Deichmann SE v European Union Intellectual Property Office (T-848/16)

Contents

Judgment of the General Court (Ninth Chamber)6 December 2018^note(EU trade mark — Opposition proceedings — Application for EU figurative mark V — Earlier international figurative marks V — Proof of the existence, validity and scope of the protection of an earlier trade mark — Rule 19(2)(a)(ii) of Regulation (EC) No 2868/95 (now Article 7(2)(a)(ii) of Delegated Regulation (EU) 2018/625))In Case T‑848/16,Deichmann SE, established in Essen (Germany), represented by C. Onken, lawyer,vEuropean Union Intellectual Property Office (EUIPO), represented by A. Söder and D. Hanf, acting as Agents,the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, beingVans, Inc., established in Cypress, California (United States), represented by M. Hirsch, lawyer,THE GENERAL COURT (Ninth Chamber),composed of S. Gervasoni (Rapporteur), President, K. Kowalik-Bańczyk and C. Mac Eochaidh, Judges,Registrar: R. Ukelyte, Administrator,having regard to the application lodged at the Court Registry on 1 December 2016,having regard to the response of the intervener lodged at the Court Registry on 2 February 2017,having regard to the response of EUIPO lodged at the Court Registry on 9 February 2017,having regard to the decision of 12 May 2017, joining Cases T‑848/16 and T‑817/16 for the purposes of the oral part of the procedure,further to the hearing on 16 May 2018,gives the following

Judgment

Background to the dispute

1On 17 October 2011, the intervener, Vans, Inc., 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)).

2Registration as a mark was sought for the following figurative sign:

3The goods for which registration was sought are within Classes 18 and 25 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.

4On 21 February 2012 the applicant, Deichmann SE, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to the registration of the mark applied for.

5The opposition was based on the following earlier marks:– international registration designating the European Union No 937 479 of 10 August 2007 for goods in Classes 18, 25 and 28, in the following format:– international registration designating the European Union No 937526 of 10 August 2007 for goods in Classes 18, 25 and 28, in the following format:– international registration designating the European Union No 937528 of 13 August 2007 for goods in Classes 18, 25 and 28, in the following format:

6The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

7On 28 September 2015, the Opposition Division of EUIPO rejected the opposition, finding, first, that there was no likelihood of confusion in respect of marks No 937479 and No 937526 and, secondly, that protection of mark No 937528 had not been proven to the required legal standard.

8On 21 October 2015, the applicant lodged an appeal against the decision of the Opposition Division, claiming that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

9By decision of 20 September 2016 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the applicant’s appeal without examining the likelihood of confusion alleged by the applicant.

10First, the Board of Appeal confirmed the decision of the Opposition Division in relation to the lack of proof of the protection of the international registration designating the European Union No 937528 (paragraph 11 of the contested decision).

11Secondly, in reliance on Rule 19(1) to (3) 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 7(1) to (4) 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 held that the application was unfounded in relation to the protection of international registrations No 937479 and No 937526.

12The Board of Appeal held that it was able to examine ex officio the substantiation of the earlier rights required by Rule 19 of Regulation No 2868/95, without the need for a request from the parties to do so (paragraph 12 of the contested decision). It found that the requirements of Rule 19 of Regulation No 2868/95 did not relate to the admissibility of the opposition but to the question of whether the opposition was well founded, and that EUIPO was therefore not required to point out to the opponent deficiencies in the documents submitted or to call upon it specifically to present further evidence (paragraph 13 of the contested decision).

13The Board of Appeal held that, for an international registration with protection extending to the European Union, proof of the existence, validity and scope of protection of the earlier mark must be submitted, in accordance with Rule 19(2) of Regulation No 2868/95 (now Article 7(2) of Regulation 2018/625), in the form of official documents emanating from the issuing authority by which the trade mark was registered, and in the language of the proceedings or accompanied by a translation in accordance with Rule 19(3) of Regulation No 2868/95 (paragraph 14 of the contested decision).

14The Board of Appeal found that, pursuant to Article 152 of Regulation No 207/2009 (now Article 190 of Regulation 2017/1001), EUIPO only published certain bibliographical data, a reproduction of the trade mark and the numbers of the classes of goods of an international registration designating the European Union (paragraph 16 of the contested decision).

