CELEX: 62008TJ0145
Community trade mark
Invalidity proceedings
Community trade mark ATLAS
Earlier Benelux trade mark atlasair
Formal requirements
Lodging of a statement setting out the grounds for the action
Suspension of the administrative procedure
Article 59 of Regulation (EC) No 40/94 (now Article 60 of Regulation (EC) No 207/2009)
Rule 20(7) of Regulation (EC) No 2868/95

Legal context
Article 59 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (now Article
60 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)), provides:
‘Notice of appeal must be filed in writing at the Office within two months after the date of notification of the decision
appealed from. The notice shall be deemed to have been filed only when the fee for appeal has been paid. Within four months
after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed.’
Article 61 of Regulation No 40/94 (now Article 63 of Regulation No 207/2009) provides:
‘1. If the appeal is admissible, the Board of Appeal shall examine whether the appeal is allowable.
2. In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations,
within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself.’
Rule 20(7)(c) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303,
p. 1) provides:
‘The Office may suspend opposition proceedings: … where a suspension is appropriate under the circumstances.’
Rule 48(1) of Regulation No 2868/95, headed ‘Content of the notice of appeal’, provides:
‘1. The notice of appeal shall contain: …
(c)      a statement identifying the decision which is contested and the extent to which amendment or cancellation of the decision
is requested.’
Rule 49(1) of Regulation No 2868/95 provides:
‘If the appeal does not comply with Articles 57, 58 and 59 of the Regulation and Rule 48(1)(c) and (2), the Board of Appeal
shall reject it as inadmissible …’.

Background to the dispute
On 5 January 2006, the applicant, Atlas Transport GmbH, obtained the registration of the Community word mark ATLAS, covering,
inter alia, transport services in Classes 39 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.
On 21 July 2006, the intervener, Atlas Air Inc., submitted an application for a declaration that the applicant’s mark was
invalid (‘the invalidity application of 21 July 2006’). That application was based, on the one hand – in accordance with Articles
52(1)(c) and 8(4) of Regulation No 40/94 (now Articles 53(1)(c) and 8(4) of Regulation No 207/2009) read in conjunction with
certain provisions of national law – on a conflict with the trade names ATLAS AIR and ATLAS AIR Inc. used in Benelux, Germany,
the United Kingdom and other European countries for air cargo services, and on the other hand – under Articles 52(1)(a) and
8(1)(b) or Regulation No 40/94 (now Articles 53(1)(a) and 8(1)(b) of Regulation No 207/2009) – on the existence of a likelihood
of confusion with its Benelux figurative mark No 555184, registered on 19 April 1994 for ‘Air transport services; air freight’
in Class 39 of the Nice Agreement, reproduced below:
On 13 December 2005, the intervener had already submitted an application for a declaration that the Community word mark ATLAS
TRANSPORT, registered under no 545 681, was invalid (‘the invalidity application of 13 December 2005’).
On 28 August 2006, the Cancellation Division rejected a request to join the proceedings relating to the invalidity applications
of 13 December 2005 and 21 July 2006.
On 26 June 2007, the Cancellation Division allowed the invalidity application of 21 July 2006 on the ground that there was
a likelihood of confusion, under Article 52(1)(a) of Regulation No 40/94 read in conjunction with Article 8(1)(b) of that
regulation, with the earlier Benelux mark (‘the decision at issue’). It accordingly found that there was no need to consider
the earlier trade names.
On 29 June 2007, the applicant filed a notice of appeal with the Board of Appeal against the decision at issue, reserving
a right to submit subsequently the written statement setting out the grounds of appeal.
On 15 October 2007, the applicant addressed to the Board of Appeal a letter – the first – including an undated draft of a
writ of summons, with a translation, in which a Benelux court competent for trade marks was petitioned to remove the intervener’s
earlier Benelux mark from its register. In that letter, the applicant stated:
‘The appellant hereby files the writ of summons and its translation in which the competent Benelux Court is petitioned to
strike the Benelux registration of the respondent from the register. This Benelux registration is the only basis for the decision
of the Cancellation division presently contested.’
On 29 October 2007, the applicant addressed a letter – the second – to the Board of Appeal, in which it stated:
‘The appellant respectfully refers to the submission of 15 October 2007 and presently files the grounds of appeal.
1. The contested decision hinges around Benelux registration No. 555.184 of 4 May 1994. If this Benelux registration is cancelled,
the respondent has no basis for his claim. The learned Board of Appeal now knows that this basis is being contested in a competent
Court in Benelux, viz. the Court of The Hague.
