ORDER OF THE COURT OF FIRST INSTANCE (Eighth Chamber)
14 July 2009 (*)
(Community trade mark – Invalidity proceedings – Article 63(4) of Regulation (EC) No 40/94 (now Article 65(4) of Regulation (EC) No 207/2009) – Act which upheld the applicant’s claims in their entirety – Inadmissibility)
In Case T‑300/08,
Hoo Hing Holdings Ltd, established in Romford, Essex (United Kingdom), represented by M. Edenborough, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Novais Gonçalves, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Tresplain Investments Ltd, established in Tsing Yi, Hong Kong (China), represented by D. McFarland, Barrister,
ACTION brought against the decision of the First Board of Appeal of OHIM of 7 May 2008 (Case R 889/2007‑1), relating to invalidity proceedings between Hoo Hing Holdings Ltd and Tresplain Investments Ltd,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Eighth Chamber),
composed of M.E. Martins Ribeiro, President, S. Papasavvas and A. Dittrich (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the Court of First Instance on 1 August 2008,
having regard to the response of the intervener lodged at the Court Registry on 10 November 2008,
having regard to the objection of inadmissibility raised by OHIM by document lodged at the Court Registry on 25 November 2008,
having regard to the observations of the applicant, and of the intervener, lodged at the Court Registry on 20 January 2009 and 19 January 2009 respectively,
makes the following
Order
Background to the dispute
1 On 29 April 1996 the intervener, Tresplain Investments Ltd, filed a Community trade mark application at 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 for which registration was sought is the following figurative sign:
3 The goods in respect of which registration was sought are in Class 30 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 have the following description: ‘rice’.
4 On 4 February 1999, the intervener was granted registration of that Community trade mark under No 241810.
5 On 5 August 2005 the applicant, Hoo Hing Holdings Ltd, filed an application for a declaration of invalidity against that mark relying, first, on Article 51(1)(a) of Regulation No 40/94 (now Article 52(1)(a) of Regulation No 207/2009), in conjunction with Article 5 of Regulation No 40/94 (now Article 5 of Regulation No 207/2009), as applicable before 10 March 2004, the date on which the new version of that article entered into force, as amended by Council Regulation (EC) No 422/2004 of 19 February 2004, amending Regulation No 40/94 (OJ 2004 L 70, p. 1). It relied, second, on Article 51(1)(b) of Regulation No 40/94 (now Article 52(1)(b) of Regulation No 207/2009) and, third, on Article 52(1)(c) of that regulation (now Article 53(1)(c) of Regulation No 207/2009).
6 By decision of 16 April 2007, the Cancellation Division rejected the application for a declaration of invalidity.
7 On 8 June 2007, the applicant lodged an appeal with OHIM against the Cancellation Division’s decision.
8 By decision of 7 May 2008 (‘the contested decision’), the First Board of Appeal of OHIM annulled the Cancellation Division’s decision, declared the Community trade mark invalid and ordered the intervener to pay the costs.
9 The Board of Appeal considered that the conditions in Article 52(1)(c) of Regulation No 40/94 were met and declared the Community trade mark invalid on that basis.
10 In addition, in so far as the application for a declaration of invalidity was based on Article 51(1)(a) of Regulation No 40/94, in conjunction with Article 5 of that regulation, the Board of Appeal considered, in a ‘preliminary remark’, that it was inadmissible. It indicated, in paragraph 19 of the contested decision, that as the application for a declaration of invalidity had been filed on 5 August 2005, the version of Regulation No 40/94 which was applicable was that which included the amendments to the absolute grounds for invalidity introduced by Regulation No 422/2004, and that the new Article 51(1)(a) of Regulation No 40/94, which was applicable, made reference solely to Article 7 of Regulation No 40/94 (now Article 7 of Regulation No 207/2009), relating to the absolute grounds for refusal, and no longer to Article 5 of that regulation, relating to persons who can be proprietors of Community trade marks.
11 Lastly, in the contested decision the Board of Appeal did not examine the applicant’s argument based on Article 51(1)(b) of Regulation No 40/94.
