Edwin Co. Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).
Date: 2011-07-05
49. As regards the procedural arrangements laid down by the implementing regulation in the case of an application pursuant to Article 52(2) of Regulation No 40/94, based on an earlier right protected under national law, Rule 37 of the implementing regulation provides, in a situation such as that in the present case, that the applicant must provide particulars showing that he is entitled under the national law applicable to lay claim to that right.
50. That rule requires the applicant to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application, in order to be able to have the use of a Community trade mark prohibited by virtue of an earlier right, but also particulars establishing the content of that law.
51. Where, as in the present case, an application for a Community trade mark to be declared invalid is based on an earlier right protected by a rule of national law, the competent OHIM bodies must first assess the authority and scope of the particulars submitted by the applicant in order to establish the content of that rule.
52. Secondly, according to Article 63(2) of Regulation No 40/94, actions may be brought before the General Court against decisions of the Boards of Appeal on grounds of infringement of the Treaty, of Regulation No 40/94 or of any rule of law relating to their application. It follows from this, as the Advocate General stated in points 61 to 67 of her Opinion, that the General Court has jurisdiction to conduct a full review of the legality of OHIM’s assessment of the particulars submitted by an applicant in order to establish the content of the national law whose protection he claims.
53. As regards the examination, in the context of an appeal, of the findings made by the General Court with regard to that national law, the Court of Justice has jurisdiction to determine, first of all, whether the General Court, on the basis of the documents and other evidence submitted to it, distorted the wording of the national provisions at issue or of the national case-law relating to them, or of the academic writings concerning them; second, whether the General Court, as regards those particulars, made findings that were manifestly inconsistent with their content; and, lastly, whether the General Court, in examining all the particulars, attributed to one of them, for the purpose of establishing the content of the national law at issue, a significance which is not appropriate in the light of the other particulars, where that is manifestly apparent from the documentation in the case‑file.
54. In the present case, the appellant has claimed that the General Court interpreted Article 8(3) of the CPI in a way that was inconsistent with the wording of that provision and with academic writings concerning it that were produced before that Court. It is appropriate to examine whether its argument relates to errors allegedly made by the General Court in its findings with regard to the national legislation at issue, which would be open to review by the Court of Justice on the basis of the considerations set out in the preceding paragraph.
63. The question, raised in the context of the third plea, whether the grounds of a judgment of the General Court are inadequate is a question of law which is amenable, as such, to review on appeal (see, inter alia, Joined Cases C‑120/06 P and C‑121/06 P FIAMM and FIAMM Technologies  v Council and Commission  [2008] ECR I‑6513, paragraph 90, and Case C‑47/07 P Masdar (UK)  v Commission  [2008] ECR I‑9761, paragraph 76).
64. It is clear from established case-law that the obligation on the General Court, under Article 36 of the Statute of the Court of Justice, applicable to the General Court by virtue of the first paragraph of Article 53 thereof, and Article 81 of the Rules of Procedure of the General Court, to state reasons does not require the General Court to provide an account which follows exhaustively and one by one all the arguments put forward by the parties to the case and that the Court’s reasoning may therefore be implicit on condition that it enables the persons concerned to know why the General Court has not upheld their arguments and provides the Court of Justice with sufficient material for it to exercise its power of review (see, inter alia, FIAMM and FIAMM Technologies  v Council and Commission , paragraph 91, and Case C‑440/07 P Commission  v Schneider Electric  [2009] ECR I‑6413, paragraph 135).
71. As a preliminary point, it should be noted that the General Court was right to point out that the review it carries out under Article 63 of Regulation No 40/94 is a review of the legality of the decisions of the Boards of Appeal of OHIM and that it may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 63(2) of that regulation (Case C‑16/06 P Les Éditions Albert René  v OHIM [2008] ECR I‑10053, paragraph 123).
72. It follows that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take.
78. In that regard, suffice it to note that, according to settled case-law, where all the other pleas put forward in an appeal have been rejected, any plea challenging the decision of the General Court on costs must be rejected as inadmissible by virtue of the second paragraph of Article 58 of the Statute of the Court of Justice, which provides that no appeal is to lie regarding only the amount of the costs or the party ordered to pay them (see, inter alia, Joined Cases C‑302/99 P and C‑308/99 P Commission and France  v TF1  [2001] ECR I‑5603, paragraph 31, and Case C‑485/08 P Gualtieri  v Commission  [2010] ECR I‑0000, paragraph 111).
83. Article 116 of the Rules of Procedure of the Court of Justice provides that a response must seek to dismiss, in whole or in part, the appeal or to set aside, in whole or in part, the decision of the General Court or the same form of order as that sought at first instance. Article 113 of the Rules of Procedure of the Court of Justice lays down the same requirements as regards an appeal.
84. In the present case, Mr Fiorucci’s claim seeks not to have the judgment under appeal set aside, even in part, but amendment of a finding made by the General Court in the context of its examination of Mr Fiorucci’s second plea, a plea which it rejected moreover.
85. Such a claim can, therefore, only be rejected as inadmissible.
Costs