2. Apart from this, there is the issue of use in Benelux of Benelux 555.184 in such a way that title to this mark was maintained.
This evidenced use was filed in the Invalidity Proceedings pending before the Office under No. 1449C. Also in the present
appeal the use is challenged. The appellant wishes to challenge the use, but at the same time wishes not to burden the Office
with bulky documents. The appellant would not object if the respondent would simply make reference to the evidence on file
in 1449C and that then the Office would hold that the evidence is deemed to be here instead. However, it is up to the Office
to make a decision on this point.
3. Since the case will now be stayed pending the outcome of the national proceedings the appellant will refrain from voicing
his objection to the attached decision. The appellant restricts his observation that the owner of the senior rights was put
in the wrong which goes against natural justice.’
On 20 November 2007, in the context of the proceedings relating to the invalidity application of 13 December 2005, the applicant
filed with OHIM a copy of the petition lodged at the rechtbank van ’s Gravenhage (the Hague District Court) (Netherlands).
That petition corresponds to the draft petition attached to the letter of 15 October 2007 during the proceedings relating
to the invalidity application of 21 July 2006.
By decision of 24 January 2008, the First Board of Appeal of OHIM dismissed as inadmissible the applicant’s appeal brought
on 29 June 2007 further to the invalidity application of 21 July 2006 (‘the contested decision’). The Board of Appeal stated
as grounds for its decision that, under Article 59 of Regulation No 40/94 (now Article 60 of Regulation No 207/2009), the
notice of appeal must be supplemented with a statement setting out the grounds within a time-limit of four months. That statement
should contain at least a succinct presentation of the facts and the relevant questions of law and should explain how the
decision at issue is flawed. Neither the appellant’s letter of 15 October 2007 nor that of 29 October 2007 meets those conditions.
On the contrary, in the letter of 29 October 2007, the applicant expressly declines to raise any objection to the decision
at issue. Moreover, the Board of Appeal took the view that the request for suspension could not be granted since it was based
only on a draft writ of summons before a court with jurisdiction for Benelux trade marks and there was no evidence that proceedings
were actually brought before that court. The Board of Appeal further recalled that the invalidity application of 21 July 2006
was not based exclusively on an earlier Benelux trade mark, but also on other earlier rights under Article 8(4) of Regulation
No 40/94.

Forms of order sought
The applicant claims that the Court should:
–        annul the contested decision;
–        order the defendant to pay the costs.
OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.

Decision

Introduction
In the context of this action, the applicant puts forward two pleas, alleging breach of Article 59 of Regulation No 40/94,
and breach of Article 61 of Regulation No 40/94 in conjunction with Rule 20(7) of Regulation No 2868/95.

Breach of Article 59 of Regulation No 40/94
Arguments of the parties
The applicant submits that the Board of Appeal breached Article 59 of Regulation No 40/94 on two counts. On one hand, the
applicant submits that the Board of Appeal wrongly applied very restrictive conditions to the statement of grounds of appeal.
On the other hand, it submits that the Board of Appeal erred in requiring the grounds to be explicit. Implicit grounds are
sufficient.
Thus, the applicant’s first argument is that, from the obligation to set out the grounds of appeal before the Board of Appeal
under Article 59 of Regulation No 40/94, the General Court has inferred requirements which are ‘the most limited imaginable’.
More specifically, the applicant states that, in Case T‑308/01
Henkel
v
OHIM – LHS (UK) (KLEENCARE)
[2003] ECR II‑3253, the Court held that the purpose of the obligation to set out the grounds of an appeal before the Board
of Appeal laid down by Article 59 of Regulation No 40/94 is simply to facilitate the smooth running of the appeal process,
which does not mean the view should be taken that the extent of the examination which the Board of Appeal is required to conduct
of the decision under appeal is limited or determined by the grounds relied on by the party bringing the appeal. Further,
he claims, the Court states that the Board of Appeal is required to conduct an examination of the decision under appeal, even
if a specific plea has not been raised by the party (
KLEENCARE
, paragraphs 31 and 32).
The applicant infers from the judgment in
KLEENCARE
(paragraph 22 above) that the obligation to set out the grounds of appeal under Article 59 of Regulation No 40/94 is fulfilled
where the appellant writes ‘something about the dispute which goes beyond the mere application’.