15The Board of Appeal held that, pursuant to Rule 19(2) and (3) of Regulation No 2868/95, the applicant was required to submit an extract from the register of the International Bureau, including a translation into the language of the proceedings, as proof of the protection of the international registrations designating the European Union (paragraph 17 of the contested decision). The Board of Appeal commented that, by submitting an extract from the TMview database, administered not by the World Intellectual Property Organisation (WIPO) but by EUIPO, together with a translation of the list of goods into the language of the proceedings, the applicant had not supplied proof of the existence, validity and scope of protection of its earlier rights (paragraph 18 of the contested decision).

16In addition, the Board of Appeal stated that the Opposition Division ought already to have rejected the opposition as unsubstantiated, since no relevant proof in relation to international registrations No 937479 and No 937526 was submitted within the time limit set (paragraph 19 of the contested decision).

Forms of order sought

17The applicant claims that the Court should:– annul the contested decision;– order EUIPO to pay the costs.

18EUIPO claims that the Court should annul the contested decision.

19The intervener contends that the Court should:– dismiss the application;– order the applicant to pay the costs.

Law

20In support of its application, the applicant puts forward three pleas in law.

21In the context of the first plea, the applicant submits that the Board of Appeal infringed Article 151(2) of Regulation No 207/2009 (now Article 189(2) of Regulation 2017/1001) and Rule 19(2)(a) of Regulation No 2868/95 (now Article 7(2)(a) of Regulation 2018/625), in holding that the applicant had to submit proof of the protection of the earlier international registrations designating the European Union No 937479 and No 937526.

22In the context of the second plea, the applicant maintains that the Board of Appeal infringed Rule 19(2)(a)(ii) of Regulation No 2868/95 (now Article 7(2)(a)(ii) of Regulation 2018/625), Rule 19(3) of the same regulation and Rule 20 thereof (now Article 8(1) to (4) and (7) to (9) of Regulation 2018/625), in holding that the applicant had not submitted proof of the protection of its earlier trade marks No 937479 and No 937526 and in dismissing the opposition as unfounded for that reason.

23In the context of the third plea, the applicant submits, in the alternative, that, even assuming that the extracts from the TMview database did not fulfil the requirements of Rule 19(2)(a) of Regulation No 2868/95, the Board of Appeal infringed the principles of protection of legitimate expectations, of legal certainty, of sound administration, of equal treatment and of non-retroactivity, particularly with regard to EUIPO’s decision-making practice and the content of EUIPO’s examination guidelines.

The first plea in law

24The applicant submits that the Board of Appeal infringed Article 151(2) of Regulation No 207/2009 and Rule 19(2)(a) of Regulation No 2868/95 in holding that the applicant had to submit proof of the protection of the earlier international registrations designating the European Union No 937479 and No 937526.

25The applicant argues that international registrations designating the European Union have the same effects as EU trade marks, in accordance with Article 151(2) of Regulation No 207/2009, and that the two categories of marks must, as a consequence, be treated in the same way. Since, in the case of an opposition based on an EU trade mark, there is no need to submit proof of protection of the earlier mark under Rule 19(2)(a) of Regulation No 2868/95, the same should apply to international registrations designating the European Union. That is supported by the fact that the provisions of Regulation No 207/2009 take precedence over those of implementing Regulation 2868/95.

26The applicant maintains, in addition, that submitting proof of earlier rights is unnecessary in the case of international registrations designating the European Union, unlike national trade marks and international registrations designating only certain EU Member States. That is because EUIPO possesses information capable of substantiating the existence, validity and scope of protection of international registrations designating the European Union, that information being published on EUIPO’s own database, CTM-Online (now eSearch plus), pursuant to Article 152 of Regulation No 207/2009. The submission of further documents in order to justify the opposition is therefore unnecessary, with the exception of a translation of the list of goods and services into the language of the proceedings, where applicable, such as the one supplied in the present case.

27EUIPO considers that the question of whether it was necessary to prove the existence, validity and scope of protection of an international registration designating the European Union is not an issue in the present case, inasmuch as the second plea raised by the applicant is well founded.

28The intervener disputes the applicant’s arguments.

29As a preliminary point, it is appropriate to recall the relevant provisions of Regulation No 207/2009 applicable to international registrations designating the European Union and those of Regulation No 2868/95.

