(Community trade mark – Word mark PARMITALIA – Time-limit for bringing an appeal against the decision of the Opposition Division – Article 59 of Regulation (EC) No 40/94 – Rule 48 of Regulation (EC) No 2868/95 – Inadmissibility of the appeal)

Judgment of the Court of First Instance (First Chamber), 31 May 2005

Summary of the Judgment

(Council Regulation No 40/94, Art. 63)

(Council Regulation No 40/94, Art. 59)

1.The purpose of actions before the Court under Article 63 of Regulation No 40/94 on the Community trade mark is to obtain a review of the legality of decisions of the Boards of Appeal of the Office for Harmonisation within the Internal Market (Trade Marks and Designs). While the Court, under Article 63(3) of Regulation No 40/94, ‘has jurisdiction to annul or to alter the contested decision’, that paragraph must be construed in the light of Article 63(2), which provides that an ‘action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power’, and in the context of Articles 229 EC and 230 EC. The Court’s review of the legality of a decision by a Board of Appeal must therefore be carried out with regard to the issues of law raised before the Board of Appeal. The question whether the appeal before the Board of Appeal and the action brought before the Court are based on the same subject-matter is one of public policy, which falls to be examined of the Court’s own motion.

(see paras 25, 28)

While that article provides that the appeal is deemed to be filed only when the fee for appeal has been paid, the mere payment of the corresponding amount cannot be considered to be equivalent to the notice required by the article. There is, in that regard, no duty on the Office and, more particularly, on its Accounting Department to alert potential appellants to a Board of Appeal to the consequences of failure to comply with the formalities laid down by Regulation No 40/94.

(see paras 56, 58-59)

31 May 2005 (*)

(Community trade mark – Word mark PARMITALIA – Time-limit for bringing an appeal against the decision of the Opposition Division – Article 59 of Regulation (EC) No 40/94 – Rule 48 of Regulation (EC) No 2868/95 – Inadmissibility of the appeal)

In Case T‑373/03,

Solo Italia Srl, established in Ossona (Italy), represented by A. Bensoussan, M.‑E. Haas and L. Tellier-Loniewski, lawyers, with an address for service in Luxembourg,

applicant,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by I. de Medrano Caballero and A. Folliard-Monguiral, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM and intervener before the Court of First Instance being

Nuova Sala Srl, established in Brescia (Italy), represented by E. Gavuzzi, S. Hassan and C. Pastore, lawyers,

APPLICATION brought against the decision of the Second Board of Appeal of OHIM of 10 September 2003 (Case R 208/2003-2), confirming the refusal to register the word mark PARMITALIA,

FORMS OF ORDER SOUGHT

The parties presented oral argument and answered the questions put to them by the Court at the hearing on 16 November 2004.

The applicant claims that the Court should:

– declare this action to be admissible and annul the decision of 10 September 2003;

– order the Office to pay the costs.

The Office contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

The intervener contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

As the intervener was unable to be present at the hearing, it submitted its observations by fax. With the consent of the applicant and the Office, those observations were added to the Court file.

Law

The applicant relies on three pleas in law, based, first, on infringement of Article 6 of the European Convention for the Protection of Human Rights and Fundamental Freedoms (‘the ECHR’), second, on infringement of Rules 55, 61 and 65 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1) and, third, on infringement of Article 59 of Regulation No 40/94.

Admissibility of the first two pleas in law

The first plea: infringement of Article 6 of the ECHR

– Arguments of the parties

According to the applicant, Article 6 of the ECHR requires that defendants are to be properly notified of proceedings brought against them. The service of the decision of 26 November 2002 by fax infringed that provision, as it failed to have regard to the requirement that notification be made in a secure manner. As it was invalid, the notification could not have set time running; it follows, according to the applicant, that the appeal should have been declared admissible. At the hearing, the applicant reiterated that the first plea related to the lack of legal certainty and that a fax which not only had not been signed, but also, as the applicant added, for which the Office provided no form of acknowledgement of receipt, could not guarantee that legal certainty.

The Office takes the view that the first plea is inadmissible, on the ground that it does not state adequate reasons and accordingly fails to comply with Article 44(1)(c) of the Rules of Procedure.

