ORDER OF THE GENERAL COURT (Seventh Chamber)
22 January 2018 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark ILLUMINA — Revocation of the contested decision — Action rendered devoid of purpose — No need to adjudicate)
In Case T‑157/17,
Cristalfarma Srl, established in Milan (Italy), represented by R. Almaraz Palmero, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. King and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Novartis AG, established in Basle (Switzerland),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 11 January 2017 (Case R 1187/2016-4), relating to opposition proceedings between Novartis and Cristalfarma,
THE GENERAL COURT (Seventh Chamber),
composed of V. Tomljenović, President, E. Bieliūnas (Rapporteur) and A. Marcoulli, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 10 March 2017,
makes the following
Order
Facts, procedure and forms of order sought
1 By application lodged at the Court Registry on 10 March 2017, the applicant, Cristalfarma Srl, brought the present action seeking annulment of the decision of the Fourth Board of Appeal of EUIPO of 11 January 2017 (Case R 1187/2016-4) relating to the opposition filed by Novartis AG to registration of the European Union word mark ILLUMINA (‘the contested decision’). By that decision, the Board of Appeal annulled the Opposition Division’s decision of 5 May 2016 and upheld the opposition filed by Novartis on the ground that there was, between the mark applied for and Novartis’s earlier trade mark, a likelihood of confusion within the meaning of Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (now Article 8(1)(b) of 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 By letter of 18 April 2017, first, EUIPO informed the Court that the Board of Appeal had initiated a procedure for revocation of the contested decision pursuant to Article 80 of Regulation No 207/2009 (now Article 103 of Regulation 2017/1001). Second, EUIPO requested, for reasons of procedural economy, an extension of the time limit for lodging its response. The Court granted EUIPO’s request for an extension of the time limit.
3 On 8 May 2017, Novartis, for reasons similar to those put forward by EUIPO, requested an extension of the time limit for lodging its response. That request was granted.
4 On 17 July 2017, Novartis requested a further extension of the time limit for lodging its response on the ground that EUIPO had still not adopted a decision to revoke the contested decision. That request was granted on 19 July 2017.
5 By letter of 24 July 2017, EUIPO informed the Court that, by decision of 17 July 2017 (R 1187/2016-4 RE; ‘the revocation decision’), the Fourth Board of Appeal had, pursuant to Article 80 of Regulation No 207/2009, revoked the contested decision.
6 In that letter of 24 July 2017, EUIPO also asked for, inter alia, an extension of the time limit for lodging its response on the ground that an action could be brought before the Court against the revocation decision and that that decision had therefore not yet become final. The Court granted EUIPO’s request for an extension of the time limit.
7 On 25 September 2017, the time limit, extended at its request, expired for Novartis to lodge its response. Since Novartis had not lodged a response and had also not applied for a further extension of time for doing so, the Registrar of the Court, on 6 October 2017, found that Novartis had lost its status as an intervener before the Court, in accordance with Article 173(2) of the Court’s Rules of Procedure.
8 On 12 October 2017, as a measure of organisation of procedure, the Court requested the parties, first, to indicate whether the revocation decision had become final and, second, to submit their observations, pursuant to Article 131(1) of the Rules of Procedure, on a possible finding that the action had become devoid of purpose and that there was no longer any need to adjudicate on it.
9 On 23 October 2017, the applicant replied to the Court’s questions. First, it stated that the revocation decision had not become final on the ground that it referred to only one of the two pleas raised against the contested decision. The applicant therefore requested that the proceedings in the present case be stayed pending a new decision of the Board of Appeal. Second, it objected to the Court finding that there was no longer any need to adjudicate on the action. Furthermore, the applicant did not make an application for costs.
10 On 24 October 2017, first, EUIPO informed the Court that the revocation decision had been notified to the applicant and Novartis on 20 July 2017. Second, EUIPO stated that it did not object to the Court finding that there was no longer any need to adjudicate in the present case. In addition, EUIPO did not make an application for costs.
11 On 14 November 2017, EUIPO filed its observations on the applicant’s request for a stay of the proceedings referred to in paragraph 9 above. In that regard, EUIPO indicated that the revocation decision had become final, that the present action had become devoid of purpose and that there was therefore no reason to stay the proceedings in the present case.
Law
12 Pursuant to Article 131(1) of the Rules of Procedure, if the Court declares that the action has become devoid of purpose and that there is no longer any need to adjudicate on it, it may at any time, of its own motion, on a proposal from the Judge-Rapporteur and after hearing the parties, decide to rule by reasoned order.
13 On 17 July 2017, the Board of Appeal adopted the revocation decision on the ground that, in the contested decision, it had annulled the decision of the Opposition Division and upheld in its entirety the opposition brought by Novartis without prior examination as to whether that company had furnished proof of genuine use of the earlier mark.