Forms of order sought
12 In its application, the applicant claims that the Court should:
– annul the contested decision in respect of the finding that the plea based on the ground for invalidity under Article 51(1)(a) of Regulation No 40/94 was inadmissible;
– further, or in the alternative, alter the contested decision such that the plea based on the ground for invalidity under Article 51(1)(a) of Regulation No 40/94 is held to be admissible and well founded;
– alter the contested decision such that the plea based on the ground for invalidity under Article 51(1)(b) of Regulation No 40/94 is held to be admissible and well founded;
– if the contested decision is altered as requested, then alter it further so that the Community trade mark is declared invalid on either or both of these additional grounds as appropriate;
– order OHIM or the intervener or, in the alternative, OHIM and the intervener jointly and severally, to pay the costs.
13 In its objection of inadmissibility, OHIM contends that the Court should:
– dismiss the application in its entirety as manifestly inadmissible under Articles 111 and 114(1) of the Rules of Procedure of the Court of First Instance;
– order the applicant to pay OHIM’s costs;
– in the alternative, in case the objection of inadmissibility is rejected, or in case the Court’s decision on this point is reserved for the final judgment, prescribe a new time-limit for the submission of OHIM’s response on the merits of the application.
14 In its observations on the objection of inadmissibility, the intervener endorses the form of order sought by OHIM and contends that the Court should order the applicant to pay the costs.
15 In its observations on the objection of inadmissibility, the applicant claims that the Court should:
– dismiss the plea of inadmissibility;
– in the alternative, reserve a decision on the plea of inadmissibility for the final judgment;
– prescribe new time-limits for the further steps in these proceedings;
– order OHIM to pay the costs incurred by the applicant in connection with the plea of inadmissibility.
Law
16 Pursuant to Article 114(1) and (4) of the Rules of Procedure, if a party makes an application, the Court may decide on admissibility without examining the substance of the case. In accordance Article 114(3) the remainder of the proceedings is to be oral, unless the Court otherwise decides. In the present case, the Court considers, having examined the documents in the case‑file, that it has sufficient information to decide on the objection of inadmissibility submitted by OHIM without opening the oral procedure.
Arguments of the parties
17 OHIM, supported by the intervener, argues that the contested decision upheld the applicant’s appeal in its entirety, since the Board of Appeal declared the Community trade mark invalid and ordered the intervener to pay the costs. The applicant lacks the locus standi to bring an action before the Court, because an action may be brought only by a party to proceedings before the Board of Appeal ‘adversely affected’ by its decision, within the meaning of Article 63(4) of Regulation No 40/94 (now Article 65(4) of Regulation No 207/2009).
18 OHIM submits that a party is not entitled to challenge the grounds of a decision without calling into question its operative part, because only the operative part of an act is capable of producing legal effects and, as a consequence, of adversely affecting a person.
19 It also submits that the applicant has not demonstrated a legitimate interest in bringing the present action.
20 The applicant claims that to interpret Article 63(4) of Regulation No 40/94 in the way proposed by OHIM would lead to injustice.
21 The applicant contends that the majority of legal systems allow a party that has been unsuccessful on one ground, but successful on another ground, to file a cross‑appeal relating to the ground on which it was unsuccessful where the other party brings an appeal against the decision in question. It also submits that, for a successful party, there is no need to file an appeal where it has the possibility to file a cross‑appeal, and so preserve its position before the court, if the unsuccessful party itself brings an appeal against the decision in question.
22 The applicant submits that there is no provision to allow a successful party to file a cross‑appeal before the Court outside the time in which an unsuccessful party may file an appeal. Thus, in order to protect its position, the successful party must file its own appeal against the contested decision within the normal time allowed to file an appeal.
23 It submits that, in the present case, the contested decision has ‘three operative parts’ and that it was successful in its application for a declaration of invalidity based on Article 52(1)(c) of Regulation No 40/94, but that it was unsuccessful in its application for a declaration of invalidity based on Article 51(1)(a) or on Article 51(1)(b) of that regulation.
