ORDER OF THE GENERAL COURT (Third Chamber)
16 September 2021 (*)
(EU trade mark – Invalidity proceedings – EU figurative mark Swisse – Cross-claim – Subject matter of the action – No interest in bringing proceedings – Inadmissibility)
In Case T‑486/20,
Health and Happiness (H&H) Hong Kong Ltd, established in Hong Kong (China), represented by D. Rose, L. Flascher, Solicitors, and N. Saunders QC,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Giuliani SpA, established in Milan (Italy), represented by S. de Bosio, lawyer,
concerning, first, an action brought against the decision of the Fifth Board of Appeal of EUIPO of 25 May 2020 (Case R 2185/2019-5), relating to invalidity proceedings between Giuliani and Health and Happiness (H&H) Hong Kong, and, secondly, a cross-claim brought, as an alternative action, against that decision,
THE GENERAL COURT (Third Chamber),
composed of A.M. Collins, President, Z. Csehi and G. Steinfatt (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 3 August 2020,
having regard to the responses of EUIPO and the intervener lodged at the Court Registry on 20 October and 3 November 2020 respectively,
having regard to the cross-claim of the intervener lodged at the Court Registry on 3 November 2020,
having regard to the document lodged at the Court Registry on 18 November 2020 by which the Association for the Protection of the Origin of Swiss Cosmetics (Swisscos) applied for leave to intervene, on the basis of Articles 142 and 143 of the Rules of Procedure of the General Court, first, in the main action in support of the forms of order sought by the intervener and EUIPO and, secondly, in the cross-claim in support of the form of order sought by the intervener,
having regard to the pleas of inadmissibility relating to the cross-claim, raised by EUIPO and the applicant by documents lodged at the Court Registry on 5 and 11 January 2021 respectively,
having regard to the observations on those pleas of inadmissibility, lodged at the Court Registry on 26 February 2021,
makes the following
Order
Background to the dispute
1 On 2 July 2003, Swisse Vitamins Pty. Ltd., the predecessor in title to the applicant, Health and Happiness (H&H) Hong Kong Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself 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, claiming the colours red, black and white:
3 The goods in respect of which registration was sought are in Class 5 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: ‘Vitamins, vitamin preparations, herbal formulations, mineral supplements and nutritive elements including vitamins, minerals, nutritive elements and herbal formulations in capsule, tablet and liquid form’.
4 On 4 February 2005, the mark was registered as an EU trade mark under number 3252152 in respect of all the goods referred to in the preceding paragraph.
5 On 9 March 2018, the intervener, Giuliani SpA, submitted an application for a declaration of invalidity, pursuant to Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b), (g), (h) and (i), and Article 59(1)(b) of that regulation, against the contested mark, in respect of the goods referred to in paragraph 3 above.
6 By decision of 26 July 2019, the Cancellation Division declared the contested mark invalid. It found, in essence, that that mark was devoid of any distinctive character without it being necessary to examine the other grounds for invalidity relied on.
7 On 26 September 2019, the applicant filed a notice of appeal, pursuant to Articles 66 to 68 of Regulation 2017/1001, against the decision of the Cancellation Division.
8 By decision of 25 May 2020 (‘the contested decision’), the Fifth Board of Appeal of EUIPO dismissed the appeal. In the statement of reasons for that decision, the Board of Appeal examined the ground for invalidity laid down in Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b) of that regulation. It found that the Cancellation Division had rightly granted the application for a declaration of invalidity on the basis of the latter provision, since it was apparent from the arguments and evidence before it that the contested mark would not be regarded as indicative of a commercial origin, but rather as an indication that the goods came from Switzerland. According to the Board of Appeal, that information is devoid of any distinctive character. Furthermore, the Cancellation Division had rightly found that it was not necessary to assess the alleged deceptiveness of the contested mark. Lastly, the Board of Appeal stated that it shared the applicant’s view that the remaining grounds for invalidity relied on by the intervener were inchoate. However, according to the Board of Appeal, that finding had no effect in the present case, given that the Board of Appeal endorsed the Cancellation Division’s decision based on Article 7(1)(b) of Regulation 2017/1001.