30Under Article 145 of Regulation No 207/2009 (now Article 182 of Regulation 2017/1001), which forms part of Section [1] of Title XIII, entitled ‘International Registration of Marks’:‘Unless otherwise specified in this title, this Regulation and its Implementing Regulations shall apply to applications for international registrations under the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (hereafter referred to as “international applications” and “the Madrid Protocol” respectively), based on an application for a Community trade mark or on a Community trade mark and to registrations of marks in the international register maintained by the International Bureau of the World Intellectual Property Organisation (hereafter referred to as “international registrations” and “the International Bureau”, respectively) designating the European Community.’

31Under Article 151 of Regulation No 207/2009:1. An international registration designating the European Community shall, from the date of its registration pursuant to Article 3(4) of the Madrid Protocol or from the date of the subsequent designation of the European Community pursuant to Article 3ter(2) of the Madrid Protocol, have the same effect as an application for a Community trade mark.2. If no refusal has been notified in accordance with Article 5(1) and (2) of the Madrid Protocol or if any such refusal has been withdrawn, the international registration of a mark designating the European Community shall, from the date referred to in paragraph 1, have the same effect as the registration of a mark as a Community trade mark.3. For the purposes of applying Article 9(3), publication of the particulars of the international registration designating the European Community pursuant to Article 152(1) shall take the place of publication of a Community trade mark application, and publication pursuant to Article 152(2) shall take the place of publication of the registration of a Community trade mark.’

32Under Rule 20(1) of Regulation No 2868/95 (now Article 8(1) and (7) of Regulation 2018/625), the opposition is to be rejected as unfounded if, by the expiry of the period referred to in Rule 19(1) of the same regulation, the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition.

33Rule 19 of Regulation No 2868/95 provides as follows:‘(1) The Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time limit specified by it and which shall be at least two months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1).(2) Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:(a) if the opposition is based on a trade mark which is not a Community trade mark, evidence of its filing or registration, by submitting:(i) …;(ii) if the trade mark is registered, a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered;…(3) The information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.’

34It follows from the provisions of Rule 19(2)(a) of Regulation No 2868/95, which apply to international registrations designating the European Union in accordance with Article 145 of Regulation No 207/2009, that the opposing party must provide proof of the filing or registration of the earlier mark where the opposition is based on a mark other than an EU trade mark. The need to submit that proof therefore also applies to international registrations designating the European Union, which do not constitute EU trade marks.

35The fact that Article 151(2) of Regulation No 207/2009 provides that the international registration of a trade mark designating the European Union shall, from the date referred to in Article 151(1) thereof, have the same effect as the registration of a mark as an EU trade mark does not affect the need for the opposing party to submit proof of the earlier international registration designating the European Union, pursuant to the provisions of Rule 19(2)(a)(ii) of Regulation 2868/95. The requirement for proof of the earlier mark under Rule 19 of Regulation No 2868/95 relates to the ability of the proprietor of an earlier mark, including an international registration designating the European Union, to oppose the registration of an EU trade mark, and does not relate to the effects of the EU trade mark, which are set out in Articles 9 to 14 of Regulation No 207/2009 (now Articles 9 to 17 of Regulation 2017/1001), in Section 2, entitled ‘Effects of Community trade marks’, of Title II of Regulation No 207/2009.

36Therefore, in so far as Rule 19(2)(a)(ii) of Regulation No 2868/95 provides that the opposing party must submit proof of the protection of an international registration designating the European Union, it is not contrary to the provisions of Article 151(2) of Regulation No 207/2009 which themselves do not concern the rules of procedure for opposing the registration of an EU trade mark.

37In attempting to show that the Board of Appeal infringed Article 151(2) of Regulation No 207/2009 and Rule 19(2)(a) of Regulation No 2868/95, the applicant cannot validly claim that submitting proof of the earlier marks is not necessary in the case of international registrations designating the European Union, on the basis that EUIPO possesses information capable of substantiating the existence, validity and scope of protection of international registrations designating the European Union in view of the publication of the particulars of the international registration designating the European Union on the CTM-Online database (now eSearch plus) pursuant to Article 152 of Regulation No 207/2009.

38Even assuming that EUIPO does possess information relating to the protection of international registrations designating the European Union, the wording of Rule 19(2) of Regulation No 2868/95 — which, as stated above, is not contrary to Article 151(2) of Regulation No 207/2009 — makes it clear that it is for the opposing party to submit proof of protection of his earlier right.

