Orders nº T-293/16 of Tribunal General de la Unión Europea, December 15, 2017

• Resolution Date: December 15, 2017
• Issuing Organization: Tribunal General de la Unión Europea
• Decision Number: T-293/16

(EU trade mark - Opposition proceedings - Revocation of the earlier EU figurative trade mark GOLD MOUNT - No need to adjudicate)

In Case T-293/16,

Kaane American International Tobacco Co. FZE, formerly Kaane American International Tobacco Co. Ltd, established in Jebel Ali (United Arab Emirates), represented by G. Hinarejos Mulliez and I. Valdelomar Serrano, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Global Tobacco FZCO, established in Dubai (United Arab Emirates), represented by G. Hussey, Solicitor, and B. Brandreth, Barrister,

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 8 April 2016 (Case R 2699/2014-4), relating to opposition proceedings between Kaane American International Tobacco and Global Tobacco,

THE GENERAL COURT (Fifth Chamber),

composed of D. Gratsias, President, A. Dittrich and P.G. Xuereb (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 7 June 2016,

having regard to the response of EUIPO lodged at the Court Registry on 30 August 2016,

having regard to the response of the intervener lodged at the Court Registry on 1 September 2016,

having regard to the decision of 7 October 2016 to suspend proceedings pending the final decision in Case T-294/16,

having regard to the judgment of 8 June 2017, Kaane American International Tobacco v EUIPO - Global Tobacco (GOLD MOUNT) (T 294/16, not published, EU:T:2017:382),

having regard to the written question put by the Court to the parties and the responses of EUIPO and the intervener to that question lodged at the Court Registry on 4 October 2017,

makes the following

Order

Background to the dispute

1 On 9 May 2013, the intervener, Global Tobacco FZCO, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).

2 Registration as a mark was sought for the following figurative sign:

3 The goods in respect of which registration was sought are in Class 34 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Tobacco; smokers’ articles; matches’.

4 On 4 September 2013, the applicant, Kaane American International Tobacco Co. FZE (formerly Kaane American International Tobacco Co. Ltd), filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

5 The opposition was based on the figurative EU trade mark registered on 21 August 2009 with number 007157233 for goods corresponding to the description ‘tobacco; smokers’ articles; matches’ in Class 34 reproduced below:

6 By a decision of 22 August 2014, the Opposition Division upheld the opposition.

7 On 22 October 2014, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against that decision (Case R 2699/2014-4).

8 On 23 December 2014, the intervener informed EUIPO that it had filed with it an application for revocation of the earlier mark.

9 By decision of 28 July 2015, the Cancellation Division upheld that application. On 17 September 2015, the applicant filed a notice of appeal with EUIPO against that decision (Case R 1857/2015-4).

10 By decision of 8 April 2016 (‘the Board of Appeal’s decision on the revocation of the earlier mark’), the Fourth Board of Appeal of EUIPO dismissed the appeal against the Cancellation Division’s decision and confirmed the revocation of the earlier mark with effect from 22 October 2014.

11 By decision of 8 April 2016 (‘the contested decision’), the Fourth Board of Appeal annulled the Opposition Division’s decision of 22 August 2014, which had upheld the opposition. It pointed out that, by its decision of the same date, it had confirmed the revocation of the earlier mark with effect from 22 October 2014. It also observed that, for an opposition to succeed, the earlier mark must ‘still be in force’ on the date of its decision. In the present case, since the applicant was no longer the holder of the earlier mark, the opposition had ceased to be well founded. In addition, the Board of Appeal stated that it was not necessary to wait for the decision on the revocation of the earlier mark to become final before adjudicating. The Board of Appeal concluded that the Opposition Division’s decision had to be annulled.

Forms of order sought by the parties

12 The applicant claims that the Court should:

- annul the contested decision;

- suspend proceedings relating to the appeal in Case R 2699/2014-4 until the Board of Appeal’s decision on the revocation of the earlier mark becomes definitive;

- order EUIPO or, in the alternative, the intervener to pay the costs of the present proceedings.

