22 November 2018 (* )

(EU trade mark — Cancellation proceedings — Figurative mark RoB — Declaration of invalidity — Article 60(1) of Regulation (EC) No 207/2009 (now Article 68(1) of Regulation (EU) 2017/1001) — Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001) — Rule 49(3) of Regulation (EC) No 2868/95 (now Article 23(3) of Regulation (EU) 2018/625) — Rule 62(3) of Regulation No 2868/95 (now Article 58(3) of Regulation 2018/625) — Action manifestly lacking any foundation in law)

In Case T‑355/17,

Daico International BV,

applicant,

European Union Intellectual Property Office (EUIPO),

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

American Franchise Marketing Ltd,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 9 March 2017 (Case R 1405/2016‑2), relating to cancellation proceedings between American Franchise Marketing and Daico International,

THE GENERAL COURT (Seventh Chamber),

composed of V. Tomljenović, President, A. Marcoulli (Rapporteur) and A. Kornezov, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 2 June 2017,

having regard to the response lodged at the Court Registry on 6 October 2017,

makes the following

Background to the dispute

1On 30 August 2006, the applicant, Daico International BV, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) 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 (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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)).

2Registration as a mark was sought for the following figurative sign (‘the contested mark’):

3The goods and services in respect of which registration was sought are in Classes 3, 10, 18, 25, 28, 35, 40, 41 and 43 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.

4The contested mark was registered on 29 August 2007.

5On 11 August 2015, American Franchise Marketing Ltd filed an application for revocation in respect of the contested mark, pursuant to Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001), on the ground that that mark had not been put to genuine use for a continuous period of five years. That application was directed against all the goods and services covered by the contested mark.

6On 31 August 2015, EUIPO fixed a period of three months for the applicant to submit evidence of genuine use of the contested mark.

7On 2 March 2016, as no evidence of use had been filed within the period set, the Cancellation Division upheld the revocation of the contested mark in its entirety (‘the decision of 2 March 2016’).

8The decision of 2 March 2016 was sent to the applicant on 3 March 2016 by registered letter with acknowledgement of receipt. That letter was apparently notified on 9 March 2016.

9On 27 June 2016, EUIPO informed the applicant that the decision of 2 March 2016 had become final and that as a result the contested mark had been revoked.

10On 31 July 2016, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of 2 March 2016.

11Also on 31 July 2016, the applicant filed an application for restitutio in integrum pursuant to Article 81 of Regulation No 207/2009 (now Article 104 of Regulation 2017/1001). The applicant submitted, in essence, that it had not received notification from EUIPO concerning the revocation proceedings.

12On 2 August 2016, the Board of Appeal informed the parties that the appeal before it was suspended pending a decision of the Cancellation Division on the application for restitutio in integrum.

13On 30 August 2016, the Cancellation Division rejected the application for restitutio in integrum. It noted that the applicant had not based its application on the fact that it had acted with all the due care required by the circumstances but on the fact that EUIPO had not correctly notified it of the information concerning the revocation proceedings. The Cancellation Division therefore considered that the application submitted by the applicant in fact relied on an obvious procedural error attributable to EUIPO under Article 80(1) and (2) of Regulation No 207/2009 (now Article 103(1) and (2) of Regulation 2017/1001). Consequently, it rejected the application for restitutio in integrum. As regards the obvious procedural error attributable to EUIPO, the Cancellation Division noted that the letter of 31 August 2015, fixing a three-month period for the applicant to produce evidence of genuine use of the contested mark, had been sent by post, without it being possible to determine whether that letter was in fact sent by ordinary post or by registered post or whether it had been delivered to its addressee. Accordingly, the Cancellation Division indicated its intention to revoke the decision of 2 March 2016. However, since the decision of 2 March 2016 was the subject of an appeal, the Cancellation Division stated that the proceedings for the revocation of that decision could take place only after the adoption of a decision by the Board of Appeal.

