10 May 2022 (*)

(Action for annulment – EU trade mark – Representation before EUIPO – Notification of a deficiency in the power to act as a representative before EUIPO – Act not open to challenge – Preparatory act – Inadmissibility)

In Case T‑497/21,

Giovanna Paola Girardi,

residing in Madrid (Spain), represented by A. Pomares Caballero and M. Pomares Caballero, lawyers,

applicant,

European Union Intellectual Property Office (EUIPO),

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

defendant,

THE GENERAL COURT (Fourth Chamber),

composed of S. Gervasoni, President, R. Frendo (Rapporteur) and J. Martín y Pérez de Nanclares, Judges,

Registrar: E. Coulon,

having regard to the written part of the procedure, inter alia:

–the application lodged at the Court Registry on 14 August 2021,

–EUIPO’s application of 26 November 2021 for a declaration from the Court that there is no longer any need to adjudicate,

–the applicant’s observations on that application, lodged at the Court Registry on 16 December 2021,

makes the following

By her action based on Article 263 TFEU, the applicant, Ms Giovanna Paola Girardi, seeks, first, annulment of the act by which the European Union Intellectual Property Office (EUIPO) notified her, on 14 June 2021, of a deficiency in an application for a declaration of invalidity which she had filed under reference 000050057 C, and of any other file in which the applicant or right holder represented by her has their permanent residence outside the European Union (‘the contested notification’) and, secondly, a declaration that Annex 1 to Section 5 of Part A of the Guidelines for examination of European Union trade marks of EUIPO is unlawful in so far as that annex relates to professional representation by Spanish lawyers before the Office.

Background to the dispute

The applicant is a lawyer at the Madrid Bar (Spain) and is specialised in EU intellectual property law.

On 3 June 2021, the applicant filed an application before EUIPO for a declaration of invalidity of a trade mark, under reference 000050057 C, on behalf of a client established outside the European Economic Area (EEA).

By letter of 14 June 2021, EUIPO sent the applicant the contested notification, stating, inter alia, that it had identified a deficiency in the application referred to in paragraph 3 above.

The contested notification was based on Article 120(1)(a) 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), under which ‘representation of natural or legal persons before the Office may only be undertaken by … a legal practitioner qualified in one of the Member States of the European Economic Area … to the extent that he is entitled, within the said Member State, to act as a representative in trade mark matters’. As regards Spain, Article 175(2) of Ley 24/2015, de 24 de julio 2015 de Patentes (Law 24/2015 of 24 July 2015 on patents) provides that ‘persons who are not established in a Member State of the European Union shall act through an industrial property agent’.

The contested notification was also based on Annex 1 to Section 5 ‘Professional representation’ of Part A ‘General rules’ of the Guidelines for examination of European Union trade marks. That annex provides, with regard to Spain, that ‘where the person that is represented is not a resident of a Member State of the [European Union] they may not be represented by a legal practitioner (“abogado”), and must be represented by a professional representative holding the title “Agente Oficial de la Propiedad Industrial”’. In that regard, the contested notification invited the applicant, in the event that she is a professional representative in trade mark matters in her country of residence, to take the necessary steps with EUIPO in order for her to be recognised as having that status.

Lastly, the contested notification stated that ‘if [the applicant] wish[ed] to make an observation, [she] must submit it within two months [failing which she would] be removed from all the files in which the applicant/holder [had] a permanent residence outside the European Union’.

On 16 June 2021, the applicant challenged the contested notification.

On 22 June 2021, EUIPO invited the applicant to submit all her pleas in law against the deficiency at issue.

On 23 July 2021, EUIPO informed the applicant that it had contacted the Oficina Española de Patentes y Marcas (OEPM, Spanish Patent and Trade Mark Office) in order to confirm the content and validity of the relevant provisions of national law relating to the capacity to represent Spanish lawyers and stated that, until the OEPM had clarified the situation, EUIPO would not take any other measure or issue any other notification concerning the deficiency at issue.

On 3 November 2021, EUIPO informed the applicant that her application for a declaration of invalidity under reference 000050057 C had been found to be admissible.

On 23 November 2021, EUIPO notified the applicant, in the same case, of the ‘retraction of [a] deficiency in respect of [her] capacity to represent non-EEA clients before the Office’ (‘the notification of 23 November 2021’). That notification stated that, on 20 October 2021, EUIPO had been informed that the Spanish Ministry of Industry, Trade and Tourism had drawn up legislative proposals amending, inter alia, the rules governing representation before the OEPM, in order to allow Spanish lawyers to represent third parties without any geographical limitation.

