Case T-285/08

Securvita – Gesellschaft zur Entwicklung alternativer Versicherungskonzepte mbH

v

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

(Community trade mark – Application for Community word mark Natur‑Aktien‑Index – Absolute ground for refusal – Lack of distinctive character – Article 7(1)(b) of Regulation (EC) No 40/94 (now Article 7(1)(b) of Regulation (EC) No 207/2009) – Application for alteration – Manifest inadmissibility)

Summary of the Order

Community trade mark – Appeals procedure – Appeals before the Community judicature – Jurisdiction of the Court of First Instance – Amendment of a decision by the Office – Assessment in the light of the powers conferred on the Board of Appeal

(Council Regulation No 40/94, Arts 45, 62(1), 63(3), 126 and 127(1))

A head of claim seeking to have the Court amend the decision of a Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), contested before it, so as to order registration as a Community trade mark of the trade mark applied for from OHIM, or registration of that trade mark, is clearly inadmissible.

Such a head of claim constitutes an application for alteration for the purposes of Article 63(3) of Regulation No 40/94 on the Community trade mark. In that regard, the power of the Court to alter decisions operates to the effect that the Court adopts the decision which the Board of Appeal ought to have taken, in accordance with the provisions of Regulation No 40/94. Accordingly, the admissibility of a head of claim seeking alteration by the Court of the decision of a Board of Appeal must be assessed in the light of the powers conferred on that Board by Regulation No 40/94.

Firstly, pursuant to Article 62(1) of Regulation No 40/94 the Board of Appeal does not have power to issue directions to the department whose decision it examined. In accordance with that provision, following the examination as to the allowability of an appeal brought against a decision of one of the departments listed in Article 57(1) of that regulation, the Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

Secondly, in the context of appeals brought against decisions of the examiner or the Opposition Division, in accordance with Article 57(1) of Regulation No 40/94, a Board of Appeal does not have power to take cognisance of an application that it register a Community trade mark. Registration of a Community trade mark is a consequence of a finding that the conditions laid down in Article 45 of Regulation No 40/94 have been met, although the departments of OHIM responsible for registration of Community trade marks do not, in that respect, adopt any formal decision which might be the subject of an appeal. It follows from the provisions of Articles 45, 126 and 127(1) of Regulation No 40/94 that the powers conferred on the examiner and on the Opposition Division do not include finding that the conditions for registration of a Community trade mark, laid down in Article 45 of Regulation No 40/94, are met. In those circumstances, in the light of the provisions of Article 62(1) of Regulation No 40/94, a Board of Appeal does not have the power to decide whether a mark should be registered. Accordingly, nor is it for the Court to take cognisance of such an application to that effect.

(see paras 10-17, 20-24)