Appeal brought on 18 August 2009 by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) against the judgment delivered by the Court of First Instance (Fifth Chamber) on 3 June 2009 in Case T-189/07 Frosch Touristik GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case C-332/09 P)

2009/C 256/27

Language of the case: German

Parties

Appellant: Office for Harmonisation in the Internal Market (Trade Marks and Designs) (represented by: B. Schmidt, Agent)

Other parties to the proceedings: Frosch Touristik GmbH, DSR touristik GmbH

Form of order sought

Pleas in law and main arguments

This appeal is brought against the judgment of the Court of First Instance annulling the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market of 22 March 2007, by which the Board of Appeal dismissed the respondent’s appeal against the decision of the Cancellation Division declaring the Community word mark ‘FLUGBÖRSE’ invalid in part. The Court of First Instance took the view that the Board of Appeal had erred in its application of Article 51(1)(a) of Regulation (EC) No 40/94 by focusing, in its examination as to whether registration of the mark was precluded by grounds for refusal under Article 7 of Regulation No 40/94 and whether the mark should therefore be declared invalid, on the circumstances and perception as at the date of registration of the mark at issue, instead of the date of filing of the application. According to the judgment under appeal, the only date relevant for the purposes of the assessment of an application for a declaration of invalidity is the date of filing of the application for the mark at issue. Moreover, in support of its view, the Court relied on the argument that that is the only interpretation which avoids a situation in which the probability of the mark losing its registrability increases with the length of the registration procedure. On a re-examination of grounds for refusal put forward subsequently, the examiner may take account of material subsequent to the date of filing of the application for registration only where that material enables conclusions to be drawn on the situation as it was on that date.

The appellant takes the view that the Court of First Instance misinterpreted Article 51(1)(a) of Regulation No 40/94 in so far as it deemed the date of filing of the application for registration of the mark to be the only date relevant for the purposes of assessment. This narrow interpretation is incompatible with the wording of Article 51(1)(a) and cannot be reconciled with its spirit and purpose, or with the system of protection and of the revocability of such protection under the Community trade mark regulation.

Article 51(1)(a) of Regulation No 40/94 provides for a mark to be removed from the register if it ‘has been registered’ contrary to Article 7. The Court’s conclusion that this wording merely sets out the circumstances in which a mark is to be refused registration or declared invalid, and that it does not (also) refer to the date for the examination, is unsustainable on the basis of the wording alone. Since no further grounds are provided by the Court, it is not clear which particular considerations caused the Court to reach its conclusion. The interpretation advanced by the appellant, that the phrase ‘has been registered’ is, at the very least, also a reference to the relevant point in time, is, on the other hand, by far the more obvious interpretation in view of the wording.

However, the Court’s interpretation in the judgment under appeal is also inconsistent with the notion of protection underlying Articles 7 and 51, whereby registrations which are contrary to the public interest are to be refused altogether, or, if they do proceed, may be revoked. This is the only way to avoid marks being registered contrary to the provisions of Regulation No 40/94 and thereby in disregard of the public interest underlying that provision. If the Court is right in its view, not only would an applicant for registration of a mark be able to secure protection for marks in respect of which absolute grounds for refusal of registration existed at the date of registration, but it would be impossible to cancel those marks following registration pursuant to Article 51 of Regulation No 40/94, because they would have been registrable at the date of filing of the application and any developments between the date of filing and registration would be expressly disregarded by the Court. According to the appellant, this means that an individual would be given unjustified preferential treatment as against the public interest which merits protection, which would be incompatible with the protective purpose of Articles 7 and 51 of Regulation No 40/94.

Finally, as regards the Court’s argument concerning the duration of the procedure, it should be noted that this can depend on a great number of factors, not only those within the appellant’s control, but also the applicant’s, or — as in the case of the conduct of the pre-registration opposition procedure provided for in Regulation No 40/94 — factors which may be determined by third parties. Furthermore, absolute grounds for refusal, which may not have been influenced, or been capable of being influenced, by the appellant, can arise at very short notice. In a proper assessment of opposing interests in such ad hoc situations, the public interest should be given priority, particularly since, before registration, applicants cannot be absolutely certain that they will be granted the protection sought. In such cases, it is appropriate, therefore, to take account also of developments up to the date of registration.

For those reasons, the judgment under appeal of the Court of First Instance should, therefore, be set aside on the grounds of a breach of Article 51 of Regulation No 40/94.