The notification of 23 November 2021 went on to state that, ‘in light of this important development at … national level, and given that EUIPO is bound by national practice, the Office … retract[ed] the deficiency [previously] issued in order to assess the consequences of its proposed changes to … Spanish law on Office practice’.

Lastly, ‘for the sake of completeness’, EUIPO stated that the deficiency was withdrawn ‘without prejudice to the Office’s right to reopen the matter, depending on the progress of the ongoing legislative process and the state of the proceedings concerned’.

Forms of order sought

The applicant claims that the Court should:

–annul the contested notification;

–declare unlawful Annex 1 to Section 5 of Part A of the Guidelines for examination of European Union trade marks, in respect of professional representation by Spanish lawyers before the Office;

–order EUIPO to pay the costs;

EUIPO contends that the Court should:

–declare that there is no longer any need to adjudicate on the action;

–order the applicant to pay the costs.

Law

In its application of 26 November 2021 for a declaration that there is no need to adjudicate, EUIPO submits, in essence, that because of the notification of 23 November 2021, the action has become devoid of purpose, which the applicant disputes.

It must, however, be noted that in that request EUIPO also submits that the action was, in any event, premature and, therefore, inadmissible, in so far as, at the time when the action was brought, the Office had not yet definitively decided the question of the applicant’s capacity to represent before EUIPO clients established outside the EEA.

Therefore, in the light of its content, the EUIPO’s application can be interpreted as also being a separate act including a plea of inadmissibility deriving from the fact that the contested notification is not an act adversely affecting the applicant (see, concerning the interpretation of claims through the content of the procedural document in question, judgment of 6 September 2013, Iran Insurance v Council, T‑12/11, not published, EU:T:2013:401, paragraphs 41 and 42; order of 18 April 2018, Iordăchescu v Parliament and Others, T‑298/17, not published, EU:T:2018:202, paragraph 27, and judgment of 22 May 2019, Andrea Incontri v EUIPO – Higicol (ANDREA INCONTRI), T‑197/16, not published, EU:T:2019:347, paragraph 19).

Moreover, in the absence of any provision in the Rules of Procedure expressly providing to the contrary, EUIPO is free to choose its arguments and cannot, therefore, when lodging an application for a declaration that there is no longer any need to adjudicate in accordance with Article 130(2) of the Rules of Procedure, be prohibited from also addressing the admissibility of the dispute (see, by analogy, orders of 19 July 2017, Lysoform Dr. Hans Rosemann and Ecolab Deutschland v ECHA, C‑663/16 P, not published, EU:C:2017:568, paragraph 31, and of 19 July 2017, Lysoform Dr. Hans Rosemann and Ecolab Deutschland v ECHA, C‑666/16 P, not published, EU:C:2017:569, paragraph 31).

Under Article 130(1) and (7) of the Rules of Procedure of the General Court, the Court may give a decision on inadmissibility without going to the substance of the case, if a defendant makes an application asking it to do so. In the present case, as EUIPO has applied, in essence, for a decision on inadmissibility, the Court, finding that it has sufficient information from the documents in the case file, has decided to rule on that application without taking further steps in the proceedings.

In the present case, in its observations on the ‘application for a decision that there is no need to adjudicate’, the applicant puts forward a number of arguments challenging it, having regard to the nature of the contested notification. She takes the view that it was not merely informative, but constituted a final position on the part of EUIPO. The applicant states, therefore, that the decision to bring the present action was not premature and that it must be regarded as admissible.

It must be borne in mind in that regard that, where an action for annulment against an act adopted by an institution is brought by a natural or legal person, that action lies only if the binding legal effects of that act are capable of affecting the interests of the applicant by bringing about a distinct change in his or her legal position (judgments of 11 November 1981, IBM v Commission, 60/81, EU:C:1981:264, paragraph 9, and of 13 October 2011, Deutsche Post and Germany v Commission, C‑463/10 P and C‑475/10 P, EU:C:2011:656, paragraph 37).

By contrast, intermediate measures intended to pave the way for the final decision cannot be characterised as open to challenge (judgments of 11 November 1981, IBM v Commission, 60/81, EU:C:1981:264, paragraph 10, and of 13 October 2011, Deutsche Post and Germany v Commission, C‑463/10 P and C‑475/10 P, EU:C:2011:656, paragraph 50).

As EUIPO points out in its ‘application for a declaration that there is no need to adjudicate’, the applicant’s action against the contested notification is inadmissible.

