Appeal brought on 29 June 2010 by Union Investment Privatfonds GmbH against the judgment of the General Court (Third Chamber) delivered on 27 April 2010 in Case T-392/06 Union Investment Privatfonds GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs); other party to the proceedings: Unicre-Cartão International De Crédito SA

(Case C-308/10 P)

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2010/C 246/40

Language of the case: German

Parties

Appellant: Union Investment Privatfonds GmbH (represented by: J. Zindel, Rechtsanwalt)

Other parties to the proceedings:

Form of order sought

Pleas in law and main arguments

The appeal alleges misapplication of Article 74(2) of Regulation (EC) No 40/94. The General Court, in the appellant’s view, wrongly proceeded on the basis that the appellant had been late in submitting evidence of use of the marks cited in opposition. Furthermore, the discretionary examination which the Board of Appeal of OHIM is required to carry out under Article 74(2) of Regulation (EC) No 40/94 does not comply with the requirements laid down by the Court in its judgment of 13 March 2007 in Case C-29/05 P OHIM v Kaul [2007] ECR I-2213.

A proper discretionary examination would necessarily have resulted in the appellant’s evidence as to use of the mark cited in opposition being taken into account even if it had in fact been submitted late. Appraisal of the evidence would not have given rise to a delay in the proceedings because the Opposition Division of OHIM did not take its decision until 15 months after the evidence had been submitted. The evidence would also have had direct legal relevance. Furthermore, inaccurate written communications from the Opposition Division of OHIM were instrumental in contributing to the appellant’s submission of the evidence only after the period for so doing had elapsed.

The General Court also failed to assess the finding of the Opposition Division of OHIM that the parties involved had submitted their arguments and evidence within the periods which had been laid down. The Opposition Division of OHIM thus did not take the view that there had been a delay. The Board of Appeal of OHIM was thus precluded from assuming that there had been a delay. Rather, the Board of Appeal ought to have carried out a substantive examination of the evidence submitted.

Neither the Board of Appeal nor the General Court could make up for the absence of a discretionary decision on the part of the Opposition Division of OHIM. Because of non-exercise of discretion, the Board of Appeal ought to have remitted the matter back to the Opposition Division in accordance with Article 62(2) of Regulation (EC) No 40/94.

Furthermore, there are a number of reasons why the appellant was not late in submitting the evidence of use of the mark cited in opposition. First, the daily publications in the financial section of national newspapers, by which the use of the marks cited in opposition and further serial trade marks was evidenced by the indication of investment funds of the appellant, are established matters of public knowledge. OHIM was, for its part, obliged to take cognisance of this matter. Second, the trade mark applicant did not dispute the use of the opposition and serial trade marks. Third, the Opposition Division of OHIM unlawfully prevented the appellant from submitting further evidence of trade mark use. OHIM in fact informed the appellant that it could set out its views only in regard to arguments of the trade mark applicant, and it stated that it would not consider new evidence. It was thus irrelevant whether or not the appellant adduced further evidence of use. Fourth, periods were shortened in an impermissible manner. In this regard, OHIM also failed to comply with rule 80 of implementing Regulation No 2868/95.