CELEX: 62016TJ0727
EU trade mark
Decision of a Board of Appeal revoking an earlier decision
Article 80 of Regulation (EC) No 207/2009 (now Article 103 of Regulation (EU) 2017/1001)
General principle of law permitting the withdrawal of an unlawful administrative act

Background to the dispute
On 26 June 2009, 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
)), the applicant, Repower AG, obtained from the European Union Intellectual Property Office (EUIPO) protection in the European Union for international registration No 1020351 of the word mark REPOWER.
The goods and services in respect of which protection of that mark was obtained are in Classes 4, 9, 37, 39, 40 and 42 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, and correspond, for each of those classes, to the following description:
–
Class 4: ‘Electrical energy, including electrical energy generated by means of biogases; electrical energy generated by means of water, wind and solar power’;
–
Class 9: ‘Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmitting and reproducing sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing and computer equipment, fire extinguishers; electrical apparatus and instruments (included in this class), such as electrical appliances for heavy current techniques, for conducting, transforming, accumulating, regulating and controlling current, for weak current techniques, for remote transmission; photovoltaic elements; fire-alarm systems; electrical appliances for surveillance, burglar alarms, control systems in buildings, video systems; intercoms and ring systems; radio and television systems; systems for high frequency and regulation techniques, computer equipment for data-processing purposes (computers); analog connections, Internet connections, electronic devices for mediation by telephone, electronic devices for enabling conference calls; mobile phones, radiotelephones, telephone apparatus and fax machines; plugs, switches, control panels, voice tubes, electric cables, electric wires, fuses’;
–
Class 37: ‘Building construction; repair; installation services; construction and repair as well as maintenance of transmission systems and distribution plants, intermediate and low voltage plants, public lighting systems together with electrical plant; maintenance services in connection with electronic installations in buildings and companies; installing, servicing and repair of electronic installations; construction, repair and maintenance of distribution systems for current; installing, servicing and repair of computer hardware, in particular data networks; installation, maintenance and repair in the field of telecommunication installations, installation of combination and control for switches; services of heating engineers; installation and maintenance of stations for transformers and distribution installations for electrical energy; installation and maintenance of public street lighting; building construction, installation and maintenance of large factories of large heat pumps; fitting out electric meters and distance relays (remote relays) for customers; installation of network components (computer equipment) for suppliers of telecommunications services; installation, maintenance and repair of computer hardware in the field of telecommunications; technical advice in connection with building construction; advice concerning the aforesaid services’;
–
Class 39: ‘Transport; packaging and storage of goods; arrangement of travel; energy distribution; delivery of computing equipment; professional advice in connection with transmission (distribution) of energy; advice concerning the aforesaid services’;
–
Class 40: ‘Production of energy’;
–
Class 42: ‘Scientific and technological services and research and development relating thereto; industrial research and analyses; design and development of computer hardware and software; planning in connection with distribution of electricity, electrical installations, safety systems and telecommunications; professional advice in connection with the information systems; technical expertise concerning electrical installations; services of an engineer and quality control concerning activities of granting, metering and information and for control of installations in connection with energy supply; installations, maintenance and repair of software in the field of telecommunications and control; measurements as regards quality on networks; configuration of active components (software) on data networks; arrangement of the centralised safety back-up of data; development and installation of software for hooking up phone installations to the computer network and for telephone-computer integration; advice in the field of the aforesaid services for changes of address; quality control; advice in the field of energy-saving, namely information concerning the consumption of electrical energy’.
On 3 June 2013, the intervener, repowermap.org, filed an application for a declaration of invalidity of the contested mark under Article 52(1)(a) of Regulation No 207/2009 (now Article 59(1)(a) of Regulation 2017/1001), read in conjunction with Article 7(1)(b) and (c) of Regulation No 207/2009 (now Article 7(1)(b) and (c) of Regulation 2017/1001). The intervener claimed that the contested mark was descriptive and devoid of distinctive character in respect of all the goods and services covered by the mark.
On 9 July 2014, the Cancellation Division upheld the application for a declaration of invalidity in respect of the following services, covered by the contested mark, in Classes 37 and 42:
–
Class 37: ‘Building construction; repair; installation services; construction, repair as well as maintenance of transmission systems and distribution plants, intermediate and low voltage plants, public lighting systems together with electrical plant; construction, repair and maintenance of distribution systems for current; installation and maintenance of stations for transformers and distribution installations for electrical energy; installation and maintenance of public street lighting; building construction, installation and maintenance of large factories of large heat pumps; advice concerning the aforesaid services’;
–
Class 42: Scientific services and research and development relating thereto; technical expertise concerning electrical installations; services of an engineer concerning activities of granting, metering and information and for control of installations in connection with energy supply’.
The Cancellation Division rejected the application for a declaration of invalidity in respect of the other goods and services covered by the contested mark (‘the remaining goods and services’). It stated, in relation to the descriptive nature of the contested mark, that it was necessary to consider whether, to the average English-speaking EU consumer, the word ‘repower’ had a specific and direct link with the goods and services covered by the contested mark. The Cancellation Division found that that word could be understood as meaning ‘to provide again or anew with power; especially: to provide (as a boat) with a new engine’ and ‘to rebuild or replace the power source or engine of (a vehicle, a power plant, etc.)’ and that the word was used only in connection either with engines or in the field of energy, particularly electrical installations. The Cancellation Division therefore held that the word ‘repower’ immediately informed English-speaking consumers that the services listed in paragraph 4 above were services intended to provide again or anew with power or to replace the engine or source of energy of electrical installations or that the purposes of which was such re-provision or replacement. The Cancellation Division also found that the remaining goods and services had no link with providing again with power or replacing engines or even with the replacement of the energy installation power source. In relation to the distinctive character of the contested mark, the Cancellation Division stated that the intervener had failed to show that the word ‘repower’ had been commonly used in the trade to designate the remaining goods and services.
On 8 September 2014, the intervener filed a notice of appeal at 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 the Cancellation Division.
By decision of 8 February 2016 (‘the decision of 8 February 2016’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In relation to the descriptive character of the contested mark, first of all, the Board of Appeal stated that the goods and services covered by the contested mark were intended mainly for average consumers and professionals, that the level of attention of the relevant public varied from normal to high and that the public to be taken into account were the English-speaking consumers of the EU since the contested mark consisted of an English word. Next, the Board of Appeal reiterated the definitions of the word ‘repower’ given by the Cancellation Division and rejected the intervener’s arguments about the meaning of that word. Finally, in paragraph 34 of the decision of 8 February 2016, the Board of Appeal stated that, ‘in conclusion, [it considered] that the evidence submitted by the [intervener did] not establish that the [contested sign was] of standard use in the field of energy or descriptive of the characteristics of the remaining goods and services’. In relation to the distinctive character of the contested mark, the Board of Appeal held that it had not been demonstrated that the sign in question was usual in relation to the goods and services covered by the mark and consequently that it might be perceived as a trade mark.