By that notification, EUIPO found a deficiency, but did not adopt a decision excluding the applicant from the proceedings.

It is true that the contested notification reproduces the wording of Annex 1 to Section 5 of Part A of the Guidelines for examination of European Union trade marks. However, it clearly states that the applicant had the opportunity to submit observations within a certain period and points out that it is in the absence of observations that the applicant would, at the end of that period, be excluded from the proceedings concerned.

The contested notification therefore opened a dialogue in order for EUIPO to hear the applicant before possibly adopting a decision entailing binding legal effects with regard to the applicant, thus demonstrating clearly and unequivocally that it did not express the Office’s final position.

It follows that the contested notification did not in itself entail the applicant’s exclusion from procedure 000050057 C or any other procedure.

Moreover, the dialogue between the applicant and EUIPO provided for in the contested notification did indeed take place, since the applicant sent two letters to the Office, on 27 June and 3 July 2021.

It should also be noted that the notification of 23 November 2021 forms part of that dialogue and states, in essence, that, in the light of developments which had taken place since the contested notification, as is apparent from paragraph 12 above, the Office withdrew that notification ‘in order to assess the consequences of its proposed changes to … Spanish law on [its] practice’.

Therefore, it is clear from the communication of 23 November 2021, and from the contested notification, that EUIPO did not adopt a final position on the applicant’s capacity to represent before the Office clients established outside the EEA.

In the light of those considerations, it must be concluded that the contested notification did not entail binding legal effects capable of affecting the interests of the applicant by bringing about a distinct change in her legal position and cannot constitute a legal act open to challenge for the purposes of the case-law referred to in paragraph 23 above.

Consequently, the first head of claim must be rejected as inadmissible.

Consequently, it is also necessary to reject the second head of claim, in which the applicant seeks a declaration that Annex 1 to Section 5 of Part A of the Guidelines for examination of European Union trade marks is unlawful, in respect of professional representation by Spanish lawyers before EUIPO, must also be rejected. Thus, Article 277 TFEU does not create an independent right of action and may not be sought indirectly, so that where the main action is inadmissible the plea of inadmissibility must also be declared inadmissible (see judgment of 12 December 2019, Tàpias v Council, T‑527/16, EU:T:2019:856, paragraph 50 and the case-law cited).

In any event, it should be recalled that although, in the context of an application for annulment of an individual act having adverse effect, the Courts of the European Union have jurisdiction to find, incidentally, that a provision of general application on which the contested act is based is unlawful, the General Court does not, by contrast, have jurisdiction to make such findings in the operative part of its judgments (see judgment of 10 November 2011, Couyoufa v Commission, F‑110/10, EU:F:2011:182, paragraph 32 and the case-law cited).

In the light of all the foregoing, the action must therefore be dismissed in its entirety as inadmissible.

Costs

Under Article 135(2) of the Rules of Procedure, the Court may order a party, even if successful, to pay some or all of the costs, if this appears justified by the conduct of that party, including before the proceedings were brought, especially if that party has made the opposite party incur costs which the Court holds to be unreasonable or vexatious.

In the present case, the attitude adopted by EUIPO may have placed the applicant in a state of uncertainty which led her to bring the present action. Thus, admittedly, the contested notification merely identified a deficiency in application 000050057 C and invited the applicant to regularise her position for the purposes of national law or to submit observations before a final decision is taken, as is apparent from paragraphs 6 and 7 above. However, the fact remains that the heading of the contested notification, as well as the last two paragraphs thereof, also referred to any other file concerning applicants residing outside the European Union. That wording may have given rise to confusion on the part of the applicant as to the nature of the contested notification.

40That is all the more so since the applicant was bound by the two-month time limit laid down in Article 263 TFEU if she wished to bring an action for annulment against an act which she may have understood as adversely affecting her. However, EUIPO, having sent her the contested notification on 14 June 2021, waited until 3 November 2021 to inform her that the application for a declaration of invalidity with the reference number 000050057 C had been found to be admissible and until 23 November 2011 to inform her that it had formally retracted that notification.

41In those circumstances, the Court orders EUIPO, in addition to bearing its own costs, to pay the costs of the applicant, including those relating to the proceedings for interim relief in Case T‑497/21 R.

On those grounds,

hereby orders:

1.The action is dismissed as inadmissible.

2.The European Union Intellectual Property Office (EUIPO) is to bear its own costs and pay those of Ms Giovanna Paola Girardi, including those relating to the proceedings for interim relief in Case T‑497/21 R.

Luxembourg, 10 May 2022.

Registrar

President

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Language of the case: English.