The applicant submits that, in the present case, it fulfilled that ‘requirement to set out grounds’. It relies on the letter
of 15 October 2007 in which it provided OHIM with a draft petition for annulment of the intervener’s mark and the letter of
29 October 2007 in which it challenged the use of the earlier mark and referred to the pending proceedings before the Hague
District Court. In support of its argument, the applicant refers to the decision of the Fourth Board of Appeal of OHIM of
31 January 2006 (Case R 440/2004‑4), and the opinion of the Rapporteur of the Board of Appeal, author of the contested decision
and a work of professional literature.
Moreover, the applicant maintains that the simplification of procedure brought about by a statement of grounds of appeal does
not constitute an argument against its interpretation of the limited extent of the ‘requirement to set out grounds’ contained
in Article 59 of Regulation No 40/94. The simplification of procedure brought about by a statement of grounds of appeal can
be of essential importance to the Board of Appeal and can, of itself, entail the inadmissibility of the appeal in the case
where there are no grounds at all.
Finally, the applicant argues that Article 59 of Regulation No 40/94 must be interpreted in the light of the fact that legal
representation is not required before the Boards of Appeal of OHIM. Accordingly, that provision must be interpreted with account
being taken of the fact that it is addressed not only to specialists, but to any citizen of the European Union, who in many
cases will be able to put forward only general observations on ‘his case’.
The applicant’s second argument is that the Board of Appeal breached Article 59 of Regulation No 40/94 by requiring a formal
and explicit statement of the grounds of the appeal.
The applicant denies that it should have stated explicitly that the decision at issue could not be upheld. It submits that
the Board of Appeal could certainly have understood – had it wished – the applicant’s reasoning set out in the letter of 29 October
2007 explicitly headed ‘statement of grounds of appeal’, in which it relied on the fact that the intervener’s mark was itself
being challenged and, as the case may be, invalid, and in which it explicitly objected that the earlier mark had not been
used. Admittedly, the applicant did not, by those statements, explicitly deal with the decision at issue; however, it dealt
with it implicitly, and implicitly concluded that it could not be upheld.
More specifically, the applicant submits, in the first place, that to an informed reader, the submission of the petition made
to the Hague District Court could only mean that the applicant wished to refer to the likely annulment of the single mark
of the intervener which was the basis for the decision at issue. The consequence of such annulment would be that the decision
at issue could no longer be given. The applicant submits that it thus implicitly referred to the fact that the decision at
issue adopted by the Cancellation Division could not be upheld.
The applicant asserts, in the second place, that the fact that it objected that the earlier mark had not been used was to
be understood as meaning that that objection had already been raised before the Cancellation Division. The applicant submits
that, since under Rule 22(1) of Regulation No 2868/95 the non-use of a mark could not be challenged for the first time before
the Board of Appeal, the fact that the applicant put forward the non-use objection before the Board of Appeal could only be
interpreted by the latter as meaning that the applicant had already put forward the non-use objection before the Cancellation
Division.
The applicant also states that such an implicit statement of grounds of appeal before a Board of Appeal meets the requirements
of Article 59 of Regulation No 40/94, having regard to the following matters.
First, OHIM is a multinational body; for that reason, the European legislature has always strived to avoid formalities as
much as possible and to organise procedures ‘in a simple and user-friendly manner’. In that context, a person expressing himself
in a language which is not his mother tongue cannot be expected to provide such direct and precise grounds (Case C‑361/01 P
Kik
v
OHIM
[2003] ECR I‑8283, paragraph 93 et seq.).
Second, persons addressing themselves to OHIM come from different legal backgrounds and thus different cultural backgrounds;
they have different linguistic habits, according to which direct criticism is not always customary and considered polite.
In many cases, an indirect or implicit formulation is preferred for reasons of politeness. In the present case, the statement
of grounds for the appeal of the applicant’s former representative obviously adhered to such standards of politeness. Moreover,
the applicant submits that, setting aside that issue of legal culture, it is probably always the case that, in ‘communication
between human beings’ (and therefore in a statement of grounds of appeal), the addressee ‘understands only what he is willing
to understand’. Language does not reflect reality exactly, but depends on ‘interaction between the maker of the statement
and the addressee’. In that regard, there is no fundamental difference between implicit and explicit reasoning. Accordingly,
it is certainly not obligatory to reject reasoning which is simply implicit.
Third, the applicant submits that interpretation, by the Court of Justice and the General Court, of the obligation to set
out grounds before OHIM or in court proceedings is by reference to the possibility for the addressee to understand the reasoning.
