ORDER OF THE PRESIDENT OF THE THIRD CHAMBER OF THE GENERAL COURT
2 March 2011 (*)
(Intervention)
In Case T‑237/10,
Louis Vuitton Malletier, established in Paris (France), represented by P.L. Roncaglia, G. Lazzeretti, M. Boletto and E. Gavuzzi, lawyers,
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 General Court, being
Friis Group International ApS, established in Copenhagen (Denmark), represented by C. Type Jardorf, lawyer
ACTION against the decision of the First Board of Appeal of OHIM of 24 February 2010 (Case R 1590/2008-1) concerning invalidity proceedings between Louis Vuitton Malletier and Friis Group International,
THE PRESIDENT OF THE THIRD CHAMBER OF THE GENERAL COURT
makes the following
Order
Background
1 On 11 March 2004, the applicant – Louis Vuitton Malletier (‘Louis Vuitton’) – filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to 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 in respect of which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration was sought are in Classes 9, 14, 18 and 25 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 correspond, for each of those classes, to the following description:
– Class 9: ‘Optical apparatus and instruments, including spectacles, sunglasses and spectacle cases’;
– Class 14: ‘Jewellery, including rings, keyrings, buckles and earrings, cuff links, bracelets, trinkets, brooches, necklaces, ties pins, ornaments, medallions; horological and chronometric instruments and apparatus, including watches, watchcases, alarm clocks; nutcrackers in precious metals, their alloys or coated therewith, candlesticks in precious metals, their alloys or coated therewith, jewel boxes in precious metals, their alloys or coated therewith’;
– Class 18: ‘Leather and imitations of leather; travel bags, travelling sets (leather goods), trunks and travelling bags, garment bags for travel, vanity cases, rucksacks, shoulder bags, handbags, attaché cases, document cases and briefcases of leather, pouches, wallets, purses, key cases, card cases; umbrellas’;
– Class 25: ‘Clothing and underwear, including sweaters, shirts, T-shirts, lingerie, belts (clothing), headscarves, neckties, shawls, waistcoats, skirts, waterproof clothing, overcoats, braces, trousers, jeans, pullovers, dresses, jackets, scarves, gloves, tights, socks, swimsuits, bathrobes, pyjamas, nightgowns, shorts, pouches (clothing); shoes, boots, slippers; headgear’.
4 On 28 July 2005, the Community trade mark was registered under No 3 693 116 in respect of all the goods referred to in the application for registration.
5 On 16 February 2007, Friis Group International (‘Friis’) filed an application pursuant to Article 55 of Regulation No 40/94 (now Article 56 of Regulation No 207/2009) for a declaration that the trade mark at issue was invalid. The grounds relied on were those provided for in Article 51(1)(a) of that regulation, read in conjunction with Article 7(1)(b) thereof, (now Article 52(1)(a) and Article 7(1)(b) respectively of Regulation No 207/2009).
6 By decision of 21 October 2008, the Cancellation Division rejected in its entirety the application for a declaration of invalidity.
7 On 4 November 2008, Friis appealed under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Cancellation Division’s decision.
8 By decision of 24 February 2010 (‘the contested decision’), which was notified to Louis Vuitton on 29 March 2010, the First Board of Appeal took cognisance of the fact that Friis had limited the scope of its appeal to the goods in Classes 9, 14 and 18 covered by the mark at issue and that, in consequence, the Cancellation Division’s decision rejecting the application for a declaration of invalidity had become final in so far as it concerned the goods in Class 25 covered by that mark (paragraphs 16 to 19 and point 1 of the operative part of the contested decision).
9 The Board of Appeal then found, in substance, that the mark at issue was devoid of any distinctive character as regards the goods in Classes 9, 14 and 18 for which it had been registered (paragraphs 36 to 55 of the contested decision) and that Louis Vuitton had not furnished proof that that mark had acquired such distinctive character in consequence of the use made of it, for the purposes of Article 52(2) of Regulation No 207/2009 (paragraphs 56 to 81 of the contested decision).
10 The Board of Appeal therefore granted the application for a declaration of invalidity and declared the mark at issue invalid for the goods in Classes 9, 14 and 18 in respect of which it had been registered.
Procedure
11 By application lodged at the Court Registry on 26 May 2010, Louis Vuitton brought an action against the contested decision, by which it claims that the Court should annul that decision in so far as it declares the mark at issue invalid in respect of the goods in Classes 9, 14 and 18 for which it was registered; order OHIM to pay the costs of the proceedings before the Court; and order Friis to pay the costs which it incurred before the Cancellation Division and before the Board of Appeal.