13 EUIPO contends that the Court should:

- dismiss the action;

- order the applicant to pay the costs.

14 The intervener contends that the Court should:

- dismiss the action;

- order ‘payment of the intervener’s costs’.

Law

15 According to Article 131(1) of the Rules of Procedure, the Court may at any time, of its own motion, on a proposal from the Judge-Rapporteur and after hearing the parties, declare that the action has become devoid of purpose and that there is no longer any need to adjudicate on it.

16 In the present case, the parties were invited by the Court to submit their observations on the consequences of the judgment of 8 June 2017, GOLD MOUNT (T-294/16, not published, EU:T:2017:382), on the applicant’s legal interest in bringing proceedings. In its observations, EUIPO submitted that the applicant’s legal interest in bringing proceedings in the present case was extinguished when that judgment became final and that there was no longer any need to adjudicate on the present case. In its observations, the intervener submitted that the consequence of the adoption of that judgment was that the contested decision had to be confirmed and therefore the applicant no longer had any legal interest in bringing the proceedings in the present case. The applicant failed to submit any observations.

17 According to settled case-law, the legal interest in bringing proceedings must continue until the final decision, failing which there will be no need to adjudicate, which presupposes that the action must be liable, if successful, to procure an advantage to the party bringing it (see judgment of 7 June 2007, Wunenburger v Commission, C-362/05 P, EU:C:2007:322, paragraph 42 and the case-law cited; order of 11 October 2007, Wilfer v OHIM, C-301/05 P, not published, EU:C:2007:593, paragraph 19 and the case-law cited, and judgment of 10 December 2010, Ryanair v Commission, T-494/08 to T-500/08 and T-509/08, EU:T:2010:511, paragraph 43 and the case-law cited). If the applicant’s interest in bringing proceedings disappears in the course of proceedings, a decision of the Court on the merits cannot bring him any benefit (judgment of 7 June 2007 in Wunenburger v Commission, C-362/05 P, EU:C:2007:322, paragraph 43).

18 In accordance with Article 55(1) of Regulation No 207/2009 (now Article 62(1) of Regulation 2017/1001), where the rights of the proprietor have been revoked, the EU trade mark is to be deemed not to have had, as from the date of the application for revocation or of the counterclaim, the effects specified in that regulation. That provision also states that an earlier date, on which one of the grounds for revocation occurred, may be fixed in the decision at the request of one of the parties.

19 In the present case, it must be noted that, by judgment of 8 June 2017, GOLD MOUNT (T-294/16, not published, EU:T:2017:382), the Court rejected the action against the Board of Appeal’s decision confirming the revocation of the earlier mark. The applicant was notified of that judgment on the same date.

20 In accordance with Article 56 of the Statute of the Court of Justice of the European Union, the period for bringing an appeal is two months from the notification of the decision appealed against. Under Article 51 of the Rules of Procedure of the Court of Justice, that time limit is to be extended on account of distance by a single period of 10 days.

21 The period for bringing an appeal against the judgment of 8 June 2017, GOLD MOUNT (T-294/16, not published, EU:T:2017:382), therefore lapsed on 18 August 2017, and no appeal was brought against that judgment before the end of that period.

22 Consequently, the Board of Appeal’s decision confirming the revocation of the earlier mark has become final.

23 It must also be noted that the earlier mark was the only basis for the opposition filed by the applicant and that, on 8 April 2016, when the contested decision was adopted, the Board of Appeal confirmed, by decision of that same date, that that earlier mark had been revoked as from 22 October 2014.

24 In support of its action for annulment of the contested decision, the applicant submits a single plea alleging infringement of the principle of equality before the law and impartiality on the ground that the Board of Appeal failed to wait until the decision on revocation of the earlier mark became final before adjudicating on the opposition between Kaane American International Tobacco and...