Source: EURLEX
Language: en
Format: md

Case T‑629/18

mobile.de GmbH

v

European Union Intellectual Property Office

Judgment of the General Court (First Chamber), 7 May 2019

(EU trade mark — Application for an EU figurative mark representing a car in a speech bubble — Admissibility of the appeal before the Board of Appeal — Article 49(1) of Regulation (EU) 2017/1001 — Restriction of the list of goods or services covered by the mark applied for — Article 27(5) of Delegated Regulation (EU) 2018/625 — Extent of the examination to be carried out by the Board of Appeal — Obligation to adjudicate on a request for restriction)

1. EU trade mark — Appeals procedure — Action before the EU judicature — Procedural role of the Office — Right of the Office, although designated as the defendant, to support the applicant’s claims — Application devoid of purpose — None

   (European Parliament and Council Regulation 2017/1001, Art. 166(7))

   (see paragraphs 18-20)
2. EU trade mark — Appeals procedure — Appeal to a Board of Appeal — Competence of the Boards of Appeal — New full examination of the merits — Obligation to adjudicate on a request for restriction of the list of goods and services covered by the mark applied for

   (European Parliament and Council Regulation 2017/1001, Arts 49(1) and 68(1); Commission Regulation 2018/625, Arts 22(1)(b) and 27(5))

   (see paragraphs 24-30)

Résumé

In the judgment mobile.de v EUIPO (Representation of a car in a speech bubble) (T‑629/18), delivered on 7 May 2019, the General Court ruled on the handling of a request for restriction of the list of goods and services for which registration as a mark had been sought. That request had been submitted by the applicant during the proceedings before the Board of Appeal which followed the EUIPO examiner’s refusal to register the goods and services in part and it covered all the goods and services in respect of which registration had been refused. Rather than ruling that there was no longer any need to adjudicate, the Board of Appeal had declared the appeal inadmissible, on the ground that the document filed by the applicant, which referred to that request for restriction, did not meet the criteria necessary to be admitted as a written statement setting out the grounds of appeal because it did not contain any argument justifying the annulment of the examiner’s decision. EUIPO had endorsed the applicant’s heads of claim seeking annulment of the Board of Appeal’s decision.

In the first place, the Court pointed out that, despite the fact that EUIPO agreed with the applicant’s position, the Court was not relieved of the need to examine the lawfulness of the contested decision. The independence of the Boards of Appeal of EUIPO does not give EUIPO the power to amend or withdraw a decision made by a Board of Appeal, or indeed to give it instructions to that effect.

In the second place, the Court recalled that a trade mark applicant may, at any time, restrict the list of goods or services contained in his trade mark application including, therefore, during proceedings before the Board of Appeal. Since the request for restriction of the list of goods and services was submitted within the prescribed period for filing a written statement setting out the grounds of appeal, the Board of Appeal was under an obligation to adjudicate on that request, irrespective of whether such a statement had been filed.

Therefore, the Court found that the Board of Appeal had, by failing to adjudicate on that request for restriction, infringed Article 49(1) of Regulation 2017/1001, (
[1](#t-ECR_62018TJ0629_RES_EN_01-E0001)
) read in conjunction with Article 27(5) of Delegated Regulation 2018/625, (
[2](#t-ECR_62018TJ0629_RES_EN_01-E0002)
) and it annulled the contested decision.

---

(
[1](#c-ECR_62018TJ0629_RES_EN_01-E0001)
) Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark ([OJ L 154, 16.6.2017, p. 1](./../../../legal-content/EN/AUTO/?uri=OJ:L:2017:154:TOC)).

(
[2](#c-ECR_62018TJ0629_RES_EN_01-E0002)
) 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 L 104, 24.4.2018, p. 1](./../../../legal-content/EN/AUTO/?uri=OJ:L:2018:104:TOC)).

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