12 On 2 September 2010 and 18 August 2010 respectively, OHIM and Friis lodged their responses at the Court Registry, contending that the action should be dismissed and that Louis Vuitton should be ordered to pay the costs.
13 By document lodged at the Court Registry on 21 September 2010, C&A Buying KG (‘C&A’) sought leave to intervene in the present case in support of the form of order sought by OHIM.
14 Louis Vuitton, OHIM and Friis submitted their written observations relating to that application for leave to intervene by means of documents lodged at the Court Registry on 3, 2 and 1 November 2010 respectively.
15 By letter of 10 December 2010, lodged at the Court Registry on the same day, C&A stated that on 17 November 2010 it had submitted, before OHIM, applications for a declaration of invalidity in respect of the mark at issue in the present case and two other Community trade marks belonging to Louis Vuitton, and it submitted certain observations in reply to Louis Vuitton’s observations on C&A’s application for leave to intervene.
Arguments of the parties
16 C&A states that Louis Vuitton is also the proprietor of another Community figurative mark, registered under No 3 729 191 (‘the other Community trade mark’), and of a figurative mark registered in France under No 1 506 382 (‘the French mark’). Those two marks consist of the same image, which is almost identical to the mark at issue in the present case. The only difference between that image and the mark at issue is that a small circular keyhole is present in the image, but not in the mark.
17 C&A relates that, in July 2009, Louis Vuitton brought infringement proceedings before the Tribunal de Grande Instance de Paris (Regional Court, Paris) against a French company called ‘C&A France’ and a company governed by German law which, according to the writ of summons, was called ‘C&A EUROPE’. Since the latter company does not exist and the address given for it in the writ of summons corresponds to the address of the company seat of C&A, the writ of summons was served on C&A, which agreed to be a party to the French proceedings. The infringement alleged in the writ of summons consists, in particular, in the marketing of a number of handbags with a lock device which is identical or similar to the French mark.
18 Furthermore, C&A states, Friis filed an application for a declaration that the other Community trade mark was invalid, which was rejected by decision of the Cancellation Division of 15 October 2009. C&A does not know whether Friis has appealed against that decision before the Board of Appeal.
19 On that basis, C&A maintains that it has an interest in the outcome of the present dispute. In the first place, according to C&A, there is an immediate danger that, should Louis Vuitton win its case before the Tribunal de Grande Instance de Paris, it would bring proceedings against C&A throughout Europe, on the basis of the mark at issue in the present case and the other Community trade mark. The infringement proceedings brought by Louis Vuitton in France and similar actions brought, on the basis of Louis Vuitton’s two Community trade marks, against Friis before the Danish courts show that Louis Vuitton is determined to enforce its rights deriving from those marks.
20 In the second place, C&A claims, the result of the present case will have an influence on any invalidity proceedings concerning Louis Vuitton’s other Community trade mark or the French mark, and on the infringement proceedings before the Tribunal de Grande Instance de Paris.
21 First, according to C&A, given that the only difference between, on the one hand, the other Community trade mark and the French mark and, on the other, the mark at issue in the present case is a ‘small functional detail’, the adjudicatory bodies of OHIM would, if they had to rule on an application for a declaration that the other Community trade mark is invalid, follow the reasoning adopted by the Courts of the European Union in the present case. C&A must therefore have a chance to submit its observations in the ‘leading case’ before the General Court and cannot be compelled to bring new invalidity proceedings before OHIM, the outcome of which would necessarily be dictated by the approach taken in the present case. Should the General Court and the Court of Justice uphold the contested decision, there is no doubt that it would also be necessary to declare the other Community trade mark and the French mark invalid.
22 Secondly, according to C&A, the findings of the General Court and the Court of Justice in the present case will constitute a precedent for the infringement action in France. If the Courts of the European Union confirm the finding in the contested decision to the effect that the mark at issue does not have a distinctive character, the French courts, which are bound by that finding, would have no option but to dismiss that action on the ground that C&A did not use, on the handbags which it offered for sale, a sign which is identical or similar to the French mark.
23 According to Louis Vuitton, even if C&A were to have an interest in the result of the present case, that interest could not be classified as direct.
