ORDER OF THE GENERAL COURT (Fifth Chamber)

24 October 2013 (*)

(Community trade mark – Community word mark STORMBERG – Appeal against the request for conversion of a Community trade mark into national trade mark applications – Inadmissibility of the appeal before the Board of Appeal – Action manifestly lacking any foundation in law)

In Case T‑457/12,

Stromberg Menswear Ltd, established in Leeds (United Kingdom), represented by A. Tsoutsanis, lawyer, and C. Tulley, Solicitor,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being,

Leketoy Stormberg Inter AS, established in Kristiansand S (Norway), represented by J. Løje, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 3 August 2012 (Case R 428/2012-4), relating to the request for conversion of a Community trade mark into national trade mark applications submitted by Leketoy Stormberg Inter AS,

THE GENERAL COURT (Fifth Chamber),

composed, at the time of deliberation, of S. Papasavvas (Rapporteur), President, M. van der Woude and V. Tomljenović, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 18 October 2012,

having regard to the response of OHIM lodged at the Court Registry on 18 April 2013,

having regard to the response of the intervener lodged at the Court Registry on 19 April 2013,

having regard to the decision of 30 May 2013 refusing leave to lodge a reply,

makes the following

Order

 Background to the dispute

1        On 25 March 2008, the applicant, Stromberg Menswear Ltd, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        Registration as a mark was sought for the following figurative sign:

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3        The goods in respect of which registration was sought are in Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Stylised clothing’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 2008/024 of 16 June 2008.

5        On 11 September 2008, the intervener, Leketoy Stormberg Inter AS, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the earlier Community word mark STORMBERG, designating goods in Class 25 corresponding to the following description: ‘Clothing, footwear, headgear’.

7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8        On 30 October 2009, the Opposition Division upheld the opposition.

9        On 2 December 2009, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

10      On 7 December 2009, the applicant submitted an application for revocation of the Community trade mark on the basis of Article 51(1)(a) of Regulation No 207/2009.

11      On 30 December 2010, the intervener informed OHIM that it wished to surrender the Community trade mark STORMBERG. The surrender was registered on 3 January 2011.

12      On 10 January 2011, the intervener filed a request with OHIM for conversion of its Community trade mark into 8 national trade mark applications.

13      By decision of 11 January 2011, the Cancellation Division closed the revocation proceedings for lack of purpose.

14      On 22 March 2011, the First Board of Appeal of OHIM annulled the Opposition Division’s decision of 30 October 2009 and rejected the opposition.

15      On 2 May 2011, the Community trade mark STROMBERG was registered.

16      On 19 December 2011, the intervener submitted an application for a declaration that the applicant’s Community trade mark was invalid, relying on its national marks.

17      On 17 February 2012, the applicant filed two notices of appeal with OHIM, the first against the Cancellation Division’s decision of 11 January 2011 and, the second against the decision by which OHIM accepted the request for conversion filed by the intervener and transmitted that request to the national authorities concerned. In its two appeals, the applicant relied on the provisions of Article 81(1) of Regulation No 207/2009 relating to the procedure in respect of restitutio in integrum.

18      By a first decision of 3 August 2012, the Fourth Board of Appeal of OHIM dismissed the appeal against the Cancellation Division’s decision of 11 January 2011. The applicant requested that the Court annul that decision by an action registered as Case T-451/12.

19      By a second decision dated the same day (‘the contested decision’), the Board of Appeal dismissed the appeal relating to the request for conversion filed by the intervener as inadmissible. In particular, it found that no decision concerning that conversion had been notified to the applicant and that the applicant was not a party to those proceedings.

 Forms of order sought

20      The applicant claims that the Court should:

–        annul the contested decision;

–        alter the contested decision and grant its request for restitutio in integrum and, primarily, annul OHIM’s decision to allow the conversion, or, in the alternative, allow it to appeal against OHIM’s decision and refer the case back to the Board of Appeal;

–        order OHIM to pay the costs incurred in connection with the present proceedings and the proceedings before the Board of Appeal.