Procedure and forms of order sought
9 By application lodged at the Court Registry on 3 August 2020, the applicant brought an action in the present case seeking annulment of the contested decision.
10 The applicant first raises three pleas in law, alleging infringement of: (i) Article 63(2) and Article 95(1) of Regulation 2017/1001; (ii) Article 41 of the Charter of Fundamental Rights of the European Union (‘the Charter’); and (iii) essential procedural requirements relating to translation and evidence subsequent to the date of filing of the contested mark, and, secondly, sets out the consequences of those alleged infringements.
11 By document lodged at the Court Registry on 3 November 2020, the intervener brought a cross-claim pursuant to Articles 182 et seq. of the Rules of Procedure of the General Court.
12 In the cross-claim, the intervener contends that, in the event that the Court were to hold that the contested mark could not be declared invalid on the ground of lack of distinctive character, it should:
– uphold the application for a declaration of invalidity in its entirety and declare the contested mark invalid in respect of all the goods concerned on the basis of the other grounds for invalidity relied on;
– order the applicant to pay the costs incurred in the proceedings before EUIPO, assessed at EUR 2 710, and before the Court.
13 In its plea of inadmissibility, EUIPO contends that the Court should:
– dismiss the cross-claim as inadmissible;
– order the intervener to pay the costs of the cross-claim.
14 In its plea of inadmissibility, the applicant contends that the Court should:
– dismiss the cross-claim as manifestly inadmissible;
– order the intervener to pay the costs of the cross-claim.
15 In its observations on the pleas alleging the inadmissibility of the cross-claim, the intervener contends that the Court should:
– dismiss those pleas of inadmissibility;
– in the event that it were to hold that the contested mark could not be declared invalid on the ground of lack of distinctive character, declare the contested mark invalid in respect of all of the goods concerned on the basis of the other grounds for invalidity relied on.
Law
16 As a preliminary point, contrary to what the intervener submits in its response in the main proceedings, since those proceedings were brought on 3 August 2020, that is, before the end of the transition period which was set, under Article 126 of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7), at 31 December 2020, the applicant’s lawyers, authorised to practise before the courts of England and Wales, which are part of the United Kingdom, may, under Article 91(1) and (3) of that agreement, continue to represent the applicant in the present proceedings and must in all respects be regarded as lawyers authorised to practise before the courts of the Member States who represent or assist a party before the Court of Justice of the European Union.
17 It should also be noted that, in view of the date on which the application for registration was made, namely 2 July 2003, which is determinative for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001, Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), and Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37).
18 As regards the substantive rules, the references made by the Board of Appeal in the contested decision, and by the parties to the present dispute, to Article 7(1)(b), (g), (h) and (i) of either Regulation 2017/1001, or the ‘European Union Trade Mark Regulation’, or the ‘EUTMR’, and to Article 59(1)(a) and (b) of Regulation 2017/1001, should be understood as referring to Article 7(1)(b), (g), (h) and (i) of Regulation No 40/94 and to Article 51(1)(a) and (b) of Regulation No 40/94 respectively, which are identical in content.
19 In support of their pleas of inadmissibility, EUIPO and the applicant submit, in essence, that the cross-claim is conditional, that it changes the subject matter of the dispute as it was presented before the Board of Appeal, that the contested decision upheld the intervener’s claims and that that decision cannot be altered in the way contended for by the intervener, since such an alteration would mean that the Court would carry out an examination which had not been carried out by the Board of Appeal.
20 The intervener submits that, if the Court were to uphold the applicant’s action, the intervener would have an interest in bringing proceedings against the contested decision in order for a ruling to be given on the other grounds for invalidity.
21 According to the intervener, the question of whether, in that event, the Court would be in a position to rule on those other grounds or whether it would be necessary to refer the case back to the Board of Appeal is a procedural issue and is not relevant to whether or not the cross-claim is admissible. The cross-claim would be admissible even if the Court were to refer the case back to the Board of Appeal.
