal of OHIM. It requested that the Board of Appeal allow the opposition not only as regards the goods in Classes 29 and 30, but also those in Class 16.

10.On four occasions the parties lodged joint applications for a stay of the proceedings in Case No R 973/2002-2. The Board of Appeal granted those applications. Even though the case had not been formally joined by the Board of Appeal, the joint applications for a stay of the appeal proceedings in Case No R 973/2002-2 were treated as also applying to the appeal proceedings in Case No R 982/2002-2. As regards the fourth application for a stay of the proceedings, the Board of Appeal made the following statements in its notification to the parties dated 2 April 2004:

‘We confirm that appeal proceedings are stayed for a period of two months until 5 June 2004. Given the prior applications, this stay of proceedings will be regarded as final, unless the parties can put forward an exceptional ground for a further stay of proceedings.’

11.In a letter of 3 June 2004, the applicant requested that the list of goods designated by the mark for which registration is sought be restricted to the effect that the reference to ‘dairy products and cheese’ be removed in respect of Class 29 and the statement ‘excluding all cheese-based foods or drinks’ be added as regards Class 30.

12.In a letter of 4 June 2004, the parties jointly applied to the Board of Appeal to stay the proceedings. As set out in that letter, the parties also declared that, on the one hand, referring to the contents of her letter of 3 June 2004, the applicant had ‘requested a change as regards the specification of the goods in the application for registration of the mark’, and, on the other hand, ‘the position [of the opposing party was] the following: once … the list of goods specified in respect of that application [had been amended] in order to, [in respect] of Class 29 [remove the reference to] “cheese, milk products” and “goods covered by the broad term ‘milk products’, in particular milk, milk-based products, butter, milk beverages and yoghurt”, and, [as regards] “Class 30 …, [remove the reference to] any food and drinks containing cheese or which are cheese-based, the opposition [would] be withdrawn’.

13.In a letter of 15 June 2004, the Board of Appeal informed the parties that it interpreted the letter of 4 June 2004 as a joint application to restrict the list of goods designated by the mark for which registration is sought and accordingly gave the parties a restricted list in accordance with that application. In the same letter the Board of Appeal added that, ‘if [the opposing party] were to withdraw the opposition’ the parties would be asked to state, before 14 July 2004, whether they had come to an agreement as regards apportionment of the costs incurred in the opposition and appeal proceedings. It specified that, in the absence of such an agreement, it would make a decision as to apportionment of the costs of the proceedings.

14.In a letter of 16 June 2004, the applicant asked the Board of Appeal to review the interpretation which the letter of 15 June 2004 appeared to contain and to confirm that the only restriction on the list of goods designated by the mark for which registration is sought was that mentioned in her letter of 3 June 2004. She maintained that the letter of 4 June 2004 was only a joint application for a stay of the appeal proceedings on account of the differences in the parties’ intentions, as the opposing party was calling for more amendments than were mentioned in the letter of 3 June 2004.

15.

In its letter of 23 June 2004, the Board of Appeal rejected that application. First of all, it pointed out that an application to restrict the list of goods designated by the mark for which registration is sought could not be withdrawn as it had become binding. Secondly, it considered that the wording of the parties’ joint letter of 4 June 2004, namely ‘once the specification has been changed … the opposition will be withdrawn’, could be construed only as an application to restrict that list. In addition, it took account of the fact that the parties had signed and sent the letter jointly in concluding that the applicant had thus indicated, in writing, that she agreed to that condition. The Board of Appeal therefore took the view that it had merely responded to the parties’ joint request for confirmation that the restriction to the list of goods designated by the mark for which registration is sought had been accepted without amendment.

16In its letter of 1 July 2004, the opposing party reminded the Board of Appeal that it intended to withdraw its opposition if, and only if, the list of goods designated by the mark which appeared in the Board of Appeal’s letter of 15 June 2004 was not amended.

17In its letter of 23 July 2004, the opposing party asked the Board of Appeal to confirm that that list had been restricted once and for all in accordance with the wording in the Board of Appeal’s letter of 15 June 2004.

18In its letter of 29 July 2004, the Board of Appeal confirmed that the accepted restriction to that list was that indicated in its letter of 15 June 2004 and therefore the opposition was held to be withdrawn.

In decisions given in respect of both cases on 20 September 2004 (hereinafter ‘the contested decisions’), the Board of Appeal held that, considering that withdrawal of the opposition had brought the proceedings to an end, the only issue to settle was the apportionment of costs since no agreement between the parties had been reached. In that regard, it decided to order each party to bear the costs it had itself incurred in the opposition and appeal proceedings in accordance with Articles 81(2) and 81(3) of Regulation No 40/94.

Forms of order sought by the parties

20The applicant claims in each case that the Court should:

–establish that the letter of 4 June 2004, sent to OHIM and signed jointly by the applicant and the opposing party does not contain a statement intended to bring an end to the proceedings before the Board of Appeal, but only an application for a stay of proceedings;

–annul the contested decisions and refer the case back to the Board of Appeal of OHIM;

–order OHIM to pay the costs.