The Office added at the hearing that the plea based on infringement of Article 6 of the ECHR is, on any basis, inadmissible, as it was not put forward before the Board of Appeal.

– Findings of the Court

Before the Board of Appeal, the applicant relied only on its ignorance of the Rules of Procedure of the Office, the absence of a likelihood of confusion between Parmital and Parmitalia, and the argument set out below under the third plea in law, namely that the payment of the fee for appeal was sufficient to render the appeal formally valid.

23It is therefore not in dispute that the plea based on a potential infringement of Article 6 of the ECHR was at no stage raised by the applicant before the Office and that, accordingly, the latter did not examine it.

24It should also be pointed out, first, that, under Article 74 of Regulation No 40/94, ‘in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties’ (Case T-311/01 Éditions Albert René v OHIM – Trucco (Starix) [2003] ECR II-4625, paragraph 69).

25Second, it must be borne in mind that the purpose of actions before the Court is to obtain a review of the legality of decisions of the Boards of Appeal of the Office within the meaning of Article 63 of Regulation No 40/94 (Case T-237/01 Alcon v OHIM – Dr Robert Winzer Pharma (BSS) [2003] ECR II-411, paragraph 61; Case T-128/01 DaimlerChrysler v OHIM (Grille) [2003] ECR II-701, paragraph 18; Case T-129/01 José Alejandro v OHIM – Anheuser‑Busch (BUDMEN) [2003] ECR II-2251, paragraph 67; and Starix, paragraph 70). While the Court, under Article 63(3) of Regulation No 40/94, ‘has jurisdiction to annul or to alter the contested decision’, that paragraph must be construed in the light of Article 63(2), which provides that an ‘action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the Treaty, of this Regulation or of any rule of law relating to their application or misuse of power’, and in the context of Articles 229 EC and 230 EC. The Court’s review of the legality of a decision by a Board of Appeal must therefore be carried out with regard to the issues of law raised before the Board of Appeal (Starix, paragraph 70).

26Furthermore, Article 135(4) of the Rules of Procedure expressly states that ‘[t]he parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal’ (Starix, paragraph 71).

27The applicant cannot therefore call on the Court to rule on the present plea based on a potential infringement of Article 6 of the ECHR, when that plea was not put forward during the administrative phase of the proceedings before the Office.

28Although the Office did not rely in its written pleadings on the fact that that plea was a new one, but referred to the point only during the hearing, that point is irrelevant to the outcome of the dispute, since the question whether the appeal before the Board of Appeal and the action brought before the Court are based on the same subject-matter is one of public policy, which falls to be examined ex officio.

29The first plea must therefore be rejected as being inadmissible.

C06Titre3The second plea: infringement of Rules 55, 61 and 65 of Regulation No 2868/95

C07Titre4– Arguments of the parties

30The applicant argues in the alternative that, even if the notification of the decision of the Opposition Division of 26 November 2002 does fall to be treated as having complied with the principles set out in Article 6 of the ECHR, that notification is nevertheless invalid, since it fails to satisfy the conditions laid down under Rules 55, 61 and 65 of Regulation No 2868/95.

31The applicant states that scrutiny of that notification shows that both the covering letter and the decision are unsigned and that the latter does not bear the seal referred to in Rule 55 of Regulation No 2868/85, as the logo which appears on the first page cannot of itself be the equivalent of the seal which the relevant provisions require.

32The Office contends that the applicant must also be objecting that the decision of the Board of Appeal, although signed, does not bear a seal either.

33It maintains that the second plea is inadmissible.

34It contends that the plea, which in its view concerns the decision of the Opposition Division and which was raised for the first time before the Court, should be declared to be inadmissible, as Article 135(4) of the Rules of Procedure states that the parties’ pleadings may not change the subject‑matter of the proceedings before the Board of Appeal.

35As regards the notification of the decision of the Board of Appeal, a finding of an infringement of the Rules of Procedure would not suffice to annul the contested decision, since irregularities in the procedure for notifying a decision are extraneous to the decision and therefore cannot invalidate it (Case 48/49 ICI v Commission [1972] ECR 619, paragraph 39; and Joined Cases T-78/96 and T-170/96 W v Commission [1998] ECR-SC I-A-239 and II-745, paragraph 183). In any event, there has been no infringement of a substantial procedural requirement, since the decision was in fact notified to the applicant, which was not prevented from defending its rights (Case T-323/00 SAT.1 v OHIM (SAT.2) [2002] ECR II‑2839).

