Judgment — ECLI:EU:T:2009:238
Date: 2009-07-01
Language of the case: German
Court formation: First Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Admissibility and examination of applications, forms of order sought and pleas in law;General
Procedure: Action for annulment - unfounded;Action for annulment - inadmissible
Origin: Germany

summary of the facts, not only to the applicant’s notice of appeal of 16 May 2007 concerning the partial revocation of its trade mark but also to the observations submitted subsequently (paragraph 6 of the contested decision). 61 The Board of Appeal thus refers to the observations of 11 June, 3 and 10 July 2007, which are the only observations subsequent to the notice of appeal of 16 May 2007 which were sent by the applicant to OHIM and which were therefore indeed taken into consideration by the Board of Appeal. 62 Furthermore, the contested decision states that the decision of the Cancellation Division of 21 March 2007 concerned solely ‘the part of the … decision on costs’. It therefore confirms, by implication but necessarily, the possibility of partially revoking the decision of 21 December 2006, used by the Cancellation Division, and thereby responds to the applicant’s argument in that regard. 63 It follows that the applicant has not shown a breach of its right to be heard, with regard in particular to the question of the time-limits for filing an appeal and whether partial revocation of a decision is possible. 64 Therefore, the third plea must be rejected. The fourth plea, alleging procedural irregularities – Arguments of the parties 65 The applicant alleges breach of Article 60a(4) of Regulation No 40/94 (now Article 62(4) of Regulation No 207/2009) and highlights, in essence, a lack of transparency in the internal working of OHIM. It also submits that OHIM registered the partial removal from the register of the trade mark OKATECH without taking into account its pending appeal, in breach of Article 77a of Regulation No 40/94, and that OHIM notified it of that partial removal from the register directly and not via its representative. Moreover, according to the applicant, although the Board of Appeal took the view that it could declare the applicant’s appeal of 16 May 2007 inadmissible on the ground that it was out of time, it should, in accordance with Rules 49 and 51 of Regulation No 2868/95, have ordered the reimbursement of the appeal fees since they were also paid out of time. 66 OHIM contests the applicant’s arguments. – Findings of the Court 67 Firstly, with regard to the applicant’s complaints alleging various procedural irregularities committed during the proceedings before OHIM, it should be borne in mind that, under Article 63(1) of Regulation No 40/94 (now Article 65(1) of Regulation No 207/2009), actions may be brought before the Community judicature only against decisions of the Boards of Appeal. It must accordingly be held that it is only pleas directed against the decision of the Board of Appeal itself which are admissible in such an action (Salvita, paragraph 59 above, paragraph 59). 68 Even if the procedural irregularities alleged, that is to say, the lack of transparency of the decision-making process and the registration of the partial removal from the register of the trade mark, were established, the applicant’s complaints are not directed against the contested decision of the Board of Appeal. 69 Those complaints must therefore be rejected as inadmissible. 70 Secondly, with regard to the complaint alleging breach of Article 60a(4) of Regulation No 40/94, concerning revision of decisions in inter partes cases, it must be borne in mind that the purpose of actions brought before the Court under Article 63(2) of Regulation No 40/94 is to obtain a review of the legality of decisions of the Boards of Appeal. The review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 11 December 2007 in Case T‑10/06 Portela & Companhia v OHIM – Torrens Cuadrado and Sanz(Bial), not published in the ECR, paragraph 61, and the case-law cited). In addition, under Article 135(4) of the Rules of Procedure, the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal (Bial, paragraph 62). 71 In the present case, apart from the fact that the revision procedure under Article 60a of Regulation No 40/94 is not at issue, it must be noted that no such argument was raised before the Board of Appeal. 72 Accordingly the complaint alleging breach of Article 60a(4) of Regulation No 40/94 is also inadmissible. 73 Thirdly, with regard to the complaint alleging breach of Rules 49 and 51 of Regulation No 2868/95 and alleging that the contested decision should have ordered reimbursement of the appeal fee also paid out of time, it must be borne in mind that Rule 49(3) of Regulation No 2868/95 provides that ‘[i]f the fee for appeal has been paid after expiry of the period for the filing of appeal pursuant to Article 59 of [Regulation No 40/94], the appeal shall be deemed not to have been filed and the appeal fee shall be refunded to the appellant’. 74 In the present case, the applicant’s appeal of 16 May 2007 referred expressly to the decision of partial revocation of 21 March 2007 (see paragraph 8 above) and was filed within the period of two months from that decision. Accordingly, the appeal fee was not paid by the applicant after expiry of the time-limit of two months laid down in Article 59 of Regulation No 40/94. 75 Moreover, Rule 51(b) of Regulation No 2868/95 provides for reimbursement of the appeal fee where the Board of Appeal allows the appeal and considers such reimbursement equitable by reason of a ‘substantial procedural violation’. That is not the case here since, on the contrary, the Board of Appeal dismissed the applicant’s appeal. 76 The complaint alleging breach of Rules 49 and 51 of Regulation No 2868/95 must therefore be rejected as unfounded. 77 Accordingly, the fourth plea in law must be rejected in its entirety as in part inadmissible and in part unfounded. The fifth plea, alleging that the partial revocation of the trade mark is unfounded – Arguments of the parties 78 The applicant submits that it furnished proof of use of the trade mark OKATECH for the services in question and takes the view that the Board of Appeal should have allowed its appeal and annulled the decisions of the Cancellation Division of 21 December 2006 and 21 March 2007. 79 OHIM contends that this plea is inadmissible since only pleas directed against the decision of the Board of Appeal are admissible. – Findings of the Court 80 It should be borne in mind that, in the contested decision, the Board of Appeal declared the applicant’s appeal inadmissible and therefore did not rule on the question of the partial revocation of its trade mark. 81 The Court cannot substitute itself for OHIM in that regard and therefore cannot rule on the applicant’s arguments on that point (judgment of 4 October 2007 in Case T‑481/04 Advance Magazine Publishers v OHIM – Capela & Irmãos(VOGUE), not published in the ECR, paragraph 22). 82 It follows that the fifth plea, since it is put forward in support of an inadmissible head of claim (see paragraphs 19 to 21 above), must be rejected as inadmissible. 83 It follows from all of the foregoing considerations that the action must be dismissed. Costs 84 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 forms of order sought by OHIM and the intervener. On those grounds, THE COURT OF FIRST INSTANCE (First Chamber) hereby: 1. Dismisses the action; 2. Orders Okalux GmbH to pay the costs. Tiili Dehousse Wiszniewska-Białecka Delivered in open court at Luxembourg on 1 July 2009. [Signatures] * Language of the case: German.