ORDER OF THE GENERAL COURT (Second Chamber)
6 October 2015 (*)
(Community trade mark — Application for Community word mark engineering for a better world — Merely confirmatory decision — Final nature of the decision confirmed — Raised by the General Court of its own motion — Inadmissibility)
In Case T‑545/14,
GEA Group AG, established in Düsseldorf (Germany), represented by J. Schneiders, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by A. Pohlmann, and subsequently by S. Hanne, acting as Agents,
defendant,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 2 June 2014 (Case R 303/2014-4), concerning an application for registration of the word sign ‘engineering for a better world’ as a Community trade mark,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 18 July 2014,
having regard to the response lodged at the Court Registry on 26 September 2014,
having regard to the Court’s written question to the parties,
having regard to the observations lodged by the parties at the Court Registry on 1 June 2015,
makes the following
Order
Background to the dispute
The first application for registration
1 On 6 September 2011, the applicant, GEA Group AG, filed an application with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), for registration of the word mark ‘engineering for a better world’ in respect of goods and services in Classes 6, 7, 9, 11, 35, 37, 39, 41 and 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended.
2 By decision of 20 March 2012, the examiner refused to register the mark applied for on the basis of Article 7(1)(b) and Article 7(2) of Regulation No 207/2009.
3 On 15 May 2012, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009.
4 By decision of 21 March 2013 (‘the first decision of the Board of Appeal’), the Fourth Board of Appeal of OHIM dismissed the appeal on the ground that the mark applied for was devoid of any distinctive character within the meaning of Article 7(1)(b) of Regulation No 207/2009.
5 By a document lodged at the Court Registry on 2 September 2013, the applicant brought an action against the first decision of the Board of Appeal, which was dismissed as being out of time by order of 22 January 2015 in GEA Group v OHIM (engineering for a better world) (T‑488/13, ECR, EU:T:2015:64).
The second application for registration
6 On 1 August 2013, the applicant filed a second application for registration with OHIM, which was identical in every respect to the first application for registration.
7 By decision of 20 December 2013, the examiner refused to register the mark applied for, on the basis of Article 7(1)(b) and Article 7(2) of Regulation No 207/2009.
8 On 23 January 2014, the applicant filed an appeal against that decision.
9 By decision of 2 June 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It noted ‘with surprise’ that the second request for registration was identical to the first, particularly that it related to a list of identical products (paragraph 13 of the contested decision). For this reason and in essence, it referred in full to the grounds of the first decision of the Board of Appeal (paragraph 17 of the contested decision), repeating the ‘decisive’ grounds for that decision (paragraphs 18 to 21 of the contested decision).
Forms of order sought by the parties
10 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
11 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
12 Under Article 129 of its Rules of Procedure, the Court may at any time of its own motion, after hearing the main parties, decide to rule by reasoned order on whether there exists any absolute bar to proceeding with a case.
13 In the present case, having regard to the material in the file, in particular the parties’ response to the question posed by the Court in relation to the admissibility of this action, the Court decides, pursuant to that article, to rule by reasoned order, without taking any further steps in the proceedings, notwithstanding that one of the parties has requested a hearing.
14 According to settled case-law, the conditions for the admissibility of an action concern an absolute bar to proceeding with the action which the Courts of the European Union must consider of their own motion should such an issue arise (see judgments of 10 July 1990 in Automec v Commission, T‑64/89, ECR, EU:T:1990:42, paragraph 41 and the case-law cited, and 8 February 2011 in Paroc v OHIM (INSULATE FOR LIFE), T‑157/08, ECR, EU:T:2011:33, paragraph 28 and the case-law cited).
15 Furthermore, according to equally settled case-law, a decision which merely confirms an earlier decision not challenged in due time is not an actionable measure. For the purpose of not allowing the time limit for bringing an action against the confirmed decision to recommence, an action against such a confirmatory decision must be declared inadmissible (see order of 7 December 2004 in Internationaler Hilfsfonds v Commission, C‑521/03 P, EU:C:2004:778, paragraph 41; judgments of 16 September 1998 in Waterleiding Maatschappij v Commission, T‑188/95, ECR, EU:T:1998:217, paragraph 108, and INSULATE FOR LIFE, cited in paragraph 14 above, EU:T:2011:33, paragraph 29; see also, to this effect, judgment of 11 May 1989 in Maurissen and European Public Service Union v Court of Auditors, 193/87 and 194/87, EU:C:1989:185, paragraph 26).
16 A decision is a mere confirmation of an earlier decision where it contains no new factors as compared with the earlier measure and is not preceded by any re-examination of the situation of the addressee of the earlier measure (see order in Internationaler Hilfsfonds v Commission, cited in paragraph 15 above, EU:C:2004:778, paragraph 47 and the case-law cited; order of 4 May 1998 in BEUC v Commission, T‑84/97, ECR, EU:T:1998:81, paragraph 52; and judgment in INSULATE FOR LIFE, cited in paragraph 14 above, EU:T:2011:33, paragraph 30).
