ORDER OF THE GENERAL COURT (First Chamber)
23 November 2017 (*)
(EU trade mark — Opposition proceedings — Revocation of the contested decision — Action which has become devoid of purpose — No need to adjudicate)
In Case T‑886/16,
Nf Nails In Vogue, SL, established in Arganda del Rey (Spain), represented by L. Jáudenes Sánchez, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája and E. Scheffer, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Nails & Beauty Factory GmbH, formerly Nails & Beauty Vertriebs GmbH,established in Kiel (Germany),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 5 October 2016 (Case R 202/2016-1), relating to opposition proceedings between Nf Nails In Vogue and Nails & Beauty Vertriebs,
THE GENERAL COURT (First Chamber),
composed of I. Pelikánová, President, P. Nihoul (Rapporteur) and J. Svenningsen, Judges,
Registrar: E. Coulon,
makes the following
Order
1 By document lodged at the Court Registry on 15 December 2016, the applicant, Nf Nails In Vogue, SL, brought the present action, seeking annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 October 2016 (Case R 202/2016-1), relating to opposition proceedings between the applicant and Nails & Beauty Vertriebs GmbH, now Nails & Beauty Factory GmbH (‘the contested decision’).
2 In the contested decision, the Board of Appeal annulled the Opposition Division’s decision of 8 December 2015 on the ground that the latter had incorrectly considered that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)) between the figurative mark applied for NAILS FACTORY and the earlier EU figurative mark NAILS FACTORY, registered under No 10 598 712. The Board of Appeal concluded that there was no likelihood of confusion, in essence, because of the weak distinctive character of the shared word element ‘nails factory’ and the significant visual and conceptual differences between those signs.
3 By letter lodged at the Court Registry on 30 June 2017, EUIPO informed the Court that, by decision of 12 June 2017 (‘the decision to revoke’), the First Board of Appeal of EUIPO had adopted a decision (Case R 202/2016-1 (REV)) whereby it revoked the contested decision. The decision to revoke was based on Article 80 of Regulation No 207/2009 (now Article 103 of Regulation 2017/1001).
4 In the decision to revoke, the Board of Appeal indicated that the contested decision did not contain a sufficient statement of reasons, given that it did not explicitly refer to all the relevant territories and thus contained an obvious procedural error.
5 By letter lodged at the Court Registry on 14 September 2017, EUIPO informed the Court that the decision to revoke had become final. It indicated that, pursuant to Article 131 of the Rules of Procedure of the General Court, there was no longer any need to adjudicate on the present action. It did not apply for costs.
6 By letter lodged at the Court Registry on 26 September 2017, the applicant signalled its agreement regarding the application for a decision that there is no need to adjudicate. It requested that the Court order EUIPO to pay the costs, including those relating to the proceedings before the Board of Appeal.
7 Pursuant to Article 130 of the Rules of Procedure, it is sufficient to state in the present case that, in the light of the revocation of the contested decision, the present action has become devoid of purpose. It follows that there is no longer any need to adjudicate (order of 10 July 2017, No Limits v EUIPO — Morellato (NO LIMITS), T‑43/17, not published, EU:T:2017:513, paragraph 3).
8 Article 137 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.
9 In the circumstances of the present case, the Court considers that EUIPO must be ordered to bear its own costs and to pay those incurred by the applicant, including the costs relating to the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby orders:
1. There is no longer any need to adjudicate on the action.
2. The European Union Intellectual Property Office (EUIPO) is ordered to bear its own costs and to pay those incurred by Nf Nails In Vogue, SL.
Luxembourg, 23 November 2017.