Judgment — ECLI:EU:T:2003:327
Date: 2003-12-03
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: Rights of the defence;Word marks;Actions before the Community Courts;Acquisition of distinctive character through use;Appeals before the Boards of Appeal
Procedure: Action for annulment - unfounded
Origin: Germany

summary form, the arguments put forward by the applicant against the grounds stated in the examiner's decision and, in particular, stated why it was not possible to find on the basis of the evidence produced during the proceedings before the examiner that the mark applied for had become distinctive as a result of the use made of it in the Member States other than Germany. 95. By failing to provide such explanations, the Board of Appeal failed to comply with the duty to state reasons incumbent upon it under Article 73 of Regulation No 40/94 and Rule 50(2)(h) of Regulation No 2868/95. 96. However, that finding is not sufficient to entail the annulment of the contested decision. 97. Applicants have no legitimate interest in the annulment of a decision on the ground of a procedural defect where annulment of the decision can only lead to the adoption of another decision identical in substance to the decision annulled (see, to that effect, Case 117/81 Geist v Commission [1983] ECR 2191, paragraph 7; Case T-43/90 Díaz García v Parliament [1992] ECR II-2619, paragraph 54; and Case T-261/97 Orthmann v Commission [2000] ECR-SC I-A-181 and II-829, paragraphs 33 and 35). In the present case, it is clear from paragraph 68 above that it has not been established that the mark applied for has become distinctive through use in accordance with Article 7(3) of Regulation No 40/94. 98. Accordingly, the applicant has no legitimate interest in annulment of the contested decision, which is unlawful only as a result of a breach of the duty to state reasons and annulment of which could therefore lead only to the adoption of a new decision identical in substance. 99. The present plea must therefore be rejected as irrelevant. 100. Accordingly, it is unnecessary to examine the plea alleging infringement of Article 7(1)(b) of Regulation No 40/94. According to well-established case-law, it is sufficient for one of the absolute grounds of refusal to apply for the sign to be unable to be registered as a Community trade mark (Case T-24/00 Sunrider v OHIM (VITALITE) [2001] ECR II-449, paragraph 28, and BioID, cited above, paragraph 50). 101. Consequently, the action must be dismissed. Costs 102. Under Article 87(2) of the Rules of Procedure of the Court of First Instance, 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 the first subparagraph of Article 87(3) of the Rules of Procedure, the Court may order that the costs be shared where the circumstances are exceptional. 103. In the present case, the applicant has been unsuccessful but the contested decision is unlawful on the ground of a breach of the duty to state reasons. Therefore, the applicant must be ordered to bear three quarters of its own costs and pay three quarters of those of the Office and the Office must be ordered to bear one quarter of its own costs and pay one quarter of those of the applicant. On those grounds, THE COURT OF FIRST INSTANCE (Second Chamber) hereby: 1. Dismisses the action; 2. Orders the applicant to bear three quarters of its own costs and pay three quarters of those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs); 3. Orders the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to bear one quarter of its own costs and pay one quarter of those incurred by the applicant. Forwood Pirrung Meij Delivered in open court in Luxembourg on 3 December 2003. H. Jung J. Pirrung Registrar President 1: Language of the case: German.