The applicant submits that the Court of Justice and General Court ‘interpret benevolently’ the requests and arguments of parties
and bear in mind implicit requests, basing their judgments on ‘what the parties actually wanted’. The applicant asserts that
the Court of Justice and General Court have in several cases held that OHIM can give implicit grounds for its decisions. The
applicant maintains that if stricter requirements do not apply in respect of the grounds for decisions of OHIM and the General
Court, they must not apply in respect of the grounds supplied by legal practitioners either.
Fourth, the applicant submits that Article 6 of the European Convention for the Protection of Human Rights and Fundamental
Freedoms, signed in Rome on 4 November 1950 (‘the ECHR’), and Article 1 of the additional protocol to the ECHR would be infringed
indirectly if requirements relating to the statement of grounds of appeal were too strict. If the parties to a proceeding
can understand a given body of reasoning, no purpose of a procedural nature can justify other restrictions. Additional reasoning
requirements for an appeal before OHIM restrict access to other courts and thus the Courts of the European Union, in breach
of Article 6 of the ECHR. Further, in the present case, they interfere with the applicant’s right to property.
The defendant and intervener dispute the applicant’s arguments.
Findings of the Court
–       The extent of the obligation to set out the grounds of appeal in the written statement filed with the Board of Appeal
Under Article 59 of Regulation No 40/94, notice of appeal must be filed in writing at the Office within two months after the
date of notification of the decision appealed from. Within four months after the date of notification of the decision, a written
statement setting out the grounds of appeal must be filed.
Further, Rule 48(1)(c) of Regulation No 2868/95 states that the notice of appeal must contain a statement identifying the
decision which is contested and the extent to which amendment or cancellation of the decision is requested.
Finally, Rule 49 of Regulation No 2868/95 states that, if the appeal does not comply with the conditions provided by Article
59 of Regulation No 40/94 and Rule 48(1)(c) and (2) of Regulation No 2868/95, the Board of Appeal is to reject it as inadmissible,
unless each deficiency has been remedied before the relevant time-limit laid down in Article 59 of Regulation No 40/94 has
expired.
A systematic reading of those provisions shows that an appellant wishing to bring an appeal before the Board of Appeal is
required, within the prescribed time-limit, to file with OHIM a written statement setting out the grounds for its appeal,
failing which his appeal is to be dismissed as inadmissible, and that those grounds involve more than an indication of the
decision appealed and of the fact that the appellant wishes it to be amended or annulled by the Board of Appeal.
Further, it follows from a literal reading of the word ‘grounds’ used in the last sentence of Article 59 of Regulation No
40/94 that the appellant before the Board of Appeal must set out in writing the reasons for his appeal. It is not for the
Board of Appeal to determine, by means of inferences, what are the grounds on which the appeal is based. It must therefore
be possible to understand from the appellant’s statement why he is requesting the Board of Appeal to annul or amend the decision.
The applicant submits, however, that, in
KLEENCARE
(paragraph 22 above), the Court set requirements relating to the statement of grounds of appeal which were ‘the most limited
that can be imagined’, such that ‘it is sufficient for an appellant to write something about the dispute’ which goes beyond
the notice of appeal itself in order to satisfy the ‘duty to set out grounds’ laid down in Article 59 of Regulation No 40/94.
Such an interpretation of
KLEENCARE
(paragraph 22 above) must be rejected. That judgment does not directly concern the issue of the obligation to set out the
grounds of appeal contained in Article 59 of Regulation No 40/94, but the scope of the Board of Appeal’s review where it is
properly seised of an appeal. In that judgment, the General Court stated that the extent of that examination in that regard
of the decision appealed is not, in principle, determined by the grounds relied on by the party who has brought the appeal
(paragraphs 29 to 32). The fact that the General Court found, in that context, that the written statement provided for by
Article 59 of Regulation No 40/94 facilitates the smooth running of the appeal process and that the Board of Appeal is not
restricted in its review by the pleas put forward in that statement does not by any means imply that the obligation on the
appellant to provide grounds under Article 59 of Regulation No 40/94 is reduced. By taking the view that the written statement
provided for by Article 59 of the regulation ‘facilitates the smooth running of the appeal process’, the Court confirmed the
raison d’être of that obligation as well as its substantive nature. The obligation to set out the grounds of appeal contained
in Article 59 of Regulation No 40/94 facilitates the smooth running of the appeal process by enabling the Board of Appeal
and, as the case may be, the other party to the first administrative procedure to know the grounds of the appellant’s appeal.
Accordingly, the applicant is wrong to infer from the case-law flowing from the judgment in
KLEENCARE
(paragraph 22 above) that the requirement to set out the grounds of appeal under Article 59 of Regulation No 40/94 is met
where the appellant ‘writes something about the dispute’ and does not confine himself just to the application itself.
