Judgment — ECLI:EU:T:2004:116
Date: 2004-04-28
Language of the case: German
Court formation: Second Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Statement of reasons;Appeals before the Boards of Appeal;Costs
Procedure: Action for annulment - unfounded

summary assessment. The applicant claims that that assessment criterion is applicable in the present case on the basis of Article 79 of Regulation No 40/94. The Boards of Appeal expressly refrained from assessing the chances of success of the opposition. Accordingly, the contested decisions were not equitable in so far as they ordered a mechanical division of the costs between the parties to the opposition proceedings. 44 The applicant asserts that, had the Boards of Appeal assessed, even summarily, the chances of success of the opposition, it would have to have concluded in both cases that all costs of the opposition proceedings should have been borne by the other party to the proceedings before the Board of Appeal. According to the applicant, the oppositions filed by those parties were bound to fail. 45 The applicant refers in this regard, first, to the clear difference in its view between the trade marks applied for and the trade marks on which the oppositions were based. 46 More particularly with regard to Case T-124/02, the applicant refers, second, to the lack of distinctiveness of the element ‘vita’. Lastly, it submits that the goods covered by the trade mark application after it had been restricted are not similar to those in respect of which the trade marks on which the opposition was based were registered. 47 In Case T-156/02, the applicant further refers to the lack of evidence of genuine use of the trade marks on which the opposition was based and of the legal validity of some of those trade marks. 48 Furthermore, the applicant claims that the Boards of Appeal infringed the principle of proportionality by ordering one party to bear 50% of the costs of the opposition proceedings, when that party had only withdrawn eight categories of goods (in Case T-156/02), and only one category of goods (in Case T-124/02), out of a total of 50 to 60 categories of goods referred to in the trade mark applications. 49 In that context the applicant deploys a series of arguments of a general nature which it says undermine the division of costs ordered by the Boards of Appeal. First, it states that the effect of that solution is that there is no penalty for a manifestly unfounded opposition. Second, undertakings will be encouraged to file notice of opposition against the registration of a trade mark for all the products covered by the application since they will face no unfavourable consequence in costs where the opposition proceedings come to an end prematurely. Third, the applicant asserts that the applicants for a trade mark have no incentive to bring to an end opposition proceedings which are clearly bound to fail as a result of the restriction of the list of goods in respect of which registration of the trade mark is sought, since that would entail a decision on the costs of the proceedings less favourable than that which would be taken where OHIM makes a finding on the opposition in the course of inter partes proceedings. 50 OHIM replies that the Boards of Appeal correctly applied the combined provisions of Article 81(2) and (3) of Regulation No 40/94. It submits that Article 81(2) of Regulation No 40/94 makes no provision as to the requirements to be satisfied by a decision on the division of costs. Accordingly, both the application of the rule of equity laid down by that provision and any decision adopted pursuant to that rule in a particular case fall within the discretionary power of the Boards of Appeal, since the Court of First Instance’s power of review is restricted to the issue of whether there has been any abuse of that power. It submits that in the present case there is no evidence on which to conclude that the Boards of Appeal abused their discretionary power. 51 In OHIM’s view, the situation in the present cases, characterised by the fact that both parties to the opposition proceedings brought those proceedings to an end, one by the partial withdrawal of the trade mark application and the other by the withdrawal of the opposition, is similar to that in which the parties each fail on one or more heads. 52 More particularly, OHIM submits that the Boards of Appeal were under no obligation to assess the chances of success of the opposition. It submits in this regard that neither the rights of the Member States in relation to administrative and judicial proceedings nor the Rules of Procedure of the Court of First Instance require that, for the purposes of a decision on the costs of proceedings which have been brought to an end by certain steps taken by the parties, it is necessary to take account of the chances of success of the applications in question or even of the particular stage of the proceedings. – Findings of the Court 53 Pursuant to Article 81(3) of Regulation No 40/94, the party who terminates the proceedings by withdrawing the Community trade mark application, the opposition, the application for revocation of rights, the application for a declaration of invalidity or the appeal, or by not renewing registration of the Community trade mark or by surrendering the Community trade mark, is to bear the fees and the costs incurred by the other party as stipulated in paragraphs 1 and 2. Article 81(1) provides that the losing party in opposition proceedings, proceedings for revocation, proceedings for a declaration of invalidity or appeal proceedings is to bear the fees incurred by the other party as well as all costs incurred by him essential to the proceedings. 