36Lastly, an applicant has no legitimate interest in the annulment of a decision on the ground of a procedural defect, where annulment of the decision can only lead to the adoption of another decision identical in substance to the decision annulled (see, to that effect, Case 117/81 Geist v Commission [1983] ECR 2191, paragraph 7; Case T-43/90 Díaz García v Parliament [1992] ECR II-2619, paragraph 54; Case T-261/97 Orthmann v Commission [2000] ECR-SC I-A-181 and II-829, paragraphs 33 and 35; and Case T-16/02 Audi v OHIM (TDI) [2003] ECR II‑0000).

C07Titre4– Findings of the Court

37It should be pointed out, first, that a reading of the applicant’s second plea in law does not show that the applicant seeks to object to the fact that the decision of the Board of Appeal does not bear a seal. Its application shows that it is in fact the notification of the decision of the Opposition Division of 26 November 2002 that is at issue. On the contrary, the applicant refers to the decision of the Board of Appeal as a model of the correct approach, stating that ‘a comparison with the decision of the Board of Appeal of 10 September 2003 is instructive, because, in that case, the documents notified include on the first page, purely by way of identification, the same logo, but, as far as that decision is concerned, both the covering letter and the decision are signed’.

38As regards the notification of the decision of 26 November 2002, it is not in dispute that the plea based on a potential infringement of Rules 55, 61 and 65 of Regulation No 2868/95 was at no stage raised by the applicant before the Office and that, accordingly, the latter did not examine it.

39For the reasons set out at paragraphs 24 to 26 above, and as the Office rightly pointed out, the applicant cannot call on the Court to rule on the present plea based on a potential infringement of those rules, when that plea was not put forward during the administrative phase of the proceedings before the Office.

40Moreover, the applicant did not respond to the Office on that point at the hearing.

41The second plea must therefore be rejected as inadmissible.

C05Titre2Substance of the third plea in law: infringement of Article 59 of Regulation No 40/94

C06Titre3– Arguments of the parties

42The applicant argues in the further alternative that its payment order of 29 November 2002 clearly informed the Office that it had decided to bring an appeal. It states that it was only on 17 January 2003 that the Office asked the applicant for details as to the purpose of that payment. It then responded to the Office, on 17 February 2003, when it referred to the mistake of its representative, who had failed to proceed as it had instructed him to do.

43The applicant maintains, as it had already stated to the Office by letter on 21 August 2003, that there is no provision laying down any particular formal requirement for the bringing of an appeal before the Office and that the bank transfer of the sum of EUR 800 made on 4 December 2002 and referring to the PARMITALIA trade mark was clearly identified by the Office as having been submitted by the applicant, as it was the subject of the letter of 17 January 2003.

44The applicant accordingly takes the view that the payment of the fee renders the appeal formally valid. It adds that the Office acknowledges having collected that amount and identified the sender of the payment.

45The appeal was accordingly brought in time and should be declared to be admissible, since a statement of grounds was moreover submitted within four months, on 17 and 20 February 2003 and on 21 March 2003, and the defect in the procedure was cured within the prescribed periods.

46The applicant states lastly that, if the Office has elected to notify its decisions by informal means involving the use of faxes and introduced that flexible method of notification into the appeal procedure, it cannot at the same time restrict the conditions under which those appeals operate and the procedure for restitutio in integrum laid down under Article 78 of Regulation No 40/94. The strict interpretation adopted by the Office of the conditions set out in Article 59 of that regulation and of the procedures for the implementation of Article 78 has the result that a party which is the victim of the mistake of its representative is deprived of all remedy, and this did not allow the applicant to defend itself fairly.

47At the hearing, the applicant stated that in its request for details sent to Solo Italia France – which the applicant described as being a ‘good party to speak to’ – the Office should have referred to the time-limit of two months and started time running again from the date of that request. Moreover, the fact that the Office did not refund the sum of EUR 800 proves that it considered the appeal to have been properly brought.