Moreover, it must be noted that, before the extent of the review of the Board of Appeal can even be called into question,
it is necessary for the Board of Appeal to have been seised of an admissible appeal, which means that the appeal against the
decision must contain, inter alia, a statement of grounds under Article 59 of Regulation No 40/94. The appellant’s setting
out the grounds for his appeal constitutes an essential condition precedent to the Board of Appeal carrying out its review
of the decision. Thus, the relevance of the passages of the judgment in
KLEENCARE
(paragraph 22 above) cited by the applicant in the present case is also called into question since the assessment in those
passages presupposes that an appeal duly supported by grounds has been filed with the Board of Appeal.
Finally, regarding the applicant’s argument based on the absence of a requirement of legal representation before the Board
of Appeal, it must be noted that the absence of a requirement applies to an appellant in the same way as any other party.
Accordingly, it should be pointed out that, though the appellant’s appeal is not required to contain pleas indicating precisely
all the applicable legal provisions, the appellant must however state what matters of fact and/or of law, according to him,
justify annulment or amendment of the decision he is challenging; the grounds of appeal must be sufficiently clear so that
any other party – as the case may be, without legal representation – may assess whether it is appropriate to submit observations
and to respond to the appellant’s arguments.
Accordingly, in light of all the foregoing, it should be held that, where Article 59 of Regulation No 40/94 requires an appellant
to file a written statement setting out the grounds of his appeal, the appellant must set out, in writing and sufficiently
clearly, what matters of fact and/or of law support its request to the Board of Appeal to annul and/or amend the decision
challenged.
That interpretation of the extent of the obligation to set out the grounds of appeal under Article 59 of Regulation No 40/94
cannot be called into question by assessments made by the Board of Appeal in other cases or by the Rapporteur of the Board
of Appeal in the present case. Those assessments do not bind the Court.
Further, the multinational nature of the OHIM administration provides no basis upon which to interpret Article 59 of Regulation
No 40/94 in a sense contrary to its very wording. Presentation of the grounds of appeal before the Board of Appeal is an admissibility
condition from which the appellant cannot depart. Further still, with regard to the applicant’s singular arguments based on
the legal-cultural differences between the persons addressing OHIM, it is sufficient to state that such differences require
explicit grounds much more than they require the contrary.
Finally, the analogy with the requirement for the Board of Appeal to give grounds, on which the applicant relies, is not relevant
for the interpretation of the requirement for an appellant to set out the grounds of appeal before the Board of Appeal, since
those requirements are incumbent on an administration and a person respectively. Similarly, the interpretation, by the Court
of Justice and the General Court, of the arguments of parties to court proceedings is not relevant for the purposes of defining
the ambit of the requirement for the appellant to set out grounds of appeal, bearing in mind the difference in nature between
the procedure before the Board of Appeal and the procedures before the Courts of the European Union.
–       Compliance with the requirement to set out the grounds in the present case
The applicant filed two letters with OHIM, the first on 15 October 2007, the content of which is reproduced at paragraph 12
above, the second on 29 October 2007, the content of which is reproduced at paragraph 13 above.
Article 59 of Regulation No 40/94 provides for the filing of only one statement, not two, as appears to have been done in
the present case.
However, the letter of 15 October 2007 does not set out the reasons for which the applicant requested the annulment of the
decision at issue. That letter merely informs OHIM of the applicant’s petition for annulment of the intervener’s Benelux mark
before the competent national court, and states that the Benelux mark constitutes the only basis for the decision at issue
which it contests. In consequence, the letter of 15 October 2007 cannot constitute the written statement required by Article
59 of Regulation No 40/94. That finding does not of itself entail the inadmissibility of the applicant’s appeal, however.
Under Article 49(1) of Regulation No 2868/95, a deficiency can be remedied within the period of four months provided by Article
59 of Regulation No 40/94. The letter of 29 October 2007 was filed within that time-limit for bringing an appeal.
Regarding the content of the letter of 29 October 2007, it should be noted that the applicant states, in the first two points
of the letter, that the decision at issue was based on a contested Benelux mark and that it wished to challenge the use of
the Benelux mark before the Board of Appeal. However, the applicant states in the third point of the letter that it refrains
from contesting the decision at issue. By that sentence the applicant goes back on what it previously stated, meaning that
the view cannot be taken that the two first points of the letter set out the grounds of appeal before the Board of Appeal.