24 Louis Vuitton submits that C&A’s argument that, should the infringement proceedings in France be successful, Louis Vuitton will bring other proceedings against C&A on the basis of the Community trade mark at issue in the present case and the other Community trade mark is pure speculation, which is irrelevant from a legal standpoint. Despite the rejection of the application for a declaration that the other Community trade mark is invalid, Louis Vuitton has not enforced that mark against C&A. Even if it did so, C&A could defend itself by filing an application for a declaration of invalidity in respect of that mark.
25 C&A has requested that the Tribunal de Grande Instance de Paris declare the French mark invalid. Louis Vuitton argues, however, that, contrary to C&A’s assertions, the judgment to be delivered in the present case will not have the authority of precedent either in relation to the invalidity proceedings in respect of the French mark or in relation to any proceedings which C&A might bring before the competent body of OHIM for a declaration of invalidity in respect of the other Community trade mark. In either set of proceedings, C&A could put forward any arguments that it considered relevant and, if they were well founded, those marks could be declared invalid, whatever the result of the present case. Furthermore, Louis Vuitton is sure that, if ever the present proceedings culminated in the annulment of the contested decision and the rejection of the application for a declaration that the Community trade mark at issue is invalid, C&A would not suggest that the French court hearing the application for a declaration that the French mark is invalid should treat that judgment as a binding precedent.
26 According to Louis Vuitton, C&A is wrong to maintain that the Tribunal de Grande Instance de Paris, before which infringement proceedings have been brought on the basis of the French trade mark, is bound by the judgment to be delivered in the present case. That would be so only if that judgment were a preliminary ruling under Article 267 TFEU, which binds the national court which has made the reference. As regards other kinds of judgment handed down by the Courts of the European Union, there are a number of cases in which national courts have refused to rule in conformity with those judgments on the ground that they are incorrect. OHIM and the Courts of the European Union have affirmed, for their part, that they are not bound by decisions of national trade mark offices or national courts.
27 The fact that the Tribunal de Grande Instance de Paris did not stay the proceedings pending the result of the present case also confirms that there is no link between the present proceedings and the infringement proceedings in France and shows that C&A has no direct interest in the outcome of the present dispute.
28 OHIM raises no objection against C&A’s application for leave to intervene.
29 Friis agrees that that application should be granted. According to Friis, there are similarities between the present proceedings and the infringement proceedings brought by Louis Vuitton against C&A in France. As a consequence, C&A has a legitimate interest in intervening in the present case. Furthermore, Friis confirms that Louis Vuitton has brought infringement proceedings against it – Friis – before the Danish courts. Lastly, Friis states that, for reasons linked to the costs of such proceedings, it has not appealed before the Board of Appeal against the Cancellation Division’s decision rejecting its application for a declaration that the other Community trade mark is invalid.
Assessment of the President of the General Court
30 Under the second paragraph of Article 40 of the Statute of the Court of Justice of the European Union, applicable to the procedure before the General Court by virtue of the first paragraph of Article 53 thereof, any person able to establish an interest in the result of a case, other than cases between Member States, between Community institutions or between Member States and Community institutions, is entitled to intervene.
31 It has consistently been held that the concept of an interest in the result of the case, for the purposes of that provision, must be defined in the light of the precise subject-matter of the dispute and be understood as meaning a direct, existing interest in the ruling on the form of order sought and not as an interest in relation to the pleas in law and arguments put forward. The expression ‘result’ is to be understood as meaning the operative part of the final judgment which the parties ask the Court to deliver. It is appropriate, in particular, to ascertain whether the intervener is directly affected by the contested measure and whether his interest in the result of the case is established (see the order in Case T-15/02 BASF v Commission [2003] ECR II-213, paragraph 26, and the order of 13 April 2010 in Case T-54/07 Vtesse Networks v Commission, not published in the ECR, paragraph 30).
32 A future and hypothetical event is not capable of demonstrating an existing and established interest in the result of the case for the purposes of the case-law referred to above (see, to that effect, the order of 10 January 2008 in Case T‑314/06 Whirlpool Europe v Council, not published in the ECR, paragraph 29).
33 Furthermore, it is apparent from Article 115(1) of the Rules of Procedure of the General Court that an application to intervene must be made either within six weeks of the publication of the notice referred to in Article 24(6) or, subject to Article 116(6), before the decision to open the oral procedure, as provided for in Article 53 of those Rules of Procedure.
