20 October 2021 (*)

(Interim relief – EU trade mark – Professional representation – Application for suspension of operation of a measure – No urgency)

In Case T‑497/21 R,

Giovanna Paola Girardi,

residing in Madrid (Spain), represented by G. Macías Bonilla, lawyer,

applicant,

European Union Intellectual Property Office (EUIPO),

represented by A. Söder and G. Predonzani, acting as Agents,

defendant,

APPLICATION under Articles 278 and 279 TFEU seeking suspension of operation, first, of the decision of EUIPO of 14 June 2021 concerning the applicant’s capacity to act as a representative before EUIPO and, secondly, of the part of EUIPO’s Guidelines for examination of European Union trade marks relating to professional representation by Spanish lawyers (Part A, Section 5, Annex 1),

makes the following

Background to the dispute, procedure and forms of order sought by the parties

The applicant, Ms Giovanna Paola Girardi, is a lawyer at the Madrid Bar, specialising in European Union intellectual property law.

On 3 June 2021, the applicant filed an application for a declaration of invalidity of a trade mark before the European Union Intellectual Property Office (EUIPO) in the name of a client whose legal domicile is outside the European Economic Area (EEA).

By letter of 14 June 2021, EUIPO notified the applicant of an irregularity concerning her capacity to act as a representative before EUIPO (‘the contested decision’), in accordance with Article 120 of 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).

According to the wording of EUIPO’s letter of 14 June 2021, in Spain, lawyers can represent only clients who have their permanent residence in the European Union. Clients who have their permanent residence outside the European Union must be represented by a duly authorised representative, in accordance with Annex 1 to Section 5 (Professional representation) of Part A (General rules) of the Guidelines for examination of European Union trade marks. Where the represented person is not resident in an EU Member State, that person may not be represented by a lawyer and must be represented by a professional agent with the title of ‘official intellectual property agent’.

On 16 June 2021, the applicant lodged a complaint against the contested decision.

On 22 June 2021, following an email sent to it by the applicant on 17 June 2021, EUIPO encouraged the applicant to present all legal arguments against the deficiency at issue in the proceedings before the competent service.

On 23 July 2021, EUIPO informed the applicant that it had contacted the Oficina Española de Patentes y Marcas (the Spanish Patent and Trade Mark Office (‘the OEPM’)) in order to confirm the contents and the continued validity of the relevant provisions of national law relating to the capacity of Spanish lawyers to act and stated that, before the OEPM had clarified the situation, EUIPO would not take any other steps or issue any other notification concerning that irregularity.

By application lodged at the Court Registry on 14 August 2021, the applicant brought an action for annulment of the contested decision.

By separate document lodged at the Court Registry on the same day, the applicant brought the present application for interim measures, in which she requests the President of the General Court to order EUIPO to suspend application of the contested decision in so far as she is concerned and not to apply the basic measure, set out in Section 5 of Part A of the Guidelines on the examination of EU trade marks, relating to professional representation by Spanish lawyers, pending delivery of the decision in the main proceedings.

In its observations on the application for interim measures, which were lodged at the Court Registry on 15 September 2021, EUIPO contends that the President of the General Court should:

–dismiss the application for interim measures;

–order the applicant to pay the costs.

By document lodged at the Court Registry on 5 October 2021, the applicant submitted new evidence.

On 18 October 2021, EUIPO lodged its observations on the new evidence submitted by the applicant.

Law

It is apparent from reading Articles 278 and 279 TFEU together with Article 256(1) TFEU that the judge hearing an application for interim measures may, if he considers that the circumstances so require, order that the operation of a measure challenged before the General Court be suspended or prescribe any necessary interim measures, pursuant to Article 156 of the Rules of Procedure of the General Court. Nevertheless, Article 278 TFEU establishes the principle that actions do not have suspensory effect, since acts adopted by the institutions of the European Union are presumed to be lawful. It is therefore only exceptionally that the judge hearing an application for interim measures may order the suspension of operation of an act challenged before the General Court or prescribe any interim measures (see order of 19 July 2016, Belgium v Commission, T‑131/16 R, EU:T:2016:427, paragraph 12 and the case-law cited).

The first sentence of Article 156(4) of the Rules of Procedure provides that applications for interim measures must state ‘the subject matter of the proceedings, the circumstances giving rise to urgency and the pleas of fact and law establishing a prima facie case for the interim measures applied for’.

The judge hearing an application for interim relief may order suspension of operation of an act and other interim measures if it is established that such an order is justified, prima facie, in fact and in law, and that it is urgent in so far as, in order to avoid serious and irreparable harm to the applicant’s interests, it must be made and produce its effects before a decision is reached in the main action. Those conditions are cumulative, and consequently an application for interim measures must be dismissed if any one of them is not satisfied. The judge hearing an application for interim relief is also to undertake, when necessary, a weighing of the competing interests (see order of 2 March 2016, Evonik Degussa v Commission, C‑162/15 P-R, EU:C:2016:142, paragraph 21 and the case-law cited).

In the context of that overall examination, the court hearing the application for interim measures enjoys a broad discretion and is free to determine, having regard to the particular circumstances of the case, the manner and order in which those various conditions are to be examined, there being no rule of law imposing a pre-established scheme of analysis within which the need to order interim measures must be assessed (see order of 19 July 2012, Akhras v Council, C‑110/12 P(R), not published, EU:C:2012:507, paragraph 23 and the case-law cited).

