CFI, 5th chamber, October 20, 2008, No T-487/07

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),

Facts and procedure

1 By application lodged at the Registry of the Court of First Instance on 21 December 2007, the applicant, Imperial Chemical Industries plc, brought proceedings to challenge the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 24 October 2007 (Case R 668/2007-4), rejecting the application for registration of the word mark Factory Finish as a Community trade mark for goods in Class 2 of the Nice Agreement of 15 June 1957 on the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended.

2 The application states that the applicant is represented jointly by S. Malynicz, Barrister, and W. Johnston, 'Patent Attorney Litigator'. The application was signed jointly by Mr Malynicz and Mr Johnston.

3 In the administrative procedure before OHIM, the applicant was represented by Mr Johnston in his capacity as 'Patent Attorney Litigator'.

4 By separate document lodged at the Registry of the Court of First Instance on 21 December 2007, the applicant brought the present application, in which it seeks to be represented jointly by Mr Malynicz, Barrister at the Bar of England and Wales, and Mr Johnston, 'Patent Attorney Litigator'.

5 OHIM lodged its written observations in reply to that application on 17 March 2008.

Forms of order sought

6 The applicant claims that the Court should authorise Mr Johnston to represent it in the action brought before the Court in the present case.

7 OHIM contends that the Court should:

- reject the application brought under Article 114 of the Rules of Procedure of the Court of First Instance;

- order the applicant to pay the costs.

Findings of the Court

8 Under Article 114 of the Rules of Procedure, if a party so requests, the Court may rule on a procedural issue without going to the substance of the case. Article 114(3) provides that, unless the Court decides otherwise, the remainder of the proceedings is to be oral. In the present case, the Court considers that it has sufficient information from its examination of the documents on the file to rule on the application without opening the oral procedure.

9 It should be pointed out that it is clear from Article 19 of the Statute of the Court of Justice that only a lawyer authorised to practise before a court of a Member State or of another State which is a party to the Agreement on the European Economic Area (EEA) may represent or assist parties other than the States and institutions referred to in the first and second paragraphs of that article. That requirement is based in the fact that a lawyer is considered to be a person who collaborates in the administration of justice, and who is required to provide, in full independence and in the overriding interests of the judicial system, such legal assistance as the client needs. The counterpart of that protection lies in the rules of professional discipline which are laid down and enforced in the general interest by institutions endowed with the requisite powers for that purpose. Such a conception reflects the legal traditions common to the Member States and is also to be found in the legal order of the Community (order in Case T-14-04 Alto de Casablanca v OHIM - Bodegas Chivite (Veramonte) [2004] ECR II-3077, paragraphs 9 and 10).

10 The Court of First Instance has already held, by reference to those considerations, that a 'Patent Attorney' who was a member of the Chartered Institute of Patent Attorneys ('the CIPA') was not a lawyer and, consequently, was not authorised to represent a party before the Court, even though he was entitled to represent parties in certain actions before the courts and tribunals of the United Kingdom (order in Veramonte, paragraph 11; see also, as regards a 'Patentanwalt' authorised to represent a party before certain courts and tribunals in Germany, Case T-315-03 Wilfer v OHIM (Rockbass) [2005] ECR II-1981, paragraph 11).

11 The applicant does not contest that case-law, but submits that the case of Mr Johnston is different, because he is authorised to conduct litigation before a number of higher courts and has, in particular the right to instruct a barrister without the need to use a solicitor. Unlike a 'Patent Attorney', a 'Patent Attorney Litigator' is authorised to conduct litigation before the High Court of Justice of England and Wales, including the Patents Court, and before the Court of Appeal on appeal from decisions of the Patents County Courts or the High Court of Justice in any matter relating to patents, designs, trade marks or technical information. In terms of the United Kingdom legislation applicable to England and Wales and his professional status, a 'Patent Attorney Litigator' satisfies the criteria under Article 19 of the Statute of the Court of Justice laid down in the order in Veramonte (paragraphs 9 and 10).

12 The applicant adds that the concept of lawyer under Article 19 of the Statute of the Court of Justice should be given a broad interpretation in accordance with the different legal traditions of the Member States, so as to include a 'Patent Attorney Litigator'. In that regard, the applicant submits that a 'Patent Attorney Litigator' is governed by special rules of professional discipline and special rules of conduct. Lastly, the applicant relies on the Legal Services Act 2007, which establishes that a 'Patent Attorney Litigator' has the status of a lawyer.

13 The Court notes that, by virtue of the fourth paragraph of Article 19 of the Statute of the Court of Justice, a person cannot validly represent a non-privileged party before the Court of First Instance unless that person satisfies two cumulative conditions, that is to say, first, that he must be a lawyer, and, secondly, that he must be authorised to practise before a court of a Member State or of another State which is a party to the EEA Agreement (order of 20 February 2008 in Case C-363-06 P Comunidad Autónoma de Valencia - Generalidad Valenciana v Commission, not published in the European Court Reports, paragraph 21).

14 Thus, authorisation to practise before a court or tribunal or even before all courts and tribunals of a Member State cannot be sufficient to confer the right to represent an applicant before the Community judicature on Mr Johnston (see, to that effect, orders in Case T-445-04 ET v OHIM - Aparellaje eléctrico (UNEX) [2005] ECR II-677, paragraph 9, and in Case T-453-05 Vonage Holdings v OHIM (Redefining Communications) [2006] ECR II-1877, paragraph 13).