24 It claims that it has a legitimate interest in seeking the annulment of the contested decision in relation to those aspects on which it was unsuccessful. It submits that, if the present action were held to be inadmissible, and the intervener were to lodge an appeal against the contested decision and be successful in relation to the ground for invalidity based on Article 52(1)(c) of Regulation No 40/94, the Court would be prevented from examining the other two grounds for invalidity, and from ruling on a possible error by the Board of Appeal in that regard.
25 Lastly, the applicant submits that a consequence of adopting OHIM’s position, according to which the present action is inadmissible, is that the applicant should have filed three separate applications for a declaration of invalidity, in order to be able to bring an appeal in the event of one of them being rejected. OHIM’s position would thus result in procedural inefficiency and unnecessary complication.
Findings of the Court
26 Under Article 63(4) of Regulation No 40/94, an action before the Court is to be ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’.
27 It follows that, in so far as a decision of the Board of Appeal upholds in their entirety the claims of the party concerned, that party does not have standing to bring an action before the Court.
28 It must therefore be ascertained whether, in the present case, the contested decision upheld the applicant’s claims in their entirety.
29 It must be pointed out that, in the operative part of the contested decision, the Board of Appeal, first, annulled the Cancellation Division’s decision, second, declared the Community trade mark invalid and, third, ordered the intervener to pay the costs. By way of that operative part, the Board of Appeal upheld the application for a declaration of invalidity brought by the applicant.
30 In that regard, it must be noted that, under Article 54(2) of Regulation No 40/94 (now Article 55(2) of Regulation No 207/2009), a declaration of invalidity in respect of a Community trade mark has the effect that that mark is deemed not to have had, as from the outset, the effects specified in that regulation. The effects of a declaration of invalidity are, therefore, no different, whether the ground for invalidity was an absolute ground, within the meaning of Article 51 of Regulation No 40/94, or a relative ground for invalidity, within the meaning of Article 52 of that regulation.
31 Given that the various grounds for invalidity all result in exactly the same outcome, it is sufficient that one of those grounds be well founded for an application for a declaration of invalidity to be successful. In those circumstances, if the Board of Appeal concludes that one of the grounds for invalidity put forward is well founded, it may restrict the examination of the application for a declaration of invalidity to that sole ground (see, to that effect and by analogy, Case T‑215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II‑711, paragraph 100).
32 The fact that OHIM is not obliged to examine each of the grounds for invalidity submitted, if it declares the Community trade mark invalid on the basis of a single ground for invalidity, is confirmed by Rule 41(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), concerning the treatment of multiple applications for a declaration of invalidity, in conjunction with Rule 21(2) and (3) of that regulation. According to those provisions, where a preliminary examination of one application for a declaration of invalidity reveals that the Community trade mark might possibly be declared invalid, OHIM may suspend the proceedings relating to the other applications for a declaration of invalidity. Under Rule 21(3) of that regulation, once a decision declaring a Community trade mark invalid has become final, the proceedings relating to the other applications for a declaration of invalidity are deemed to have been disposed of. If such a procedure is allowed in the case of a number of applications for a declaration of invalidity, it should be so a fortiori where a number of grounds for invalidity are put forward in a single application for a declaration of invalidity (see, to that effect and by analogy, order in Case T‑194/05 Teletech Holdings v OHIM – Teletech International (TELETECH INTERNATIONAL) [2006] ECR II‑1367, paragraph 31).
33 It is clear from the foregoing that the applicant cannot be regarded as adversely affected by the fact that the Board of Appeal did not examine its application, in so far as it was based on Article 51(1)(b) of Regulation No 40/94.
34 As regards the fact that the Board of Appeal explicitly found, in paragraphs 19 and 20 of the contested decision, that the application for a declaration of invalidity was inadmissible in so far as it was based on Article 51(1)(a) of Regulation No 40/94, in conjunction with the former version of Article 5 of that regulation, the following should be noted.