14By decision of 9 March 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO held that the appeal had not been filed. It noted that the decision of 2 March 2016 had been delivered to the applicant’s address on 9 March 2016. Moreover, the registered letter sent by EUIPO included the applicant’s name. The Board of Appeal concluded from this that the notification effected by EUIPO fulfilled the conditions of actual knowledge by the addressee of that notification concerning external aspects of the notification. The question of whether or not the director of the applicant company was aware of the notification concerns the internal aspect of the notification and is not covered by the assessment of its validity. Taking account of the actual notification of the decision of 2 March 2016 within 10 days of the date of its posting, namely, on 3 March 2016, the Board of Appeal held that the prescribed periods for lodging the appeal and paying the appeal fee had expired on 13 May 2016, in accordance with Rule 62(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 58(3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)). The Board of Appeal also noted that the appeal fee and the surcharge had been paid on 11 July 2016, and that the notice of appeal was not lodged until 31 July 2016. Therefore, the Board of Appeal found that the appeal had to be deemed not to have been filed, pursuant to Article 60(1) of Regulation No 207/2009 (now Article 68(1) of Regulation 2017/1001) and Rule 49(3) of Regulation No 2868/95 (now Article 23(3) of Regulation 2018/625), and ordered the reimbursement of the appeal fee and the surcharge paid by the applicant. The Board of Appeal added that the fact that the appeal was deemed not to have been filed meant that there were no ‘appeal proceedings’ within the meaning of Article 85(1) of Regulation No 207/2009 (now Article 109(1) of Regulation 2017/1001).

Forms of order sought

15The applicant claims that the Court should:

–annul the contested decision;

–order EUIPO to pay the costs.

16EUIPO contends that the Court should:

–dismiss the action;

–order the applicant to pay the costs.

17Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.

18In the present case, the Court considers that it has sufficient information from the documents before it and decides, pursuant to that article, to give its decision without taking further steps in the proceedings, even if one of the parties may have requested a hearing (see, to that effect, order of 23 November 2015, Actega Terra v OHIM — Heidelberger Druckmaschinen (FoodSafe), T‑766/14, not published, EU:T:2015:913, paragraph 10).

19The applicant submits that the Board of Appeal, in holding that the appeal had not been brought, infringed its right to be heard, as follows from Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001). The Board of Appeal, it argues, erred in stating that it was established, in accordance with Rule 62(3) of Regulation No 2868/95, that the decision of 2 March 2016 had been received by the applicant. The applicant refers, in this regard, to the judgment of 25 October 2012, Automobili Lamborghini v OHIM — Miura Martínez (Miura) (T‑191/11, not published, EU:T:2012:577, paragraph 34), in which, it claims, it was held that the existence of evidence of reasonable doubt as to the correct reception by the addressee of the consignment in question is sufficient proof that it did not receive the document. That judgment is, moreover, referred to in the directives relating to procedures published by EUIPO (Part A, section 1, point 3.2.2). In the present case, the applicant can clearly prove that it did not receive the decision of 2 March 2016, as the letter in question was received by Mr or Ms A., whom the applicant does not know. There is, therefore, a reasonable doubt as to whether the decision of 2 March 2016 was indeed received. Furthermore, the reference made by the Board of Appeal to the order of 22 January 2015, GEA Group v OHIM (engineering for a better world) (T‑488/13, EU:T:2015:64), is incorrect, since that case concerned the receipt of a fax. By contrast, the judgment of 15 September 1998, European Night Services and Others v Commission (T‑374/94, T‑375/94, T‑384/94 and T‑388/94, EU:T:1998:198), is relevant in so far as it was found in that case that a letter, received by an employee not authorised to do so, was not properly notified. This, it is submitted, also applies a fortiori in regard to a person who is unknown to the applicant.

20EUIPO disputes the applicant’s arguments.

21First, concerning the alleged infringement of Article 75 of Regulation No 207/2009, it must be recalled that that provision, in its second sentence, enshrines, in the context of EU trade mark law, the general principle of the protection of the rights of the defence under which a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known (see judgment of 4 May 2017, Haw Par v EUIPO — Cosmowell (GELENKGOLD), T‑25/16, not published, EU:T:2017:303, paragraph 54 and the case-law cited).