39Consequently, the Board of Appeal did not infringe Article 151(2) of Regulation No 207/2009 or Rule 19(2)(a) of Regulation No 2868/95 in holding that the applicant had to submit proof of protection of the earlier international registrations designating the European Union No 937479 and No 937526.

40The first plea in law must therefore be rejected.

The second plea in law

41The applicant submits that the Board of Appeal infringed Rule 19(2)(a)(ii) and (3) and Rule 20 of Regulation No 2868/95 in holding that the applicant had not submitted proof of the protection of its earlier trade marks No 937479 and No 937526.

42The applicant maintains that the submission of an extract from the TMview database constitutes a means of proof compliant with the requirements of Rule 19(2) of Regulation No 2868/95. It argues that the data in the TMview database originate from participating trade mark offices, in particular WIPO, and that extracts from that database contain all the relevant information to prove the protection of an earlier international registration designating the European Union. The applicant states in addition that the validity of extracts from the TMview database is recognised by EUIPO’s established administrative practice as mentioned in EUIPO’s examination guidelines.

43The applicant states that, in the present case, it submitted extracts from the TMview database together with a translation into the language of the proceedings of the list of goods and services, in accordance with Rule 19(3) of Regulation No 2868/95, and that the Board of Appeal therefore erred in finding that it had not submitted proof of protection of its earlier international marks No 937479 and No 937526.

44EUIPO considers that the plea is well founded.

45The intervener takes the view that the plea should be rejected since the TMview database is managed by EUIPO and not by WIPO, which is the only authority competent for the registration of international trade marks. Accordingly, the submission of extracts from that database as proof of an earlier international trade mark does not comply with Rule 19(2)(a)(ii) of Regulation No 2868/95.

46According to the intervener, EUIPO’s examination guidelines allowing extracts from the TMview database as proof of the existence and validity of earlier rights are not applicable in the present case. First, the EUIPO guidelines date from two years after the deadline by which the applicant was required to prove its earlier rights. Secondly, those guidelines are not binding and do not comply with the provisions of Regulations No 207/2009 and No 2868/95. Those regulations take precedence over the EUIPO examination guidelines and should be applied by the Boards of Appeal, whose powers are circumscribed when they take decisions about the registration of a sign as an EU trade mark.

47In the first place, it is necessary to examine the applicant’s claim that EUIPO’s examination guidelines allow the submission of extracts from the TMview database.

48In support of its second plea in law, the applicant submits that EUIPO’s examination guidelines state, in relation to Rule 19(2) of Regulation No 2868/95, that, in order to prove the validity of earlier registrations of trade marks that are not EU trade marks, the opposing party may submit extracts from the TMview database in relation to earlier registrations designating the European Union.

49In the version of the EUIPO guidelines dated 23 March 2016, annexed to the application, paragraph 4.2.3.2 of Part C ‘Opposition’, Section 1 ‘Procedural matters’, indicates that EUIPO will normally accept extracts from the TMview database in relation to international registrations, as long as they contain the relevant data.

50However, the merits of the plea raised by the applicant must be examined only in the light of the relevant provisions of Regulations No 207/2009 and No 2868/95, and not in the light of the EUIPO examination guidelines.

51Decisions concerning registration of a sign as an EU trade mark that the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion and, accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union (see, to that effect, judgments of 15 September 2005, BioID v OHIM, C‑37/03 P, EU:C:2005:547, paragraph 47; of 12 January 2006, Deutsche SiSi-Werke v OHIM, C‑173/04 P, EU:C:2006:20, paragraph 48; and of 19 January 2012, OHIM v Nike International, C‑53/11 P, EU:C:2012:27, paragraph 57).

52The EUIPO guidelines are not binding legal acts for the purpose of interpreting provisions of European Union law (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48). The provisions of the EUIPO examination guidelines cannot, as such, either be deemed to be of a higher order than the provisions of Regulations No 207/2009 and No 2868/95 or indeed influence the interpretation of those regulations by the Courts of the European Union. On the contrary, they are designed to be read in accordance with the provisions of Regulation No 207/2009 and Regulation No 2868/95 (judgment of 27 June 2012, Interkobo v OHIM — XXXLutz Marken (my baby), T‑523/10, EU:T:2012:326, paragraph 29).

