ORDER OF THE GENERAL COURT (Third Chamber)
17 April 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark COCONUT DREAM —Withdrawal of the opposition — Action which has become devoid of purpose — No need to adjudicate)
In Case T-65/17,
Westbrae Natural, Inc., established in New York, New York, (United States), represented by D. McFarland, Barrister,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Hanne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Kaufland Warenhandel GmbH & Co. KG, established in Neckarsulm (Germany),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 2 November 2016 (Case R 182/2016-2), relating to opposition proceedings between Kaufland Warenhandel and Westbrae Natural,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, I.S. Forrester and E. Perillo (Rapporteur), Judges,
Registrar: E. Coulon,
makes the following
Order
Background to the dispute
1 On 22 December 2014, the applicant, Westbrae Natural, Inc., 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 word sign COCONUT DREAM.
3 The goods in respect of which registration was sought are in Classes 29, 30 and 32 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.
4 The EU trade mark application was published on 19 January 2015.
5 On 17 April 2015, the other party to the proceedings before the Board of Appeal of EUIPO, Kaufland Warenhandel GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Council Regulation (EC) No 207/2009 (now Article 46 of Regulation (EU) 2017/1001), to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on international registration designating the European Union No 111239 registered on 15 July 2009 for ‘Confectionery and chocolate products also in bar form’ in Class 30 for the following figurative mark:
7 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).
8 On 22 January 2016, the Opposition Division rejected the opposition in its entirety.
9 On 27 January 2016, Kaufland Warenhandel 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 the decision of the Opposition Division.
10 By decision of 2 November 2016, the Second Board of Appeal of EUIPO annulled the decision of the Opposition Division in its entirety, upheld the opposition and rejected the EU trade mark application for all the goods applied for (‘the contested decision’). After finding that the goods covered by the trade mark application were similar or identical to the goods covered by the earlier mark, the Board of Appeal found, in essence, that, because of the presence of the word ‘coconut’ in the two marks at issue, its dominant character in the earlier mark and its normal distinctiveness for the relevant public in Spain, Hungary, Latvia and Poland, the signs at issue were similar overall and the Board of Appeal found the existence of a likelihood of confusion on the part of the public within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Procedure
11 By application lodged at the Court Registry on 1 February 2014, the applicant brought the present action.
12 By response lodged at the Court Registry on 26 May 2017, the applicant submitted its observations.
13 By letter of the Court Registry dated 1 December 2017, the parties were informed that the Court had decided to rule without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure.
14 By letter of the Court Registry of 10 January 2018, the parties were informed of the date of delivery of the judgment in open court, set for 20 February 2018.
15 By letter lodged at the Court Registry on 6 February 2018, EUIPO informed the General Court that Kaufland Warenhandel had withdrawn its opposition to the application for registration at the origin of the dispute and that, accordingly, that opposition had become devoid of purpose. EUIPO attached to that letter the copy of the communication which it had sent to Kaufland Warenhandel’s lawyers acknowledging receipt of the withdrawal of their opposition.
16 In those circumstances, EUIPO requested the Court to declare that there was no longer any need to adjudicate on the present case, on the basis of Article 130(2) of the Rules of Procedure.
17 EUIPO also requested that it should not be ordered to pay the costs in so far as the withdrawal of the opposition was reached following an agreement between the applicant and Kaufland Warenhandel, the content of which was not specified.
18 Under Article 130(5) of the Rules of Procedure, the applicant was invited to submit its observations on EUIPO’s application, including on the question of costs.
19 By letter lodged at the Court Registry on 15 February 2018, the applicant agreed to EUIPO’s requests as set out in its letter of 6 February 2018.
Findings of the Court
20 According to Article 130(2) of the Rules of Procedure of the General Court ‘a party applying to the General Court for a declaration that the action has become devoid of purpose and that there is no longer any need to adjudicate on it ... shall submit the application by a separate document’. Paragraph 3 of that article states that ‘[t]he applications referred to in paragraphs 1 and 2 must state the pleas of law and arguments relied on, and the form of order sought; any supporting material must be annexed to the applications’. Finally, according to paragraph 7 of that article, ‘the General Court shall decide on the application as soon as possible [referred to in paragraph 2 of that Article], or, where special circumstances so justify, reserve its decision until it rules on the substance’.
21 In the present case, it is common ground that, following an agreement between Kaufland Warenhandel and the applicant, withdrawal of the opposition brought against the application for registration of the EU trade mark at issue has the effect of bringing to an end the dispute concerning the rejection of that application (see, to that effect, orders of 19 May 2009, AMS v OHIM, C‑565/07 P, not published, EU:C:2009:318, paragraph 14, and of 18 September 2012, Omnicare v OHIM, C‑588/11 P, not published, EU:C:2012:576, paragraph 11).
22 In those circumstances, it must be held that the present action has become devoid of purpose and, consequently, that there is no need to adjudicate on it.
Costs
23 Article 137 of the Rules of Procedure provides that, where a case does not proceed to judgment, the costs shall be in the discretion of the General Court.
24 In the circumstances of the present case, taking account of the correspondence sent by the applicant and referred to in paragraph 20 above, the Court considers that it is appropriate to order the applicant to bear its own costs and pay those incurred by EUIPO.
On those grounds,
THE GENERAL COURT (Third Chamber),
hereby orders:
1. There is no longer any need to adjudicate on the action.
2. Westbrae Natural, Inc. shall bear its own costs and pay those incurred by the European Union Intellectual Property Office (EUIPO).
Luxembourg, 17 April 2018.
E. Coulon | | S. Frimodt Nielsen |