ORDER OF THE GENERAL COURT (Second Chamber)
17 July 2012(*)
(Community trade mark – Opposition proceedings – Costs recoverable before OHIM – Costs of being represented by an employee – Article 85(1) of Regulation (EC) No 207/2009 – Action manifestly devoid of any basis in law)
In Case T‑240/11,
L’Oréal SA, established in Paris (France), represented by A. von Mühlendahl and S. Abel, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
United Global Media Group, Inc., established in El Segundo, California (United States),
ACTION against the decision of the First Board of Appeal of OHIM of 3 February 2011 (Case R 898/2010‑1) concerning opposition proceedings between United Global Media Group, Inc. and L’Oréal,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood (Rapporteur), President, F. Dehousse and J. Schwarcz, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 4 May 2011,
having regard to the response lodged at the Court Registry on 13 July 2011,
having regard to the application for a hearing submitted by the applicant to the Court Registry on 7 November 2011,
makes the following
Order
Background to the dispute
1 On 5 November 2007, the applicant, L’Oréal SA, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark in respect of which registration was sought is the figurative sign reproduced below:
3 The Community trade mark application was published in Community Trade Marks Bulletin No 14/2008 of 7 April 2008.
4 On 7 July 2008, United Global Media Group, Inc. filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the mark applied for, on the basis of Article 8(4) of Regulation No 40/94 (now Article 8(4) of Regulation No 207/2009).
5 By decision of 5 May 2010, the Opposition Division rejected the opposition in its entirety on the ground that United Global Media Group had produced no evidence of use in the course of trade of the signs on which its opposition was based. Moreover, the Opposition Division ordered Global Media Group to pay the costs but at the same time took the view that the applicant was not entitled, under Rule 94(3) and (7)(d)(ii) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation [No 40/94] (OJ 1995 L 303, p. 1), to the costs of representation, since it had not appointed a representative within the meaning of Article 93 of Regulation No 207/2009.
6 On 20 May 2010, the applicant filed a notice of appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision. By decision of 3 February 2011 (‘the contested decision’), the First Board of Appeal upheld the Opposition Division’s decision.
Forms of order sought by the parties
7 The applicant claims that the Court should:
– annul the contested decision;
– order United Global Media Group to pay the costs, including those incurred before the Board of Appeal.
8 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
9 As set out in Article 111 of the Rules of Procedure of the General Court, where the action is manifestly lacking any foundation in law, the Court may, without taking further steps in the proceedings, give a decision on the action by reasoned order.
10 In the present case, the Court considers that it has sufficient information from the documents before it and has decided, pursuant to that provision, to give a decision on the action by reasoned order without taking further steps in the proceedings, even though one of the parties has requested a hearing (see, to that effect, the order of the General Court of 13 September 2011 in Case T‑397/10 ara v OHIM – Allrounder (A), not published in the ECR, paragraph 18).
11 The applicant submits, first, that the Commission is entitled, pursuant to Article 85(1) of Regulation No 207/2009, to set the scales for each category of costs but that it cannot exclude categories which, according to that regulation, are recoverable. Therefore, as is apparent from its wording, that provision does not permit different treatment according to whether the successful party was represented by one of its employees or by a professional representative. As the applicant was represented before the Opposition Division by the head of its ‘Trade Marks’ Department, who is also a professional representative within the meaning of Article 93(1)(b) of Regulation No 207/2009, it is entitled to representation costs. The amount of those costs could be fixed pursuant to Article 85(6) of Regulation No 207/2009 and Rule 94(7) of Regulation No 2868/95, applied by analogy.
12 Those submissions cannot be accepted.
13 Article 85(1) of Regulation No 207/2009 provides that ‘[t]he losing party in opposition proceedings, proceedings for revocation, proceedings for a declaration of invalidity or appeal proceedings shall bear the fees incurred by the other party as well as all costs, without prejudice to Article 119(6), incurred by him essential to the proceedings, including travel and subsistence and the remuneration of an agent, adviser or advocate, within the limits of the scales set for each category of costs under the conditions laid down in the Implementing Regulation’.
14 Contrary to what is claimed by the applicant, the provision in question, first, establishes the principle that the successful party is to be reimbursed in respect of the costs incurred by it that are essential to the proceedings and, second, provides that travel and subsistence and the remuneration of an agent, adviser or advocate form part of those costs. There is nothing in that provision to suggest that such costs are recoverable where the party is not represented by an agent, adviser or advocate but by an employee, in accordance with Article 92(3) of Regulation No 207/2009.
15 In those circumstances, it is clear that Rule 94(7) of Regulation No 2868/95 is compatible with Article 85(1) of Regulation No 207/2009, since it provides that where the party has not appointed a representative, the travel and subsistence expenses of one person are recoverable, whereas where the party has appointed a legal practitioner or professional representative within the meaning of Article 93(1) of Regulation No 207/2009, it is also entitled to a fixed amount by way of costs of professional representation. Indeed, if a party is represented by an employee, the costs other than the travel and subsistence expenses of the employee in question are not incurred for the purpose of the proceedings within the meaning of Article 85(1) of Regulation No 207/2009 but stem from the employment relationship that was established independently of the proceedings in question and entails the defence of the employer’s interests before OHIM (see, by analogy, the order in Case C‑409/96 P‑DEP Commission v Sveriges Betodlares and Henrikson [1999] ECR I‑4939, paragraphs 12 and 14).
16 Accordingly, contrary to the applicant’s submissions, Rule 94(7) of Regulation No 2868/95 cannot be interpreted as having omitted to include among the costs that are recoverable in the event of representation by an employee a category of costs for which provision is made in Article 85(1) of Regulation No 207/2009 for such instances.
17 Thus, the applicant’s argument that, where a party is represented before OHIM by an employee in accordance with Article 92(3) of Regulation No 207/2009, the costs of representation are to be fixed by applying the first sentence of Article 85(6) of that regulation by analogy, cannot be accepted. It should also be noted that the only purpose of the first two sentences of Article 85(6) of Regulation No 207/2009 is to allocate powers to fix the amount of costs as between the Opposition Division, the Cancellation Division and the Board of Appeal on the one hand, and the Registry of the Board of Appeal or the staff of the Opposition or Cancellation Divisions on the other.
18 Lastly, since, as is apparent from pages 3, 4 and 63 of OHIM’s file, the applicant was represented, both at the stage at which it filed its Community trade mark application and before the Opposition Division, by the Director of its International Trade Marks Department in his capacity as employee, the fact that that person is also on the list of professional representatives referred to in Article 93(2) of Regulation No 207/2009 is not sufficient for a finding that the applicant was entitled to be reimbursed in the amount provided for in Rule 94(7)(d)(ii) of Regulation No 2868/95.
19 It follows that the action must be dismissed as manifestly lacking any basis in law.
Costs
20 Under Article 87(2) 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. 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 be dismissed.
2. L’Oréal SA be ordered to pay the costs.
Luxembourg, 17 July 2012.