By application lodged at the Court Registry on 26 April 2016, the intervener brought an action against the decision of 8 February 2016. The case was registered under number T‑188/16.
By a communication of 22 June 2016, the Fifth Board of Appeal informed the parties that, further to an action being brought before the Court in Case T‑188/16,
repowermap
v
EUIPO — Repower (REPOWER)
, it had found that the decision of 8 February 2016 contained an inadequate statement of reasons for the purposes of Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001). The Board of Appeal explained that, because of the inadequate statement of reasons, and pursuant to Article 80 of Regulation No 207/2009 (now Article 103 of Regulation 2017/1001), it considered it appropriate to revoke the decision of 8 February 2016 and carry out a detailed analysis of the distinctive and descriptive characters of the contested mark with regard to the goods and services covered by that sign. It invited the parties to submit observations on its intention to revoke the decision of 8 February 2016.
The applicant submitted its observations on 5 July 2016. It maintained, in essence, that, until such time as the operative part of the decision of 8 February 2016 was amended, it was possible to substantiate the reasons for it, in accordance with the conditions in Article 83 of Regulation No 207/2009 (now Article 107 of Regulation 2017/1001), under which, in the absence of procedural provisions in Regulation No 207/2009, 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
) (repealed by Commission Delegated Regulation (EU) 2017/1430 of 18 May 2017 supplementing Regulation (EC) No 207/2009 and repealing Commission Regulations No 2868/95 and (EC) No 216/96 (
OJ 2017 L 205, p. 1
)), Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (
OJ 1995 L 303, p. 1
) (repealed by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Regulation (EC) No 2868/95 and repealing Regulation No 2869/95 (
OJ 2015 L 341, p. 21
)), or Commission Regulation (EC) No 216/96 of 5 February 1996, laying down the rules of procedure of the Boards of Appeal of the Office for Harmonization in the Internal Market (Trade Marks and Designs) (
OJ 1996 L 28, p. 11
), as amended by Commission Regulation (EC) No 2082/2004 of 6 December 2004 (
OJ 2004 L 360, p. 8
) (repealed by Delegated Regulation 2017/1430), EUIPO is to take into account the principles of procedural law generally recognised in the Member States. However, the applicant considered that it was not possible to revoke the decision of 8 February 2016 on the basis of Article 80 of Regulation No 207/2009, which did not exist, or no longer existed, in the consolidated version of Regulation No 207/2009 published online in the EUR-Lex database, since that article conferred power only on the examiners of EUIPO and since an inadequate statement of reasons did not amount to a procedural error for the purposes of Article 80 of Regulation No 207/2009. Finally, the applicant claimed that it was apparent from the decision of the Grand Board of Appeal of EUIPO of 28 April 2009 (Case R 323/2008-G) (‘the decision of the Grand Board of Appeal’) that a decision of EUIPO against which an appeal was pending before the General Court could not be revoked.
The intervener submitted its observations on 20 July 2016. It observed that, as Article 80 of Regulation No 207/2009 was a specific rule, it applied instead of the general principles to which Article 83 of Regulation No 207/2009 referred. The intervener also observed that whether or not an inadequate statement of reasons amounted to a procedural error was uncertain and that there was a significant probability that a revocation of the decision of 8 February 2016 on the grounds of an inadequate statement of reason was not allowed. The intervener’s opinion was that, in view of those circumstances, it was preferable to continue proceedings before the Court in Case T‑188/16,
repowermap
v
EUIPO — Repower (REPOWER)
.
By decision of 3 August 2016 (‘the contested decision’), the Fifth Board of Appeal of EUIPO revoked the decision of 8 February 2016. The Board explained that, despite the doubts expressed by the parties on the matter, Article 80 of Regulation No 207/2009 remained applicable after Regulation 2015/2424 came into force. In addition, the Board commented that EUIPO had an obligation to provide reasons for its decisions and, in particular, to analyse the grounds for refusal in relation to the goods and services in question, meaning that an inadequate statement of reasons, as contained in the decision of 8 February 2016, was an obvious procedural error for the purposes of Article 80 of Regulation No 207/2009 and needed to be corrected.
Forms of order sought
The applicant claims that the Court should:
–
annul the contested decision;
–
order EUIPO to pay the costs.
EUIPO contends that the Court should:
–
dismiss the application;
–
order the applicant to pay the costs.
The intervener contends, in essence, that the Court should dismiss the application.
Law
The applicant, in essence, relies on four pleas in law. The first alleges a lack of legal basis. The second alleges that the Boards of Appeal have no power to revoke their decisions. The third alleges infringement of Article 80 of Regulation No 207/2009, of EUIPO’s Guidelines for Examination and of the principles of sound administration, of legal certainty and the force of
res judicata
. Finally, the fourth plea alleges an inadequate statement of reasons.
The first plea, alleging a lack of legal basis
The applicant submits that Article 80(1) of Regulation No 207/2009 (now Article 103(1) of Regulation 2017/1001), on which the Board of Appeal relied in order to revoke the decision of 8 February 2016, was no longer in force at the time that the contested decision was adopted. According to the applicant, the amendment of Article 80(1) of Regulation No 207/2009 by Regulation 2015/2424 did not take effect until 1 October 2017. Until that date, the amended Article 80(1) of Regulation No 207/2009 was not in force. That would explain why, in the consolidated version of Regulation No 207/2009, Article 80(1) of Regulation No 207/2009 had been deleted.
EUIPO submits that the contested decision is based on Article 80 of Regulation No 207/2009 in the version prior to its amendment by Regulation 2015/2424 (‘Article 80 of Regulation No 207/2009 (old version)’). For its part, the intervener asserts that Article 80(1) of Regulation No 207/2009 was in force at the time that the contested decision was adopted. The intervener adds that, even if that article was not in force, that would not mean that the contested decision had no legal basis. Article 83 of Regulation No 207/2009, which refers to general principles, could serve as the legal basis, since, among those principles is the principle that an administration may correct its decisions in certain circumstances.
It is undisputed that the legal basis mentioned in the contested decision is Article 80(1) of Regulation No 207/2009 and that that article was amended by Regulation 2015/2424.