The finding that there were no grounds to support the appeal before the Board of Appeal in the letter of 29 October 2007 is
not called into doubt by the fact that, having stated that it refrained from contesting the decision at issue, the applicant
states that it ‘restricts [its] observation [to pointing out that] that the owner of the senior rights was put in the wrong
which goes against natural justice’. It is not possible to understand on the basis of that sentence the reasons for which
the applicant was bringing an appeal before the Board of Appeal against the decision at issue. Neither the identity of the
holder of the earlier rights, nor the basis on which he holds them, nor the manner in which he has suffered an injustice can
be discerned. Even admitting that the applicant is, as it maintained at the hearing, the holder of the earlier rights, it
is not apparent from the letter of 29 October 2007 what rights are in question. The only earlier right referred to in that
letter is the earlier Benelux mark relied on in the first and second points of the letter. However, in relation to the applicant’s
mark, the Benelux mark is either earlier or invalid. The earlier right of which the applicant claims to be the holder is therefore
neither the applicant’s mark nor the Benelux mark. Accordingly, the final sentence of the letter of 29 October 2007 cannot
be regarded as sufficient grounds for the applicant’s appeal before the Board of Appeal.
In light of the absence of clear and intelligible grounds set out in the letters of 15 October and 29 October 2007, and given
that the statement of grounds before the Board of Appeal must, inter alia, enable a potential intervener, unassisted by a
lawyer, to assess whether it would be appropriate for it to respond to the arguments contained in the appellant’s appeal,
it should be concluded that the applicant’s appeal before the Board of Appeal does not meet the requirements of Article 59
of Regulation No 40/94. The applicant did not set out the grounds of appeal sufficiently clearly, in either the document by
which it brought the appeal or any subsequent document filed with the Board of Appeal within the prescribed time-limit, for
any of these to constitute a statement of grounds of appeal within the meaning of Article 59 of Regulation No 40/94.
None of the applicant’s other arguments regarding the obligation to provide grounds can call that assessment into doubt. The
applicant fails to demonstrate how the obligation to provide grounds set out at paragraph 46 above and its application in
the present case constitute a violation of Article 6 of the ECHR. In addition, the obligation to provide grounds is proportionate
to the objective of facilitating procedure and, in view of the content of the letters of 15 October and 29 October 2007, it
cannot be considered that those letters facilitated the procedure before the Board of Appeal. Moreover, arguments based on
the psychology of parties, politeness and linguistic theory are unfounded given the extent of the obligation to provide grounds
before the Board of Appeal defined at paragraph 46 above and the content of the letters of 15 October and 29 October 2007.
That assessment is confirmed by the circumstance that, in the present case, the applicant was in fact legally represented
in the procedure before the Board of Appeal, as is apparent from the signature of the letters of 15 October and 29 October
2007. It is implicit in the fact of a lawyer representing his clients that he is capable of setting out clearly the reasons
for which his client seeks annulment of the decision at issue.
However, it must still be considered whether the applicant’s argument based on its application for suspension is capable of
affecting the consequences of the infringement of Article 59 of Regulation No 40/94 in the present case.

Breach of Article 61 of Regulation No 40/94 in conjunction with Rule 20(7) of Regulation No 2868/95
Arguments of the parties
The applicant submits that the procedure before the Board of Appeal should have been suspended as a result of its letter of
15 October 2007, in which the applicant stated that the intervener’s Benelux mark was the subject of an action before the
relevant court and would probably be annulled. According to the applicant, that fact ruled out the possibility for the Board
of Appeal to uphold the decision at issue. Moreover, as the Benelux mark was the sole basis for the decision at issue, the
procedure should necessarily have been suspended pending judgment on the validity of the Benelux mark. The failure to suspend
the procedure in the present case constitutes a misuse of powers.
The applicant further submits that, had the procedure been suspended on 15 October 2007, that suspension would have forestalled
the expiry of the time-limit for filing the statement setting out the grounds of appeal. In consequence, that time-limit would
still not yet have expired, with the result that the appeal before the Board of Appeal could not have been dismissed as inadmissible
for ‘lack of grounds’.
OHIM and the intervener contest the applicant’s arguments.
