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Language of document : ECLI:EU:T:2011:171

Case T-262/09

Safariland LLC

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

(Community trade mark – Opposition proceedings – Application for the Community figurative mark FIRST DEFENSE AEROSOL PEPPER PROJECTOR – Relative ground for refusal – Article 8(3) of Regulation (EC) No 207/2009 – Implementation by OHIM of a judgment annulling a decision adopted by one of the OHIM Boards of Appeal – Rights of the defence – Duty to state reasons – Articles 63(2), 65(6), 75 and 76 of Regulation No 207/2009)

Summary of the Judgment

1. Community trade mark – Appeals procedure – Actions before the Community judicature – Implementation of a judgment annulling a decision adopted by a Board of Appeal – New decision

(Council Regulation No 207/2009, Art. 65(6))

2. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Absence of consent on the part of the proprietor of a mark to the registration applied for by an agent or a representative under its own name – Agent or representative – Definition

(Council Regulation No 207/2009, Art. 8(3))

3. Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Absence of consent on the part of the proprietor of a mark to the registration applied for by an agent or a representative under its own name – Cessation of the contractual relationship at the time when the application for the trade mark is filed – Applicability of Article 8(3) of Regulation No 207/2009– Conditions

(Council Regulation No 207/2009, Art. 8(3))

4. Community trade mark – Appeals procedure – Actions before the Community judicature – Implementation of a judgment annulling a decision adopted by a Board of Appeal – New examination of the appeal – Respect for the rights of the defence

(Council Regulation No 207/2009, Arts 63(2) and 75)

5. Community trade mark – Procedural provisions – Statement of reasons for decisions – Article 75, first sentence, of Regulation No 207/2009 – Scope identical to that of Article 253 EC – Recourse by the Board of Appeal to implicit reasoning – Whether permissible – Conditions

(Art. 253 EC; Council Regulation No 207/2009, Art. 75, first sentence)

1. In order to comply with its obligation under Article 65(6) of Regulation No 207/2009 on the Community trade mark to take the measures necessary to comply with a judgment of the General Court annulling a decision of one of its Boards of Appeal, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) has to ensure that the appeal leads to a new decision of a Board of Appeal. In that regard, it may reallocate the case to the Board of Appeal which adopted the contested decision.

(see para. 42)

2. Under Article 8(3) of Regulation No 207/2009 on the Community trade mark, a trade mark must not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

As regards the terms ‘agent’ and ‘representative’ as used in Article 8(3) of Regulation No 207/2009, it must be found that – as is stated in the Opposition Guidelines of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) – in cases where agents of the trade mark proprietor have filed an application without consent, those terms must be interpreted broadly, so as to cover all kinds of relationships based on a contractual arrangement under which one party is representing the interests of the other, regardless of how the contractual relationship between the proprietor or principal, on the one hand, and the applicant for the Community trade mark, on the other, is categorised. According to those guidelines, it is sufficient for the purposes of Article 8(3) of Regulation No 207/2009 that there be some agreement of commercial cooperation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the trade mark applicant – whether expressly or implicitly – a general duty of trust and loyalty as regards the interests of the trade mark proprietor. Nevertheless, some kind of agreement has to exist between the parties. If the applicant acts completely independently, without having entered into any kind of relationship with the proprietor, he cannot be treated as an agent for the purposes of Article 8(3) of Regulation No 207/2009. Thus, a mere purchaser or client of the proprietor cannot be regarded as an ‘agent’ or as a ‘representative’ for the purposes of that provision, since such persons are under no special obligation of trust to the trade mark proprietor.

(see paras 60, 64)

3. Under Article 8(3) of Regulation No 207/2009 on the Community trade mark, a trade mark must not be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his own name without the proprietor’s consent, unless the agent or representative justifies his action.

As regards the cessation of the contractual relationship at the time when the application for the trade mark is filed, it must be found that it is not necessary for the agreement between the parties still to be in force at the time when the application for the trade mark is filed and that Article 8(3) of Regulation No 207/2009 also applies to agreements which have expired before the filing date of the Community trade mark application, provided that sufficient time has elapsed for there to be good reason to assume that the obligation of trust and confidentiality was still present when the Community trade mark application was filed. That liberal interpretation of Article 8(3) of Regulation No 207/2009 is intended to protect the trade mark proprietor even after the cessation of the contractual relationship from which an obligation of trust derived.

(see paras 60, 65)

4. No specific procedure before the Boards of Appeal is provided for, either by Regulation No 207/2009 on the Community trade mark or by Regulation No 2868/95 implementing Regulation No 40/94, where a decision is annulled by the General Court and referred back to the Boards of Appeal, and there is consequently no obligation to hear the relevant parties again. Such an obligation could be inferred only from the general principle of Community law of respect for the rights of the defence, set out in the second sentence of Article 75 of Regulation No 207/2009.

The second sentence of Article 75 of Regulation No 207/2009 does not in any way require that, following the resumption of the proceedings before the Office for Harmonisation in the Internal Market (Trade Marks and Designs) after the annulment of a decision of the Boards of Appeal by the General Court, the applicant again be invited to submit observations on points of law and fact on which it has already had ample opportunity to express its views in the course of the written procedure previously conducted, given that the file as then constituted has been taken over by the Board of Appeal.

(see paras 83-84)

5. The first sentence of Article 75 of Regulation No 207/2009 on the Community trade mark provides that decisions of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) are to state the reasons on which they are based. That duty has the same scope as that enshrined in Article 253 EC and its purpose is to allow interested parties to know the reasons for the measure so as to enable them to protect their rights and to enable the Courts of the Union to exercise their jurisdiction to review the legality of the decision.

The question whether the statement of reasons for a decision satisfies those requirements is a question to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question.

However, the Boards of Appeal cannot be required to provide an account which follows exhaustively and one by one all the reasoning articulated by the parties before them. The reasoning may therefore be implicit on condition that it enables the persons concerned to know why the decision of the Board of Appeal was taken and provides the competent Court with sufficient material for it to exercise its review jurisdiction.

(see paras 90-92)