34 Under Article 116(2) and (4) of the Rules of Procedure, if an intervention for which application has been made within the period of six weeks prescribed in Article 115(1) of those Rules of Procedure is allowed, the intervener must receive a copy of every document served on the parties – subject to the right of those parties to apply for the omission of secret or confidential documents – and he is entitled to submit a statement in intervention. On the other hand, under Article 116(6) of those Rules of Procedure, where the application to intervene is made after the expiry of the six-week period referred to above, the intervener may only submit observations, on the basis of the Report for the Hearing communicated to him, during the oral procedure.
35 In the present case, it should first be noted that the application to intervene was made in accordance with Article 115 of the Rules of Procedure of the General Court and before the expiry of the six-week period laid down in Article 115(1), as the notice concerning the present case, provided for in Article 24(6) of the Rules of Procedure, was published in the Official Journal of the European Union on 31 July 2010.
36 However, the facts relied upon by C&A, in support of its application to intervene, in its letter of 10 December 2010 (see paragraph 15 above) – that is to say, the filing, after the submission of its application to intervene, of applications for a declaration of invalidity in respect of three Community trade marks belonging to Louis Vuitton, including the mark at issue in the present case – cannot be taken into consideration for the purposes of assessing that application to intervene.
37 To allow an applicant for leave to intervene to rely, after the expiry of the six-week period laid down in Article 115(1) of the Rules of Procedure and in support of an application which it has submitted within that six-week period, on facts which were not put forward in the original application would be tantamount to a circumvention of that time-limit. That applies a fortiori to facts which have arisen after the application to intervene was submitted.
38 Secondly, it should be pointed out that, with the exception of the infringement proceedings brought against it by Louis Vuitton, C&A does not invoke any other established and existing event in support of its application to intervene, but merely refers to the possibility that Louis Vuitton may bring other infringement actions against it, on the basis, inter alia, of the mark at issue in the present case.
39 However, the possibility that Louis Vuitton will bring proceedings against C&A in the future depends also on other factors, which are linked to Louis Vuitton’s discretion and subject to a decision to that effect being taken independently by that company, not to the result of the present case.
40 Consequently, the possible future proceedings referred to by C&A are not sufficient to show that C&A is affected by OHIM’s claim that the action should be dismissed and that C&A has an established and existing interest in the result of the present case (see, to that effect, the order of 14 January 2010 in Case T-38/09 El Corte Inglés v Commission, not published in the ECR, paragraph 26). They are future and hypothetical events, within the meaning of the case-law referred to in paragraph 32 above.
41 Thirdly, it is common ground that the mark at issue in the present case has not been invoked by Louis Vuitton in support of its infringement proceedings against C&A before the Tribunal de Grande Instance de Paris. It follows that, even if that mark were to be declared invalid, those proceedings would not be rendered devoid of purpose.
42 C&A submits, however, that that mark is so similar to the French mark relied upon in support of those infringement proceedings that, if the General Court were to uphold the contested decision declaring the mark at issue in the present case invalid, the Tribunal de Grande Instance de Paris would have no choice but to declare the French mark invalid also and thus to dismiss Louis Vuitton’s infringement proceedings.
43 In that regard, it is necessary at the outset to reject Louis Vuitton’s argument that, in essence, since the judgment to be delivered in the present case will not relate to a reference for a preliminary ruling under Article 267 TFEU, any national court will be free to disregard it if the grounds on which it is based appear to that court to be incorrect.
44 It should be borne in mind that national trade mark laws were harmonised under First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) (repealed by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25)). Both that directive and Regulation No 207/2009 contain provisions, framed in very similar terms, under which trade marks which are devoid of any distinctive character are not to be registered or, if registered, are liable to be declared invalid (see, respectively, Article 3(1)(b) of First Directive 89/104, now Article 3(1)(b) of Directive 2008/95, and Article 7(1)(b) and Article 52(1)(a) of Regulation No 207/2009).
45 It follows that the case-law of the Courts of the European Union relating to the application of the abovementioned provisions both of First Directive 89/104 (or of Directive 2008/95) and of Regulation No 207/2009 is likely to be relevant for the purposes of the examination, by the competent national court, of an application for a declaration that a mark registered in a Member State is invalid.
46 That said, it must be stated that it does not emerge from the file, and C&A does not claim, that the present case raises a question of principle, relating to the interpretation of the abovementioned provisions of Regulation No 207/2009, which may also be of relevance to the interpretation of Article 3(1)(b) of First Directive 89/104.
47 The subject-matter of the present case appears, on the contrary, to be restricted to the question whether the mark at issue is devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 207/2009.
