Provisional text
ORDER OF THE GENERAL COURT (First Chamber)
9 March 2017 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark NANOFIL — Invalidity of the earlier EU figurative mark NANO — No need to adjudicate)
In Case T‑323/13,
Pure Fishing, Inc., established in Spirit Lake, Iowa (United States), represented by J. Dickerson, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Edward Łabowicz, residing in Kłodzko (Poland), represented by M. Żygadło, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 15 April 2013 (Case R 1241/2012-2), relating to opposition proceedings between Mr Łabowicz and Pure Fishing,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová (Rapporteur), President, P. Nihoul and J. Svenningsen, Judges,
Registrar: E. Coulon,
makes the following
Order
1 On 20 December 2010, the applicant, Pure Fishing, Inc., filed an application for registration of the EU word mark NANOFIL 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), for goods in Class 28 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.
2 On 6 April 2011, the intervener, Mr Edward Łabowicz, filed a notice of opposition, pursuant to Article 8(1)(b) of Regulation No 207/2009, to registration of the mark applied for in respect of all the goods covered by the application for registration, on the basis of the earlier EU figurative mark registered on 13 March 2009, under No 6649818, designating goods in Class 18, reproduced below:
3 By decision of 14 May 2012, the Opposition Division upheld the opposition filed by the intervener and rejected the application for registration of the word mark NANOFIL.
4 On 4 July 2012, the applicant filed a notice of appeal, registered under number R 1241/2012-2, with EUIPO against the decision of the Opposition Division.
5 In addition, on 11 December 2012, the applicant filed with EUIPO an application for a declaration that the earlier mark was invalid, on the basis of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(b) and (c) of that regulation.
6 By decision of 15 April 2013 (Case R 1241/2012-2), the Second Board of Appeal of EUIPO dismissed the applicant’s appeal against the decision of the Opposition Division of 14 May 2012 and upheld the rejection of the application for registration of the mark NANOFIL.
7 By application lodged at the Court Registry on 14 June 2013, the applicant brought the present action.
8 By decision of 21 October 2013, the Cancellation Division of EUIPO declared the earlier mark invalid in respect of all the goods for which it had been registered, on the basis of Article 7(1)(b) and (c) of Regulation No 207/2009. On 3 December 2013, the intervener filed a notice of appeal, registered under number R 2426/2013-1, against that decision.
9 By order of 14 February 2014, the President of the First Chamber of the General Court suspended these proceedings pending the final decision of EUIPO in Case R 2426/2013-1, regarding the invalidity of the earlier mark.
10 By decision of 5 March 2015 (Case R 2426/2013-1), the First Board of Appeal of EUIPO confirmed the invalidity of the earlier mark in respect of all the goods for which it had been registered.
11 By application lodged at the Court Registry on 15 May 2015, the intervener brought an action, which was registered as Case T‑237/15, seeking the annulment of the decision of the Board of Appeal of 5 March 2015 in Case R 2426/2013-1.
12 By order of 29 June 2015, the President of the First Chamber of the General Court suspended the present proceedings pending a definitive judgment in Case T‑237/15.
13 By judgment of 22 September 2016, Łabowicz v EUIPO — Pure Fishing (NANO) (T‑237/15, not published, EU:T:2016:529), the General Court dismissed the action brought by the intervener against the decision of the Board of Appeal of 5 March 2015 in Case R 2426/2013-1.
14 On 20 December 2016, the Court invited the parties to submit their observations on the conclusions to be drawn from the judgment of 22 September 2016, NANO (T‑237/15, not published, EU:T:2016:529), for the present action. The applicant replied by letter lodged at the Court Registry on 10 January 2017.
15 By letter lodged at the Court Registry on 12 January 2017, EUIPO stated that the present action had become devoid of purpose since the earlier mark on which the opposition was based had been declared invalid and the judgment of 22 September 2016, NANO (T‑237/15, not published, EU:T:2016:529) had become final. Accordingly, EUIPO asked the General Court to order that there was no longer any need to adjudicate on the present action and that the costs of the proceedings should not be borne by EUIPO.
16 By letter lodged at the Court Registry on 24 January 2017, the applicant signified its agreement to the request for an order that there was no longer any need to adjudicate.
17 In accordance with Article 131(1) of the Rules of Procedure of the General Court it is sufficient, in the present case, to declare that, following the declaration of invalidity of the earlier mark on which the opposition proceedings before EUIPO were based, the present action has become devoid of purpose. It follows that there is no longer any need to adjudicate on the action.
18 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 Court.
19 In the circumstances of the present case, the Court finds that it is appropriate for each party to bear its own costs.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby orders:
1. There is no longer any need to adjudicate on the present action.
2. Each party shall bear its own costs.
Luxembourg, 9 March 2017.