Opinion of Advocate General Campos Sánchez-Bordona delivered on 16 May 2019.

• Jurisdiction: European Union
• Celex Number: 62018CC0281
• ECLI: ECLI:EU:C:2019:426
• Court: Court of Justice (European Union)
• Date: 16 May 2019

Provisional text

OPINION OF ADVOCATE GENERAL

CAMPOS SÁNCHEZ-BORDONA

delivered on 16 May 2019 (1)

Case C‑281/18 P

Repower AG

v

European Union Intellectual Property Office (EUIPO)

(Appeal — EU trade mark — Invalidity proceedings — Revocation of the Board of Appeal’s original decision partially refusing the application for a declaration of invalidity of the EU word mark REPOWER)

1. This appeal essentially concerns the legal basis that enables the Boards of Appeal of the European Union Intellectual Property Office (EUIPO) to revoke their own decisions.

2. The dispute arose when the association repowermap.org (‘repowermap’) sought to have a European Union trade mark (‘REPOWER’), of which another undertaking (Repower AG) was the proprietor, declared invalid in respect of all the goods and services covered by the application for registration.

3. At the end of the administrative proceedings, the Fifth Board of Appeal of EUIPO, by decision of 8 February 2016, partially upheld the application for a declaration of invalidity of the mark. (2) After repowermap contested that decision before the General Court, (3) the Board of Appeal revoked it (on 3 August 2016) on the grounds that it contained an inadequate statement of reasons.

4. Repower AG then brought an action contesting the decision of 3 August 2016 before the General Court, which dismissed that action by judgment of 21 February 2018, which is now the subject of this appeal.

I. Legislative framework. Regulation (EC) No 207/2009 (4)

5. The proceedings are governed ratione temporis by Regulation (EC) No 207/2009 in its original version; that regulation was amended in 2015 (5) and later replaced by Regulation (EU) 2017/1001. (6)

6. Article 80 of Regulation No 207/2009 provides:

‘1. Where the Office has made an entry in the Register or taken a decision which contains an obvious procedural error attributable to the Office, it shall ensure that the entry is cancelled or the decision is revoked. Where there is only one party to the proceedings and the entry or the act affects its rights, cancellation or revocation shall be determined even if the error was not evident to the party.

2. Cancellation or revocation as referred to in paragraph 1 shall be determined, ex officio or at the request of one of the parties to the proceedings, by the department which made the entry or took the decision. Cancellation or revocation shall be determined within six months from the date on which the entry was made in the Register or the decision was taken, after consultation with the parties to the proceedings and any proprietor of rights to the Community trade mark in question that are entered in the Register.

3. This Article shall be without prejudice to the right of the parties to submit an appeal under Articles 58 and 65, or to the possibility, under the procedures and conditions laid down by the Implementing Regulation, of correcting any linguistic errors or errors of transcription and obvious errors in the Office’s decisions or errors attributable to the Office in registering the trade mark or in publishing its registration.’

7. Article 83 of Regulation No 207/2009 reads:

‘In the absence of procedural provisions in this Regulation, the Implementing Regulation, the fees regulations or the rules of procedure of the Boards of Appeal, the Office shall take into account the principles of procedural law generally recognised in the Member States.’

II. Background to the dispute

A. Procedure before EUIPO

8. Repower AG is the proprietor of the EU word mark ‘REPOWER’, registered for goods and services in classes 4, 9, 37, 39, 40 and 42 of the Nice Agreement. (7) Those categories of goods and services include or relate to, inter alia, electrical energy, its production, and other technical aspects.

9. On 3 June 2013, repowermap applied for a declaration of invalidity of the mark REPOWER, arguing that it was a descriptive sign and was devoid of distinctive character in respect of all the goods and services for which it had been registered. (8)

10. By decision of 9 July 2014, the Cancellation Division of EUIPO:

– Partially upheld the application for a declaration of invalidity in relation to some of the goods and services in Classes 37 (9) and 42. (10)

– Dismissed the application for a declaration of invalidity in relation to all the other goods and services.

– In relation to the distinctive character of the sign, pointed out that repowermap had failed to show that the word REPOWER had been commonly used in the trade to designate the remaining goods and services, from which it followed that it should be regarded as a trade mark.