Findings of the Court
In the present case, the Board of Appeal dismissed the applicant’s application for suspension on the following grounds:
‘Suspension, in principle accepted under Rule 20(7) CTMIR applied by analogy to cancellation proceedings (cf. decision of
the Boards of 24 January 2008 in Case R 285/2005-1 – Le Meridien), is not an automatic right. It is a decision, which will
be taken if the suspension is appropriate, after balancing the interests of the various parties. In the present case, the
request for suspension was not duly reasoned and only supported by an undated draft of a writ of summons. There is no evidence
in the present file that an action against the earlier Benelux trade mark was ever lodged at the competent court. Even taking
into consideration the document filed in the parallel cancellation proceedings, the Board notes that the relevant part was
not translated. Thirdly, the cancellation request was not exclusively based on the Benelux trade mark but also on three other
earlier rights in accordance with Article 8(4) CTMR. Only if the cancellation request had to be also rejected with respect
to the rights under Article 8(4) CTMR, the validity of the earlier Benelux trade mark would have been decisive for the outcome
of the present proceedings’ (paragraph 16 of the contested decision).
In that regard, it should be pointed out that suspension of the proceedings before the Board of Appeal has no impact on the
time-limit of four months for the filing of the grounds of appeal with the Board of Appeal provided by Article 59 of Regulation
No 40/94. More specifically, that time-limit has the same characteristics as a time-limit for bringing an appeal, in that
neither the parties nor the Board of Appeal can alter it. Unlike other provisions such as Rule 49(2) and Rule 71(1) of Regulation
No 2868/95, Article 59 of Regulation No 40/94 fixes that time-limit and does not grant OHIM the power to do so. Further, Article
78a(2) of Regulation No 40/94 (now Article 82(2) of Regulation No 207/2009) rules out the possibility for the party who brought
the appeal to obtain a continuation of proceedings from OHIM when that party has failed to comply with one of the time-limits
provided by Article 59 of Regulation No 40/94. Finally, Rule 49(1) of Regulation No 2868/95 provides that the Board of Appeal
is to reject as inadmissible an appeal of which it is seised if that appeal does not comply with the conditions provided in
Article 59 of Regulation No 40/94, unless each deficiency has been remedied before the relevant time-limit laid down in Article
59 of Regulation No 40/94 has expired.
Accordingly, even if the view were taken that, in the present case, the Board of Appeal should have suspended the procedure
before it, that circumstance could not have had the effect of extending the four-month time-limit for the filing of the applicant’s
grounds of appeal. Thus, on the facts of this case, following upon the analysis of the statement of grounds put forward by
the applicant, it must be concluded that the applicant did not duly provide grounds for its appeal before the Board of Appeal
within the prescribed period. Such a failure to comply with the obligation to provide grounds of appeal contained in Article
59 of Regulation No 40/94 must result in the appeal being declared inadmissible. In consequence, the Board of Appeal could
take no other decision than to declare the appeal manifestly inadmissible.
It follows that the plea by which the applicant criticises the Board of Appeal for not having suspended the appeal of which
it was seised pending judgment of the Hague District Court before which the applicant had applied for a declaration of invalidity
in respect of the earlier Benelux mark must be dismissed as ineffective.
Even if that plea were not ineffective, the following must be stated regarding the merits of the applicant’s arguments in
support of the plea.
As a preliminary matter, it should be pointed out that the Board of Appeal was not expressly granted the power to suspend
invalidity proceedings by the applicable provisions of the regulatory framework. However, Article 79 of Regulation No 40/94
(now Article 83 of Regulation No 207/2009) provides that, in the absence of procedural provisions in that regulation, the
implementing regulation, namely Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to OHIM (OJ
1995 L 303, p. 33), or Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards
of Appeal of OHIM (OJ 1996 L 28, p. 11), OHIM is to take into account the principles of procedural law generally recognised
in the Member States. The possibility for a decision-making authority to suspend proceedings of which it is seised where that
is appropriate in the circumstances must be regarded as a principle generally recognised in the Member States. That general
principle finds expression in Rule 20(7) of Regulation No 2868/95 and Article 8 of Regulation No 216/96, which provide for
the possibility of suspension of the procedure before the Board of Appeal respectively in opposition proceedings and as a
result of an opinion of the Registrar of the Board of Appeal on the admissibility of an appeal before it.
Moreover, Rule 20(7)(c) of Regulation No 2868/95 can properly be applied by analogy in the context of invalidity proceedings,
since both opposition proceedings based on Article 8(1)(b) of Regulation No 40/94 and proceedings based on relative grounds
for invalidity under Article 52(1)(a) of Regulation No 40/94 are designed to assess the likelihood of confusion between two
marks, and the possibility of suspending proceedings contributes to the effectiveness of those proceedings.
Accordingly, the Board of Appeal has the power to suspend invalidity proceedings where this is appropriate in the circumstances.