The first sentence of Article 80(1) of Regulation No 207/2009 (old version) read as follows:
‘Where the Office has made an entry in the Register or taken a decision which contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.’
The first sentence of Article 80(1) of Regulation No 207/2009, following its amendment by Regulation 2015/2424 (‘Article 80(1) of Regulation No 207/2009 (new version)’), now reads as follows:
‘Where the Office has made an entry in the Register or taken a decision which contains an obvious error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked.’
Article 80(1) of Regulation No 207/2009 (old version) therefore refers to decisions which contain an obvious procedural error whereas Article 80(1) of Regulation No 207/2009 (new version) refers to decisions which contain an obvious error.
It should be noted that, in paragraph 13 of the contested decision, the Board of Appeal stated that ‘under Article 80(1) of Regulation No 207/2009, a decision made by the Office may be revoked when it contains an obvious error attributable to the Office’.
However, in paragraph 16 of the contested decision, the Board of Appeal stated that Article 75 of Regulation No 207/2009, according to which the decisions of the Boards of Appeal must include the reasons on which they are based, was a procedural provision, that the decision of 8 February 2016 contained an inadequate statement of reasons and that this inadequate statement of reasons was an obvious procedural error for the purposes of Article 80 of Regulation No 207/2009.
Thus, given that the Board of Appeal sought to categorise as an obvious procedural error the inadequate statement of reasons on which the decision of 8 February 2016 was based, it is Article 80(1) of Regulation No 207/2009 (old version) that must be regarded as the legal basis referred to in the contested decision, as was also confirmed by EUIPO in its response.
It is apparent from the first paragraph of Article 4 of Regulation 2015/2424 that that regulation entered into force on 23 March 2016. However, it is also apparent from the second paragraph of Article 4 of the same regulation that the amendment to Article 80(1) of Regulation No 207/2009 (old version) did not enter into force until 1 October 2017.
However, that does not mean, despite the applicant’s assertions to the contrary, that Article 80(1) of Regulation No 207/2009 (old version) was cancelled with effect from 23 March 2016, when Regulation 2015/2424 came into force, until 1 October 2017, when the amendment to the article came into force. It simply means that, until 1 October 2017, it was Article 80(1) of Regulation No 207/2009 (old version) that applied.
Admittedly, in the consolidated version of Regulation No 207/2009, which appeared online in the EUR-Lex database during the transitional period referred to in paragraph 27 above and which took account of the amendments introduced by Regulation 2015/2424, Article 80 of Regulation No 207/2009 contained only a single paragraph, being paragraph 3 (now Article 103(3) of Regulation 2017/1001). However, as the applicant itself observes, the consolidated version contained the following statement on the first page:
‘This text is meant purely as a documentation tool and has no legal effect. The Union’s institutions do not assume any liability for its contents. The authentic versions of the relevant acts, including their preambles, are those published in the
Official Journal of the European Union
and available in EUR-Lex.’
It is clear from the version of Regulation 2015/2424 published in the
Official Journal of the European Union
that Article 80(1) of Regulation No 207/2009 (old version) still applied at the time the contested decision was adopted.
The first plea in law must therefore be rejected.
Second plea, alleging that the Boards of Appeal have no power to revoke their decisions
The applicant submits that, even if Article 80(1) of Regulation No 207/2009 (old version) had been applicable, the Board of Appeal would have had no power to adopt the contested decision. In that regard, the applicant submits, first, that it is clear from Article 80(3) of Regulation No 207/2009 (old version) that the power of revocation referred to in Article 80(1) is conferred only on those departments of EUIPO referred to in Article 58(1) of Regulation No 207/2009 (now Article 66(1) of Regulation No 2017/1001). The Board of Appeal, as an appeal body, is not authorised to revoke the decisions that it takes. Secondly, the applicant submits that Part A, Section 6, paragraph 1.2 of EUIPO’s Guidelines for Examination, relating to the power of revocation, does not provide for Boards of Appeal to be able to revoke their decisions. Thirdly, the applicant submits that it is also clear from paragraph 23 of the decision of the Grand Board of Appeal that Article 80 of Regulation No 207/2009 (old version) should not be applied to the appeal procedure or, therefore, by the Boards of Appeal.
EUIPO and the intervener dispute the applicant’s arguments. When asked whether Article 80(3) of Regulation No 207/2009 (old version) was applicable at the time the contested decision was adopted, EUIPO replied that it was not applicable. The intervener, on the other hand, submitted in its response that it was applicable.
As a preliminary point, it should be noted that Article 80(1) of Regulation No 207/2009 (old version) confers the power of revocation on ‘the Office’ and, therefore, on the Boards of Appeal which form one of its bodies. The applicant’s arguments seeking to show that this is not the case are not convincing.
First, it should be noted that it is clear from Article 1(74) of Regulation 2015/2424, read in conjunction with Article 4 of that same regulation, that Article 80(3) of Regulation No 207/2009 (old version) was replaced, with effect from 23 March 2016, by a new Article 80(3) concerning the power conferred on the European Commission. It is also apparent from Regulation 2015/2424 that Article 80(3) of Regulation No 207/2009 (old version) would become Article 80(4) of Regulation No 207/2009 (new version) with effect from 1 October 2017. The result of this appears to be that Article 80(3) of Regulation No 207/2009 (old version) was cancelled with effect from 23 March 2016 until 1 October 2017. However, that cannot be regarded as what the legislature intended. Instead, Article 80(3) of Regulation No 207/2009 (old version) and Article 80(3) of Regulation No 207/2009 (new version) must be regarded as having coexisted from 23 March 2016 until 1 October 2017 and, therefore, Article 80(3) of Regulation No 207/2009 (old version) was applicable at the time the contested decision was adopted.
Article 80(3) of Regulation No 207/2009 (old version), relied upon by the applicant, reads as follows:
‘This Article shall be without prejudice to the right of the parties to submit an appeal under Articles 58 and 65, or to the possibility, under the procedures and conditions laid down by the Implementing Regulation, of correcting any linguistic errors or errors of transcription and obvious errors in the Office’s decisions or errors attributable to the Office in registering the trade mark or in publishing its registration.’
Article 80(3) of Regulation No 207/2009 (old version) thus refers to Article 58 of that regulation, but also to Article 65 thereof (now Article 72 of Regulation 2017/1001).