48At the hearing, the applicant also stated that it did not, in fact, seek to have Article 78 of Regulation No 40/94 applied, but that it wished to point out that the procedure of restitutio in integrum could not apply to cases where a mistake had been made by a representative.

49The Office takes the view that, in the light of Rules 48(1)(c) and 49 of Regulation No 2868/95 and of Article 59 of Regulation No 40/94, in order for an appeal to be admissible, it must satisfy the following three cumulative conditions: first, it must be lodged within two months of the date of notification of the decision appealed from, identify the decision which is contested and the extent to which amendment or cancellation of the decision is requested; second, the fee for appeal must be paid within that two-month period; third, a statement setting out the grounds of appeal must be filed within four months of the date of notification of the decision which is contested.

50Although the point was not the subject of arguments raised by the applicant, the Office also states that the period allowed for rectifying any failure to pay the fee for appeal cannot have the result of extending the period allowed for lodging of the statement.

51The Office notes lastly that no application for restitutio in integrum was made by the applicant.

52At the hearing, the Office stated that it had been impossible for it to identify the connection between OK SA and Solo Italia, that the sum of EUR 800 could represent payment in respect of various different fees or applications, that, as the time-limit of two months was mandatory, it was not open to its Accounting Department to extend it, and that that department was unable to inform the applicant that a two-month period was running, since it could not know that a time-limit for bringing an appeal was involved. Generally speaking, it is not for its Accounting Department, which, moreover, has its own computer system, to undertake investigations of that kind; furthermore, even if it had realised that the sum in question represented payment of a fee for appeal, it was not required to warn the applicant of the existence of the time‑limit for lodging a notice of appeal.

53Lastly, as regards restitutio in integrum, the Office stated at the hearing that the application of that principle is not in any way excluded where the mistake has been committed by a representative; indeed, two judgments of the Community judicature allow for that possibility.

54The intervener adds to the Office’s arguments that, on the payment order of 29 November 2002, the name of the company ‘OK SA’ appeared, which would not have allowed any connection to be made with the company Solo Italia Srl; it points out that the Office moreover sent its request for clarification of 17 January 2003 to an entirely different company, namely ‘Solo Italia France’, having its registered office in France and not in Italy.

55The intervener states lastly that, apart from the fact that restitutio in integrum is possible under Article 78(2) of Regulation No 40/94 only where a written application is made and payment is made at the same time of the corresponding fee, such an application could not now be made, as the one-year period for doing so has expired.

56Article 59 of Regulation No 40/94 provides that notice of appeal must be filed in writing at the Office within two months of the date of notification of the decision appealed from.

57It must be held in the present case that no written document of that nature was sent to the Office during the prescribed period.

58While that article provides that the appeal is deemed to be filed only when the fee for appeal has been paid, the mere payment of the corresponding amount cannot be considered to be equivalent to the notice required by the article.

59Moreover, neither the legislation nor the case-law imposes a duty on the Office and, more particularly, on its Accounting Department to alert potential appellants to a Board of Appeal to the consequences of failure to comply with the formalities laid down by Regulation No 40/94.

60With regard to <i>restitutio in integrum</i>, Article 78 of Regulation No 40/94 does not exclude the application of that principle to cases involving a mistake made by a representative. However, it is necessary for the requirements under it to be satisfied, in particular that all due care required by the circumstances has been taken (see, as regards the error of an assistant employed by an applicant’s representative, Case T-146/00 <i>Ruf and Stier</i> v <i>OHIM</i> (<i>‘Dakota’ Image</i>) [2001] ECR II-1797, paragraphs 55 to 61).

61As the conditions laid down in Article 59 of Regulation No 40/94 were not complied with in the present case, the third plea must also be rejected and, accordingly, the action dismissed in its entirety.

Costs

62Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful parties’ pleadings. Since the applicant has been unsuccessful and OHIM and the intervener have applied for costs, it must be ordered to pay their costs.

On those grounds,

hereby:

Dismisses the action;

Orders the applicant to pay the costs.

Cooke

Labucka

Trstenjak

Delivered in open court in Luxembourg on 31 May 2005.

Registrar

President

*

*Language of the case: French.