22 The intervener submits that the decision on whether or not it is necessary to refer the case back to the Board of Appeal should be based on the role of the General Court in invalidity cases brought before EUIPO. Unlike opposition proceedings before EUIPO, where the dispute is administrative in nature and the General Court’s role is limited to verifying whether EUIPO has complied with the legislative provisions, in the case of invalidity proceedings, the General Court acts ab initio as the judicial power dealing with an intellectual property dispute in which it must take a decision on the validity of the contested mark. By contrast, EUIPO does not have, ab initio, jurisdiction to decide on the issue of the validity of a mark. It is only able to correct its earlier decision to grant registration of the mark. However, any party still has the right to bring the case before the General Court, which has jurisdiction over it. The General Court cannot, therefore, refer an application for a declaration of invalidity back to EUIPO in the event of procedural errors made by EUIPO.
23 According to the intervener, that conclusion is supported by other reasons.
24 In the first place, where an intellectual property right is registered by EUIPO, the courts of the Member States are required, under Article 127 of Regulation 2017/1001, to regard it as valid, even if the case is pending before the General Court, and even if the Court were to refer it back to EUIPO. In accordance with that provision, the validity of an EU trade mark may not be put in issue before the national courts if the competitor does not seek to use the mark, but seeks only to prevent its proprietor from doing so, as in the present case, where it is the intervener who initiated the invalidity proceedings. The consequence of referring the case back to EUIPO would be to delay the proceedings, which would constitute an infringement of the guarantee of an effective remedy within a reasonable time under Article 6(1) of the Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950 (‘the ECHR’), which also forms part of the general principles of EU law under Article 6(1) of the EU Treaty, and under Article 47(1) and (2) of the Charter. Such a situation could cause irreparable harm to consumers and to competitors.
25 In the second place, although the Board of Appeal did not base its decision on grounds for annulment other than the ground of lack of distinctive character, it assessed and confirmed all the relevant circumstances in that regard. In any event, even if the Court were to consider it has to examine factual circumstances which have not yet been assessed by the Board of Appeal, it would have to do so without having to refer the case back to the Board of Appeal.
26 In the third place, the Board of Appeal also found, in paragraph 31 of the contested decision, that the grounds for invalidity based on bad faith and the undue use of symbols of the Swiss State were inchoate. According to the intervener, the applicant submits that the Board of Appeal found that the ground relating to the deceptiveness of the contested mark was also inchoate. Therefore, if the applicant’s interpretation of that paragraph of the contested decision were correct, the cross-claim would also seek to have that paragraph amended and the intervener would have a specific and separate interest in the incorrect assessment being annulled in the event that the Court agrees with the arguments put forward by the applicant against the contested decision.
27 In that regard, in accordance with Article 173(3) of the Rules of Procedure, an intervener has the same procedural rights as the main parties.
28 The intervener submitted a cross-claim referred to in Article 182 of the Rules of Procedure.
29 In accordance with Article 191 of the Rules of Procedure, subject to the special provisions of Title IV thereof concerning proceedings relating to intellectual property rights, the provisions of Title III apply to the proceedings referred to in Title IV. That applies, in particular, to Article 130(1) of the Rules of Procedure (see, to that effect, order of 11 January 2017, Aydin v EUIPO – Kaporal Groupe (ROYAL & CAPORAL), T‑95/16, not published, EU:T:2017:3).
30 Under the latter provision, if the defendant so requests, the Court may rule on a plea of inadmissibility without going to the substance of the case. Under Article 130(6) of the Rules of Procedure, the Court may decide to open the oral part of the procedure in respect of the applications referred to in paragraph 1. In the present case, EUIPO and the applicant raised pleas alleging the inadmissibility of the cross-claim submitted by the intervener. Since the Court considers that it has sufficient information from the documents in the file, it is not necessary to open the oral part of the procedure.
31 In the first place, as EUIPO and the applicant correctly submit, under Article 72(4) of Regulation 2017/1001, an action before the General Court against a decision of a Board of Appeal of EUIPO is ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’.
32 That provision reflects the interest in bringing proceedings, which, according to settled case-law, is an essential prerequisite for any legal proceedings and must, in the light of the purpose of the action, exist at the time at which the action is brought, failing which that action will be inadmissible. The interest in bringing proceedings presupposes that the action must be liable, if successful, to procure an advantage for the party bringing it. It follows that, in so far as a decision of a Board of Appeal upholds in their entirety the claims of the party concerned, that party does not have standing to bring an action before the Court (see judgment of 5 February 2020, Globalia Corporación Empresarial v EUIPO – Touring Club Italiano (TC Touring Club), T‑44/19, not published, EU:T:2020:31, paragraph 27 and the case-law cited).