17 It should be stated in this regard that, according to settled case-law, if the challenged measure is the reply to a request in which substantial new facts are relied on, and whereby the administration is requested to reconsider its previous decision, that measure cannot be regarded as merely confirmatory in nature, since it constitutes a decision taken on the basis of those facts and thus contains a new factor as compared with the previous decision. The existence of substantial new facts may justify the submission of a request for reconsideration of a previous decision which has become final. Conversely, where the request for reconsideration is not based on substantial new facts, an action against a decision refusing to carry out the reconsideration must be declared inadmissible (see order of 4 July 2014 in Uspaskich v Parliament, T‑84/12, EU:T:2014:642, paragraph 40 and the case-law cited).
18 Firstly, it should be determined whether and to what extent the contested decision amounts to a mere confirmation of the first decision of the Board of Appeal, which requires the identification of the respective circumstances of the disputes which gave rise to those decisions.
19 In this regard, it should be observed that the subject matter of the present litigation relates, like the litigation which gave rise to the first decision of the Board of Appeal, to the registration of the word sign ‘engineering for a better world’ as a Community mark for products and services in classes 6, 7, 9, 11, 35, 37, 39, 41 and 42 of the Nice Agreement. Furthermore, in both the first decision of the Board of Appeal and the contested decision, the applications for registration were refused on the basis of Article 7(1)(b) of Regulation No 207/2009. It should be added that the contested decision does not contain, in its analysis of this ground of refusal of registration, any new factor, and that it was not preceded by a re-examination of the mark which the applicant had applied for.
20 The Board of Appeal stated, in paragraph 14 of the contested decision, that the applicant had repeated the same arguments that had been rejected by the first decision of the Board of Appeal and, for that reason, referred in full to the grounds of the first decision of the Board of Appeal, repeating the ‘decisive’ grounds for that decision (paragraphs 17 to 21 of the contested decision).
21 It is true that the Board of Appeal pointed out, in paragraph 15 of the contested decision, that in the action which gave rise to the contested decision, the applicant had relied for the first time on registrations of Community marks containing the words ‘for a better world’. Nevertheless, even on the assumption that those registrations can be regarded as new facts, not because they post-date the first decision of the Board of Appeal, but because, although they were already in existence when that decision was adopted, they were not taken into consideration (see judgment of 13 November 2014 in Spain v Commission, T‑481/11, ECR, EU:T:2014:945, paragraph 38 and the case-law cited), they cannot, contrary to what the applicant essentially maintains in its response to the question posed by the Court, be characterised as substantial facts.
22 According to settled case-law, a fact is substantial if it is capable of substantially altering the legal situation as considered by the authors of the earlier measure, particularly by substantially altering the conditions which governed the earlier measure. That is true of a factor which raises doubts as to the merits of the approach adopted by that measure (see judgment in Spain v Commission, cited in paragraph 21 above, EU:T:2014:945, paragraph 39 and the case-law cited).
23 Whilst the case-law relating to the account to be taken by OHIM of its decision-making practice has been further explained, following the judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM (C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 77), it nonetheless remains the case, according to settled case-law, that the assessment of whether a ground of refusal of registration exists cannot be called into question on the sole basis that the Board of Appeal did not follow OHIM’s decision-making practice in a particular case (see, to this effect, order of 12 December 2013 in Getty Images (US) v OHIM, C‑70/13 P, EU:C:2013:875, paragraphs 41 to 48; judgments of 16 October 2014 in Larrañaga Otaño v OHIM (GRAPHENE), T‑459/13, EU:T:2014:892, paragraphs 35 to 39, and 12 December 2014 in Wilo v OHIM (Pioneering for You), T‑601/13, EU:T:2014:1067, paragraphs 42 and 43). According to that case-law, the examination of an application for registration must be undertaken in each individual case, as the registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case, the purpose of those criteria being to ascertain whether the sign at issue is caught by a ground for refusal set out in Regulation No 207/2009.
24 In the present case, the applicant essentially limited itself to listing the previous registrations of marks containing the words ‘for a better world, whereas the Board of Appeal, in its first decision, had concluded from a full and specific analysis of the mark applied for, including but not limited to the words ‘for a better world’, that the registration of that mark was prevented by an absolute ground for refusal. It follows that the Board of Appeal was not required to re-examine the application for registration in the light of the decision-making practice of OHIM (see, to that effect, judgment in INSULATE FOR LIFE, cited paragraph 14 above, EU:T:2011:33, paragraph 39).