15 Consequently, the applicant's submission that Mr Johnston is authorised to conduct litigation before certain of the higher courts of the United Kingdom is not of itself sufficient to confer on him the right to represent the applicant. Thus, it is apparent from the case-law referred to in paragraph 10 above that the conclusion that a patent attorney who is a member of the CIPA is not authorised to represent a party before the Court of First Instance flows from the fact that such an agent is not a lawyer, even though he is authorised to represent parties before certain courts and tribunals of the United Kingdom.

16 Therefore, it is only if it were to be established that, unlike an ordinary patent attorney, a 'Patent Attorney Litigator' must be considered to be a lawyer, that Mr Johnston could be entitled to represent a party before the Court of First Instance.

17 The applicant claims that that is indeed the case and relies in that regard, first, on the fact that a 'Patent Attorney Litigator' is governed by rules of professional discipline and special rules of conduct and, secondly, on the legislation of the United Kingdom applicable to England and Wales, which assimilates that person to a lawyer.

18 As regards, in the first place, the rules of professional discipline and the special rules of conduct allegedly applicable to 'Patent Attorney Litigators', it is apparent from the considerations and the case-law referred to in paragraph 9 above that a lawyer, within the meaning of Article 19 of the Statute of the Court of Justice, is differentiated in particular by the fact that he is subject to rules of professional discipline, laid down and enforced in the general interest by institutions endowed with the requisite powers for that purpose, such as bar associations.

19 According to the applicant's own submissions, the rules of conduct and of professional discipline applicable to 'Patent Attorney Litigators' were drawn up by the CIPA, which also enforces their application. Since the CIPA is the professional body with jurisdiction over all 'Patent Attorneys' and not only over 'Patent Attorney Litigators', it cannot be assimilated to an authorised institution for the purposes of the case-law referred to in paragraphs 9 and 10 above. It follows that the rules of conduct and rules of professional discipline relied on by the applicant cannot support the conclusion that a 'Patent Attorney Litigator' must be considered to be a lawyer within the meaning of Article 19 of the Statute of the Court of Justice.

20 As regards, in the second place, the applicant's arguments based on the United Kingdom legislation applicable to England and Wales, it must be pointed out that, unlike the authorisation to practise before a court or tribunal of a Member State or of another State which is a party to the EEA Agreement, the concept of a 'lawyer' does not in any way require that express reference be made to the law of those States in order to determine its meaning and scope. Consequently, and in accordance with settled case-law, it follows from the requirements of both the uniform application of Community law and the principle of equal treatment that the terms of such a provision of Community law, in the present case, the word 'lawyer', must normally be given an independent and uniform interpretation throughout the Community, having regard to the context of the provision and the objective pursued by the legislation in question (see order in Comunidad Autónoma de Valencia - Generalidad Valenciana v Commission, paragraph 25 and the case-law cited).

21 It follows that the applicant's argument that the word 'lawyer' within the meaning of Article 19 of the Statute of the Court of Justice must be interpreted broadly in accordance with the different legal traditions of the Member States cannot be accepted. As is apparent from the case-law cited in paragraph 20 above, the term 'lawyer', which is not defined in the Statute of the Court of Justice, must be subject to a Community interpretation.

22 It follows from the above that a 'Patent Attorney Litigator', such as Mr Johnston, is not a lawyer within the meaning of Article 19 of the Statute of the Court of Justice and, accordingly, is not authorised to represent a party before the Court of First Instance.

23 That conclusion is confirmed by the provisions of, first, Council Directive 77-249-EEC of 22 March 1977 to facilitate the effective exercise by lawyers of freedom to provide services (OJ 1977 L 78, p. 17) and, secondly, Directive 98-5-EC of the European Parliament and of the Council of 16 February 1998 to facilitate practice of the profession of lawyer on a permanent basis in a Member State other than that in which the qualification was obtained (OJ 1998 L 77, p. 36).

24 Article 1(2) of Directive 77-249 defines 'lawyer' as follows:

'2. "Lawyer" means any person entitled to pursue his professional activities under one of the following designations:

...

United Kingdom: Advocate/Barrister/Solicitor.'

25 The same definition of the term 'lawyer' is used by Article 1(2) of Directive 98-5:

'2. For the purposes of this Directive:

(a) "lawyer" means any person who is a national of a Member State and who is authorised to pursue his professional activities under one of the following professional titles:

...

United Kingdom: Advocate/Barrister/Solicitor.'

26 The title of 'Patent Attorney Litigator' does not appear among the titles comprised in the definition of 'lawyer' in Directive 77-249 or in Directive 98-5. It follows that, as a 'Patent Attorney Litigator', Mr Johnston is not vested with a title which confers the status of a lawyer and is accordingly not formally recognised as being a lawyer.

27 It is true that the object of the two directives referred to above is to facilitate the effective exercise of the freedom to provide services and the practice of the profession of lawyer on a permanent basis in the Community and that they do not refer to the representation of a party by a lawyer before the Community judicature.

28 None the less, for the purposes of the application both of Article 19 of the Statute of the Court of Justice and the directives referred to above, the concept of 'lawyer' must be given a uniform interpretation. Such an approach is the only one which avoids the paradox of permitting a person to represent a party before the Community judicature when he would not be authorised to represent that party before the national courts and tribunals of the Member States other than his State of origin.

29 It follows from all of the above that the present application must be rejected.

On those grounds,

THE COURT OF FIRST INSTANCE (Fifth Chamber)

hereby orders:

1. The application for the Court of First Instance to allow W. Johnston to act as representative of Imperial Chemical Industries plc is rejected.

2. Costs are reserved.