Even though Article 58(1) of Regulation No 207/2009 lists the decisions of EUIPO departments against which an appeal may lie, and even though decisions of the Boards of Appeal are not listed, Article 65(1) of that regulation (now Article 72(1) of Regulation 2017/1001) provides that ‘actions may be brought before the General Court against decisions of the Boards of Appeal on appeals’.
Accordingly, since Article 80(3) of Regulation No 207/2009 (old version) refers not only to the provisions relating to appeals before the Board of Appeal, but also to those relating to appeals before the General Court against decisions of the Boards of Appeal, the applicant is wrong to maintain that, under Article 80(3) of Regulation No 207/2009 (old version), the power of revocation referred to in Article 80(1) of that regulation is conferred only on those EUIPO departments listed in Article 58 of Regulation No 207/2009. It is clear from the reference made in Article 80(3) of Regulation No 207/2009 (old version) to Article 65 of the regulation that the power of revocation provided for in Article 80(1) of Regulation No 207/2009 (old version) is also conferred on the Boards of Appeal.
Secondly, it should be noted that Part A, Section 6, paragraph 1.2 of EUIPO’s Guidelines for Examination, relied upon by the applicant, provides that ‘decisions on revocation/cancellation are made by the department or unit that made the entry or took the decision and can be appealed under Article 58(2) of [Regulation No 207/2009]’.
It is true that those provisions from EUIPO’s Guidelines for Examination, concerning the power of revocation, do not mention the Boards of Appeal. However, the guidelines are merely a set of consolidated rules setting out the line of conduct which EUIPO itself proposes to adopt. Thus, their provisions 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 EU Courts. 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
).
It is therefore not possible to infer from the provisions of EUIPO’s Guidelines for Examination relied upon by the applicant that the Boards of Appeal do not have the power to revoke their decisions, since it is clear from Article 80(3) of Regulation No 207/2009 (old version), read in conjunction with Article 65 of that regulation, that the power of revocation provided for in Article 80(1) of Regulation No 207/2009 (old version) is also conferred on the Boards of Appeal.
Thirdly, it should be noted that paragraph 23 of the decision of the Grand Board of Appeal, relied upon by the applicant, provides that:
‘After a notice of appeal has been filed, jurisdiction over the case lies solely with the Boards of Appeal and the department that issued the contested decision no longer retains competence to decide the case. From that point on, only the Board may decide on the case and, after examination, possibly remit it to the appropriate department for further prosecution. The examiner who issued the contested decision may only rectify it after an appeal has been lodged, under the narrow conditions of Article 61 [of Regulation No 207/2009 (now Article 69 of Regulation 2017/1001)]. It follows that the examiner is bound by the revision procedure laid down in Article 61 [of Regulation No 207/2009] and may not, at his discretion, choose to apply revocation provisions like [those] of Article 80 [of Regulation No 207/2009], which are applicable outside of the appeal proceedings framework.’
From paragraph 23 of the decision of the Grand Board of Appeal it follows solely that an examiner cannot revoke a decision that he had adopted if an appeal against the decision has been lodged with a Board of Appeal. In that paragraph, the Board of Appeal did not express a view on the power of revocation of the Boards of Appeal themselves. Paragraph 23 of the decision of the Grand Board of Appeal is therefore not relevant to the present case.
In addition, it should be borne in mind that the Court has already held that the fact that an appeal against a Commission decision is pending before it at the time that that decision is revoked does not preclude its revocation (see, to that effect, judgment of 15 July 2015, Socitrel and Companhia Previdente v Commission,
T‑413/10 and T‑414/10
,
EU:T:2015:500
, paragraph
). There is nothing to suggest that the outcome would be any different in the case of a decision of a Board of Appeal. On the contrary, it must be held that, when the Court rules that there is no need to adjudicate following the revocation of the decision of a Board of Appeal that was contested before it, it is by implication recognising that the Boards of Appeal have the power to revoke their decisions and that they can do so even if an appeal has been lodged against those decisions before the Court (orders of 21 October 2014, Gappol Marzena Porczyńska v OHIM — Gap (ITM) (GAPPol),
T‑125/14
, not published,
EU:T:2014:1121
; of 27 July 2015, Deere and Münch v OHIM (EXHAUST-GARD),
T‑236/15
, not published,
EU:T:2015:567
; and of 14 June 2017, Márquez Alentà v EUIPO — Fiesta Hotels & Resorts (Representation of an ant),
T‑657/16
, not published,
EU:T:2017:425
).
It follows that the applicant is wrong to assert that the Boards of Appeal have no power to revoke their decisions.
The second plea in law must therefore be rejected.
Third plea, alleging infringement of Article 80 of Regulation No 207/2009 (old version), of EUIPO’s Guidelines for Examination and of the principles of sound administration, of legal certainty and of
res judicata
The applicant submits that an inadequate statement of reasons does not fall within the scope of Article 80(1) of Regulation No 207/2009 (old version) because it is not a procedural error but an error of material law. In that regard, it invokes Part A, section 6, paragraph 1.1 of EUIPO’s Guidelines for Examination, concerning the power of revocation, which states that ‘procedural errors have to be distinguished from errors in substance, where no revocation is possible’. The applicant also submits that, under Part A, section 6, paragraph 1.3.1 of the guidelines, a decision cannot be revoked if an appeal against it is pending before the Board of Appeal and that that principle should apply, by analogy, to decisions of the Boards of Appeal. The applicant also argues that it would be incompatible with the principles of sound administration, of legal certainty and of
res judicata
that any given body would be able to freely modify the subject matter of ongoing proceedings. Furthermore, in its replies to the Court’s written questions, the applicant maintains, in the first place, that the general principle of law authorising the withdrawal of an unlawful administrative act, which was relied upon by EUIPO and the intervener in their responses, cannot serve as a legal basis for the contested decision. The applicant also maintains, in the second place, that the statement of reasons in the decision of 8 February 2016, which refers to the decision of the Cancellation Division, was sufficient and that, pursuant to the case-law, the Board of Appeal was not obliged to give reasons for its decision in respect of each product or service.
EUIPO submits that an inadequate statement of reasons was given in the decision of 8 February 2016 and that an inadequate statement of reasons amounts to an obvious procedural error. EUIPO submits in that regard that, in the judgment of 18 October 2011, Reisenthel v OHIM — Dynamic Promotion (Hampers, crates and baskets) (
T‑53/10
,
EU:T:2011:601
, paragraph
), the Court stated that a breach of the rights of the defence was a mistake affecting the procedure that led to the adoption of a decision and, therefore, liable to vitiate the substance of that decision. In that judgment, the Court also affirmed a general principle of law according to which retrospective withdrawal of an unlawful administrative act which has created individual rights is permissible, provided that the institution which adopted the act complies with the conditions relating to reasonable time limits and the legitimate expectations of beneficiaries of the act who have been entitled to rely on its lawfulness (judgment of 18 October 2011, Hampers, crates and baskets,
T‑53/10
,
EU:T:2011:601
, paragraph
). EUIPO takes the view that, in the present case, the Board of Appeal acted within a reasonable time and complied with the legitimate expectations of beneficiaries of the act.