21OHIM contends in each case that the Court should:

–annul the contested decisions;

–order each of the parties before the Court to bear its own costs.

Law

Arguments of the parties

22The applicant claims that the Board of Appeal erroneously held that the parties had expressed a common intention to bring the proceedings before OHIM to an end. In that regard she maintains that the parties’ joint letter of 4 June 2004 merely constituted an application for a stay of proceedings with a view to reaching an amicable agreement regarding the goods to remove from the list of goods designated by the mark for which registration is sought.

23On the other hand, that letter contained no statement intended to bring an end to the proceedings before the Board of Appeal. On the contrary, it clearly showed that the parties had not reached an agreement to bring the proceedings to an end. On the one hand, that letter stated that the applicant had, by letter of 3 June 2004, sent the Board of Appeal a request to restrict the list of goods designated, in accordance with an amicable agreement concluded with the opposing party on 22 December 2003. On the other hand, she explained that the opposing party, whilst taking formal notice of that application for a restriction, had observed that it would withdraw the opposition only if certain other goods, not covered by that amicable agreement, were also removed from the list at issue.

24The applicant concludes from this that the Board of Appeal misconstrued the application submitted by the parties to OHIM for a stay of the proceedings.

25OHIM considers that the action is well founded and that the contested decisions should be annulled. It states that case-law has acknowledged the admissibility of such claims (Case T-107/02 GE Betz v OHIM – Atofina Chemicals (BIOMATE) [2004] ECR II-0000, paragraphs 32 to 36, and Case T-22/04 Reemark v OHIM – Bluenet (Westlife) [2005] ECR II-0000, paragraphs 16 to 19).

26On the substance of the case, it considers that, as the applicant submits, the letter of 4 June 2004 contained only a joint application by the parties for a stay of the proceedings. It therefore concludes that the Board of Appeal infringed Article 44(1) of Regulation No 40/94 in restricting the list of goods designated by the mark for which registration is sought.

Findings of the Court

Admissibility of the parties’ claims

27It should be noted at the outset that, by its first head of claim, the applicant is requesting that the Court establish that the letter of 4 June 2004 sent to OHIM and signed jointly by the parties does not contain a statement intended to bring to an end the proceedings before the Board of Appeal, but only an application for a stay of proceedings. That request is not unconnected with the applicant’s second head of claim seeking the annulment of the contested decisions as it constitutes an argument in support thereof. Therefore, there is no need to adjudicate on that head of claim as such.

28For its part OHIM is requesting, by its first head of claim, that the Court annul the contested decisions.

29In that context it must be recalled that, in proceedings concerning an action brought against a decision of a Board of Appeal adjudicating in opposition proceedings, OHIM does not have power to alter, by the position it adopts before the Court, the terms of the dispute as delimited in the respective claims and contentions of the applicant for registration and of the opposing party (Case C‑106/03 P Vedial v OHIM [2004] ECR I-9573, paragraph 26, upholding on appeal the judgment of the Court of First Instance in Case T-110/01 Vedial v OHIM – France Distribution (HUBERT) [2002] ECR II-5275; Westlife, paragraph 16, and Case T-186/04 Spa Monopole v OHIM – Spaform (SPAFORM) [2005] ECR II‑0000, paragraph 19).

30However, it does not follow from that case-law that OHIM is obliged to contend that an action brought against a decision of one of its Boards of Appeal should be dismissed. While OHIM does not have the requisite capacity to bring an action against a decision of a Board of Appeal, conversely it cannot be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed (BIOMATE, paragraph 34; Westlife, paragraph 17; and SPAFORM, paragraph 20).

31Thus, there is nothing to prevent OHIM from endorsing a head of claim of the applicant’s or from simply leaving the decision to the discretion of the Court, while putting forward all the arguments that it considers appropriate for giving guidance to the Court (BIOMATE, paragraph 36, and Case T-379/03 Peek & Cloppenburg v OHIM (Cloppenburg) [2005] ECR II-0000, paragraph 22).

32On the other hand, it may not seek an order annulling or altering the decision of the Board of Appeal on a point not raised in the application or put forward pleas in law not raised in the application (Vedial v OHIM, paragraph 34, and Cloppenburg, paragraph 22).

33In this case it is clear that the only arguments that OHIM has put forward are in support of the applicant’s heads of claim according to which the Board of Appeal erred in finding that the parties had expressed a common intention to bring the proceedings before OHIM to an end. Therefore, the head of claim put forward by OHIM and the arguments advanced in support thereof are admissible in so far as they do not go beyond the bounds of the claims and arguments put forward by the applicant.

Substance

34In support of her action the applicant, with OHIM concurring, claims that the Board of Appeal erroneously held that the parties had expressed a common intention to bring the proceedings before OHIM to an end. In that context it must be pointed out that the contested decisions do not state explicitly that the proceedings have been brought to an end.

