ORDER OF THE GENERAL COURT (Third Chamber)
26 November 2012 (*)
(Community trade mark – Opposition proceedings – Revocation of earlier national trade marks – No need to adjudicate)
In Case T‑548/11,
MIP Metro Group Intellectual Property GmbH & Co. KG, established in Düsseldorf (Germany), represented by J.-C. Plate and R. Kaase, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Real Seguros, SA, established in Porto (Portugal),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 17 August 2011 (Case R 114/2011‑4) concerning opposition proceedings between Real Seguros, SA and MIP Metro Group Intellectual Property GmbH & Co. KG,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz, President, I. Labucka and D. Gratsias (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 19 October 2011,
having regard to the response of OHIM lodged at the Court Registry on 2 February 2012,
makes the following
Order
Background to the dispute, procedure and forms of order sought
1 Pursuant to the provisions of Article 144 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) (now Article 149 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)), the applicant, MIP Metro Group Intellectual Property GmbH & Co. KG, submitted, on 4 December 2008, through the intermediary of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), a request for territorial extension of the protection conferred on the figurative sign reproduced below, which has the international registration W983683 (‘the trade mark at issue’):
2 The services designated by the trade mark at issue fell, in particular, within Class 36 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 corresponded to the following description: ‘Insurance underwriting; fire insurance; financial evaluation (insurance), health insurance underwriting; life insurance underwriting; marine insurance; accident insurance; insurance; insurance consultancy, insurance underwriting’.
3 The request for territorial extension was published in Community Trade Marks Bulletin No 49/2008 of 9 December 2008.
4 On 9 September 2009, Real Seguros, SA filed notice of opposition under Articles 41 and 156(2) of Regulation No 207/2009 to the territorial extension of the trade mark at issue in respect of the services referred to in paragraph 2 above.
5 The opposition was based on (i) the Portuguese word mark REAL, registered under No 249791; (ii) the Portuguese word mark REAL SEGUROS, registered under No 249793; (iii) a Portuguese figurative mark registered under No 254390; and (iv) various unregistered rights corresponding to the word signs REAL SEGUROS, SA and REAL and to two figurative signs containing, in one case, the term ‘real’ and, in the other, the word sequence ‘real seguros’.
6 The trade marks mentioned in the preceding paragraph (the ‘earlier national trade marks’) designated services included in Class 36 corresponding to the following description: ‘Insurance and financial affairs’.
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 207/2009, as regards the earlier national trade marks, and in Article 8(4) of that regulation, as regards the abovementioned unregistered rights.
8 By decision of 16 November 2010, the Opposition Division found that there was a likelihood of confusion between the trade mark at issue and the Portuguese word mark REAL. Accordingly it upheld the opposition, without ruling on any likelihood of confusion that there might be between, on the one hand, the trade mark at issue and, on the other, the other earlier national trade marks and the unregistered rights invoked by Real Seguros.
9 On 11 January 2011, the applicant filed notice of appeal at OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 17 August 2011 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the applicant’s appeal. It found that there was a likelihood of confusion between the trade mark at issue and the Portuguese word mark REAL, and that it was not necessary therefore to examine ‘the other earlier rights and bases of opposition’.
11 By application lodged at the Court Registry on 19 October 2011, the applicant brought the present action. The applicant claimed that the Court should:
– annul the contested decision;
– order OHIM to pay the costs, including those incurred in the proceedings conducted before the Board of Appeal.
12 In addition, in the application the applicant asked the Court to stay the present proceedings under Article 77(d) of the Rules of Procedure of the General Court, given that ‘requests [for] revocation [of the earlier national trade marks] have been filed at the Portuguese Trade Mark Office on 17 October 2011’.
13 By document received at the Court Registry on 9 December 2011, OHIM submitted its observations on the request for a stay of proceedings. It stated that, in its opinion, the request should be refused.
14 By order of the President of the Third Chamber of the Court of 1 February 2012, the proceedings before the Court were stayed until the end of the procedure before the competent Portuguese authority, the Instituto Nacional da Propriedade Industrial (National Institute of Industrial Property; ‘the INPI’), and, at the latest, until 30 September 2012.
