Action brought on 30 April 2004 by M. Schäfer against the Office for Harmonisation in the Internal Market (Trade Marks and Designs)

(Case T-163/04)

(2004/C 251/35)

Language of the case to be determined pursuant to Article 131(2) of the Rules of Procedure language in which the application was submitted: German

An action against the Office for Harmonisation in the Internal Market (Trade Marks and Designs) was brought before the Court of First Instance of the European Communities on 30 April 2004 by M. Schäfer, Bergisch-Gladbach (Germany), represented by I. Reese, lawyer.

KoKa Verwaltung GmbH, Hamburg (Germany), was also a party to the proceedings before the Board of Appeal.

The applicant claims that the Court should:

Pleas in law and main arguments:

On 26 December 2000, the applicant filed with the Office for Harmonisation in the Internal Market an application for registration of the figurative mark ‘Mike's Meals on Wheels’ as a Community trade mark for services in Classes 35 and 42. Relying on its earlier German marks, namely the figurative mark ‘MIKE'S SANDWICH MARKET’ and the word mark ‘MIKE’, KoKa Verwaltung GmbH entered opposition on the ground of a likelihood of confusion.

The Opposition Division rejected the opposition and ordered the opponent to pay the costs. The opponent objected to that decision and applied for restitutio in integrum. It also brought an appeal seeking to have the decision annulled in its entirety and the proceedings stayed pending the ruling on the application for restitutio in integrum.

By decision of 16 June 2003, the Opposition Division granted the application for restitutio in integrum and resumed the opposition proceedings.

By the contested decision, the Board of Appeal held that the appeal had become devoid of purpose. The appeal proceedings were therefore discontinued and the appeal fee was reimbursed. The Board of Appeal also ordered each of the parties to bear the costs incurred by them in the appeal proceedings.

The action brought by the applicant challenges that ruling on costs. He claims that the Office failed to exercise properly the discretion enjoyed by it under Article 81(4) of Regulation (EC) No 40/94 in the event that the proceedings are discontinued. The applicant was in no way responsible for the initiation of and need to conduct appeal proceedings. The appeal proceedings were the result of, first, the incorrect postcode in the Office's letterhead and, secondly, the appellant's exhaustion of the entire period prescribed for the submission of evidence of use. The applicant had no control over either of those two causes of the proceedings for restitutio in integrum and the appeal proceedings. Under Article 81 of Regulation (EC) No 40/94, the ruling on costs is a matter of unfettered discretion. That unfettered discretion includes the possibility of ordering the Office to pay the costs. Moreover, it is an infringement of the applicant's fundamental rights to deny him compensation for his costs and trouble.