54 It follows that, in opposition proceedings, where a party brings such proceedings to an end by abandoning his claims, in particular by withdrawing the trade mark application or the opposition, it is similar to a losing party and therefore must in principle bear the fees and costs incurred by the other party. The only exception to that rule is where Article 81(2) of Regulation No 40/94 applies, which states that ‘where each party succeeds on some and fails on other heads, or if reasons of equity so dictate, the Opposition Division, Cancellation Division or Board of Appeal shall decide a different apportionment of costs’. Whilst that provision envisages two distinct cases giving rise to a division of costs different from that laid down by Article 81(1), it does not preclude those two cases occurring simultaneously. Thus, where the costs are divided on the basis that each party succeeds on some and fails on other heads, OHIM may take into consideration reasons of equity where a division which fails to take account of the relative success of the heads of claim leads to an inequitable outcome. Accordingly, OHIM enjoys a wide margin of discretion in the actual division of costs between the parties. 55 In the present cases the trade mark applications were partially withdrawn and the oppositions were also partially withdrawn in so far as the opposition proceedings had not already become devoid of purpose following the restriction of the trade mark applications. Accordingly, each party partially abandoned its claims. 56 That situation must be equated to that in which each party succeeds on some and fails on other heads. In the situation covered by Article 81(3) of Regulation No 40/94, in which OHIM is not called upon to make a finding on the opposition because of the withdrawal of the trade mark application or the opposition, by definition there can be no losing party. In that case therefore the reference to Article 81(2) only makes sense if those combined provisions are interpreted as meaning that the situation in which each of the parties to the administrative proceedings fails in part is equated to that in which each of those parties partially abandons its claims. Moreover, it would be inconsistent not to equate a party who partially abandons its claims with one who partially fails because, as stated at paragraph 54 above, the combined provisions of Article 81(1) and (3) of Regulation No 40/94 draw such equivalence in the case of a party which abandons all of its claims. 57 Accordingly, in the present case, the Boards of Appeal were entitled to have regard to equity when making their decisions on the actual division of the costs between the parties since they have a wide margin of discretion in that regard. 58 Contrary to the applicant’s submission on this point, in dividing the costs between the parties, the Boards of Appeal were not required, even summarily, to assess the chances of each party prevailing in those proceedings. It would be contrary to procedural economy to assess the merits of the opposition solely for the purposes of dividing the costs. 59 Furthermore, it is true that in the two cases, the reduction of the lists of goods contained in the trade mark applications merely concerned only a small number of all goods referred to therein, and that therefore that restriction made the opposition procedures devoid of purpose only to a limited extent. By contrast the withdrawals of opposition concerned a substantial number of the goods covered by the trade mark applications. Accordingly, the other parties to the proceedings before the Boards of Appeal abandoned their claims to a greater extent than did the applicant. 60 Nevertheless the Boards of Appeal were also not required, in dividing the costs between the parties to the opposition proceedings, to take account of the exact extent to which each of the parties had withdrawn its claims. As stated at paragraph 54 above, they enjoy a wide margin of discretion in the matter. It should also be pointed out in that context that, pursuant to Article 2.5 of Commission Regulation (EC) No 2869/95 of 13 December 1995 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 1995 L 303, p. 33), the amount of the opposition fee, which is a recoverable cost under the combined provisions of Article 81(1) of Regulation No 40/94 and Rule 94(6) of Regulation No 2868/95, does not depend on the number of goods in respect of which the party filing notice of opposition wishes to prevent registration of the trade mark applied for. In accordance with those provisions, the same applies in respect of other recoverable costs such as, inter alia, the costs of representation. Therefore, the fact that a party giving notice of opposition withdraws its claims to a greater extent than does the applicant for the trade mark does not mean that equity requires that party to bear a greater share of the costs of the opposition proceedings. 61 Therefore, by ordering, in Case T-124/02 that each party to the opposition proceedings bear its own costs incurred in the opposition proceedings and on appeal and, in Case T-156/02, that each party to the opposition proceedings bear half of the opposition fee as well as its own costs incurred in the opposition proceedings and on appeal, the Boards of Appeal have not infringed the requirements of equity. 62 It follows that the second plea in law must be rejected. 63 Consequently, the claims for annulment of the contested decisions in so far as they order that the applicant bear its own costs incurred in the opposition proceedings and on appeal must be rejected. The claim for reimbursement of the appeal fees in Case T-124/02 Arguments of the parties 64 The applicant submits that the contested decision in Case T-124/02 infringes Rule 51 of Regulation No 2868/95. It claims that the Board of Appeal wrongly failed to order reimbursement to the applicant of the appeal fees, when the decision of the opposition division was flawed by a substantial procedural violation. It asserts in this connection that the Opposition Division did not take account of or even refer to the applicant’s argument, set out in its letter of 19 January 1999, that account should be taken of the extent of the opposition in the future decision in respect of the costs of the opposition proceedings. 