15 On 2 February 2012, OHIM lodged a response at the Court Registry. It contended that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
16 By document received at the Court Registry on 24 August 2012, the applicant sent the Court copies of three decisions of the INPI dated 30 December 2011, which, according to the applicant, established that no use had been made of the earlier national trade marks and consequently pronounced their revocation. The applicant also sent the Court copies of three certificates which, according to the applicant, stated that those decisions had become legally effective. Last, it submitted that those decisions rendered the action devoid of purpose and that there was therefore no need to adjudicate on it.
17 On 12 September 2012, the other parties to the present action were invited by the Court to submit their observations on the possibility that the case need not proceed to judgment.
18 By document received at the Court Registry on 14 September 2012, OHIM indicated that it took the view that it was necessary to adjudicate on the present action. Real Seguros did not submit observations on the request for a decision that there was no need to adjudicate.
Law
19 Under Article 113 of the Rules of Procedure, the General Court may at any time, of its own motion, after hearing the parties, declare that the action has become devoid of purpose and that there is no need to adjudicate on it. Unless the Court otherwise decides, the remainder of the proceedings is to be oral.
20 Having heard the parties, the Court considers that it has sufficient information on the basis of the documents in the case to rule on the present action by way of reasoned order.
21 The applicant stated to the Court that, by decision of the INPI dated 30 December 2011, the INPI had declared the revocation of the Portuguese word mark REAL and, moreover, that that decision had become legally effective on that date. OHIM did not dispute the accuracy of those statements.
22 In those circumstances, the Court finds that the present action has become devoid of purpose following the revocation of the Portuguese word mark REAL, the mark which effectively constituted the sole basis of the opposition decision and of the contested decision (see, to that effect, order of 27 February 2012 in Case T‑183/11 MIP Metro v OHIM – Jacinto (My Little Bear), not published in the ECR, paragraph 5; see, to that effect and by analogy, orders of 11 September 2007 in Case T‑185/04 Lancôme v OHIM – Baudon (AROMACOSMETIQUE), not published in the ECR, paragraph 21, and of 26 June 2008 in Joined Cases T‑354/07 to T‑356/07 Pfizer v OHIM – Isdin (FOTOPROTECTOR ISDIN), not published in the ECR, paragraphs 5 and 6). There is therefore no need to adjudicate on the present action.
23 The Court finds in that regard that the decision of the Opposition Division has not taken effect. It must be noted that, in accordance with the second sentence of Article 58(1) of Regulation No 207/2009, appeals filed at OHIM have suspensive effect. Accordingly, a decision from which such an appeal lies, such as a decision of an Opposition Division, takes effect only where no appeal has been lodged at OHIM in the form and within the time-limits prescribed in Article 60 of Regulation No 207/2009 or such an appeal has been definitively dismissed by the Board of Appeal. However, the present case does not concern either of those situations, as the contested decision has not taken effect either. It is clear from Article 64(3) of Regulation No 207/2009 that the decisions of the Boards of Appeal 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. The present case is not concerned with either of those two situations, given that the Court has found that there is no need to adjudicate on the present action (see order in AROMACOSMETIQUE, cited in paragraph 22 above, paragraph 22 and the case-law cited).
24 Moreover, none of the arguments raised by OHIM or anything in the documents submitted to the Court is such as to cast doubt on the finding in paragraph 22 above.
25 In the first place, in its statement of 14 September 2012, OHIM observed in particular – without, however, specifying the conclusions to be drawn from this – that the INPI decision declaring the revocation of the Portuguese word mark REAL, which the applicant sent to the Court on 24 August 2012, was drawn up in Portuguese and had not been translated into the language of the case.
26 However, while it is true that the applicant did not have that decision translated, even though the second subparagraph of Article 35(3) of the Rules of Procedure provides that ‘[a]ny supporting documents expressed in another language must be accompanied by a translation into the language of the case’, it must be observed that OHIM has challenged neither the meaning nor the effect attributed to that INPI decision by the applicant (see paragraph 21 above).
