Case T-85/07

Gabel Industria Tessile SpA

v

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

(Community trade mark – Opposition proceedings – Application for the Community word mark GABEL – Earlier Community figurative mark GAREL – Partial refusal of registration – Scope of the examination to be carried out by the Board of Appeal – Obligation to rule on the entirety of the action – Article 62(1) of Regulation (EC) No 40/94)

Summary of the Judgment

1.      Community trade mark – Appeals procedure – Decision on the appeal – Obligation of the Board of Appeal – Scope

(Council Regulation No 40/94, Art. 62(1))

2.      Community trade mark – Appeals procedure – Appeals before the Community judicature – Possibility for the Court of First Instance to alter the contested decision

(Council Regulation No 40/94, Art. 63(2) and (3))

1.      Pursuant to the first sentence of Article 62(1) of Regulation No 40/94 on the Community trade mark, ‘[f]ollowing the examination as to the allowability of the appeal, the Board of Appeal shall decide on the appeal’. That obligation must be understood to mean that the Board of Appeal is obliged to rule on each of the heads of claim submitted for its consideration in its entirety, either by upholding it, rejecting it as inadmissible or rejecting it on substantive grounds. Since disregard of that obligation can affect the content of the Board of Appeal’s decision, this is a question of an essential procedural requirement, the infringement of which can be raised by the Court of its own motion.

(see para. 20)

2.      Although Article 63(3) of Regulation No 40/94 on the Community trade mark enables the Court to alter the decisions of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), that possibility is, in principle, limited to situations in which the case has reached a stage appropriate for judicial adjudication. The fact that the Board of Appeal failed to rule on one of the applicant’s heads of claim means that that stage had not been reached. Alteration of such a decision would in effect imply that the Court was deciding for the first time on the substance of the pleas on which the Board of Appeal had failed to rule. Such a determination does not, however, fall within the jurisdiction of the Court as laid down in Article 63(2) and (3) of Regulation No 40/94.

(see para. 28)