65 The applicant also criticises the Second Board of Appeal for not complying with the duty to state reasons by failing to set out in the contested decision in Case T‑124/02 the reasons for which it did not grant to the application for reimbursement of the appeal fee which the applicant had put forward in its written statement setting out the grounds of the appeal filed with OHIM. 66 OHIM replies, first, that, in the written statement setting out the grounds of the appeal filed with OHIM, the applicant did not rely in support of its application for reimbursement of the appeal fees on substantial procedural violation by the Opposition Division. By contrast, OHIM says the applicant merely criticised the Opposition Division in that statement for having erred in its interpretation of Article 81(3) of Regulation No 40/94. Moreover, there was no evidence on which to conclude that the Opposition Division’s decision was flawed by a substantial procedural violation. 67 OHIM further considers that since the conditions for the reimbursement of the appeal fees are plainly not satisfied in the present case, the Second Board of Appeal was under no obligation to state why it did not grant the application to that end. In OHIM’s view, the decision of the Board of Appeal on the appeal fee is implicitly contained in its decision on costs in general. OHIM states in that context that the application of Rule 51 of Regulation No 2868/95 presupposes that the party concerned has wholly prevailed. In the present case the Board of Appeal had only partially upheld the applicant’s claim that the other party to the proceedings before the Board of Appeal should bear the costs of the opposition proceedings. Findings of the Court 68 It should be noted in connection with the plea in law alleging infringement of Rule 51 of Regulation No 2868/95 that, pursuant to that provision, the reimbursement of appeal fees is to be ordered in the event of interlocutory revision or where the Board of Appeal deems such an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation. In the event of interlocutory revision, reimbursement is to be ordered by the department whose decision has been impugned, and in other cases by the Board of Appeal. 69 It is clear from the wording of that provision that the decision to order reimbursement of the appeal fees is made automatically without the need for the party bringing the appeal before OHIM to include any such claim in the form of order it seeks. 70 That does not mean however that the Board of Appeal is required every time it annuls a decision to consider, of its own initiative, whether that decision is flawed by a substantial procedural violation such as to justify the application of Rule 51 of Regulation No 2868/95. Such an obligation cannot arise either from an application for reimbursement of the appeal fee made by a party where that application is unsupported by specific allegations to the effect that there has been a substantial procedural violation. 71 Since in its written statement setting out the grounds of appeal the applicant did not put forward any substantial procedural violation, the Board of Appeal did not infringe Rule 51 of Regulation No 2868/95 by implicitly rejecting the applicant’s claim. The present plea in law must therefore be rejected. 72 As regards the plea in law alleging an infringement of the duty to state reasons, it should be noted that, under the first sentence of Article 73 of Regulation No 40/94, decisions of OHIM are to state the reasons on which they are based. That duty has the same scope as that enshrined in Article 253 EC. 73 It is settled case-law that the duty to give reasons for a decision has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Community judicature to exercise its power to review the legality of the decision (see, in particular, Case C-350/88 Delacre and Others v Commission [1990] ECR I-395, paragraph 15, Case T‑188/98 Kuijer v Council [2000] ECR II-1959, paragraph 36, and Case T-388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS) [2002] ECR II‑4301, paragraph 59). Whether a statement of reasons satisfies those requirements is a question to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (Case C-122/94 Commission v Council [1996] ECR I-881, paragraph 29, and Kuijer, paragraph 36). 74 In the present case, it is necessary to consider whether, as the applicant claims, the Board of Appeal infringed the duty to give reasons by failing to state why it had not ordered the reimbursement of the applicant’s appeal fee when the applicant had applied for that reimbursement in the written statement setting out the grounds of its appeal. 75 It is true that the Board of Appeal would have been required to respond, albeit summarily, to any allegations made by the applicant seeking to show that the conditions set out in Rule 51 of Regulation No 2868/95, and in particular that of the existence of a substantial procedural violation by the department of OHIM which made the decision at first instance, were satisfied in the present case. However, it is clear that the applicant put forward no such evidence in its written statement setting out the grounds of appeal. On the contrary, as OHIM rightly pointed out, it did no more than submit that the Opposition Division had erred in law in its interpretation of Article 81(3) of Regulation No 40/94. 76 It follows that the Board of Appeal has not infringed the duty to give reasons by failing to state why it had not ordered reimbursement of the appeal fees to the applicant. Accordingly, the plea in law alleging infringement of the first sentence of Article 73 of Regulation No 40/94 must also be rejected. 77 The applicant’s claim for the annulment of the contested decision in so far as it did not order reimbursement of the appeal fees to the applicant is therefore unfounded. 78 It follows from all of the foregoing that the actions must be dismissed in their entirety. Costs 79 Under Article 87(2) 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the defendant. On those grounds, THE COURT OF FIRST INSTANCE (Second Chamber) hereby: 1. Dismisses the actions; 2. Orders the applicant to pay the costs. Forwood Pirrung Meij Delivered in open court in Luxembourg on 28 April 2004. H. Jung N.J. Forwood Registrar President 1 – Language of the case : German.