In that regard, EUIPO submits that the adoption of a decision against which an appeal lies to the Court does not appear to be a precise assurance or a precise, unconditional and consistent notification that would give rise to reasonable expectations on the part of the applicant and the right to rely on the principle of protection of legitimate expectations. That is all the more so, given that the inadequate statement of reasons clearly rendered the decision of 8 February 2016 an unlawful administrative act. In addition, according to EUIPO, the fact that there is a right to appeal to the Court against decisions of the Board of Appeal and an express provision for revocation in the relevant law, namely Article 80 of Regulation No 207/2009, means that the principle of protection of legitimate expectations may not be relied on in the present case.
EUIPO also asserts that adopting the contested decision was consistent not only with the wording of Article 80 of Regulation No 207/2009, but also with the objective of the article, since, if the Board of Appeal had not adopted the contested decision, EUIPO would have ascertained the inadequacy of the statement of reasons in its response in Case T‑188/16,
repowermap
v
EUIPO — Repower (REPOWER)
, in the context of the action against the decision of 8 February 2016. It would then not have been possible to adopt a new decision until the end of 2017, at best, whereas it had already been possible to adopt a new decision subsequent to the adoption of the contested decision.
Finally, EUIPO submits that the Boards of Appeal are not bound by EUIPO’s Guidelines for Examination and that the contested decision does not infringe the principle of sound administration.
The intervener submits that it is up to the Court to interpret the concept of a procedural error within the meaning of Article 80(1) of Regulation No 207/2009 (old version) and comments that the principle of legal certainty was observed by the Board of Appeal, since the decision of 8 February 2016 was withdrawn within a reasonable time and the inadequacy of the reasons in the decision was obvious.
The contested decision makes it clear that the reason for its adoption by the Board of Appeal was that, in the decision of 8 February 2016, the Board had failed in its obligation to provide an adequate statement of reasons and, in particular, in its obligation to analyse the grounds for refusal in relation to goods and services covered by the contested mark.
First of all, it is therefore necessary to determine whether an inadequate statement of reasons can amount to an obvious procedural error within the meaning of Article 80(1) of Regulation No 207/2009 (old version).
The Court has already explained that a procedural error within the meaning of Article 80(1) of Regulation No 207/2009 (old version) is an error with procedural consequences (judgment of 15 March 2011, Ifemy’s v OHIM — Dada & Co Kids (Dada & Co. kids),
T‑50/09
,
EU:T:2011:90
, paragraph
, and order of 9 September 2011, Biodes v OHIM — Manasul Internacional (LINEASUL),
T‑598/10
, not published,
EU:T:2011:458
, paragraph
). Similarly, the Court has underlined that the examination of substantive questions, or an alteration of the decision taken by the Board of Appeal, could not be made on the basis of Article 80 of Regulation No 207/2009 (old version) (judgment of 1 July 2009, Okalux v OHIM — Messe Düsseldorf (OKATECH),
T‑419/07
,
EU:T:2009:238
, paragraph
, and order of 9 September 2011, LINEASUL,
T‑598/10
, not published,
EU:T:2011:458
, paragraph
).
In addition, in the judgment of 22 November 2011, mPAY24 v OHIM — Ultra (MPAY24) (
T‑275/10
, not published,
EU:T:2011:683
, paragraphs
and
), the Court held that a corrigendum to a decision of a Board of Appeal, which had added to that decision a paragraph relating to the descriptive character of the contested mark for the goods and services it covered, affected the actual substance of the corrected decision. The Court concluded not only that the corrigendum could not have been adopted on the basis of Rule 53 of Regulation No 2868/95 (now Article 102(1) of Regulation 2017/1001), which provides that ‘only linguistic errors, errors of transcription and obvious mistakes may be corrected’, but also that it could not have been adopted on the basis of Article 80 of Regulation No 207/2009 (old version) either, on the grounds that the conditions for the application of that article were not satisfied in that case, as no obvious procedural error had been made.
In the case which gave rise to the judgment of 22 November 2011, MPAY24 (
T‑275/10
, not published,
EU:T:2011:683
), the paragraph added by the Board of Appeal in its corrigendum was intended to supplement the statement of reasons in the corrected decision. It is therefore clear from that judgment that supplementing the statement of reasons in a decision affects the actual substance of that decision and that an inadequate statement of reasons cannot be regarded as a procedural error within the meaning of Article 80(1) of Regulation No 207/2009 (old version).
That conclusion is unaffected by the judgment of 18 October 2011, Hampers, crates and baskets (
T‑53/10
,
EU:T:2011:601
), relied on by EUIPO. In paragraph 37 of that judgment, the Court stated that a breach of the rights of the defence was a mistake affecting the procedure that led to the adoption of a decision of a Board of Appeal and, therefore, was liable to vitiate the substance of that decision. The Court concluded from that statement and from the case-law, according to which the concept of ‘obvious error’ cannot apply to an error that could vitiate the substance of a decision, that a breach of the rights of the defence did not constitute an obvious error within the meaning of Article 39 of Commission Regulation (EC) No 2245/2002 of 21 October 2002 implementing Council Regulation (EC) No 6/2002 on Community designs (
OJ 2002 L 341, p. 28
) that could be rectified. Therefore, paragraph 37 of the judgment of 18 October 2011, Hampers, crates and baskets (
T‑53/10
,
EU:T:2011:601
), does not allow any conclusion to be drawn as to whether an inadequate statement of reasons constitutes an ‘obvious procedural error’ within the meaning of Article 80(1) of Regulation No 207/2009 (old version).
It follows from the foregoing that the Board of Appeal was not entitled to base the contested decision on Article 80(1) of Regulation No 207/2009 (old version).
In the second place, it is necessary to examine whether, as EUIPO maintains, the contested decision could be based on the general principle of law, affirmed in the case-law, according to which the retrospective withdrawal of an unlawful administrative act which has created individual rights is permissible, provided that the institution which adopted the act complies with the conditions relating to reasonable time limits and the legitimate expectations of beneficiaries of the act who have been entitled to rely on its lawfulness (see judgment of 18 October 2011, Hampers, crates and baskets,
T‑53/10
,
EU:T:2011:601
, paragraph
and the case-law cited).