25 Moreover, that practice did not give rise to any such re-examination. The Board of Appeal limited itself to noting the irrelevance of the registrations relied on, having regard to its first decision, by which it had already refused to register the mark applied for (paragraph 15 of the contested decision). Furthermore, although paragraph 15 of the contested decision could be regarded as dealing with the substance of the allegation of previous registrations, it is apparent from settled case-law that dealing with substantive matters does not amount to re-examining the earlier decision, in the absence of any obligation to carry out such a re-examination (see, to that effect, order of 29 April 2004 in SGL Carbon v Commission, T‑308/02, ECR, EU:T:2004:119, paragraph 72 and the case-law cited).
26 Furthermore, it does not follow from the case-law relating to the obligation to re-examine measures which depend on the continuation of the factual and legal circumstances which led to their adoption that, in the present case, the Board of Appeal is under an obligation to re-examine the mark applied for and the first decision of the Board of Appeal. Under that case-law, first, it must be possible to request the review of a measure which depends on whether the factual and legal circumstances which led to its adoption continue to apply, in order to establish whether its retention is justified and, secondly, a re-examination seeking to verify whether a previously-adopted measure remains justified in the light of a change in the legal or factual situation which has taken place in the meantime leads to the adoption of a measure which is not purely confirmatory of the earlier measure, but constitutes a measure open to challenge which could be the subject of an action (see judgment in Spain v Commission, cited in point 21 above, EU:T:2014:945, paragraph 40 and the case-law cited).
27 While it is true that the grounds of refusal set out in Article 7 of Regulation No 207/2009 apply only so long as all of the conditions laid down by that provision are met, as OHIM essentially maintains in its response to the question posed by the Court, referring in particular to the acquisition of distinctive character by use, firstly, it is apparent from that case-law that the obligation to re-examine in question depends on a change in the relevant legal or factual situation, whereas in the present case there is no such change, since the registrations relied on by the applicant before the Board of Appeal did not post-date the first decision of that board (see paragraph 21 above). Secondly, in relation to an application to register a trade mark — which, unlike a request for access to documents (see, as to the effect of the lack of any requirement to state reasons for such requests for access on the institutions’ obligation to re-examine, judgment of 26 January 2010, Internationaler Hilfsfonds v Commission, C‑362/08 P, ECR, EU:C:2010:40, paragraphs 56 and 57), must be supported by reasons and documented under the applicable provisions (Article 26 of Regulation No 207/2009 and especially Rule 1 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended) — the obligation to re-examine can only arise from an allegation by the party concerned of a change in the legal or factual situation in question, whereas no such change has been relied on by the applicant in the present case (see paragraph 21 above). Furthermore, if it were to be accepted that an obligation to re-examine arose upon a request being made to that effect, that would encourage abuses of process. The case-law has been consistent in not accepting abuses of process consisting in the making of a request in order to enable a challenge to be made to the response which is given (see, to that effect, order of 18 April 2002 in IPSO and USE v ECB, T‑238/00, ECR, EU:T:2002:102, paragraph 45 and the case-law cited).
28 Lastly, the fact that the Board of Appeal held, in paragraph 17 of the contested decision, that the examiner’s decision as to the second application for registration did not merely confirm the decision of the examiner determining the first application for registration has no relevance to this analysis, which relates only to whether or not the contested decision was confirmatory.
29 It follows from all of the foregoing considerations that the contested decision merely confirmed the first decision of the Board of Appeal.
30 Secondly, it should be pointed out that the contested decision confirmed a decision which had become final.
31 The first decision of the Board of Appeal had become final by the date on which the action was brought, since no action had been brought against it in the two-month period laid down by Article 65(5) of Regulation No 207/2009, as is apparent from the order in engineering for a better world, cited in paragraph 5 above (EU:T:2015:64, paragraphs 23 and 24), against which no appeal was brought.
32 That final nature of the first decision of the Board of Appeal is not called into question by the fact that, at paragraph 16 of the contested decision, the Board of Appeal held that that decision had not become final. The fact that the Board of Appeal so held can be explained by the fact that, at the date of the contested decision, the action which had been brought against the first decision of the Board of Appeal, in case T‑488/13, was pending.
33 It should be added, in this regard, that the fact that the action in case T‑488/13 was declared to be out of time only after the present action had been brought is, equally, not a ground for holding that the first decision of the Board of Appeal had not become final at the date on which that action was brought. If bringing an action against a decision out of time had the effect of postponing its acquisition of final status, the aim pursued by the case-law relating to the admissibility of actions brought against confirmatory measures, that is, to prevent the bringing of actions which would have the effect of causing expired limitation periods to begin to run again (see order of 25 October 2001, Métropole télévision — M 6 v Commission, T‑354/00, ECR, EU:T:2001:258, paragraph 34 and the case-law cited), would be frustrated.
34 It follows that, since the present action is brought against a decision confirming a decision which has become final, it must be dismissed as inadmissible.
Costs
35 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
36 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby orders:
1. The action is dismissed.
2. GEA Group AG is ordered to pay the costs.
Luxembourg, 6 October 2015.
E. Coulon | | M.E. Martins Ribeiro |