53Therefore, the EUIPO examination guidelines relied on by the applicant cannot take precedence over the provisions of Rule 19(2) and (3) of Regulation No 2868/95, in relation to the submission by the opposing party of proof of protection of the earlier marks, nor indeed influence the interpretation of those provisions by the Court.

54The applicant’s arguments seeking to rely on the content of EUIPO’s examination guidelines to show that the provisions of Regulation No 2868/95 had been infringed must therefore be rejected as ineffective.

55In the second place, Rule 19(2)(a)(ii) of Regulation No 2868/95 allows the opposing party to submit not only a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, but also equivalent documents emanating from the administration by which the trade mark was registered.

56It has been held that the submission of a document emanating from the competent authority and containing the same information as that which appears in a registration certificate meets the requirements of Rule 19(2)(a) of Regulation No 2868/95 (judgment of 5 February 2016, Kicktipp v OHIM — Italiana Calzature (kicktipp), T‑135/14, EU:T:2016:69, paragraph 63).

57It should also be noted that those provisions do not exclude the possibility of submitting documents from a database, such as the database of a competent national office (see, to that effect, judgment of 24 October 2014, Grau Ferrer v OHIM — Rubio Ferrer (Bugui va), T‑543/12, not published, EU:T:2014:911, paragraphs 25 and 26).

58In specifying that the documents in question must ‘emanat[e] from the administration by which the trade mark was registered’, Rule 19(2)(a)(ii) of Regulation No 2868/95 excludes the possibility of submitting extracts from a database that provides access to documents that do not emanate from the administration by which the trade mark was registered. Therefore, extracts from EUIPO’s CTM-Online database do not constitute proof of the protection of an international registration designating the European Union, since EUIPO, which is not the competent authority for the registration of international trade marks, is not the administration to which the trade mark application was made (see, to that effect, judgment of 26 November 2014, Aldi Einkauf v OHIM — Alifoods (Alifoods), T‑240/13, EU:T:2014:994, paragraphs 27 and 28).

59However, even though Rule 19(2)(a)(ii) of Regulation No 2868/95 provides that the documents must ‘emanat[e]’ from the competent authority, it does not preclude access to the documents emanating from the competent authority taking place through the intermediary of a computer system which is managed by EUIPO but in which the competent authority participates by transmitting and updating the relevant information.

60It is apparent from the documents in the file, in particular the explanations provided by EUIPO in its pleadings and at the hearing, that the TMview database is a computerised tool managed by EUIPO in which third-party trade mark offices participate, including WIPO. The tool gathers together trade mark applications and registrations from the participating trade mark offices and allows them to be accessed. The information is provided by the trade mark offices, which maintain the content and the responsibility for daily updating. The TMview database allows information to be consulted about trade marks registered by the trade mark offices participating in the database as it appears in their respective trade mark registers. An extract from the TMview database reflects the state of the register of the competent authority at the time that the database is consulted by the user.

61Given the nature of the TMview database described in paragraph 60 above, an extract from the database, in relation to international registrations designating the European Union, constitutes a document equivalent to a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, emanating from WIPO, within the meaning of Rule 19(2)(a)(ii) of Regulation No 2868/95, provided that the extract supplied by the opposing party contains all the relevant information. Where that condition is met, an extract from the TMview database is, as the applicant and EUIPO rightly point out, comparable to an extract from WIPO’s Romarin database or to a copy of the registration certification from WIPO.

62The fact, relied on by the intervener, that the TMview database is managed by EUIPO does not affect that finding since WIPO, which is the competent authority for the registration of international trade marks, participates in the functioning of the database, supplying and updating on a daily basis data relating to international trade marks.

63Finally, the intervener is not justified in claiming that the judgment of 26 November 2014, Alifoods (T‑240/13, EU:T:2014:994), precludes use of the TMview database to establish the protection of an earlier international trade mark.

64In the judgment of 26 November 2014, Alifoods (T‑240/13, EU:T:2014:994), the Court held that, since EUIPO was not responsible for managing international registrations and was not the administration by which the trade mark was registered, for the purposes of Rule 19(2)(a)(ii) of Regulation No 2868/95, the document submitted by the applicant, namely an extract from EUIPO’s CTM-Online database, did not constitute proof of the existence, validity and scope of protection of an international trade mark, within the meaning of that provision.