33 A decision of a Board of Appeal must be regarded as having upheld the claims of one of the parties before that Board of Appeal, when it has granted the application of that party on the basis of one of the grounds for refusal of registration or for invalidity of a mark or, more generally, of only part of the arguments put forward by that party, even if it did not examine or rejected the other grounds or arguments raised by that party (see judgment of 5 February 2020, TC Touring Club, T‑44/19, not published, EU:T:2020:31, paragraph 28 and the case-law cited).
34 In the present case, the Board of Appeal dismissed the appeal brought by the applicant against the decision of the Cancellation Division, which had granted the intervener’s application for cancellation of the contested mark. Thus, notwithstanding the fact that the intervener does not agree with all of the Board of Appeal’s findings, the Board of Appeal upheld its claims in their entirety.
35 In the second place, as EUIPO and the applicant correctly submit, it is settled case-law that an action brought by a natural or legal person is admissible only in so far as that person has an interest in the contested act being annulled. That interest must be vested and present and is assessed at the day on which the action is brought. If the interest which an applicant claims concerns a future legal situation, that applicant must demonstrate that the prejudice to that situation is already certain. Therefore, an applicant cannot rely upon future and uncertain situations to justify its interest in applying for annulment of the contested act (see judgments of 16 September 2004, Metro-Goldwyn-Mayer Lion v OHIM – Moser Grupo Media (Moser Grupo Media), T‑342/02, EU:T:2004:268, paragraph 44 and the case-law cited, and of 5 February 2020, TC Touring Club, T‑44/19, not published, EU:T:2020:31, paragraph 27 and the case-law cited).
36 In the present case, the cross-claim lodged by the intervener is subject to the condition that the action brought by the applicant is well founded. That condition was not fulfilled when the cross-claim was lodged. Thus, the interest relied on by the intervener in order to justify the submission of that cross-claim did not exist on the day on which the cross-claim was brought. Nor has the intervener established that the future legal situation on which it relies is already certain.
37 In the third place, as the applicant submits, in essence, the cross-claim alters the subject matter of the proceedings as it was presented before the Board of Appeal in breach of Article 188 of the Rules of Procedure.
38 The Board of Appeal was not validly seized of the grounds for invalidity based on Article 7(1)(g) to (i) and Article 51(1)(b) of Regulation No 40/94. In that regard, first, Article 67 of Regulation 2017/1001 states that any party to proceedings adversely affected by a decision may appeal. The Cancellation Division’s decision upheld the intervener’s claims in their entirety, notwithstanding the fact that that decision was based only on Article 7(1)(b) of Regulation No 40/94 and that the other grounds for invalidity were not examined. Thus, the intervener had no interest in bringing an appeal before the Board of Appeal against that decision.
39 Secondly, the intervener did not bring a cross-appeal before the Board of Appeal against EUIPO’s decision at first instance by means of a document separate from the observations in response, as required by Article 25(2) of Delegated Regulation 2018/625. It merely requested the Board of Appeal, in its observations on the appeal, to declare the contested mark invalid on the basis of the other grounds for invalidity relied on in its application for cancellation.
40 In the fourth place, as EUIPO correctly states, the power of the General Court to alter decisions under Article 72(3) of Regulation 2017/1001 does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 72). The Board of Appeal did not assess grounds for invalidity other than that based on the lack of distinctive character of the contested mark. It is apparent from paragraph 30 of the contested decision that the Board of Appeal endorsed the Cancellation Division’s position that, after finding that the mark was devoid of any distinctive character pursuant to Article 7(1)(b) of Regulation 2017/1001, it was not necessary to assess the alleged deceptiveness of the contested mark. Next, having found, in paragraph 31 of that decision, that the other claims were inchoate, the Board of Appeal did not assess them. As EUIPO correctly submits, in such a case and in the event that the Court finds that the contested decision was incorrect, the contested decision would have to be annulled and the Board of Appeal would have to assess the application for a declaration of invalidity in the light of the other grounds relied on.