35 The Board of Appeal, where it considers that one of the grounds for invalidity put forward by the party seeking a declaration of invalidity is well founded, may also decide to examine and, where appropriate, to reject the other grounds for invalidity put forward, as happened in the present case in relation to the ground for invalidity under Article 51(1)(a) of Regulation No 40/94. However, that part of the reasoning of its decision does not constitute the necessary basis for the operative part upholding the application for a declaration of invalidity, which is justified sufficiently by the ground for invalidity which was upheld. In such a situation, there is no question of a rejection in part of the application for a declaration of invalidity, since the claims of the applicant for a declaration of invalidity are upheld in their entirety (see, to that effect, and by analogy, VIPS, paragraph 31 above, paragraph 101).
36 Nor is it a case of an accumulation of separate applications for a declaration of invalidity lodged by the applicant, of which that based on Article 51(1)(a) of Regulation No 40/94 was found to be inadmissible, and that based on Article 51(1)(b) of that regulation was not examined or implicitly rejected. Procedural economy requires that there should be no unnecessary increase in the number of applications for a declaration of invalidity and thus also militates against the view that an application for a declaration of invalidity based on a number of grounds for invalidity is, in fact, a bundle of several separate applications for a declaration of invalidity (see, to that effect and by analogy, VIPS, paragraph 31 above, paragraph 102). Consequently, contrary to what the applicant argues, it cannot be asserted that the contested decision contains ‘three [separate] operative parts’.
37 It follows from all of the foregoing that the contested decision upheld the applicant’s claims in their entirety. The applicant does not therefore have standing under Article 63(4) of Regulation No 40/94.
38 That finding cannot be called into question by the other arguments put forward by the applicant.
39 It must be pointed out that the applicant is wrong to claim that it will not be able to preserve its position in the context of an action which might be brought by the intervener (and which was in fact brought and registered under reference T‑303/08).
40 It should be borne in mind that the applicant may, pursuant to Article 134(1) of the Rules of Procedure, participate in the proceedings as an intervener in the context of any action brought by the intervener against the contested decision. It should be noted that, under Article 134(2) of the Rules of Procedure, in the context of proceedings concerning intellectual property rights, interveners have the same procedural rights as the main parties and may, inter alia, apply for a form of order and put forward pleas in law independently of those applied for and put forward by the main parties. Under Article 134(3) of those rules, an intervener may, in his response, seek an order annulling or altering the contested decision on a point not raised in the application and put forward pleas in law not raised in the application.
41 Furthermore, if the Court were to consider that the Board of Appeal wrongly declared the Community trade mark invalid on the basis of Article 52(1)(c) of Regulation No 40/94 and were to annul the contested decision following an action brought by the intervener, it would be for the Board of Appeal to adopt a new decision, which the applicant could then contest in the event that that decision rejected the application for a declaration of invalidity.
42 It follows from the foregoing that, contrary to what the applicant claims, the result of holding the present action to be inadmissible is not to deprive it of effective legal protection.
43 It is also necessary to reject the applicant’s argument that the result of finding the present action inadmissible would be that it ought to have lodged three separate applications for a declaration of invalidity, in order to be in a position to bring an action in the event that one of those applications were rejected. Irrespective of whether an applicant for a declaration of invalidity has a legitimate interest in lodging a number of separate applications, it follows from Rule 41 of Regulation No 2868/95 that, where a number of applications for a declaration of invalidity have been filed relating to the same Community trade mark, OHIM may deal with them in one set of proceedings. Furthermore, it should be recalled that, under Rule 41(2) of Regulation No 2868/95, in conjunction with Rule 21(2) of that regulation, OHIM has the option of suspending some of the proceedings. An applicant for a declaration of invalidity cannot, therefore, force OHIM to take a view on each of the grounds for invalidity which it puts forward by filing a number of separate applications for a declaration of invalidity.
44 It follows from all of the foregoing that the present action is inadmissible.
Costs
45 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. As the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Eighth Chamber)
hereby orders:
1. The action is dismissed as inadmissible.
2. Hoo Hing Holdings Ltd shall pay the costs.
Luxembourg, 14 July 2009.
E. Coulon | | M.E. Martins Ribeiro |