27 In the second place, OHIM contends – and there is no evidence in the case-file to the contrary – that the INPI decision declaring the revocation of the Portuguese word mark REAL could have effect only ex nunc, and not ex tunc. Yet that decision was, according to OHIM, delivered after the contested decision. Consequently, since it has no effect on past events, the INPI decision could not affect the lawfulness of the contested decision. In those circumstances, the action retains its purpose. That would not have been the case, however, if the trade mark in question had been declared invalid. Such a declaration has effect ex tunc and would thus be capable of affecting the lawfulness of the contested decision, even though the latter predates it.
28 In that regard it is indeed perfectly correct that the Courts of the European Union may not annul or alter a Board of Appeal decision on grounds which come into existence subsequent to the adoption of that decision (order of 30 June 2010 in Case C‑448/09 P Royal Appliance International v OHIM and Bosch und Siemens Hausgeräte, not published in the ECR, paragraph 44). However, by the present order, the Court is not in fact carrying out a review of the lawfulness of the contested decision but is merely establishing that the subject-matter of the proceedings has ceased to exist.
29 It should also be noted that OHIM relies in the arguments referred to in paragraph 27 above on the judgment of 4 November 2008 in Case T‑161/07 Group Lottuss v OHIM – Ugly (COYOTE UGLY), not published in the ECR, paragraphs 49 and 50. In that judgment, the Court ruled on the substance of an action against a Board of Appeal decision, even though the trade mark on which the opposition was based had been declared to be revoked during the proceedings. However, it must be noted that that judgment dealt with a case that is distinct from the present case. First, it is evident from paragraph 50 of that judgment that the decision declaring the revocation of the earlier mark was not definitive. Thus, in the light of the case-law cited in paragraph 22 above, it was still necessary to adjudicate on the action. Next, in the case in question, the applicant had not even requested the Court to declare that there was no need to adjudicate in consequence of the revocation of the earlier mark, and therefore the Court was not obliged to refuse such a request explicitly. In the present case, however, it is common ground that the INPI decision dated 30 December 2011 declaring the revocation of the Portuguese word mark REAL has become definitive, so that the Court cannot but uphold the applicant’s request for a declaration that there is no need to adjudicate (see paragraph 22 above).
30 In the third place, it must be borne in mind that, as has been stated in paragraph 16 above, the applicant produced two other decisions of the INPI also dated 30 December 2011, and submitted that, by those decisions, which had also become definitive, the INPI had declared the revocation of the other earlier national trade marks on which Real Seguros relied in support of its opposition. Those considerations have no bearing on the outcome of the present dispute, however, since the contested decision deals only with the likelihood of confusion that may exist between the trade mark at issue and the Portuguese word mark REAL. Following the revocation of the latter mark, it is for OHIM to consider whether, and to what extent, the opposition may reasonably be based on the other earlier trade marks and the unregistered rights on which Real Seguros originally relied.
Costs
31 Under Article 87(6) of the Rules of Procedure, where a case does not proceed to judgment, the costs are to be in the discretion of the General Court. Article 136(2) of the Rules of Procedure states: ‘Costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal … shall be regarded as recoverable costs.’
32 By claiming that the Court should order OHIM to pay the costs incurred before the Board of Appeal, the applicant has, implicitly but necessarily, requested that the Court rule on the substance of point 2 of the operative part of the contested decision, which provides that the applicant is ordered ‘to bear the costs of the appeal proceedings’. However, as has been stated in paragraph 22 above, there is no need to examine the substance of the contested decision. Consequently, there is also no need to adjudicate on the claim that OHIM should be ordered to pay the costs incurred before the Board of Appeal.
33 As to the remainder, in the circumstances of the present case, and in application of Article 87(6) of the Rules of Procedure, it is appropriate to order the parties to bear their own costs incurred before this Court.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby orders:
1. There is no need to adjudicate on the action.
2. The parties shall bear their own costs incurred before the General Court.
Luxembourg, 26 November 2012.