Case T‑396/11

ultra air GmbH

v

Office for Harmonisation in the Internal Market
(Trade Marks and Designs) (OHIM)

(Community trade mark — Invalidity proceedings — Community word mark ultrafilter international — Absolute ground for refusal — Article 52(1)(a) of Regulation (EC) No 207/2009 — Abuse of rights)

Summary — Judgment of the General Court (Second Chamber), 30 May 2013

1.      Community trade mark — Surrender, revocation and invalidity — Action for cancellation — Admissibility — Conditions — Interest in bringing proceedings

(Council Regulation No 207/2009, Art. 56(1)(a))

2.      Community trade mark — Definition and acquisition of the Community trade mark — Absolute grounds for refusal — Separate examination of the various grounds for refusal — Interpretation of the grounds for refusal in the light of the public interest underlying each of them

(Council Regulation No 207/2009, Art. 7(1)(b) and (c))

3.      Community trade mark — Surrender, revocation and invalidity — Action for cancellation — Admissibility — Misuse of rights — No effect

(Council Regulation No 207/2009, Arts 52(1)(a), and 56(1)(a))

4.      Community trade mark — Appeals procedure — Action before the EU judicature — Possibility for the General Court to alter the contested decision — Limits

(Council Regulation No 207/2009, Art. 65(3))

1.      An application for a declaration of invalidity under Article 56(1)(a) of Regulation No 207/2009 is an administrative procedure and not a court action.

Article 56(1)(a) of Regulation No 207/2009 provides that an application for a declaration of invalidity based on an absolute ground for invalidity may be submitted by any natural or legal person and any group or body set up for the purpose of representing the interests of manufacturers, producers, suppliers of services, traders or consumers, which has the capacity in its own name to sue and be sued, whereas Article 56(1)(b) and (c) of the regulation, concerning applications for a declaration of invalidity based on a relative ground for invalidity, reserves the right to make such an application to certain specific persons who have an interest in bringing proceedings. Consequently, it is apparent from the scheme of that article that the legislature intended to restrict the group of persons able to apply for a declaration of invalidity in the latter case, but not in the former.

Whereas relative grounds for refusal of registration protect the interests of proprietors of certain earlier rights, the absolute grounds for refusal of registration aim to protect the public interest underlying them, which explains why Article 56(1)(a) of Regulation No 207/2009 does not require the applicant to show an interest in bringing proceedings.

(see paras 16-18)

2.      See the text of the decision.

(see para. 19)

3.      The purpose of the administrative procedure laid down in Article 56(1)(a) of Regulation No 207/2009 on the Community trade mark, in conjunction with Article 52(1)(a) of that regulation, is, inter alia, to enable the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to review the validity of the registration of a mark and to adopt, where necessary, a position which it should have adopted of its own motion under Article 37(1) of Regulation No 207/2009.

In that regard, OHIM is required to assess whether the mark under examination is descriptive and/or devoid of distinctive character, without the motives and earlier conduct of the applicant for a declaration of invalidity being able to affect the scope of the task entrusted to OHIM in relation to the public interest underlying Article 7(1)(b) and (c) and Article 56(1)(a) of Regulation No 207/2009. Given that, in applying the provisions at issue in the context of invalidity proceedings, OHIM does not rule on the question whether the rights of the proprietor of the mark take precedence over any rights which the applicant for a declaration of invalidity might have, but ascertains whether the rights of the proprietor of the mark were validly obtained in the light of the rules governing the registrability of marks, there can be no question of an ‘abuse of rights’ on the part of an applicant for a declaration of invalidity.

Thus, the fact that an applicant for a declaration of invalidity may file an application with a view to subsequently affixing the sign in question to its own products is perfectly in line with the public interest safeguarded by Article 7(1)(c) of Regulation No 207/2009 of keeping signs freely available, and is in no way capable of constituting an abuse of rights. That assessment is confirmed by Article 52(1) of Regulation No 207/2009, pursuant to which a Community trade mark may also be declared invalid on the basis of a counterclaim in infringement proceedings, which presupposes that the defendant in that action may obtain a declaration of invalidity even if he has used the mark in question and intends to continue to do so.

(see paras 20-22)

4.      See the text of the decision.

(see para. 29)