Having regard to the material in the case file, the President of the General Court considers that he has all the information needed to rule on the present application for interim measures without there being any need first to hear oral argument from the parties.

In the circumstances of the present case, it is appropriate to examine first whether the condition relating to urgency is satisfied.

In order to determine whether the interim measures sought are urgent, it should be noted that the purpose of the procedure for interim relief is to guarantee the full effectiveness of the future final decision, in order to avoid a lacuna in the legal protection afforded by the EU judicature. To attain that objective, urgency must, generally, be assessed in the light of the need for an interlocutory order in order to avoid serious and irreparable damage to the party requesting the interim measure. That party must demonstrate that it cannot await the outcome of the main proceedings without suffering serious and irreparable damage (see order of 14 January 2016, AGC Glass Europe and Others v Commission, C‑517/15 P-R, EU:C:2016:21, paragraph 27 and the case-law cited).

It is in the light of those criteria that it is necessary to examine whether the applicant has succeeded in demonstrating urgency.

In the present case, in order to demonstrate the serious and irreparable nature of the damage, the applicant claims, in the first place, that the contested decision deprives her of the right to represent clients whose legal domicile is outside the EEA with immediate, future and retroactive effect. According to the applicant, that decision adversely affects not only her, her non-European clients accounting for approximately 80% of her activities, but also the clients themselves. She takes the view that, if the application for a declaration of invalidity submitted on 3 June 2021 had to be suspended until the question of professional representation was clarified by the Courts of the European Union, EUIPO could begin examining that application only within a period of three to five years. The applicant’s client’s trade mark would then be diluted and the objective pursued by that application might be more difficult, if not impossible, to achieve. In the second place, she claims that she will lose the confidence of a clientele that is difficult to build, which may represent the end of her microenterprise. In the third place, she submits that it will be necessary to extend that finding to her colleagues, Spanish lawyers as a whole, if the Court does not suspend the application of the basic measure.

EUIPO disputes the applicant’s arguments.

In the first place, as regards the applicant’s argument that the contested decision adversely affects her because non-European customers account for approximately 80% of her activity, it should be noted that this is a claim, without any evidence in support, which does not enable the judge hearing the application for interim relief to have a true and comprehensive picture of the applicant’s financial situation. Consequently, in such circumstances, the judge hearing the application for interim relief is not in a position to assess whether the alleged harm can be classified as serious and irreparable.

Furthermore, it should be noted that the damage alleged by the applicant is of a purely financial nature.

In that regard, it should be observed that damage of a pecuniary nature cannot, save in exceptional circumstances, be regarded as irreparable or even reparable only with difficulty, since financial compensation for that damage can normally be obtained subsequently (see order of 2 October 2019, FV v Council, T‑542/19 R, not published, EU:T:2019:718, paragraph 42 and the case-law cited).

Admittedly, even in the event of purely financial damage, an interim measure is justified if it is appears that, without that measure, the party seeking it would be in a position that could imperil that party’s financial viability, since it would not have an amount of money which under normal circumstances should enable that party to meet all the essential expenditure necessary to cater for its basic needs until judgment is given in the main action (see order of 2 October 2019, FV v Council, T‑542/19 R, not published, EU:T:2019:718, paragraph 43 and the case-law cited).

However, in order to assess whether the alleged damage is of a serious and irreparable nature justifying the suspension, exceptionally, of the operation of the contested decision, the court hearing the application for interim measures must, in all cases, have specific and precise information, supported by detailed documentation, showing the financial situation of the party requesting the interim measure and enabling an assessment to be made of the likely consequences if the measures sought are not granted (see order of 27 April 2010, Parliament v U, T‑103/10 P(R), EU:T:2010:164, paragraph 37 and the case-law cited).

However, as referred to in paragraph 23 above, the applicant has failed to provide specific and precise information, supported by certified detailed documents, in the present case. She has not provided the slightest information on the size, characteristics and total turnover of her undertaking.

In the second place, as regards the applicant’s argument that her clientele’s loss of confidence could represent the end of her microenterprise, it should be recalled that, according to settled case-law, while it does not have to be established with absolute certainty that the damage claimed is imminent, its occurrence must nevertheless be foreseeable with a sufficient degree of probability. Purely hypothetical harm, based on future and uncertain events, cannot justify the granting of interim measures (see order of 7 December 2015, POA v Commission, T‑584/15 R, not published, EU:T:2015:946, paragraph 22 and the case-law cited).

Furthermore, it should be noted that EUIPO states that it has not yet taken a decision concerning the applicant as regards her capacity to represent clients not established in the EEA. It is therefore not certain that EUIPO’s interpretation is definitive.

In the third place, it is necessary to reject the applicant’s arguments that the contested decision also harms her clients and colleagues, Spanish lawyers as a whole, since the alleged infringements do not concern her personally.

According to settled case-law, an applicant may not, in order to establish urgency, rely on damage caused to the rights of third parties or to the general interest (see order of 26 September 2017, António Conde & Companhia v Commission, T‑443/17 R, not published, EU:T:2017:671, paragraph 35 and the case-law cited).

It follows from all the foregoing that the application for interim measures must be dismissed as the applicant has failed to establish urgency, without it being necessary to examine admissibility, rule on whether there is a prima facie case or weigh up the competing interests.

Under Article 158(5) of the Rules of Procedure, it is appropriate to reserve the costs.

On those grounds,

hereby orders:

1.The application for interim measures is dismissed.

2.The costs are reserved.

Luxembourg, 20 October 2021.

Registrar

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Language of the case: English.