14 In its letter of 23 October 2017 (paragraph 9 above), first, the applicant submits that the revocation decision is not final on the ground that it is based solely on the error of law alleged in the second plea of its action and not on the infringement of Article 8(1)(b) of Regulation No 207/2009, relied on in the first plea. The applicant states that it does not know whether or not the new decision of EUIPO will confirm the contested decision. The applicant thus requests the Court to stay the proceedings in the present case until a new decision of EUIPO, relating to its first plea, is adopted.
15 Second, the applicant maintains that the present action has not become devoid of purpose. In that regard, the applicant explains that EUIPO has not taken a decision regarding its first plea and that it is only when EUIPO has issued a new decision that it will be in a position to assess whether or not it is necessary to continue the present proceedings. According to the applicant, it is only if the Board of Appeal were to find that there was no likelihood of confusion between the trade marks at issue that the present proceedings would become devoid of purpose.
16 In that regard, in the first place, it should be noted that no action was brought before the Court against the revocation decision within the period of two months from notification of that decision pursuant to Article 65(1) and (5) of Regulation No 207/2009 (now Article 72(1) and (5) of Regulation 2017/1001).
17 The revocation decision has thus become final and has full legal effect (see, to that effect, order of 9 September 2011, Biodes v OHIM — Manasul Internacional (LINEASUL), T‑598/10, not published, EU:T:2011:458, paragraph 11).
18 In the second place, it must be noted that, according to the operative part of the revocation decision, the contested decision has been revoked in its entirety. Thus, the contested decision has disappeared from the legal order and has no legal effect, including in so far as it establishes the existence of a likelihood of confusion between the mark applied for and the earlier mark.
19 Furthermore, according to Article 64(3) of Regulation No 207/2009 (now Article 71(3) of Regulation 2017/1001), the decisions of the Boards of Appeal are to take effect only as from the date of expiration of the period referred to in Article 65(5) of Regulation No 207/2009 or, if an action has been brought before the Courts of the European Union within that period, as from the date of dismissal of such action. Thus, in the present case, since the applicant has brought the present action for annulment of the contested decision before the General Court, that decision did not take effect before its revocation. Moreover, the contested decision would also not take effect if the Court were to order that there is no need to adjudicate on the action.
20 In the third place, since the contested decision has been revoked in its entirety, it will be for the Board of Appeal to adopt a new decision.
21 In the event that, in its new decision, the Board of Appeal should deal with the merits of the case, it will be for the Board of Appeal to assess the proof of genuine use of the earlier mark produced by Novartis at the applicant’s request.
22 It is apparent from Article 42(2) of Regulation No 207/2009 (now Article 47(2) of Regulation 2017/1001), read in conjunction with Article 42(3) of that regulation (now Article 47(3) of Regulation 2017/1001), that, if the applicant so requests, the proprietor of an earlier national trade mark who has given notice of opposition is required to furnish proof that, during the period of five years preceding the date of filing or the date of priority of the EU trade mark application, the earlier national trade mark has been put to genuine use in the Member State in which it is protected in connection with the goods or services in respect of which it is registered and on which the opposition is based, or that there are proper reasons for non-use, provided that the earlier trade mark has at that date been registered for not less than five years. In the absence of proof to that effect, the opposition is to be rejected.
23 Thus, after an examination of the proof furnished by Novartis, the Board of Appeal might reach a different conclusion to that which it drew in the contested decision with regard to the existence of a likelihood of confusion between the mark applied for and the earlier mark.
24 Furthermore, the applicant will, in any event, be entitled to bring an action for annulment before the Court against the new decision to be taken by the Board of Appeal if the Board of Appeal does not uphold its claim.
25 Consequently, the circumstances alleged by the applicant do not warrant a stay of the proceedings in the present case and do not preclude a finding that the proceedings have become devoid of purpose.
26 In the light of the foregoing, it is necessary, first, to reject the applicant’s request for a stay of the proceedings and, secondly, to find that the present proceedings have become devoid of purpose and that there is no longer any need to adjudicate on the action.
Costs
27 Article 137 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 General Court.
28 Given the circumstances of the present case, the Court considers that it is appropriate to order EUIPO to bear its own costs and to pay those incurred by the applicant.
29 Furthermore, in accordance with Article 173(2) of the Rules of Procedure, Novartis shall bear its own costs relating to the procedural documents lodged by it before the Court.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby orders:
1. The request made by Cristalfarma Srl for a stay of the proceedings is rejected.
2. There is no longer any need to adjudicate on the action.
3. The European Union Intellectual Property Office (EUIPO) shall bear its own costs and pay those incurred by Cristalfarma.
4. Novartis AG shall bear its own costs.
Luxembourg, 22 January 2018.