22In the present case, the applicant refers specifically to the alleged fact that the Board of Appeal infringed Article 75 of Regulation No 207/2009 ‘by deeming [its] appeal ... not to have been filed’. The applicant thus refers to the proceedings before the Board of Appeal.

23It is, however, common ground that the applicant was given an opportunity effectively to make known its views before the Board of Appeal. In particular, as noted by EUIPO in its pleadings, the applicant was able to present observations on three occasions before the Board of Appeal. Furthermore, the applicant does not claim that the Board of Appeal based its decision on matters which were not brought to its attention.

24It is therefore necessary to reject, as being manifestly unfounded, the plea raised by the applicant alleging infringement of Article 75 of Regulation No 207/2009.

25Secondly, it must be noted that the applicant also relies, in the application, on infringement of Rule 62(3) of Regulation No 2868/95.

26It should be recalled that Rule 61 of Regulation No 2868/95 (now Article 56 of Regulation 2018/625), which lays down ‘General provisions on notifications’, contains an exhaustive list of the means by which EUIPO is to notify, inter alia, its decisions. Thus, paragraph 2 of that rule states that notifications are to be made by post, by hand delivery, by deposit in a post box at EUIPO, by telecopier or other technical means, or by public notification.

27Rule 62(3) of Regulation No 2868/95 provides as follows:

‘Where notification is effected by registered letter, whether or not with advice of delivery, this shall be deemed to be delivered to the addressee on the 10th day following that of its posting, unless the letter has failed to reach the addressee or has reached him at a later date. In the event of any dispute, it shall be for [EUIPO] to establish that the letter has reached its destination or to establish the date on which it was delivered to the addressee, as the case may be.’

28In view of the arguments put forward in the application, it must be held that, by pleading the infringement of Rule 62(3) of Regulation No 2868/95, the applicant disputes the evidence adduced by EUIPO for the purpose of showing that the decision of 2 March 2016 reached its destination, thus causing time to start to run in respect of the period for bringing proceedings.

29In that regard, a distinction must be drawn between, first, the transmission of a document to its addressee, which is required for due notification, and, secondly, effective knowledge of that document, which is not required in order for the notification to be regarded as due notification. According to the case-law, the existence of a valid notification to the addressee is in no way conditional on its having been actually brought to the notice of the person competent to deal with it under the internal rules of the entity addressed, as due notification of a decision is effected once it has been communicated to the addressee and the addressee is in a position to take cognisance of it. Thus, in order to assess the validity of a notification, only its external aspect is taken into consideration, that is to say, due transmission to the addressee, and not its internal aspect, which concerns the internal functioning of the entity addressed (see order of 22 January 2015, engineering for a better world, T‑488/13, EU:T:2015:64, paragraph 19 and the case-law cited; judgment of 4 May 2017, Kaszantowicz v EUIPO — Gbb Group (GEOTEK), T‑97/16, not published, EU:T:2017:298, paragraph 39).

In that context, the notifier must establish that it has created the conditions for the document to be notified to arrive within the sphere of influence of the addressee. By contrast, the notifier is not required to establish that the document was actually brought to the attention of the addressee. The notifier is thus neither obliged nor, indeed, as a general rule, able to interfere in the internal functioning of the addressee in order to ensure such cognisance. In particular, the notifier cannot be held responsible for the fact that, because of a possible lack of diligence on the part of the addressee, the latter did not take cognisance of a document which duly reached its sphere of influence (see, to that effect, judgment of 4 May 2017, GEOTEK, T‑97/16, not published, EU:T:2017:298, paragraph 41 and the case-law cited).

In the present case, it should be noted, first of all, that the decision of 2 March 2016 was sent by registered letter with acknowledgement of receipt. Furthermore, as is apparent from the document from the Spanish postal service, reproduced in paragraph 6 of the contested decision, the addressee of that letter was the applicant, namely, ‘DAICO INTERNATIONAL B.V.’.