65For the sake of completeness, the Court explained that that assessment was borne out by a teleological interpretation of the relevant legislation. Pursuant to Article 152 of Regulation No 207/2009, publication by EUIPO relating to an international registration designating the European Union only includes certain details, such as a reproduction of the mark and the numbers of the classes of goods or services covered, but not a list of the goods and services. Such lists are not translated by EUIPO and, accordingly, are only available in the three languages in which WIPO publishes international registrations, namely English, Spanish and French. As a result, if the information published by EUIPO were regarded as sufficient proof of the existence, validity and scope of protection of the trade mark at issue, it would create, in legal terms, uncertainty and inequality (see, to that effect, judgment of 26 November 2014, Alifoods, T‑240/13, EU:T:2014:994, paragraphs 29 to 31).

66However, the Court’s findings in the judgment of 26 November 2014, Alifoods (T‑240/13, EU:T:2014:994) relating to extracts from the CTM-Online database cannot be transposed to the TMview database.

67The TMview database functions by means of the participation of trade mark offices such as WIPO, who ensure that information is updated on a daily basis, so that the information accurately reflects their trade mark registers.

68Furthermore, the information contained in the TMview database is not restricted to the particulars prescribed by Article 152 of Regulation No 207/2009 for the publication of international registrations designating the European Union. The TMview database, of which extracts may be obtained, contains all of the relevant details to prove protection of the earlier mark for the purposes of Rule 19 of Regulation No 2868/95, including the list of goods or services covered.

69In the event that the list of goods or services, as it appears in the extract from the TMview database, is not available in the language of the opposition proceedings, the opposing party must provide that list, accompanied by a translation into the language of the proceedings, under Rule 19(3) of Regulation No 2868/95. If that requirement is met, the ability to prove the earlier international registration designating the European Union by submitting extracts from the TMview database does not create, in legal terms, any uncertainty or inequality.

70As a result of the foregoing, the submission of an extract from the TMview database, provided that it contains all the relevant information, in particular the list of goods or services covered, constitutes, in relation to international registrations designating the European Union, a document equivalent to a registration certificate emanating from WIPO, for the purposes of Rule 19(2)(a)(ii) of Regulation No 2868/95.

71In the third place, it is apparent from the file that, in the present case, the applicant submitted extracts from the TMview database relating to the earlier international registrations designating the European Union No 937479 and No 937526 within the period laid down by Rule 19(1) of Regulation No 2868/95. It is not disputed, as the intervener confirmed at the hearing, that those extracts included all the relevant information relating to the existence, validity and scope of protection of the earlier trade marks, in particular the list of goods covered by those trade marks. In accordance with Rule 19(3) of Regulation No 2868/95, that list of goods was accompanied by a translation into the language of the opposition proceedings, namely German, which was submitted within the period laid down for submission of the original document.

72The applicant therefore proved, in accordance with the requirements of Rule 20(1) of Regulation No 2868/95, the existence, validity and scope of the protection of its earlier international marks No 937479 and No 937526 before the expiry of the period prescribed by Rule 19(1) of Regulation No 2868/95, a fact acknowledged by EUIPO.

73In those circumstances, the applicant is justified in maintaining that the Board of Appeal infringed Rule 19(2)(a)(ii) and (3) of Regulation No 2868/95 and Rule 20 of that regulation in holding that the applicant had not submitted proof of the protection of its earlier trade marks No 937479 and No 937526 before the expiry of the period laid down in Rule 19(1) of that regulation and in rejecting the opposition as unfounded on that ground.

74The second plea in law put forward by the applicant must therefore be upheld.

75As the second plea is well founded, the contested decision must be annulled, without there being any need to examine the third plea, raised in the alternative and alleging infringement of the principles of protection of legitimate expectations, of legal certainty, of sound administration, of equal treatment and of non-retroactivity.

Costs

76Under 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.

77Since EUIPO has been unsuccessful, to the extent that the contested decision is annulled, it must, in accordance with the forms of order sought by the applicant, be ordered to pay, in addition to its own costs, the costs incurred by the applicant.

78Since the intervener has been unsuccessful, it must be ordered to bear its own costs.

Operative part

On those grounds,THE GENERAL COURT (Ninth Chamber)hereby:

1.Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 September 2016 (Case R 2129/2015-4);

2.Orders EUIPO to bear its own costs as well as those incurred by Deichmann SE;

3.Orders Vans, Inc. to bear its own costs.

Delivered in open court in Luxembourg on 6 December 2018.