Case T‑727/16

Repower AG

v

European Union Intellectual Property Office

(EU trade mark — Decision of a Board of Appeal revoking an earlier decision — Article 80 of Regulation (EC) No 207/2009 (now Article 103 of Regulation (EU) 2017/1001) — General principle of law authorising the withdrawal of an unlawful administrative measure)

Summary — Judgment of the General Court (Fifth Chamber), 21 February 2018

Part A, Section 6, paragraph 1.2 of the European Union Intellectual Property Office’s (EUIPO) Guidelines for Examination, provides that ‘decisions on revocation/cancellation are made by the department or unit that made the entry or took the decision and can be appealed under Article 58(2) of Regulation No 207/2009’. It is true that those provisions from EUIPO’s Guidelines for Examination, concerning the power of revocation, do not mention the Boards of Appeal. However, such guidelines are merely a set of consolidated rules setting out the line of conduct which EUIPO itself proposes to adopt. Thus, their provisions cannot, as such, either be deemed to be of a higher order than the provisions of Regulations No 207/2009 on the European Union trade mark and No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark or indeed influence the interpretation of those regulations by the EU courts. On the contrary, they are designed to be read in accordance with the provisions of Regulation No 207/2009 and Regulation No 2868/95. It is therefore not possible to imply from the provisions of EUIPO’s Guidelines for Examination relied upon by the applicant that the Boards of Appeal do not have the power to revoke their decisions, since it is clear from Article 80(3) of Regulation No 207/2009 (old version), read in conjunction with Article 65 of that regulation, that the power of revocation provided for in Article 80(1) of Regulation No 207/2009 (old version) is also conferred on the Boards of Appeal. In addition, it should be borne in mind that the Court has already held that the fact that there is an appeal against the decision of the Commission pending before it at the time that that decision is revoked does not preclude its revocation. There is nothing to suggest that the solution would be any different in the case of a decision of a Board of Appeal. On the contrary, it must be held that, when the Court rules that there is no need to adjudicate following the revocation of the decision of a Board of Appeal that was contested before it, it is by implication recognising that the Boards of Appeal have the power to revoke their decisions and that they can do so even if an appeal has been lodged against those decisions before the Court. (see paras 39-41, 44)

The Court has already stated that a procedural error within the meaning of Article 80(1) of Regulation No 207/2009 on the European Union trade mark (old version) was an error with procedural consequences. Similarly, the Court has underlined that the examination of substantive questions, or an alteration of the decision taken by the Board of Appeal, could not be made on the basis of Article 80 of Regulation No 207/2009 (old version). In addition, in the judgment of 22 November 2011, mPAY24 v OHIM — Ultra (MPAY24), T‑275/10, the Court held that a corrigendum to a decision of a Board of Appeal, which added to that decision a paragraph relating to the descriptive character of the contested mark for the goods and services it covered, affected the actual substance of the corrected decision. The Court concluded not only that the corrigendum could not have been adopted on the basis of Rule 53 of Regulation No 2868/95 (now Article 102(1) of Regulation 2017/1001), which provides that ‘only linguistic errors, errors of transcription and obvious mistakes may be corrected’, but also that it could not have been adopted on the basis of Article 80 of Regulation No 207/2009 (old version) either, on the grounds that the conditions for the application of that article were not satisfied in that case, as no obvious procedural error had been made. In the case which gave rise to the judgment of 22 November 2011, MPAY24, T‑275/10, the paragraph added by the Board of Appeal in its corrigendum was intended to supplement the statement of reasons in the corrected decision. It is therefore clear from that judgment that supplementing the statement of reasons in a decision affects the actual substance of that decision and that an inadequate statement of reasons cannot be regarded as a procedural error within the meaning of Article 80(1) of Regulation No 207/2009 (old version). That conclusion is unaffected by the judgment of 18 October 2011, Hampers, crates and baskets, T‑53/10, relied on by European Union Intellectual Property Office (EUIPO). In paragraph 37 of that judgment, the Court stated that a breach of the rights of the defence was a mistake affecting the procedure that led to the adoption of a decision of a Board of Appeal and, therefore, was liable to vitiate the substance of that decision. The Court concluded from that statement and from the case-law, according to which the concept of ‘obvious error’ cannot apply to an error that could vitiate the substance of a decision, that a breach of the rights of the defence did not constitute an obvious error within the meaning of Article 39 of Regulation No 2245/2002 implementing Regulation No 6/2002 on Community designs, that could be rectified. Therefore, paragraph 37 of the judgment of 18 October 2011, Hampers, crates and baskets, T‑53/10, does not allow any conclusion to be drawn as to whether an inadequate statement of reasons constitutes an ‘obvious procedural error’ within the meaning of Article 80(1) of Regulation No 207/2009 (old version). (see paras 55-58)