35However, in ruling on the apportionment of the costs of the proceedings before OHIM on the basis of the premiss that ‘withdrawal of the opposition brought the proceedings to an end’ (see the ground set out in paragraphs 20 and 21 respectively of the contested decisions) it must be considered that the Board of Appeal by implication decided to close the proceedings.

36Although the abovementioned ground contains no details, the account of the facts in respect of the course of the procedure and, in particular, of the exchange of correspondence between the parties and the Board of Appeal (see paragraphs 9 to 18 and 10 to 19 respectively of the contested decisions) is sufficiently detailed to allow the Court to understand and verify the reasons why the Board of Appeal took the view that the applicant had restricted her application for a trade mark and that, in return, the opposing party had withdrawn its opposition.

37The Court must therefore examine whether, in this case, the Board of Appeal could validly conclude that the parties had the common intention of bringing the proceedings before it to an end. It must be noted in this connection that, as regards the conditions and procedure relating to an application for partial or total withdrawal of a trade mark application or of an opposition before OHIM, Article 44(1) of Regulation No 40/94 provides that the applicant may at any time withdraw his Community trade mark application or restrict the list of goods or services contained therein.

38Furthermore, under Rule 20(5) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) if, pursuant to Article 44(1) of Regulation No 40/94, the applicant restricts the list of goods and services, OHIM is to communicate this to the opposing party and call upon him, within such period as it may specify, to submit to it observations stating whether he maintains the opposition and, if so, against which of the remaining goods and services.

39According to case-law, the power provided for in that provision to restrict the list of goods or services is vested solely in the applicant for the Community trade mark who may, at any time, apply to OHIM for that purpose. In that context, the withdrawal, in whole or part, of an application for a Community trade mark must be made expressly and unconditionally (Case T-219/00 Ellos v OHIM (ELLOS) [2002] ECR II-753, paragraph 61).

40Finally, although it is true that the legislature has not made express provision for withdrawal of the opposition, since Article 44(1) refers only to withdrawal of a trade mark application, the Court has held that, given that the scheme of Regulation No 40/94 places the applicant for a Community trade mark and the opponent on an equal footing in opposition proceedings, that equality must extend to the possibility of withdrawing procedural documents (Case T-10/01 Lichtwer Pharma v OHIM – Biofarma (Sedonium) [2003] ECR II-2225, paragraph 15, and Case T-120/03 Synopharm v OHIM – Pentafarma (DERMAZYN) ECR II-0000, paragraph 19).

41Thus, in the case in the main proceedings, to the extent that, as was noted in paragraphs 32 and 35 above, the fact that the operating resources necessary for the pursuit of the economic activity were not transferred does not necessarily preclude the entity at issue in the main proceedings from retaining its identity, the taking-over of the majority of the drivers must be regarded as a factual circumstance to be taken into account in order to classify the transaction concerned as a transfer of an undertaking. In this respect, it is apparent from the facts at issue in the main proceedings that the members of staff taken on by the new operator are assigned to the same or similar tasks and hold specific qualifications and skills which are essential to the pursuit, without interruption, of the economic activity concerned.

In the light of all the foregoing considerations, the answer to the questions referred is that Article 1(1) of Directive 2001/23 must be interpreted as meaning that, in the context of the takeover by an economic entity of an activity the pursuit of which requires substantial operating resources, under a procedure for the award of a public contract, the fact that that entity does not take over those resources, which are the property of the economic entity previously engaged in that activity, on account of legal, environmental and technical constraints imposed by the contracting authority, cannot necessarily preclude the classification of that takeover of activity as a transfer of an undertaking, since other factual circumstances, such as the taking‑over of the majority of the employees and the pursuit, without interruption, of that activity, make it possible to establish that the identity of the economic entity concerned has been retained, this being a matter for the referring court to assess.

Costs

Since these proceedings are, for the parties to the main proceedings, a step in the action pending before the referring court, the decision on costs is a matter for that court. Costs incurred in submitting observations to the Court, other than the costs of those parties, are not recoverable.

On those grounds, the Court (Fourth Chamber) hereby rules:

Article 1(1) of Council Directive 2001/23/EC of 12 March 2001 on the approximation of the laws of the Member States relating to the safeguarding of employees’ rights in the event of transfers of undertakings, businesses or parts of undertakings or businesses must be interpreted as meaning that, in the context of the takeover by an economic entity of an activity the pursuit of which requires substantial operating resources, under a procedure for the award of a public contract, the fact that that entity does not take over those resources, which are the property of the economic entity previously engaged in that activity, on account of legal, environmental and technical constraints imposed by the contracting authority, cannot necessarily preclude the classification of that takeover of activity as a transfer of an undertaking, since other factual circumstances, such as the taking‑over of the majority of the employees and the pursuit, without interruption, of that activity, make it possible to establish that the identity of the economic entity concerned has been retained, this being a matter for the referring court to assess.

[Signatures]

ECLI:EU:C:2025:140

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