Case T‑265/17

ExpressVPN Ltd

v

European Union Intellectual Property Office

(EU trade mark — International registration designating the European Union — Figurative mark EXPRESSVPN — Absolute ground for refusal — Application for alteration — Single head of claim — Inadmissibility)

Summary — Order of the General Court (Ninth Chamber), 1 February 2018

EU trade mark — Appeal procedure — Action before the EU judicature — Jurisdiction of the General Court — Alteration of a decision of EUIPO — Assessment in the light of the powers conferred on the Board of Appeal — Single head of claim seeking alteration

(Council Regulation No 207/2009, Arts 45, 58(1), 64(1), 65(3), 131 and 132(1))

As the applicant has emphasised, in its observations on the plea of inadmissibility, that it was seeking only the ‘alteration’ of the contested decision, ‘having the effect that the [mark will be registered]’, it is not possible for the Court to interpret that single head of claim as seeking both the annulment and the alteration of that decision.

The Court has already held that, since the annulment of all or part of a decision constitutes a necessary prerequisite in order to allow an application for alteration of a decision within the meaning of Article 65(3) of Regulation No 207/2009 on the European Union trade mark (now Article 72(3) of Regulation 2017/1001), such an application may not be granted where there is no claim for annulment of the contested decision.

In any event, in so far as the applicant’s application requests that ‘the [mark applied for] will proceed to be added to the European Union trade mark register by [the European Union Intellectual Property Office (EUIPO)]’, it should be borne in mind that the Court’s power to alter decisions operates to the effect that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation No 207/2009.

Accordingly, the admissibility of a head of claim seeking alteration by the Court of the decision of a Board of Appeal must be assessed in the light of the powers conferred on that Board by Regulation No 207/2009.

It should be noted that, first, under Article 64(1) of Regulation No 207/2009 (now Article 71(1) of Regulation 2017/1001), following the examination as to the allowability of an appeal brought against a decision of one of the departments listed in Article 58(1) of that regulation (now Article 66(1) of Regulation 2017/1001), the Board of Appeal ‘may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution’. Accordingly, the Board of Appeal does not have the power to issue directions to the department whose decision it has examined.

Second, it should be borne in mind that the registration of an EU trade mark stems from the finding that the conditions laid down in Article 45 of Regulation No 207/2009 (now Article 51 of Regulation 2017/1001) are satisfied, although the departments of EUIPO responsible for registration of EU trade marks do not adopt any formal decision in that respect which might be the subject of an appeal.

Article 45(1) of Regulation No 207/2009 provides that, ‘where an application meets the requirements set out in this Regulation and where no notice of opposition has been given within the period referred to in Article 41(1) or where any opposition entered has been finally disposed of by withdrawal, rejection or other disposition, the trade mark and the particulars referred to in Article 87(2) shall be recorded in the Register’ (Article 41(1) of Regulation No 207/2009 now being Article 46(1) of Regulation 2017/1001, and Article 87(2) of Regulation No 207/2009 now being Article 111 of Regulation 2017/1001).

Pursuant to Article 131 of Regulation No 207/2009 (now Article 160 of Regulation 2017/1001), an examiner is to be responsible for taking decisions on behalf of EUIPO in relation to an application for registration of an EU trade mark, including the matters referred to in Articles 36, 37 and 68 of that regulation (now Articles 41, 42 and 76 of Regulation 2017/1001), except in so far as an Opposition Division is responsible. In addition, pursuant to Article 132(1) of that regulation (now Article 161(1) of Regulation 2017/1001), an Opposition Division is to be responsible for taking decisions on an opposition to an application to register an EU trade mark.

It follows from Articles 45(1), 131, and 132(1) of Regulation No 207/2009 that the powers conferred on the examiner and on the Opposition Division do not include finding that all the conditions for registration of an EU trade mark laid down in Article 45 of Regulation No 207/2009 are satisfied.

Accordingly, in the context of an appeal brought against a decision of the examiner or the Opposition Division under Article 58(1) of Regulation No 207/2009, a Board of Appeal can be called upon to rule, in the light of the powers conferred on it by Article 64(1) of that regulation, only on some of the conditions for registration of an EU trade mark, that is to say, either on the compliance of the application for registration with the provisions of that regulation, or on the outcome of any opposition to that application.

Therefore, it is clear that a Board of Appeal does not have the power to take cognisance of an application requesting that it register an EU trade mark.

In those circumstances, it is similarly not for the Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect.

(see paras 14-25)