As proceedings before the Boards of Appeal are administrative in nature, decisions adopted by the Boards of Appeal are administrative in nature and that, as a result, the Boards of Appeal may, in principle, rely upon the general principle of law that permits the withdrawal of an unlawful administrative act in order to withdraw their decisions. However, it must be established whether, in view of the fact that Regulation No 207/2009 on the European Union trade mark contains a provision relating to the revocation of decisions of European Union Intellectual Property Office (EUIPO) bodies, the revocation of a decision of a Board of Appeal may be based on that general principle of law. The judgment of 18 October 2011, Hampers, crates and baskets, T‑53/10, relied on by EUIPO, does not enable that question to be settled. Admittedly, in that judgment, after finding that it was not possible for a corrective decision of a Board of Appeal to be adopted on the basis of Article 39 of Regulation No 2245/2002 implementing Regulation No 6/2002 on Community designs, the Court examined whether the decision could have been adopted on the basis of the general principle of law permitting the retrospective withdrawal of an unlawful administrative act. However, neither in Regulation No 6/2002 on Community designs nor in Regulation No 2245/2002 is there any provision equivalent to Article 80 of Regulation No 207/2009, which governs the procedure for revocation of decisions adopted in relation to designs. In judgments of 12 September 2007, González y Díez v Commission, T‑25/04, paragraph 97, and of 18 September 2015, Deutsche Post v Commission, T‑421/07 RENV, paragraph 47, both delivered in State aid cases, after holding that it was not possible for the Commission to withdraw its decision on the basis of Article 9 of Regulation No 659/1999 laying down detailed rules for the application of Article 108 TFEU, which governs the ability to revoke decisions of the Commission, the Court pointed out that the Commission’s right to revoke a decision on State aid was not restricted solely to the situation referred to in Article 9 of that regulation, which was merely a specific expression of the general principle of law according to which retrospective withdrawal of an unlawful administrative act which had created subjective rights was permissible. The Court added that such a withdrawal may still be carried out provided that the institution which adopted the act complies with the conditions relating to reasonable time-limits and the legitimate expectations of beneficiaries of the act who have been entitled to rely on its lawfulness. It is therefore clear from the judgments referred to in the paragraph above that, even where the legislature has regulated the procedure for withdrawing the acts of an institution, that institution may withdraw an act on the basis of the general principle of law permitting the withdrawal of unlawful administrative acts subject to compliance with certain conditions. In addition, although, as the applicant points out, Article 83 of Regulation No 207/2009 provides that, ‘in the absence of procedural provisions in this Regulation, the Implementing Regulation, the fees regulations or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States’ and that, according to the case-law, that article applies only in the event of a lacuna or ambiguity in the procedural provisions, (see judgment of 13 September 2010, Travel Service v OHIM — Eurowings Luftverkehrs (smartWings), T‑72/08, not published, paragraph 76 and the case-law cited), that article nonetheless does not provide that, where there is a procedural provision, EUIPO cannot take those principles into consideration. In any event, given that the concept of an obvious procedural error is not defined in the aforementioned regulations, Article 80(1) of Regulation No 207/2009 (old version) is not without ambiguity and is therefore not sufficiently clear to exclude the application of Article 83 of Regulation No 207/2009. (see paras 61-66)

The general principle of law permitting the withdrawal of an unlawful decision is compatible with the principle of sound administration. It has been repeatedly held that it is lawful and in the interest of sound administrative management that an institution should correct the errors and omissions in a decision. What is more, while the principles of legal certainty and of the protection of legitimate expectations require the withdrawal of an unlawful measure to occur within a reasonable time and regard must be had to how far the person concerned might have been led to rely on the lawfulness of the measure, the fact remains that such withdrawal is, in principle, permitted. Finally, it should be noted that decisions of the Boards of Appeal do not have the force of res judicata since, inter alia, proceedings before the European Union Intellectual Property Office (EUIPO) are administrative and not judicial in nature. (see paras 84-86)

See the text of the decision. (see para. 72)

See the text of the decision. (see paras 74, 75)