48 On that point, first, it is settled law that, as regards both the application of First Directive 89/104 and the application of Regulation No 207/2009, the distinctive character of a mark must, inter alia, be assessed in relation to the perception of it by the relevant public (as regards First Directive 89/104, see Joined Cases C‑53/01 to C-55/01 Linde and Others [2003] ECR I-3161, paragraph 41, and Case C-363/99 Koninklijke KPN Nederland [2004] ECR I-1619, paragraph 34; as regards Regulation No 207/2009, see Case T-405/09 Deutsche Bahn v OHIM (Vertical combination of the colours grey and red) [2010] ECR II-0000, paragraph 20 and the case-law cited).
49 Furthermore, the actual application of the criteria for determining whether or not a sign which may be registered as a mark has distinctive character involves findings of a factual nature (Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 22).
50 Lastly, it should be borne in mind that both national and Community trade marks which are devoid of any distinctive character may be registered, under Article 3(3) of First Directive 89/104 (now Article 3(3) of Directive 2008/95) and Article 7(3) of Regulation No 207/2009, respectively, if evidence is provided that they have acquired, through the use which has been made of them, distinctive character in the part of the relevant Member State or of the European Union, respectively, in which they did not, ab initio, have such character (Case C‑108/05 Bovemij Verzekeringen [2006] ECR I‑7605, paragraph 22, and Case T‑307/09 Earle Beauty v OHIM (NATURALLY ACTIVE) [2010] ECR II‑0000, paragraph 49).
51 It is apparent from all the foregoing considerations that, even if it is held in the present case that the contested decision was right in declaring the mark at issue invalid, and notwithstanding the alleged similarity between that mark and the French mark, the possibility remains that the Tribunal de Grande Instance de Paris may come to a different conclusion as regards the application for a declaration of invalidity in respect of the French mark. That is particularly so because that application will have to be assessed by reference to a different public (the French public and not the public of the whole of the European Union, which is the relevant public for assessing the distinctive character of the Community trade mark at issue in the present case) and because, should the case arise, evidence that the mark in question has acquired distinctive character through the use made of it will have to be provided only in respect of the territory of France or a part of that territory.
52 Secondly, even if it were to be accepted that the judgment to be delivered in the present case may provide the Tribunal de Grande Instance de Paris with inspiration as regards the assessment of the application before it for a declaration of invalidity in respect of the French mark, that fact would not establish a direct interest on the part of C&A in the result of this case, for the purposes of the case-law referred to in paragraph 31 above.
53 In such circumstances, C&A may, at the very most, have an interest in relation to the arguments put forward by OHIM for the dismissal of Louis Vuitton’s action, in so far as C&A is likely to put forward identical or similar arguments in relation to the French mark, in the infringement proceedings before the Tribunal de Grande Instance de Paris.
54 That interest with regard to the arguments cannot be confused with an interest in the upholding of OHIM’s contention for dismissal of Louis Vuitton’s action against the contested decision declaring invalid the Community trade mark at issue, that is to say, a different mark from the mark concerned by the infringement proceedings brought by Louis Vuitton against C&A before the Tribunal de Grande Instance de Paris (see, to that effect, order of the President of the Court of Justice of 9 February 2007 in Case C-301/05 P Wilfer v OHIM, not published in the ECR, paragraph 8).
55 It follows from all the foregoing considerations that C&A’s application to intervene must be dismissed for lack of a direct, existing interest in the outcome as regards the form of order sought by OHIM.
Costs
56 Under Article 87(1) of the Rules of Procedure, a decision as to costs is to be given in the final judgment or in the order closing the proceedings. Since the present order closes the proceedings with respect to C&A, it is appropriate to give a decision on the costs relating to its application for leave to intervene.
57 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since C&A has been unsuccessful, it must be ordered to bear its own costs and, in accordance with the form of order sought by Louis Vuitton, to pay those incurred by Louis Vuitton in relation to the intervention proceedings. Since neither OHIM nor Friis have applied for costs, they must bear their own costs.
On those grounds,
THE PRESIDENT OF THE THIRD CHAMBER OF THE GENERAL COURT
hereby orders:
1. The application for leave to intervene lodged by C&A Buying KG is dismissed.
2. C&A Buying KG shall pay the costs incurred by the applicant, Louis Vuitton Malletier, in relation to the intervention proceedings and shall bear its own costs.
3. The Office for Harmonisation in the Internal Market (Trade Marks and Designs) and Friis Group International ApS shall bear their own costs in relation to the intervention proceedings.
Luxembourg, 2 March 2011.
E. Coulon O. Czúcz