Case T-145/08

Atlas Transport GmbH

v

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

(Community trade mark – Invalidity proceedings – Community word mark ATLAS – Earlier Benelux figurative mark atlasair – Procedural requirements – Filing of a written statement setting out the grounds of appeal – Suspension of the administrative proceedings – Article 59 of Regulation (EC) No 40/94 (now Article 60 of Regulation (EC) No 207/2009) – Rule 20(7) of Regulation (EC) No 2868/95)

Summary of the Judgment

1.      Community trade mark – Appeals procedure – Time-limit and form of appeal – Lodging of a document setting out the grounds within the time-limits – Condition of admissibility

(Council Regulation No 40/94, Art. 59; Commission Regulation No 2868/95, Art. 1, Rules 48(1) and (2), and 49)

2.      Community trade mark – Appeals procedure – Appeal to a Board of Appeal – Stay of proceedings – Conditions

(Council Regulation No 40/94, Art. 79; Commission Regulation No 2868/95, Art. 1, Rule 20(7); Commission Regulation No 216/96, Art. 8)

1.      Under Article 59 of Regulation No 40/94 on the Community trade mark, notice of appeal must be filed in writing at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) within two months after the date of notification of the decision appealed from. Within four months after the date of notification of the decision, a written statement setting out the grounds of appeal must be filed.

Further, Rule 48(1)(c) of Regulation No 2868/95 implementing Regulation No 40/94 states that the notice of appeal must contain a statement identifying the decision which is contested and the extent to which amendment or cancellation of the decision is requested.

Finally, Rule 49 of Regulation No 2868/95 states that, if the appeal does not comply with the conditions laid down by Article 59 of Regulation No 40/94 and Rule 48(1)(c) and (2) of Regulation No 2868/95, the Board of Appeal is to dismiss it as inadmissible, unless each deficiency has been remedied before the relevant time-limit laid down in Article 59 of Regulation No 40/94 has expired.

A systematic reading of those provisions shows that an appellant wishing to bring an appeal before the Board of Appeal is required, within the prescribed time-limit, to file with Office a written statement setting out the grounds for the appeal, failing which the appeal is to be dismissed as inadmissible, and that those grounds involve more than an indication of the decision appealed against and of the fact that the appellant wishes it to be amended or annulled by the Board of Appeal.

Thus, where Article 59 of Regulation No 40/94 requires an appellant to file a written statement setting out the grounds of his appeal, the appellant must set out, in writing and sufficiently clearly, what matters of fact and/or of law support his request to the Board of Appeal to annul and/or amend the decision challenged.

(see paras 37-41, 46)

2.      Rule 20(7) of Regulation No 2868/95, implementing Regulation No 40/94 on the Community trade mark, and Article 8 of Regulation No 216/96, laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs), which provide for the possibility of suspension of the procedure before the Board of Appeal respectively in opposition proceedings and as a result of an opinion of the Registrar of the Board of Appeal on the admissibility of an appeal before it, constitute the expression of the general principle recognised in the Member States concerning the possibility of a decision-making body suspending proceedings before it where that is appropriate in the circumstances.

Rule 20(7)(c) of Regulation No 2868/95 can properly be applied by analogy in the context of invalidity proceedings, since both opposition proceedings based on Article 8(1)(b) of Regulation No 40/94 and proceedings based on relative grounds for invalidity under Article 52(1)(a) of Regulation No 40/94 are designed to assess the likelihood of confusion between two marks, and the possibility of suspending proceedings contributes to the effectiveness of those proceedings.

Accordingly, the Board of Appeal has the power to suspend invalidity proceedings where that is appropriate in the circumstances.

The discretion of the Board of Appeal to suspend proceedings or not to is a broad discretion. Rule 20(7)(c) of Regulation No 2868/95 illustrates that broadness of discretion, stating that the Board of Appeal can suspend proceedings where that is appropriate under the circumstances. Suspension remains optional for the Board of Appeal, which avails itself of the option only when it considers it appropriate. Proceedings before the Board of Appeal are therefore not automatically suspended as a result of a request for suspension by a party before it.

The fact that the Board of Appeal has a broad discretion to suspend proceedings before it does not take its assessment outside the scope of judicial review. That fact does, however, restrict judicial review on the merits to ensuring that there is no manifest error of assessment or misuse of powers.

In exercising its discretion with respect to suspension of proceedings, the Board of Appeal must comply with the general principles governing procedural fairness within a community governed by the rule of law. Thus, in that exercise, the Board of Appeal must take into account not only the interests of the party whose Community mark is contested, but also those of the other parties. The decision whether or not to suspend must follow upon a balancing of the competing interests.

(see paras 66-70, 76)