11. Repowermap appealed against the decision of the Cancellation Division to the Board of Appeal, which dismissed the appeal by decision of 8 February 2016. According to the Cancellation Division, the sign was not descriptive and repowermap had failed to adduce evidence that the sign was usual in relation to the goods and services at issue.

12. On 26 April 2016, repowermap brought an action before the General Court for annulment of the Board of Appeal’s decision of 8 February 2016 (Case T‑188/16).

13. While Case T‑188/16 was pending before the General Court, the Board of Appeal decided, on 3 August 2016, (11) to revoke the decision of 8 February 2016. It justified the revocation of the decision on the basis of the ‘inadequate statement of reasons [in the decision of 8 February 2016]’ in relation to the goods and services, which constituted ‘an obvious procedural error for the purposes of Article 80 of Regulation No 207/2009’. The Board of Appeal further stated that it would give a fresh decision in due course, (12) which it did on 26 September 2016. (13)

B. Judgment under appeal

14. Repower AG brought an action before the General Court on 10 October 2016 against the Board of Appeal’s decision of 3 August 2016, relying on four pleas for annulment of the decision: (i) the decision lacks a legal basis; (ii) the Board of Appeal has no power to revoke its own decisions; (iii) infringement of Article 80 of Regulation No 207/2009, of EUIPO’s Guidelines for Examination and of the principles of sound administration, of legal certainty and the force of res judicata; and (iv) the decision contains an inadequate statement of reasons.

15. For our purposes here, I should point out that Repower AG put forward the following arguments in its action before the General Court:

– The Board of Appeal infringed Article 80(1) of Regulation No 207/2009, for an inadequate statement of reasons is not a procedural error but an error of material law. (14)

– Under Part A, Section 6, paragraph 1.3.1 of EUIPO’s Guidelines for Examination, a decision cannot be revoked if an appeal against it is pending before the Board of Appeal. That principle should apply by analogy to decisions of the Boards of Appeal against which actions are pending before the General Court.

– It would be incompatible with the principles of sound administration, of legal certainty and of res judicata that any department of EUIPO would be able to freely modify the subject matter of ongoing proceedings.

16. By judgment of 21 February 2018, (15) the General Court dismissed the four pleas for annulment and, accordingly, the action brought by Repower AG.

17. The General Court accepted the claim that an inadequate statement of reasons could not be classified as a procedural error. It deduced from an earlier judgment (16) that ‘the statement of reasons in a decision affects the actual substance of that decision and that an inadequate statement of reasons cannot be regarded as a procedural error within the meaning of Article 80(1) of Regulation No 207/2009’. Therefore, the Board of Appeal ‘was not entitled to base the contested decision on Article 80(1) of Regulation No 207/2009’. (17)

18. Having set down that proposition, the General Court stated that ‘the Boards of Appeal may, in principle, rely upon the general principle of law that permits the withdrawal of an unlawful administrative act in order to withdraw their decisions’. (18) The General Court took the view that the existence of a specific provision (Article 80(1) of Regulation No 207/2009) did not preclude the application of that principle, irrespective of that provision.

19. In support of that assertion, the General Court again relied on two of its own earlier judgments, (19) from which it inferred that, ‘even where the legislature has regulated the procedure for withdrawing the acts of an institution, that institution may withdraw an act on the basis of the general principle of law permitting the withdrawal of unlawful administrative acts subject to compliance with certain conditions [respect for a reasonable time limit and the legitimate expectations of the beneficiary]’. (20)

20. The General Court held that the concept of an ‘obvious procedural error’ is not defined in any of the regulations referred to in Article 80(1) of Regulation No 207/2009 and that that provision ‘is not without ambiguity and is therefore not sufficiently clear to exclude the application of Article 83 of Regulation No 207/2009’. (21)

21. After that, the General Court focused its analysis on the conditions for application of the general principle of law referred to above and went on to find (22) that:

– The contested decision (on revocation) had been given within a reasonable time, just under six months after the decision of 8 February 2016;

– Repower AG was not entitled to rely on a legitimate expectation, since repowermap had brought an action against the decision of 8 February 2016. (23)

22. The General Court disagreed that the principle of revocation was incompatible with the principles of sound administration, of legal certainty and of res judicata. First, it is lawful and in the interest of sound administrative management to correct the errors and omissions in a decision. Second, since that must occur within a reasonable time, the right of the person...