21      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

22      The intervener contends that the Court should:

–        dismiss the action;

–        uphold the contested decision;

–        order the applicant to pay the costs or, in the alternative, order OHIM to pay the costs, or, in the further alternative, order the applicant and OHIM to pay the costs.

 Law

23      Under Article 111 of the Rules of Procedure of the General Court, where an action is manifestly lacking any foundation in law, the General Court may, by reasoned order and without taking further steps in the proceedings, give a decision on the action.

24      In the present case, the Court considers that it has sufficient information from the documents before it and that there is no need to take further steps in the proceedings.

25      In support of its action, the applicant relies, in essence, on three pleas in law, alleging, in essence: (i) infringement of the obligation to state reasons; (ii) infringement of Rule 48(1)(c) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 (OJ 1995 L 303, p. 1) and of Articles 57 to 60 of Regulation No 207/2009; and (iii) infringement of Article 81(1) of Regulation No 207/2009.

 The first plea, alleging infringement of the obligation to state reasons

26      The applicant submits that the Board of Appeal did not examine all the arguments which it had put forward and which tended to establish that it had been prevented from bringing an action for annulment of the ‘decision’ relating to the request for conversion filed by the intervener within the period prescribed by Regulation No 207/2009.

27      OHIM and the intervener dispute that argument.

28      It should be noted that, under the first sentence of Article 75 of Regulation No 207/2009, decisions of OHIM are to state the reasons on which they are based. That duty has the same scope as that enshrined in Article 296 TFEU (see, to that effect, Joined Cases T‑124/02 and T‑156/02 Sunrider v OHIM – Vitakraft‑Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II‑1149, paragraph 72).

29      It is settled case-law that the duty to give reasons for a decision has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Community judicature to exercise its power to review the legality of the decision. Whether a statement of reasons 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 (see VITATASTE and METABALANCE 44, paragraph 73 and the case-law cited).

30      In the present case, it is apparent from the statement of reasons for the contested decision that the Board of Appeal found that the appeal lodged by the applicant was inadmissible. Furthermore, the Board, in paragraphs 13 to 16 of its decision, explained the grounds for that inadmissibility. Consequently, since it took the view that the notice of appeal was inadmissible because it did not comply with the requirements set out in Rule 48(1)(c) of Regulation No 2868/95 and Article 59 and the first sentence of Article 60 of Regulation No 207/2009, the Board of Appeal could not rule on the substantive arguments put forward by the applicant in support of its appeal. None the less, the fact remains that the Board of Appeal expressed an opinion on the arguments put forward by the applicant since it stated, in paragraph 15 of the contested decision, that the applicant had not indicated anything which would have prevented it from filing a notice of appeal within the period prescribed by Regulation No 207/2009. In the present case, the statement of reasons adopted by the Board of Appeal allowed, on the one hand, the applicant to know the justification for the measure so as to enable it to protect its rights, and in particular to bring an action, and, on the other hand, the Courts of the European Union to exercise their power to review the legality of the contested decision. Consequently, the contested decision is sufficiently reasoned. The first plea must therefore be rejected as manifestly lacking any foundation in law.

 The second plea, alleging infringement of Rule 48(1)(c) of Regulation No 2868/95 and of Articles 57 to 60 of Regulation No 207/2009

31      The applicant submits, in essence, that the Board of Appeal erred in dismissing its appeal as inadmissible on the ground that no decision concerning the request for conversion filed by the intervener had been notified to it and that it was not a party to those proceedings.

32      OHIM and the intervener dispute those arguments.

33      It should be noted at the outset that Article 59 of Regulation No 207/2009 provides that any party to proceedings adversely affected by a decision may appeal. That article states that any other parties to the proceedings are to be parties to the appeal proceedings as of right.

