62020TJ0727_RES
Case T‑727/20 RENV
Nigar Kirimova
v
European Union Intellectual Property Office
Judgment of the General Court (Second Chamber, Extended Composition) of 25 September 2024
(Internal market – Representation before EUIPO – Entry on the list of professional representatives – Refusal of the request – Requester who is not a national of a Member State of the EEA – Exemption from the nationality requirement – Article 120(4)(b) of Regulation (EU) 2017/1001 – Concept of highly qualified professional – Principle of legal certainty – Right to be heard – Alteration – Lack of jurisdiction of the General Court)
EU trade mark – Procedural provisions – Representation before EUIPO – Entry on the list of professional representatives – Requirements – Nationality of a Member State of the EEA – Exemption – Condition – Status of highly qualified professional – Concept – Acquisition of skills in a State other than the Member State of entitlement – Whether permissible
(European Parliament and Council Regulation 2017/1001, Art. 120(4)(b))
(see paragraphs 30-38)
Acts of the institutions – Temporal application – Procedural rules – Substantive rules – Distinction – Guidelines of the European Union Intellectual Property Office (EUIPO) – Application of the guidelines in force at the time of the facts at issue – No such application – Breach of the principle of legal certainty
(see paragraphs 46, 50, 62-66)
Résumé
In this judgment, the General Court interprets, for the first time, the concept of ‘highly qualified professional’ set out in Article 120(4)(b) of Regulation 2017/1001 (
1
) for the purpose of entering a person on the list of professional representatives in trade mark law.
On 10 October 2019, Ms Kirimova, a national of the Republic of Azerbaijan, submitted to the European Union Intellectual Property Office (EUIPO) an application to be entered on the list of professional representatives at that office, while also requesting an exemption from the requirement to be a national of one of the Member States of the European Economic Area (EEA), on the basis of Article 120(4)(b) of Regulation 2017/1001.
EUIPO informed the applicant by letter that her request was inadmissible. In response to that letter, the applicant submitted observations. By decision of 30 September 2020 (‘the contested decision’), the Executive Director of EUIPO denied the applicant’s request.
Findings of the Court
In the first place, the Court observes that the concept of ‘highly qualified professional’ is not defined in any regulation and interprets that concept by taking account of the wording of the provision in which it appears, the context in which it is used and the aims of the legislation of which it is part.
As regards the wording and context of the provision at issue, the Court notes, first, that the concept of ‘highly qualified professional’ within the meaning of Article 120(4)(b) of Regulation 2017/1001 refers to a specialist with particularly advanced qualities, skills, abilities or knowledge in trade mark matters and does not appear to imply any restriction with respect to the manner in which those are acquired. Second, it is apparent from that provision that the three requirements for entering a person on the list of professional representatives as laid down in Article 120(2) of Regulation 2017/1001, namely the nationality requirement, the place requirement and the entitlement requirement, are not only cumulative but also autonomous in nature. The entitlement requirement must be fulfilled both by natural persons who fulfil the nationality requirement and by natural persons who request an exemption from the nationality requirement on account of their status as a ‘highly qualified professional’. It therefore appears that that status is independent of, and additional to, the entitlement requirement and that it has no connection with the conditions necessary for fulfilling that requirement. Accordingly, the qualities, skills, abilities or knowledge capable of demonstrating the status of ‘highly qualified professional’ may have been acquired by the non-EEA national, both in a Member State of the EEA and in a third country, before or after obtaining the entitlement in the EEA.
As regards the aims pursued by the rules on representation before EUIPO, namely of ensuring a smooth, effective and efficient operation of the EU trade mark system, (
2
) the Court observes that the pursuit of such objectives does not presuppose that the status of ‘highly qualified professional’ is conditional on a certain amount of professional experience in a given Member State. On the contrary, it appears to be irrelevant whether the particularly advanced qualities, skills, abilities or knowledge possessed by the specialist requesting the exemption were acquired in one Member State rather than another, or even in a third country, since a requester who is not a national of a Member State of the EEA must also fulfil the place requirement and the entitlement requirement which require a connection with a Member State of the EEA.
Thus, the requirement relating to the need for professional experience in the Member State of entitlement applied by the Executive Director in the contested decision is based on an overly restrictive and incorrect interpretation of the concept of ‘highly qualified professional’. None of those criteria for interpretation permits the inference that that status requires, as a necessary condition, professional experience in the Member State of entitlement.
In the second place, the Court examines whether the Executive Director complied with the principle of legal certainty in its assessment of the applicant’s request. First of all, it points out that the Executive Director must comply with the rules of conduct set out in the EUIPO guidelines relating to the application of Article 120(4)(b) of Regulation 2017/1001 and comply with the principles governing the temporal application of those rules, in accordance with the principle of legal certainty. That said, it cannot be ruled out that the Executive Director may depart from those rules and give reasons which take account of the principle of equal treatment, or that a requester may demonstrate the status of ‘highly qualified professional’ on the basis of factors other than those set out in the EUIPO guidelines.
Next, the Court notes that the 2020 EUIPO guidelines lay down criteria for assessing requests for exemption from the nationality requirement which were not included in the 2017 EUIPO guidelines and therefore set out a new, and more restrictive, practice of the Executive Director in that regard. Those differences are liable to have a significant impact both on the Executive Director’s assessment of a request for an exemption and on the content of such a request, given that the guidance set out in the EUIPO guidelines enables requesters to anticipate on the basis of which factors a request for an exemption may be assessed. Thus, demonstrating that a person holds the status of ‘highly qualified professional’ in the light of ‘exceptional circumstances’ involving the fulfilment of the requirements set out in the 2020 EUIPO guidelines is manifestly different in scope from demonstrating that status in the light of relevant ‘special circumstances’ within the meaning of the 2017 EUIPO guidelines.
Lastly, the Court observes that, in the contested decision, although he did not formally specify which EUIPO guidelines were applied, the Executive Director examined the applicant’s request in the light of the requirements and circumstances set out in the 2020 EUIPO guidelines. In accordance with the case-law relating to the principle of legal certainty, it is the rules of conduct in force at the time of the facts at issue, that is to say, at the time when the request for an exemption was submitted, which must be applied when assessing that request, and not those in force at the time when the contested decision was adopted. In the present case, at the time of the request, the 2020 EUIPO guidelines had not yet been adopted; the guidelines in force at that time were those of 2017.
In the light of those considerations, the Court concludes that the Executive Director failed to observe the principle of legal certainty by assessing the applicant’s request for an exemption in the light of the rules of conduct set out in the 2020 EUIPO guidelines, which were not in force at the time when the request was submitted.
(
1
)	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).
(
2
)	As is apparent from recital 43 of Regulation 2017/1001 and from recital 18 of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).