As a preliminary point, it should be recalled that, as proceedings before the Boards of Appeal are administrative in nature (see judgment of 11 July 2013, Metropolis Inmobiliarias y Restauraciones v OHIM — MIP Metro (METRO),
T‑197/12
, not published,
EU:T:2013:375
, paragraph
and the case-law cited), decisions adopted by the Boards of Appeal are administrative in nature and that, as a result, the Boards of Appeal may, in principle, rely upon the general principle of law that permits the withdrawal of an unlawful administrative act in order to withdraw their decisions.
However, it must be established whether, in view of the fact that Regulation No 207/2009 contains a provision relating to the revocation of decisions of EUIPO bodies, the revocation of a decision of a Board of Appeal may be based on that general principle of law.
The judgment of 18 October 2011, Hampers, crates and baskets (
T‑53/10
,
EU:T:2011:601
), relied on by EUIPO, does not enable that question to be settled. Admittedly, in that judgment, after finding that it was not possible for a corrective decision of a Board of Appeal to be adopted on the basis of Article 39 of Regulation No 2245/2002, the Court examined whether the decision could have been adopted on the basis of the general principle of law permitting the retrospective withdrawal of an unlawful administrative act. However, neither in Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (
OJ 2002 L 3, p. 1
) nor in Regulation No 2245/2002 is there any provision equivalent to Article 80 of Regulation No 207/2009 which governs the procedure for revocation of decisions adopted in relation to designs.
In judgments of 12 September 2007, González y Díez v Commission (
T‑25/04
,
EU:T:2007:257
, paragraph
), and of 18 September 2015, Deutsche Post v Commission (
T‑421/07 RENV
,
EU:T:2015:654
, paragraph
), both delivered in State aid cases, after holding that it was not possible for the Commission to withdraw its decision on the basis of Article 9 of Council Regulation (EC) No 659/1999 of 22 March 1999 laying down detailed rules for the application of Article [108 TFEU] (
OJ 1999 L 83, p. 1
), which governs the ability to revoke decisions of the Commission, the Court pointed out that the Commission’s right to revoke a decision on State aid was not restricted solely to the situation referred to in Article 9 of that regulation, which was merely a specific expression of the general principle of law according to which retrospective withdrawal of an unlawful administrative act which had created subjective rights was permissible. The Court added that such a withdrawal may still be carried out provided that the institution which adopted the act complies with the conditions relating to reasonable time limits and the legitimate expectations of beneficiaries of the act who had been entitled to rely on its lawfulness.
It is therefore clear from the judgments referred to in paragraph 64 above that, even where the legislature has regulated the procedure for withdrawing the acts of an institution, that institution may withdraw an act on the basis of the general principle of law permitting the withdrawal of unlawful administrative acts subject to compliance with certain conditions.
In addition, although, as the applicant points out, Article 83 of Regulation No 207/2009 provides that ‘in the absence of procedural provisions in this Regulation, the Implementing Regulation, the fees regulations or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States’ and that, according to the case-law, that article applies only in the event of a lacuna or ambiguity in the procedural provisions (see judgment of 13 September 2010, Travel Service v OHIM — Eurowings Luftverkehrs (smartWings),
T‑72/08
, not published,
EU:T:2010:395
, paragraph
and the case-law cited), that article nonetheless does not provide that, where there is a procedural provision, EUIPO cannot take those principles into consideration. In any event, given that the concept of an obvious procedural error is not defined in the aforementioned regulations, Article 80(1) of Regulation No 207/2009 (old version) is not without ambiguity and is therefore not sufficiently clear to exclude the application of Article 83 of Regulation No 207/2009.
It is therefore necessary to determine whether the conditions for the application of the general principle of law permitting the withdrawal of unlawful administrative acts, referred to in paragraph 60 above, are satisfied in the present case.
As regards compliance with a reasonable time limit, it should be recalled that whether a period is reasonable must be assessed on the basis of all the circumstances of the case (see, to that effect, judgment of 12 May 2010, Bui Van v Commission,
T‑491/08 P
,
EU:T:2010:191
, paragraphs
to
).
In the present case, the parties were informed as early as 22 June 2016, that is, 4 months and 15 days after adoption of the decision of 8 February 2016, that the Board of Appeal intended to revoke that decision. Furthermore, the contested decision revoking the decision of 8 February 2016 was adopted on 3 August 2016, that is, a little less than 6 months from the adoption of the decision of 8 February 2016.
Consequently, it must be held that the decision of 8 February 2016 was revoked within a reasonable period.
As regards compliance with the principle of the protection of a legitimate expectation to be able to rely on the lawfulness of the decision of 8 February 2016, it should be noted that, where an action for annulment of a decision has been brought, the beneficiary of the decision is not entitled to harbour a legitimate expectation so long as the EU Courts have not delivered a definitive ruling (see, to that effect, judgment of 12 February 2008, CELF and Ministre de la Culture et de la Communication,
C‑199/06
,
EU:C:2008:79
, paragraph
).
In addition, it is apparent from the case-law that, if the withdrawn act is clearly unlawful, the beneficiary of that act, as a careful business undertaking, must have had doubts as to its legality and cannot claim a legitimate expectation in its lawfulness (see, to that effect, judgments of 20 June 1991, Cargill v Commission,
C‑248/89
,
EU:C:1991:264
, paragraph
, and of 20 November 2002, Lagardère and Canal+ v Commission,
T‑251/00
,
EU:T:2002:278
, paragraphs
to
).
EUIPO submits that, as the intervener observed in its action for annulment of the decision of 8 February 2016 in Case T‑188/16,
repowermap
v
EUIPO — Repower (REPOWER)
, that decision contained no grounds in relation to the link between the contested mark and the goods and services covered by that mark, with the result that the applicant could not have had a legitimate expectation in its lawfulness.
In that respect, it should be recalled that it is established case-law that the obligation to state reasons laid down in the first sentence of Article 75 of Regulation No 207/2009 has the same scope as that laid down in the second paragraph of Article 296 TFEU and that its purpose is, first, to allow interested parties to know the reasons for the measure taken so as to enable them to defend their rights and, secondly, to enable the EU Courts to exercise their power to review the legality of the decision (see judgment of 8 October 2015, Société des produits Nestlé v OHIM (NOURISHING PERSONAL HEALTH),
T‑336/14
, not published,
EU:T:2015:770
, paragraph
and the case-law cited).