34      The Board of Appeal found, in paragraph 9 of the contested decision, that, pursuant to that article, the applicant could only file an appeal against a decision which was adopted in proceedings to which it was a party. It then pointed out that, pursuant to Article 112 of Regulation No 207/2009, the request for conversion could be filed only by the applicant or proprietor of the Community trade mark and that there was no other party to the proceedings before OHIM. It concluded from that, in paragraph 10 of the contested decision, that, as the applicant had not been a party to the conversion proceedings, it could not challenge the outcome of those proceedings or any decision taken by OHIM in respect of the proprietor of the Community trade mark.

35      In the first place, the applicant submits that the Board of Appeal incorrectly applied Article 59 of Regulation No 207/2009 since it did not examine whether it was adversely affected by the conversion proceedings. The applicant takes the view that, in the present case, it was adversely affected by the positions adopted by OHIM in the conversion proceedings and that it therefore had sufficient legal interest in appealing before the Board of Appeal.

36      In that regard, it must be stated that the first requirement laid down in Article 59 of Regulation No 207/2009 is, as OHIM correctly pointed out, that of having been a party to the proceedings which resulted in the decision being challenged. As the Board of Appeal rightly found, Article 112 of Regulation No 207/2009 provides that a request for conversion may be filed only by the proprietor of the Community trade mark and that regulation does not provide for the intervention of any other parties in those types of proceedings. In the present case, the request for conversion was filed by the intervener. The applicant was not therefore a party to those proceedings. In those circumstances, given that the requirements set out in Article 59 of Regulation No 207/2009 are cumulative, the Board of Appeal was right to find that the applicant was not entitled to challenge before it the ‘decisions’ taken in the conversion proceedings.

37      That conclusion is not called into question by the applicant’s arguments. First, since the applicant does not satisfy one of the requirements set out in Article 59 of Regulation No 207/2009, the fact, even were it assumed to be established, that it was adversely affected by the ‘decision’ of OHIM which it intended to challenge before the Board of Appeal has no bearing on the contested decision. Secondly, although the applicant relies on the judgment in Case T‑342/02 Metro‑Goldwyn‑Mayer Lion v OHIM – Moser Grupo Media (Moser Grupo Media) [2004] ECR II‑3191, paragraphs 44 and 45, and the decision of the First Cancellation Division of OHIM of 3 May 2001 in Aromatonic (C000670042/1, 465/8, paragraphs 6 to 20), the fact remains that such references are irrelevant. First, paragraphs 44 and 45 of the judgement in Moser Grupo Media, to which the applicant refers, simply refer to the settled case-law according to which an action for annulment is admissible only in so far as the applicant has a legal interest in bringing proceedings. Secondly, in Aromatonic, the First Cancellation Division of OHIM merely stated that an applicant in invalidity proceedings could have a legitimate interest in continuing such proceedings in spite of the surrender of the disputed Community trade mark by the proprietor of that mark, if the latter had filed a request for conversion of that mark into a national trade mark. The reference to such a decision is not therefore relevant since that decision was taken in the context of different proceedings. In any event, it cannot bind the Court. It follows from the foregoing that the first head of claim put forward by the applicant must be rejected as manifestly lacking any foundation in law.

38      In the second place, the applicant submits that Article 59 of Regulation No 207/2009 allowed it to appeal before the Board of Appeal in its capacity as a party to proceedings related to the proceedings which resulted in the contested decision. The applicant adds that Article 58 of that regulation establishes a two-tier system of administrative review at OHIM which calls into question the too restrictive interpretation of Article 59 adopted by the Board of Appeal.

39      However, it has been stated, in paragraph 36 above, that Article 59 of Regulation No 207/2009 provides that only the parties to the proceedings which resulted in the decision being challenged are entitled to appeal against one of the decisions referred to in Article 58 of that regulation. That provision, which is sufficiently clear and precise, cannot be interpreted, as the applicant suggests, as also concerning parties to related proceedings. Furthermore, since it has been stated in paragraph 37 above that the reference to the judgment in Moser Grupo Media is irrelevant, the fact remains that the applicant does not adduce any evidence to bear out the interpretation of Article 59 of Regulation No 207/2009 which it proposes. Lastly, the fact that Article 58 of Regulation No 207/2009 provides inter alia that an appeal shall lie from decisions of the Cancellation Divisions does not mean that such an appeal is open to all. Such an interpretation would render the provisions of Article 59 redundant. The second head of claim put forward by the applicant must therefore also be rejected as manifestly lacking any foundation in law.

