Case T‑96/20

Gruppe Nymphenburg Consult AG

v

European Union Intellectual Property Office

Judgment of the General Court (Fifth Chamber, Extended Composition), 1 September 2021

(EU trade mark – Application for the EU word mark Limbic® Types – Absolute grounds for refusal – Decision taken following the annulment by the General Court of an earlier decision – Referral to the Grand Board of Appeal – Article 7(1)(b) of Regulation No 207/2009 (now Article 7(1)(b) of Regulation 2017/1001) – Error of law – Examination of the facts of the Office’s own motion – Article 95(1) of Regulation 2017/1001 – Res judicata – Article 72(6) of Regulation 2017/1001 – Composition of the Grand Board of Appeal)

1. EU trade mark – Appeals procedure – Action before the EU judicature – Condition of admissibility – Grounds of appeal directed only against decisions of the Boards of Appeal

   (European Parliament and Council Regulation 2017/1001, Art. 72(1))

   (see paragraphs 22, 23)

2. EU trade mark – Appeals procedure – Boards of Appeal – Composition of the Grand Board of Appeal – Inclusion of the member of the Board of Appeal who adopted the decision annulled by the General Court – Whether permissible

   (European Parliament and Council Regulation 2017/1001, Art. 169(1); Commission Regulation 2018/625, Art. 35(4))

   (see paragraphs 28, 29, 31)

3. Action for annulment – Judgment annulling a measure – Effects – Obligation to implement – Scope – Both the operative part and the grounds of the judgment to be taken into account – Retroactive effect of annulment

   (Art. 266 TFEU; European Parliament and Council Regulation 2017/1001, Art. 72(6))

   (see paragraphs 42-44)

4. EU trade mark – Procedural provisions – Examination of the facts of the Office’s own motion – Registration of a new trade mark – Absolute grounds for refusal – Limits – Res judicata

   (European Parliament and Council Regulation 2017/1001, Arts 45(3), 72(6) and 95(1); Commission Regulation 2018/625, Art. 27(1))

   (see paragraphs 47-50, 56)

5. EU trade mark – Definition and acquisition of the EU trade mark – Absolute grounds for refusal – Marks devoid of distinctive character – Word mark Limbic® Types

   (Council Regulation No 207/2009, Art. 7(1)(b) and (c))

   (see paragraphs 64, 74-77)

Résumé

Gruppe Nymphenburg Consult AG filed an application with the European Union Intellectual Property Office (EUIPO) for registration of the EU word mark Limbic® Types in respect of goods and services falling within, inter alia, the business consultancy sector and the human resource management consultancy sector. On 23 June 2015, the First Board of Appeal of EUIPO found that the sign was descriptive and refused the application on the basis of Article 7(1)(c) of Regulation No 207/2009. ( 1 )

By its judgment of 16 February 2017, Gruppe Nymphenburg Consult v EUIPO (Limbic® Types) (‘the judgment in T‑516/15’), ( 2 ) the General Court annulled the Board of Appeal’s decision on the ground that it had incorrectly assessed the descriptive character of the mark applied for.

By decision of the Presidium of the Boards of Appeal of EUIPO, the case was referred to the Grand Board of Appeal for a new decision. On 2 December 2019, the Grand Board of Appeal dismissed Gruppe Nymphenburg Consult’s appeal and found that the mark was descriptive of the goods and services at issue and that it was devoid of any distinctive character.

The General Court, sitting in extended composition, annuls the decision of the Grand Board of Appeal on the grounds that, first, it disregarded the force of res judicata attaching to the judgment in Case T‑516/15 and, secondly, it infringed Article 7(1)(b) of Regulation No 207/2009. In addition, it states that the complaints directed against the decision of the Presidium of the Boards of Appeal are inadmissible. Furthermore, it rules that it was permissible for the Grand Board of Appeal to include the single member of the Board of Appeal who adopted the decision annulled by the judgment in T‑516/15.

Findings of the General Court

First of all, the General Court recalls that actions may be brought before the EU judicature only against decisions of the Boards of Appeal. ( 3 ) Thus, the complaints alleging failure to communicate and failure to state adequate reasons for the decision to refer the action to the Grand Board of Appeal concern irregularities which may affect the decision of the Presidium of the Boards of Appeal, but not the decision of the Grand Board of Appeal. Accordingly, those complaints are inadmissible.

Next, as regards the complaint alleging irregularity in the composition of the Grand Board of Appeal, in that the single member of the Board of Appeal who adopted the decision annulled by the General Court in T‑516/15 also sat on the Grand Board of Appeal, ( 4 ) the General Court points out that a judgment annulling a measure has the effect of retroactively eliminating the annulled measure from the legal system. Given that the decision of the Board of Appeal was annulled by the judgment in T‑516/15, which has become final, the decision under appeal before the Grand Board of Appeal is not the annulled decision of the Board of Appeal but the decision of the EUIPO examiner. Accordingly, in so far as the case was referred to the Grand Board of Appeal, it was permissible for the Grand Board of Appeal to include the single member of the Board of Appeal who adopted the annulled decision.

Lastly, the General Court points out that, while it is true that the Board of Appeal is entitled to re-open the examination of absolute grounds for refusal on its own initiative at any time before registration, where appropriate, ( 5 ) it is required to have regard not only to the operative part of the judgment annulling a measure, but also to the grounds constituting its essential basis. In the present case, the General Court finds that the question of the descriptive character of the mark applied for was settled by the judgment in T‑516/15 and, therefore, that the grounds of the judgment relating to the lack of such character are covered by the force of res judicata. In that regard, the General Court explains that the fact that the Grand Board of Appeal based its examination of the descriptive character on matters of fact which the First Board of Appeal had not taken into account has no effect on the force of res judicata attaching to the judgment in T‑516/15. Consequently, the Grand Board of Appeal disregarded the force of res judicata attaching to that judgment.

Furthermore, the General Court holds that the Grand Board of Appeal also erred in law in its assessment of the distinctive character of the mark applied for and therefore annuls the decision in its entirety.

( 1 ) Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

( 2 ) Judgment of 16 February 2017, Gruppe Nymphenburg Consult v EUIPO (Limbic ® Types) (T‑516/15, not published, EU:T:2017:83).

( 3 ) In accordance with Article 72(1) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

( 4 ) It relied on Article 169(1) of Regulation 2017/1001, according to which members of the Boards of Appeal may not take part in appeal proceedings if they participated in the decision under appeal.

( 5 ) See Article 45(3) of Regulation 2017/1001 and Article 27(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1).