ORDER OF THE GENERAL COURT (Seventh Chamber)
16 February 2011 (*)
(Community trade mark – Application for a declaration of invalidity – Trade mark coexistence agreement and withdrawal of the application for a declaration of invalidity – No need to adjudicate)
In Case T‑130/10,
Lux Management Holding SA, established in Luxembourg (Luxembourg), represented by S. Mas, lawyer,
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 being
Zeis Excelsa SpA, established in Montegranaro (Italy),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 15 January 2010 (Case R 712/2008-4), relating to invalidity proceedings between Zeis Excelsa SpA and Lux Management Holding SA,
THE GENERAL COURT (Seventh Chamber),
composed of A. Dittrich (President), I. Wiszniewska‑Białecka and M. Prek (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 17 March 2010,
having regard to the objection of inadmissibility lodged at the Registry of the General Court on 25 June 2010,
makes the following
Order
1 On 2 August 2000 the applicant, Lux Management Holding SA filed an application for registration of a Community figurative mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration was sought fall within Classes 14, 18 and 25 under 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, for each of those classes, to the following description:
– Class 14: ‘Jewellery’;
– Class 18: ‘Leather and imitations of leather, luggage’;
– Class 25: ‘Clothing, footwear, headgear, caps, belts’.
4 On 18 April 2002, the mark was registered as a Community trade mark (‘the contested mark’) for the goods referred to in paragraph 3 above.
5 On 13 April 2007, Zeis Excelsa SpA applied for a declaration of invalidity of the contested mark under Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009), in conjunction with Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
6 That application for a declaration of invalidity referred only to the goods in Class 25 for which the contested mark was registered. It was based on the existence of two earlier marks: an Italian mark, covering ‘all goods’ in Class 25, and an international mark, registered for various goods in Classes 14 and 18 and for ‘shoes’ included in Class 25. Those two marks consisted of the figurative sign reproduced below:
7 By decision of 8 April 2008, the Cancellation Division declared invalid the registration of the contested mark for the goods in Class 25.
8 On 30 April 2008, the applicant filed a notice of appeal against the Cancellation Division’s decision.
9 Whilst the appeal was being considered, the applicant and Zeis Excelsa jointly requested a stay of the proceedings before the Board of Appeal with a view to reaching an amicable settlement of the dispute. The Fourth Board of Appeal granted the request and stayed the proceedings until 9 October 2009. The applicant and Zeis Excelsa did not ask for a further stay of those proceedings.
10 On 11 January 2010, the applicant and Zeis Excelsa concluded a trade mark coexistence agreement.
11 By decision of 15 January 2010 (‘the contested decision’), the Fourth Board of Appeal dismissed the applicant’s appeal against the Cancellation Division’s decision. On 18 January 2010, the contested decision was communicated to the applicant.
12 By faxes of 19 January, 28 January and 25 February 2010, the applicant and Zeis Excelsa sent the trade mark coexistence agreement to OHIM and requested suspension of the execution of the contested decision and maintenance of the contested mark in the Register of Community Trade Marks. Under the trade mark coexistence agreement, Zeis Excelsa agreed to the withdrawal of its application for a declaration of invalidity of the contested mark and to the closure of the cancellation proceedings. OHIM did not respond to those faxes.
13 Taking account of the withdrawal of the application for a declaration of invalidity, on 11 March 2010, the Cancellation Division pronounced the closure of the proceedings. On the same day, that decision was faxed to the applicant and to Zeis Excelsa. However, since the transmission to the applicant was not successful, that decision was sent by registered post to the applicant’s legal representative on 15 March 2010.
14 By application lodged at the Registry of the General Court on 17 March 2010, the applicant brought the present action.
15 By separate document lodged at the Registry of the General Court on 25 June 2010, OHIM raised an objection of inadmissibility pursuant to Article 114(1) of the Rules of Procedure of the General Court.
16 The applicant did not submit any observations on the objection of inadmissibility within the prescribed period.
17 In the application, the applicant claims that the Court should:
– declare that the contested decision has become devoid of purpose;
– in the alternative, annul the contested decision;
– order OHIM to pay the costs.
18 In the objection of inadmissibility, OHIM contends that the Court should:
– declare that the action has become devoid of purpose and that there is no need to adjudicate on it;
– in the alternative, dismiss the action against the contested decision as inadmissible or manifestly unfounded;
– order the applicant to pay the costs.
19 In view of all the foregoing, it must be noted that, in the present case, taking note of the withdrawal of the application for a declaration of invalidity of the contested mark, and specifying that there is, in Community trade mark law, no basis for an ex officio continuation of invalidity proceedings, OHIM pronounced the closure of those proceedings.
20 Consequently, in accordance with Article 113 of the Rules of Procedure, the Court finds that the present action has become devoid of purpose and that there is no need to adjudicate on it.
Costs
21 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 General Court.
22 In the circumstances of this case, it must be noted that the fact that the case does not proceed to judgment is a consequence of the trade mark coexistence agreement concluded between the applicant and Zeis Excelsa, the withdrawal of the application for a declaration of invalidity by Zeis Excelsa and the subsequent closure of the invalidity proceedings by OHIM. Furthermore, it is apparent from the file, first, that the applicant and Zeis Excelsa did not request a further stay of the proceedings before the Board of Appeal, although they were still in negotiations with a view to reaching an amicable settlement of the dispute, and, second, that it was only following receipt of the contested decision that the applicant and Zeis Excelsa informed OHIM of the withdrawal of the application for a declaration of invalidity of the contested mark. Therefore, the applicant must be ordered to bear its own costs and to pay those incurred by OHIM.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby orders:
1. There is no need to adjudicate on the action.
2. Lux Management Holding SA shall pay the costs.
Luxembourg, 16 February 2011.
E. Coulon | A. Dittrich
Registrar | President |