ORDER OF THE COURT OF FIRST INSTANCE (Third Chamber)
30 October 2009(*)
(Community trade mark – Partial surrender of registration – No need to adjudicate)
In Case T‑493/08,
Sun World International LLC, established in Bakersfield, California (United States), represented by M. Holah, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Kölla Hamburg Overseas Import GmbH & Co. KG, established in Hamburg (Germany), represented by C. Lemke, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 3 September 2008 (Case R 1378/2007-1), relating to invalidity proceedings between Kölla Hamburg Overseas Import GmbH & Co. KG and Sun World International LLC,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Third Chamber),
composed of J. Azizi, President, E. Cremona and S. Frimodt Nielsen (Rapporteur), Judges,
Registrar: E. Coulon,
makes the following
Order
Procedure
1 By letter lodged at the Court Registry on 16 June 2009, the applicant, Sun World International LLC, informed the Court that it had surrendered the Community trade mark SUPERIOR SEEDLESS, registered on 29 October 2004 under No 610980, in so far as it related to goods in Class 31 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. In that letter, the applicant submits that, since the present case relates exclusively to the validity of that mark in respect of those goods, the action has become devoid of purpose and there is no longer any need to adjudicate. It did not seek an order as to costs.
2 By letter lodged at the Court Registry on 26 June 2009, the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) stated that the action has become devoid of purpose and that there is no longer any need to adjudicate. It requested that the applicant be ordered to bear the costs.
3 By letter lodged at the Court Registry on 9 July 2009, the intervener, Kölla Hamburg Overseas Import GmbH & Co. KG, requested that the Court dismiss the application for a ruling that there was no need to adjudicate, and order the applicant to bear the costs. In that letter, the intervener maintained that it was not proven that the partial surrender of the Community trade mark had been entered in the OHIM Register, and that even if it had, under Article 50(2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) the surrender did not have effect until it was entered in the Register and not beforehand; moreover, the intervener still had an interest in obtaining judgment on the absolute grounds for invalidity since the applicant would still be entitled to request the conversion of its trade mark into a national trade mark application pursuant to Article 112 of Regulation No 207/2009.
4 By letter lodged at the Court Registry on 25 August 2009, the applicant presented its comments on the intervener’s observations and maintained that it should be declared that there was no need to adjudicate.
5 By letter lodged at the Court Registry on the same date, OHIM stated that the partial surrender had been entered in the Register on 3 July 2009. It also stated that the grounds relied on by the intervener did not justify continuation of the proceedings. As regards the reference to Article 50(2) of Regulation No 207/2009, OHIM noted that that provision enabled the applicant to surrender its trade mark in respect of some of the goods for which it was registered, at any time. As regards the reference to Article 112 of Regulation No 207/2009, OHIM pointed out that the possibility of converting a Community trade mark into a national trade mark application concerned a future and uncertain situation. In any event, the intervener would have the opportunity to defend its interests in the national proceedings. OHIM also pointed out that, even if the Court decided to continue the present proceedings and annul the decision of the First Board of Appeal of OHIM of 3 September 2008 (Case R 1378/2007-1), that would have no effect, since the goods in question have been the subject of the applicant’s surrender of the mark.
Law
6 In accordance with Article 113 of its Rules of Procedure, the Court of First Instance may at any time, after hearing the parties, declare that the action has become devoid of purpose and that there is no need to adjudicate on it. It is clear from Article 114(3) of those rules that, unless the Court of First Instance otherwise decides, the remainder of the proceedings are to be oral. In the present case, the Court considers that it has sufficient information, in the form of the documents in the case and the explanations provided by the parties during the written procedure, to give a decision on the action without taking any further steps in the proceedings.
7 The Court finds that the partial surrender of the trade mark SUPERIOR SEEDLESS relates to the goods in Class 31 which are at issue in the present action. Accordingly, pursuant to Article 113 of the Rules of Procedure of the Court of First Instance, it must be held that the present action has become devoid of purpose. There is therefore no longer any need to adjudicate on it.
8 Article 87(6) of the Rules of Procedure provides that, where a case does not proceed to judgment, the costs are to be in the discretion of the Court.
9 The Court observes that the case is not proceeding to judgment as a result of the partial surrender of the trade mark by the applicant. That partial surrender has occurred in the course of an action brought by the applicant before the Court of First Instance, which has occasioned costs for OHIM and the intervener. Accordingly, the applicant must be ordered to bear its own costs and to pay those incurred by OHIM and by the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Third Chamber)
hereby orders:
1. There is no longer any need to adjudicate on the action.
2. Sun World International LLC shall bear its own costs and pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Kölla Hamburg Overseas Import GmbH & Co. KG.
Luxembourg, 30 October 2009.