In addition, the Board of Appeal is not obliged to express a view on every argument submitted by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (see judgment of 8 October 2015, NOURISHING PERSONAL HEALTH,
T‑336/14
, not published,
EU:T:2015:770
, paragraph
and the case-law cited).
Finally, it should also be recalled that the descriptive character of a mark must be assessed, first, in relation to the goods or services for which the registration of the sign has been applied for and, second, in relation to the understanding of the mark by the relevant public which is made up of consumers of those goods and services (see judgment of 9 November 2016,
Smarter Travel Media
v
EUIPO (SMARTER TRAVEL)
, T‑290/15, not published,
EU:T:2016:651
, paragraph
and the case-law cited).
The link between the contested mark and the goods and services it covers therefore forms part of the legal considerations having decisive importance in the context of a decision relating to the descriptive character of a mark.
The decision of 8 February 2016 contains only one paragraph, being paragraph 34, dealing with the link between the contested mark and the remaining goods and services (see paragraph 7 above). The Board of Appeal did not give any description of those goods and services or their characteristics, making it impossible to understand why the Board found that the contested mark was not descriptive of those goods and services.
What is more, in its statement of grounds of appeal before the Board of Appeal, the intervener had explained in detail, over almost five pages, why the contested mark ought to have been regarded as descriptive of the remaining goods and services. It had, for example, claimed that the contested mark was descriptive of the following goods: ‘electrical energy, including electrical energy generated by means of biogases; electrical energy generated by means of water, wind and solar power’, in Class 4, given that the word ‘repower’ could be taken to mean the purpose of those goods, which was to renew the energy of a machine, appliance or other application that consumed electricity. The intervener also maintained, first, that the contested mark was descriptive of services for the production of energy, in Class 40, given that the word ‘repower’ could be taken to mean the commissioning of new facilities for the production of energy or the replacement of inefficient power installations and, secondly, that the contested mark was descriptive of services for ‘energy distribution; professional advice in connection with transmission (distribution) of energy; advice concerning the aforesaid services’ in Class 39, on the grounds that those services enabled the distribution of energy to be restarted or renewed, and improved energy efficiency or the performance of energy distribution. Admittedly, it is apparent from the case-law cited in paragraph 75 above that the Board of Appeal is not obliged to express a view on every argument submitted by the parties. However, paragraph 34 of the decision of 8 February 2016 is clearly not a sufficient response to the intervener’s arguments about the link between the contested mark and the remaining goods and services.
In addition, it is true that, when the Board of Appeal confirms a decision of the Cancellation Division in its entirety, and given the continuity in terms of function between the Cancellation Divisions and the Boards of Appeal, to which Article 64(1) of Regulation No 207/2009 (now Article 71(1) of Regulation 2017/1001) attests, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, a context which is known to the parties and enables the Court to carry out fully its review as to whether the Board of Appeal’s assessment was well founded (see judgment of 18 March 2015, Naazneen Investments v OHIM — Energy Brands (SMART WATER),
T‑250/13
, not published,
EU:T:2015:160
, paragraph
and the case-law cited). However, even assuming that, in the present case, sufficient reasons were provided for the decision of the Cancellation Division, it remains the case that the Board of Appeal had to respond, at least summarily, to the detailed arguments of the intervener. What is more, it must be pointed out that it is not entirely clear from the decision of 8 February 2016 that the decision of the Cancellation Division was confirmed in its entirety by the Board of Appeal.
Finally, the applicant is incorrect in maintaining that the Board of Appeal was entitled to confine itself to general reasoning. The Court of Justice has made it clear that such a power extends only to goods and services which are interlinked in a sufficiently direct and specific way, to the point where they form a sufficiently homogeneous category or group of goods or services (judgment of 17 October 2013, Isdin v Bial-Portela,
C‑597/12 P
,
EU:C:2013:672
, paragraph
). There is no indication, either explicit or implicit, in the contested decision that the remaining goods and services formed a sufficiently homogeneous category or group of goods or services within the meaning of the judgment of 17 October 2013, Isdin v Bial-Portela (
C‑597/12 P
,
EU:C:2013:672
).
Accordingly, the insufficient reasoning in the decision of 8 February 2016 with regard to a link between the contested mark and the remaining goods and services should have led the applicant, as a careful business undertaking, to doubt its lawfulness.
Furthermore, given that an unlawful decision may only be withdrawn when certain requirements are met, it is not possible to argue, as the applicant does, that it would be incompatible with the principles of sound administration, of legal certainty and of
res judicata
to allow any given body to freely modify the subject matter of ongoing proceedings.
Additionally, the general principle of law permitting the withdrawal of an unlawful decision is compatible with the principle of sound administration. It has been repeatedly held that it is lawful and in the interest of sound administrative management that an institution should correct the errors and omissions in a decision (see judgment of 15 July 2015, Socitrel and Companhia Previdente v Commission,
T‑413/10 and T‑414/10
,
EU:T:2015:500
, paragraph
and the case-law cited).
What is more, while the principles of legal certainty and of the protection of legitimate expectations require the withdrawal of an unlawful measure to occur within a reasonable time and regard must be had to how far the person concerned might have been led to rely on the lawfulness of the measure, the fact remains that such withdrawal is, in principle, permitted (see judgment of 4 May 2006, Commission v United Kingdom,
C‑508/03
,
EU:C:2006:287
, paragraph
and the case-law cited).
Finally, it should be noted that decisions of the Boards of Appeal do not have the force of
res judicata
, since, as pointed out in paragraph 61 above, proceedings before EUIPO are administrative and not judicial in nature (see, to that effect and by analogy, judgment of 8 December 2015, Giand v OHIM — Flamagas (FLAMINAIRE),
T‑583/14
, not published,
EU:T:2015:943
, paragraph
).
Moreover, it should also be borne in mind that the fact that the action brought against the decision of 8 February 2016, Case T‑188/16,
repowermap
v
EUIPO — Repower (REPOWER)
, was pending before the Court at the time that decision was revoked did not preclude its revocation (see, to that effect, judgment of 15 July 2015, Socitrel and Companhia Previdente v Commission,
T‑413/10 and T‑414/10
,
EU:T:2015:500
, paragraph
).
It follows that the conditions laid down by the case-law cited in paragraph 60 above are satisfied in the present case.