Next, as shown by the document from the Dutch postal service, reproduced in paragraph 18 of the contested decision, the Dutch address of the addressee was the address that the applicant had stated at that time to EUIPO, namely, ‘Kloveniersburgwal 41, Amsterdam 1011 JW’. That document bears the same postal reference number as that from the Spanish postal service. It should also be noted that the applicant states in the application that it declared a change of address to EUIPO on 24 March 2016, that is, after the decision of 2 March 2016 had been sent. Assuming that the applicant had, in fact, changed address before the decision of 2 March 2016 was sent, EUIPO did not, at that time, have the applicant’s new address.

Lastly, as is clear from the document from the Spanish postal service, reproduced in paragraph 7 of the contested decision, the letter in question was delivered on 9 March 2016, which is also evidenced by the document issued by the Dutch postal service referred to above.

It follows from those details that EUIPO created the conditions for the document to be notified to reach the addressee’s sphere of influence, within the meaning of the case-law referred to in paragraph 30 above.

The fact that the acknowledgement of receipt was allegedly signed by a person unknown to the applicant cannot alter that conclusion. It should be recalled that the existence of a valid notification to the addressee is in no way conditional on its having been actually brought to the notice of the person competent to deal with it under the internal rules of the entity addressed. Furthermore, the notification of a measure to a company’s registered office meets in all cases the requirement of legal certainty and, moreover, places that company in a position to take cognisance of the measure notified. Consequently, companies have no right to require the notification of a measure to a particular person (judgment of 26 November 1985, Cockerill-Sambre v Commission, 42/85, EU:C:1985:471, paragraph 11, and order of 20 November 2012, Shahid Beheshti University v Council, T‑120/12, not published, EU:T:2012:610, paragraph 38).

Moreover, nothing has been put forward to suggest, as in the case giving rise to the judgment of 15 September 1998, European Night Services and Others v Commission (T‑374/94, T‑375/94, T‑384/94 and T‑388/94, EU:T:1998:198), and assuming that the national regulatory framework can be transposed, that valid instructions were left by the applicant to the Dutch postal service, which were not complied with. As regards the reference made by the applicant to the judgment of 25 October 2012, Miura (T‑191/11, not published, EU:T:2012:577), suffice it to note that that case before the Board of Appeal and before the Court concerned the receipt of a consignment sent by ordinary mail. In the present case, the subject matter of the contested decision before the Court is different and concerns the receipt of the decision of 2 March 2016, sent by registered letter with acknowledgement of receipt.

In addition, it should be noted that, as is apparent from the statement of the owner of an administrative services company, the applicant has no salaried employees. It was thus very specifically for the applicant to ensure the conditions for the receipt of any post which might be sent to it, inter alia by registered post. No evidence has been put forward to support the view that any such precautions were taken. It should also be pointed out that the applicant stated during the administrative procedure that several letters sent by EUIPO had not been received.

It follows that the Board of Appeal did not err in finding that the letter notifying the decision of 2 March 2016 was delivered to the applicant within 10 days of its dispatch and that, consequently, the appeal fee and the surcharge were paid after the expiry of the period for bringing an appeal.

It is therefore necessary to reject, as being manifestly unfounded, the plea raised by the applicant alleging infringement of Rule 62(3) of Regulation No 2868/95.

In the light of the foregoing, the pleas put forward by the applicant and, therefore, the action in its entirety must be dismissed as manifestly lacking any foundation in law.

It should be noted that the dismissal of the present action is without prejudice to the Cancellation Division’s intention to revoke the decision of 2 March 2016, as expressly stated in the decision of 30 August 2016 on the application for restitutio in integrum (paragraph 13 above).

Costs

Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

hereby orders:

1.The action is dismissed.

2.Daico International BV shall pay the costs.

Luxembourg, 22 November 2018.

Registrar

President

Language of the case: English.