Case T-36/09

dm-drogerie markt GmbH & Co. KG

v

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

(Community trade mark – Opposition proceedings – Application for the Community word mark dm – Earlier national figurative mark dm – Administrative procedure – Decisions of the Opposition Divisions – Revocation – Correction of clerical errors – Legally non-existent measure – Admissibility of appeals before the Board of Appeal – Time-limit for filing an appeal – Legitimate expectations – Articles 59, 60a, 63 and 77a of Regulation (EC) No 40/94 (now Articles 60, 62, 65 and 80 of Regulation (EC) No 207/2009) – Rule 53 of Regulation (EC) No 2868/95)

Summary of the Judgment

1.      Community trade mark – Procedural provisions – Decisions of the Office – Correction – Limits

(Commission Regulation No 2868/95, Art. 1, Rule 53)

2.      Community trade mark – Observations of third parties and opposition – Competence of the Opposition Divisions to alter their own decisions – Correction – Revocation – Review

(Council Regulation No 40/94, Arts 60a and 77a; Commission Regulation No 2868/95, Art. 1, Rule 53)

3.      Acts of the institutions – Presumption of legality – Legally non-existent measure – Definition

4.      European Union law – Principles – Protection of legitimate expectations – Conditions –Precise assurances given by the administration – Definition – Silence of the administration – Not included

5.      Community trade mark – Appeals procedure – Time-limit and form of appeal – Reliance on the principle of the protection of legitimate expectations so as to avoid being time-barred – Conditions

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

1.      Under Rule 53 of Regulation No 2868/95 implementing Regulation No 40/94 on the Community trade mark, where the Office for Harmonisation in the Internal Market (Trade Marks and Designs) becomes aware, of its own motion or at the instance of a party to the proceedings, of a linguistic error, error of transcription or obvious mistake in a decision, it is to ensure that that error or mistake is corrected by the department or division responsible. It is apparent from that wording that the only legitimate purpose of corrections made on the basis of that provision is to correct spelling mistakes or grammatical errors, errors of transcription – such as errors relating to the names of the parties or to the written forms of the signs – or errors which are so obvious that nothing but the wording as corrected could have been intended.

(see para. 73)

2.      As is stated in recitals 11 and 12 to Regulation No 40/94 on the Community trade mark, the legislature intended, in adopting that regulation, to define the powers of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) and of each of its departments. Accordingly, the usual way of challenging decisions taken by the Opposition Divisions is for the parties adversely affected to have recourse to the legal remedies provided for in Title VII of Regulation No 40/94. Furthermore, Regulation No 40/94 envisages three cases in which the Opposition Divisions may themselves alter decisions which they have adopted, namely the correction of decisions under Rule 53 of Regulation No 2868/95 implementing Regulation No 40/94, the revocation of decisions according to Article 77a of Regulation No 40/94 and the review of decisions in inter partes cases provided for in Article 60a of Regulation No 40/94. Those three situations mark the limits of the possibilities available: it is clear from the general scheme of the rules of administrative procedure established by Regulation No 40/94 that, in principle, the Opposition Divisions exhaust their competence when they adopt a decision pursuant to Article 43 of that regulation and that they are not competent to withdraw or amend decisions which they have adopted other than in the situations envisaged by the legislation.

(see para. 80)

3.      Acts of the institutions, the bodies and the agencies of the European Union are in principle presumed to be lawful and accordingly produce legal effects, even if they are tainted by irregularities, until such time as they are annulled or withdrawn. However, by way of exception to that principle, measures tainted by an irregularity whose gravity is so obvious that it cannot be tolerated by the legal order of the European Union must – ex officio, if need be – be treated as having no legal effect, that is to say, they must be regarded as legally non-existent. The purpose of this exception is to maintain a balance between two fundamental, but sometimes conflicting, requirements with which a legal order must comply, namely stability of legal relations and respect for legality. From the gravity of the legal consequences attaching to a finding that a measure is non-existent, it is self-evident that, for reasons of legal certainty, such a finding is reserved for situations which are quite extreme.

Irregularities of such a kind as to lead the Courts of the European Union to regard a measure as legally non-existent differ from the illegalities which, in principle, lead to the annulment of measures whose legality is reviewed, as provided for under the Treaty – not on account of their nature, but on account of their gravity and their blatancy. Where measures are tainted by irregularities of such obvious gravity that it affects the conditions essential to their adoption and existence, those measures must be held to be legally non-existent.

(see paras 83, 86)

4.      Even in the absence of legislation, the possibility of relying on the principle of the protection of legitimate expectations is open to any individual which an institution, by giving him precise assurances, has led to entertain legitimate expectations. Regardless of the form in which it is communicated, precise, unconditional and consistent information which comes from an authorised and reliable source constitutes such assurance. By contrast, a person may not plead breach of that principle unless he has been given precise assurances by the administration. A party cannot therefore rely with justification on the silence of the administration in order to plead breach of the principle of the protection of legitimate expectations.

(see paras 108-110)

5.      In order to be able to rely on the principle of the protection of legitimate expectations so as to avoid being time-barred, an applicant must be able to show expectations based on specific assurances by the administration such as to give rise to pardonable confusion in the mind of a party acting in good faith and with all the diligence required of a normally informed operator.

Given the peremptory nature of the time-limit, set out in Article 59 of Regulation No 40/94 on the Community trade mark, for filing an appeal against a decision of the Opposition Division of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), of which the applicant had been reminded at the time of notification, since the applicant failed to file within that time-limit, even as a precaution, an appeal against that decision, it did not act with the diligence normally required if a party is to be able to rely on the principle of the protection of legitimate expectations.

(see paras 114-115)