However, notwithstanding the existence of another legal basis, an error in choosing the legal basis will lead to the annulment of the act concerned when that error is capable of affecting the content of that act, inter alia by rendering unlawful the procedure applicable to its adoption (judgment of 18 October 2011, Hampers, crates and baskets,
T‑53/10
,
EU:T:2011:601
, paragraph
).
The case-law on the general principle of law permitting the retrospective withdrawal of an unlawful administrative act does not prescribe a particular procedure for the withdrawal of such an act (judgment of 18 October 2011, Hampers, crates and baskets,
T‑53/10
,
EU:T:2011:601
, paragraph
).
It must, therefore, be concluded that the Board of Appeal’s error in choosing the applicable legal basis does not justify annulment of the contested decision. Any other solution would, moreover, be difficult to reconcile with the principle of the proper administration of justice. If the contested decision were annulled on the grounds of an error in choosing the legal basis, the Tribunal would also have to annul the decision of 8 February 2016 which contains an inadequate statement of reasons. That would lead, first, to the Board of Appeal having to take a new decision relating to the invalidity proceedings concerning the contested mark between repowermap.org and Repower, which would probably be identical to that it adopted on 26 September 2016 following the revocation of the decision of 8 February 2016, and, secondly, to the applicant having to bring a fresh action against that new decision.
The other arguments raised by the applicant are not convincing.
Turning, first, to the applicant’s arguments that Article 83 of Regulation No 207/2009 refers to general principles of procedural law in Member States and not to the general principles of EU law, and also that EUIPO was required to disclose the general principles of national law based on the principles applicable in all Member States without exception, it should be noted that the general principle of law according to which authorities are able to re-examine and, if need be, to withdraw, an unlawful administrative act, is based on the laws of the Member States and has been recognised ever since the first rulings of the Court of Justice (judgments of 12 July 1957, Algera and Others v Common Assembly,
7/56 and 3/57 to 7/57
,
EU:C:1957:7
, pp. 115 and 116; of 22 March 1961, Snupat v High Authority,
42/59 and 49/59
,
EU:C:1961:5
, p.
; and of 13 July 1965, Lemmerz-Werke v High Authority,
111/63
,
EU:C:1965:76
, p.
). This principle, based on the laws of Member States, has since its recognition been repeatedly reiterated by the Court of Justice and the General Court (judgments of 3 March 1982, Alpha Steel v Commission,
14/81
,
EU:C:1982:76
, paragraph
; of 5 December 2000, Gooch v Commission,
T‑197/99
,
EU:T:2000:282
, paragraph
; of 12 September 2007, González y Díez v Commission,
T‑25/04
,
EU:T:2007:257
, paragraph
; and of 11 July 2013, BVGD v Commission,
T‑104/07 and T‑339/08
, not published,
EU:T:2013:366
, paragraph
). The EU Courts have thus consistently held that this principle was recognised in the national laws of Member States. The applicant does not provide a single example of a Member State in which that principle is not recognised. It simply states that, in Germany, for example, the principle of devolutive effect means that, in the event of legal challenge, the jurisdiction of the previous court comes to an end. However, that argument does not affect the existence of the principle that authorities are able to re-examine and, if need be, to withdraw, an individual administrative act, but merely the means by which this may be carried out.
Turning, secondly, to the applicant’s arguments that principles such as the protection of legitimate expectations, sound administration and legal certainty preclude the withdrawal of a decision which is subject to appeal before the Court, since there would be a risk of the two bodies reaching contrary conclusions, it should be noted that, where a decision of the Board of Appeal is withdrawn at a time when an appeal against that decision has been made to the Court and is still pending, the Court will rule that there is no need to adjudicate. There is therefore no risk of the Court and the Board of Appeal reaching contrary conclusions.
In the light of the foregoing, this plea must be rejected.
Fourth plea, alleging an inadequate statement of reasons
The applicant submits that the Board of Appeal breached its obligation to state reasons in that it did not examine the arguments raised before it. The applicant maintains that it had already raised all the arguments raised before the Court in its observations before the Board of Appeal. It claims that, in the contested decision, the Board of Appeal did not examine the decision of the Grand Board of Appeal and merely asserted that Article 80(1) of Regulation No 207/2009 (old version) was still applicable and that there was a procedural error in the decision of 8 February 2016, without responding to the other arguments.
EUIPO and the intervener have not expressed their views on this plea.
It is apparent from the contested decision that the Board of Appeal set out the facts and the legal considerations having decisive importance in the context of the decision, within the meaning of the case-law cited in paragraph 75 above. The Board of Appeal stated that Article 80 of Regulation No 207/2009 (old version) was still in force, that EUIPO had an obligation to provide reasons for its decisions and, in particular, to analyse the grounds for refusal regarding the goods and services covered by the contested mark and that the decision of 8 February 2016 was revoked because it contained an inadequate statement of reasons which amounted to an obvious procedural error.
The Board of Appeal had no obligation to respond to the argument concerning the decision of the Grand Board of Appeal, which was not relevant to the present case.
The fourth plea in law must therefore be rejected.
It follows from the foregoing that the action must be dismissed in its entirety.
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.
However, under Article 135(1) of the Rules of Procedure, if equity so requires, the Court may decide that an unsuccessful party is to pay only a proportion of the costs of the other party in addition to bearing his own costs, or even that he is not to be ordered to pay any costs. Further, under Article 135(2) of those rules, the Court may order a party, even if successful, to pay some or all of the costs, if this appears justified by the conduct of that party, including before the proceedings were brought.
In addition, it should be noted that the Court may order an institution whose decision has not been annulled to pay the costs on account of the inadequacy of that decision, which may have led an applicant to bring an action (see judgment of 9 September 2010, Evropaïki Dynamiki v Commission,
T‑387/08
, not published,
EU:T:2010:377
, paragraph
and the case-law cited).
In the present case, the applicant has been unsuccessful. However, it would not have had to bring the present proceedings and the intervener would not have had to intervene if EUIPO had not adopted the contested decision in order to revoke the decision of 8 February 2016 which contained an inadequate statement of reasons. In addition, the contested decision is based, incorrectly, on Article 80(1) of Regulation No 207/2009, which may have led the applicant to bring the present action.
Consequently, the Court considers that the circumstances of the case warrant that EUIPO must bear its own costs and be ordered to pay the costs incurred by both the applicant and the intervener.

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

1.
Dismisses the action;

2.
Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs and to pay the costs incurred by Repower AG and repowermap.org.

Gratsias
Dittrich
Xuereb
Delivered in open court in Luxembourg, on 21 February 2018.
[Signatures]
(
*1
)	Language of the case: French.