40      In the third place, the applicant submits that OHIM erred in maintaining, in paragraphs 8 and 10 of the contested decision, that no decision regarding conversion had been notified to it and that Article 113(3) of Regulation No 207/2009 simply provided for a transmission of the request for conversion to the national offices and did not provide for a formal decision from which an appeal would lie. According to the applicant, OHIM’s Guidelines refer to the existence of such a decision.

41      It should be noted at the outset that the guidelines relating to proceedings before OHIM, which are published on its Internet site, are a consolidated set of rules setting out the line of conduct which OHIM itself proposes to adopt, with the result that, provided that those rules are consistent with legal provisions of higher authority, they constitute a self-imposed restriction on OHIM, namely that of compliance with the rules which it has itself laid down (see judgment of 25 October 2012 in Case T‑191/11 Automobili Lamborghini v OHIM – Miura Martínez (Miura), not published in the ECR, paragraph 30 and the case-law cited).

42      In the present case, it is true that Section 2.3.3 of those guidelines provides that, if one of the grounds precluding conversion exists, OHIM is to refuse to forward the conversion request to the respective national office. That section states that that decision is subject to appeal. However, the fact remains that that situation is restricted to the case where the request for conversion does not satisfy the requirements laid down by Articles 112 and 113 of Regulation No 207/2009. In the present case, it is common ground that the request for conversion filed by the intervener satisfied the requirements laid down by those articles. Furthermore, it must be pointed out that neither Regulation No 207/2009 nor Regulation No 2868/95 provides for the adoption of a decision by OHIM in a situation where a request for conversion satisfies the requirements laid down by Articles 112 and 113 of Regulation No 207/2009. In such a case, those regulations provide that the role of OHIM is limited to examining the request in order to satisfy itself that it is admissible, publishing it, where appropriate, in the Community Trade Marks Bulletin and, lastly, transmitting it to the national offices concerned. Consequently, the Board of Appeal was right to find that no decision from which an appeal would lie was taken in the present case. Moreover, it must be pointed out that the ‘decision’ being challenged by the applicant before the Board of Appeal is not one of the decisions referred to in Article 58 of Regulation No 207/2009 from which an appeal lies.

43      It follows from the foregoing that the Board of Appeal was right to dismiss the applicant’s appeal as inadmissible since there was no challengeable act. Consequently, the second plea must be rejected as manifestly lacking any foundation in law.

 The third plea, alleging infringement of Article 81(1) of Regulation No 207/2009

44      The applicant submits, in essence, that OHIM erred in rejecting its request for restitutio in integrum on the ground that the conditions set out in Article 81(1) of Regulation No 207/2009 were not satisfied.

45      However, it has been determined in paragraphs 42 and 43 of the present order that the appeal which the applicant filed with OHIM was inadmissible since there was no challengeable act. The Board of Appeal was therefore required to dismiss it. Consequently, the fact, even were it assumed to be established, that OHIM erred in rejecting its request for restitutio in integrum on the ground that the conditions set out in Article 81(1) of Regulation No 207/2009 were not satisfied had no bearing on the effect of the contested decision. Accordingly, the plea alleging infringement of that article is ineffective and must be rejected as manifestly lacking any foundation in law.

46      It follows from all of the foregoing that the action must be dismissed in its entirety as manifestly lacking any foundation in law without there being any need to examine the head of claim with a view to alteration put forward by the applicant.

 Costs

47      Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the OHIM and the intervener.

On those grounds,

THE GENERAL COURT (Fifth Chamber)

hereby orders:

1.      The action is dismissed.

2.      Stromberg Menswear Ltd shall pay the costs.

Luxembourg, 24 October 2013.

E. Coulon

       S. Papasavvas
Registrar

President