41 It follows that, in the present case, the intervener is not entitled to bring a cross-claim against the contested decision.
42 Nor is the alleged need to regard the intervener’s cross-claim as admissible apparent from its arguments alleging infringement of the right to an effective judicial remedy (see paragraph 24 above).
43 Under the first paragraph of Article 47 of the Charter, everyone whose rights and freedoms guaranteed by EU law are violated has the right to an effective remedy before a tribunal in compliance with the conditions laid down in that article. That principle is a general principle of EU law stemming from the constitutional traditions common to the Member States, which has been enshrined in Articles 6 and 13 of the ECHR. According to the explanations relating to Article 47 of the Charter, which, in accordance with the third subparagraph of Article 6(1) TEU and Article 52(7) of the Charter, have to be taken into consideration for the interpretation of the Charter, the second paragraph of Article 47 of the Charter corresponds to Article 6(1) of the ECHR (judgments of 22 December 2010, DEB, C‑279/09, EU:C:2010:811, paragraphs 29 and 32, and of 16 May 2017, Agria Polska and Others v Commission, T‑480/15, EU:T:2017:339, paragraph 92).
44 According to settled case-law, Article 47 of the Charter is not intended to change the system of judicial review laid down by the Treaties, and particularly the rules relating to the admissibility of direct actions brought before the Courts of the European Union, as is apparent also from the explanations relating to Article 47 of the Charter (see judgment of 28 April 2015, T & L Sugars and Sidul Açúcares v Commission, C‑456/13 P, EU:C:2015:284, paragraph 43 and the case-law cited; order of 2 April 2020, Gerber v Parliament and Council, T‑326/19, not published, EU:T:2020:142, paragraph 63). Thus, the considerations relating to the validity of the contested mark during the proceedings before the Court, or even, in the event that the contested decision is annulled and the case referred back to the Board of Appeal, during the administrative procedure before the latter, cannot reject the grounds on which the cross-claim must be held to be inadmissible.
45 Furthermore, the contested mark was registered on 4 February 2005 (see paragraph 4 above). The intervener did not file an application for a declaration of invalidity before EUIPO until 9 March 2018, which was 13 years later. Thus, the alleged damage caused to the intervener as a result of the validity of the contested mark is mainly attributable to the intervener itself.
46 Accordingly, the intervener’s cross-claim must be dismissed as inadmissible.
47 Furthermore, in view of Article 191 of the Rules of Procedure, read in conjunction with Article 142(2) of those rules, intervention is ancillary to the main proceedings and becomes devoid of purpose, inter alia, where the application is declared inadmissible. The same applies where a cross-claim is inadmissible, as is the position in this case. Accordingly, there is no longer any need to adjudicate on the application for leave to intervene submitted by the Association for the Protection of the Origin of Swiss Cosmetics (Swisscos) in so far as it refers to the form of order sought by the intervener in its cross-claim.
Costs
48 Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
49 Since the intervener has been unsuccessful in the cross-claim, it must be ordered to bear its own costs and to pay those incurred by EUIPO and the applicant, in accordance with the forms of order sought by those parties relating to these proceedings.
50 Under Article 144(10) of the Rules of Procedure, if the proceedings in the main case are concluded before the application for leave to intervene has been decided, the applicant for leave to intervene and the main parties must each bear their own costs relating to the application to intervene. That provision applies, by analogy, where the proceedings are concluded in respect of a cross-claim, as is the case here. Thus, Swisscos, the applicant, EUIPO and the intervener must each bear their own costs relating to Swisscos’ application for leave to intervene in support of the form of order sought by the intervener in the cross-claim.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby orders:
1. The cross-claim is dismissed as inadmissible.
2. Giuliani SpA is ordered to pay the costs of the proceedings relating to the cross-claim.
3. The Association for the Protection of the Origin of Swiss Cosmetics (Swisscos), Health and Happiness (H&H) Hong Kong Ltd, the European Union Intellectual Property Office and Giuliani shall each bear their own costs relating to Swisscos’ application for leave to intervene in the cross-claim.
Luxembourg, 16 September 2021.