This article first appeared on WTR Daily, part of World Trademark Review, in (July/2017). For further information, please go to www.worldtrademarkreview.com

In GP Joule PV GmbH & Co KG v EU Intellectual Property Office (EUIPO) (Case T-235/16) the EU General Court has defined the issues in order for the EUIPO to declare an opposition `inadmissible' or `unfounded'. On February 12 2014, Green Power Technologies, SL filed an application for registration of an EU trademark with the EUIPO. Registration was sought for a figurative sign including a stylised `gp' as well as the element `tech':

On May 14 2014, GP Joule PV GmbH & Co KG filed a notice of opposition pursuant to Article 41 of Regulation 207/2009. Under the heading "Entitlement of opponent" on the e-filing form, the applicant stated "Owner/Co-Owner/Licencee" which was an automatic setting. On June 5 2014, the EUIPO notified a notice of admissibility to the parties including the start date for the adversarial part of the proceedings.

However, the opponent, GP Joule, was a licensee and no contract of licence was timely filed nor was a declaration/abstract mentioning the licensee's authorisation submitted. At issue was whether the EUIPO should have determined the inadmissibility of the opposition due to lack of procedural standing when it realised that the opponent was not the holder of the prior trademarks and, at the same time, there was no circumstantial evidence to support the claim that it was.

It was argued that the EUIPO Board of Appeal misapplied Rule 17(4) of Regulation 2868/95 by finding that the Opposition Division rightly declared that the opposition was admissible. In contrast, it was submitted that the e-filing opposition form did not allow the opponent to specify whether it was filing the notice of opposition as proprietor or licensee of the earlier rights and, on the other hand, the Opposition Division had not expressly invited the applicant to provide further information in that respect but had merely sent the applicant a general information sheet attached to the letter of June 5 2014. Also, the fact that the Opposition Division had invited the applicant to submit observations was significant in that the conditions set out in Rule 20(1) of Regulation 2868/95 indicated that there were sufficient leads of entitlement to file the notice of opposition.

The EU General Court held as follows:

"On the one hand, Rule 17 of the regulation lists the admissibility criteria for opposition and states, in paragraph 4 thereof, that if the notice of opposition does not comply with the provisions of Rule 15(2) (d) to (h) of the regulation, EUIPO is to inform the opponent of that fact by inviting it to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time limit expires, EUIPO will reject the opposition as inadmissible. It follows that the stage at which admissibility is examined may lead to the adoption of a decision terminating the proceedings.

On the other hand, Rule 18(1) of Regulation No 2868/95 states that "when the opposition is found admissible pursuant to Rule 17, [EUIPO] shall send a communication to the parties informing them that the opposition proceedings shall be deemed to commence two months after receipt of the communication". It is apparent from the wording of Rule 18 of Regulation No 2868/95 that the opposition proceedings themselves, that is, the inter partes stage, commence only when EUIPO has verified that the opposition was admissible and that none of the grounds set out in Rule 17 precluded admissibility (judgment of 18 October 2012, Jager & Polacek v OHIM, C-402/11 P, EU:C:2012:649, paragraph 49).

In addition, even assuming that the Opposition Division was required, under Rule 17(4) of Regulation No 2868/95, to invite the applicant to submit a `statement' or `indications' concerning its authorisation or entitlement to file the notice of opposition within the meaning of Rule 15(2)(h)(iii) of Regulation No 2868/95, it was in no way obliged to ask the applicant, at that stage in the proceedings, to present evidence in that regard."

According to Rule 19(1) of Regulation 2868/95, the Opposition Division may provide the opposing party with the opportunity to present such evidence later, for example at the time of assessing admissibility.

In addition, Rule 20(6) of Regulation 2868/95 provides that: "in no case shall [EUIPO] be required to inform the parties which facts or evidence could be or have not been submitted". As a result, the alleged misapplication of Rule 17(4) of Regulation 2868/95 will not lead to the annulment of the contested decision.

In fact, the opposition was rejected as unfounded, not as inadmissible, for lack of evidence relating to the entitlement to file the notice of opposition.