ECJ confirms general court decision that a prospective trade mark proprietor can file oppositions provided that the change of ownership is sufficiently clear to EUIPO

C-139/17 P

Quama Quality v EUIPO

Procedural law: Admissibility

25 Jul 2018

The matter at hand

In December 2012, Mr. Alexander Bopp applied for the EU word mark ‘medialbo’ for goods and services in classes 9, 35, 37 and 41.

The American company Microchip Technology, filed an opposition against the application on the basis of the earlier EU word mark ‘MediaLB’, registered for similar goods and services. The opposition was filed on the last possible filing date. At that time, Microchip Technology was, however, not the registered proprietor of the trade mark, but the notice of opposition was accompanied by a request for a change of the name and address of the proprietor.

In response, the Opposition Division of EUIPO notified Microchip Technology that it had not submitted toe correct request, as it seemed to concern a change of ownership of the relevant trade mark, instead of a mere change of the name and address of the current proprietor. After this notification, Microchip Technology submitted a request for the registration of a change of ownership of the trade mark. The Opposition Division accepted this and upheld the opposition in part, insofar it was based on the goods of class 9. The Fourth Board of Appeal upheld the decision in appeal.

Before the General Court, QuaMa Quality (as the legal successor of Mr. Bopp) argued that the opposition should have been rejected, because it was not filed within the applicable time limit. In support of its position, QuaMa Quality asserted that on the expiry date of the opposition period the request for the registration of a change of ownership had not been submitted yet and that therefore Microchip Technology was not entitled to file the notice of opposition.

This argument was dismissed by the General Court, essentially ruling that legal successors who are not yet registered as proprietors are entitled to file a notice of opposition, provided that EUIPO has received their application for the registration of a change of ownership. Taking the view that Microchip Technology had remedied the deficiencies in its first request and furthermore had produced proof of its entitlement to file a notice of opposition within the period allowed by EUIPO, the notice of opposition was deemed to have been timely filed.

The General Court also dismissed the argument that the initial request should not have been reclassified as an application for the registration of a change of ownership, noting that EUIPO must not only attach importance to the formal title of a request, but also take its actual content into account. As it was clear to EUIPO that the request related to a change of ownership, the latter had not erred in interpreting it as such.

The case was subsequently brought before the ECJ. In his Opinion, Advocate General Bot advised that QuaMa Quality had merely repeated the arguments it had made before the General Court in hopes of obtaining a different assessments of the facts. The Advocate General concluded that the ECJ should therefore dismiss the appeal as unfounded and inadmissible, considering that the ECJ is not to make a new assessment of the facts. In addition, the Advocate General noted  that EUIPO had been entitled to treat the initial request as an application for the registration of a change of ownership, as the content of the request clearly related thereto.

The judgment of the ECJ

The ECJ draws the same conclusion as the Advocate General and determines that the pleas in law relied upon by QuaMa Quality are either of factual nature or should have been previously presented before the General Court. The appeal is dismissed in its entirety by the ECJ.

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