It must be observed, next, that the discretion of the Board of Appeal to suspend proceedings or not to is a broad discretion.
Regulation No 20(7)(c) of Regulation No 2868/95 illustrates that broadness of discretion, stating that the Board of Appeal
can suspend proceedings where this is appropriate under the circumstances. Suspension remains optional for the Board of Appeal,
which avails itself of the option only when it considers it appropriate (see, to that effect, Case T‑342/02
Metro-Goldwyn-Mayer Lion
v
OHIM – Moser Grupo Media (Moser Grupo Media)
[2004] ECR II‑3191, paragraph 46). Proceedings before the Board of Appeal are therefore not automatically suspended as a
result of a request for suspension by a party before it.
The circumstance that the Board of Appeal has a broad discretion to suspend proceedings before it does not take its assessment
outside the scope of judicial review. That circumstance does, however, restrict judicial review on the merits to ensuring
that there is no manifest error of assessment or misuse of powers.
In the present case, the applicant submits that the Board of Appeal’s decision not to suspend proceedings constitutes a misuse
of powers.
In that regard, it must be recalled that a decision may amount to a misuse of powers only if it appears, on the basis of objective,
relevant and consistent evidence, to have been taken for purposes other than those stated (Joined Cases T‑551/93 and T‑231/94
to T‑234/94
Industrias Pesqueras Campos and Others
v
Commission
[1996] ECR II‑247, paragraph 168, Case T‑30/00
Henkel
v
OHIM (Image of a detergent product)
[2001] ECR II‑2663, paragraph 70, and Case T‑247/01
eCopy
v
OHIM (ECOPY)
[2002] ECR II‑5301, paragraph 22). However, the applicant does not put forward any matter demonstrating that, by refusing
to suspend the procedure, the Board of Appeal used its powers for a purpose other than that for which they were conferred
on it, or that the non-suspension of proceedings was the result of a misuse of powers.
Accordingly, the applicant is wrong to allege that the contested decision is vitiated by a misuse of powers on the ground
that its request for suspension of the proceedings before the Board of Appeal leading to the contested decision was rejected.
In addition, the applicant essentially submits that the Board of Appeal’s decision not to suspend the proceedings in question
is vitiated by a manifest error of assessment.
In that regard, it should be recalled that, in the contested decision, one of the Board of Appeal’s reasons for not suspending
the proceedings was the lack of sufficient evidence that the earlier Benelux mark was challenged before the competent court
(see paragraph 61 above). The mere draft petition attached to the letter of 15 October 2007 in which the validity of the Benelux
mark is contested is not evidence of the actual fact of a challenge to the earlier Benelux mark before the competent court.
Accordingly, the Board of Appeal could base its decision to reject the request for suspension on that lack of evidence without
making a manifest error of assessment.
Further, even if it were established that an action was pending before a national court calling into question the earlier
mark on which the decision at issue was based, that fact would not, of itself, suffice to categorise the Board of Appeal’s
refusal to suspend proceedings as a manifest error of assessment. In exercising its discretion with respect to suspension
of proceedings, the Board of Appeal must comply with the general principles governing procedural fairness within a community
governed by the rule of law. Thus, in that exercise, the Board of Appeal must take into account not only the interests of
the party whose Community mark is contested, but also those of the other parties. The decision whether or not to suspend must
follow upon a balancing of the competing interests. In the present case, the intervener had a legitimate interest in obtaining,
promptly, a decision on the alleged invalidity of the applicant’s mark. Moreover, the applicant does not demonstrate that
the Board of Appeal determined the question of suspension taking into account considerations other than the balance of the
various interests. In view of the foregoing, the applicant has not demonstrated that the Board of Appeal was wrong to refuse
to suspend proceedings.
Moreover, if the applicant really took the view that the invalidity proceedings in the context of which it was challenging
the validity of the earlier Benelux mark constituted an imperative condition precedent to its dispute before OHIM, it was
for the applicant to bring those other proceedings and to wait until they reached their conclusion before filing its registration
application with OHIM.
For all the foregoing reasons, each of the applicant’s pleas must be rejected. Accordingly, the action must be dismissed in
its entirety.

Costs
Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they
have been applied for in the successful party’s pleadings.
As the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by
OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.
Dismisses the action;
2.
Orders Atlas Transport GmbH to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal
Market (Trade Marks and Designs) (OHIM) and Atlas Air, Inc.
Azizi
Cremona
Frimodt Nielsen
Delivered in open court in Luxembourg on 16 May 2011.
[Signatures]
*
Language of the case: German.