Case T‑616/19 REV
Katjes Fassin GmbH & Co. KG
v
European Union Intellectual Property Office
Order of the General Court (Second Chamber), 13 September 2021
(Procedure – Application for revision – EU trade mark – Opposition proceedings – Action against a decision of EUIPO partially refusing to register a mark – Withdrawal of the opposition before service of the order dismissing the action – Fact unknown to the applicant and to the General Court – Revision of the order – No need to adjudicate)
1. Judicial proceedings – Revision – Conditions governing the admissibility of the application – New fact – Concept – Fact of such a nature as to be a decisive factor and unknown to the applicant and to the General Court – Withdrawal of the opposition before service of the order dismissing the action – Included
(European Parliament and Council Regulation 2017/1001, Art. 8(1)(b); Statute of the Court of Justice, Art. 44; Rules of Procedure of the General Court, Art. 169)
(see paragraphs 22, 25, 26)
2. EU trade mark – Appeals procedure – Action brought against the rejection of a trade mark application following the lodging of opposition – Withdrawal of the opposition – Action which has become devoid of purpose – No need to adjudicate
(European Parliament and Council Regulation 2017/1001, Arts 8(1)(b), 46 and 72; Rules of Procedure of the General Court, Art. 130(2))
(see paragraphs 28-32)
Résumé
On 18 January 2017, the applicant, Katjes Fassin GmbH & Co. KG, applied to the European Union Intellectual Property Office (EUIPO) for registration of the word mark WONDERLAND. Haribo The Netherlands & Belgium BV filed a notice of opposition on the basis of its earlier Benelux word mark WONDERMIX. By decision of 8 July 2019, the Fourth Board of Appeal of EUIPO partially annulled the decision of the Opposition Division upholding the opposition in its entirety and concluded that there was a likelihood of confusion in respect of part of the goods covered by the application for registration.
The action brought by Katjes Fassin against that decision was dismissed by the General Court by order of 10 July 2020. (1) After learning that the opponent had withdrawn its opposition to the registration of the mark WONDERLAND before the Court made its order, Katjes Fassin made an application for revision by which it requested the Court to resume the proceedings in the case in question and to amend its order.
By an initial decision, (2) the Court declares the application for revision admissible. By a second decision, (3) it grants that application and holds that there is no longer any need to adjudicate on the action for annulment, which has become devoid of purpose.
Findings of the Court
In its initial decision, the Court rules on the admissibility of the application for revision. First of all, it observes that an application for revision of its decision may be made only on discovery of a fact which is of such a nature as to be a decisive factor and which, when the judgment was delivered or the order served, was unknown to the Court and to the party claiming revision. (4) Furthermore, it states that revision is an exceptional review procedure that allows the force of res judicata attaching to a final judicial decision to be called in question on the basis of the findings of fact relied upon by the court.
Having made those clarifications, the Court examines, in the first place, whether the application for revision satisfies the conditions governing admissibility. In that regard, it notes that, although the opponent informed EUIPO of the withdrawal of the opposition, EUIPO did not make that information available to Katjes Fassin. Consequently, as it had not been informed of the actual withdrawal of the opposition before service of the order of 10 July 2020, the applicant was not in a position to know that fact on the date of service of that order. In addition, the Court points out that, when it made that order, it also did not have any information on the withdrawal of the opposition, of which it had not been notified by either EUIPO or the opponent.
Furthermore, the Court notes that the withdrawal of the opposition is a fact which is of such a nature as to be a decisive factor. Where the opposition is withdrawn in the course of the proceedings before the EU judicature for a ruling on an appeal to EUIPO against the decision on opposition, there is no longer any basis for the proceedings, with the result that those proceedings become devoid of purpose. The Court states that, had it been aware of the withdrawal of the opposition before the order of 10 July 2020 was made, it cannot be excluded that it would have been led to not adopt that order.
In the second place, the Court rules on Katjes Fassin’s legal interest in bringing proceedings. It observes that, in the present case, the existence of that interest cannot be excluded despite the fact that the action for annulment became devoid of purpose following the withdrawal of the opposition. After recalling the specific subject matter of revision, namely to call into question the force of res judicata of a judicial decision, the Court finds that calling into question the force of res judicata of the order of 10 July 2020, which contains factual and legal considerations unfavourable to the applicant, procures for the latter an advantage justifying its interest in initiating the revision procedure. Moreover, the Court observes that revision of that order could also procure for the applicant an advantage as regards the allocation of costs which it had been ordered to pay.
The Court concludes that the admissibility criteria of the application for revision are fulfilled and that Katjes Fassin has an interest in seeking revision of the order of 10 July 2020.
In its second decision, the Court rules on the question of substance. It finds that, at the time of service of the order of 10 July 2020, the basis of the opposition proceedings had ceased to exist and the decision which was the subject of the action for annulment in the main proceedings had to be deemed never to have existed. Consequently, had it been informed in good time of the withdrawal of the opposition, it would not have adopted that order.
Accordingly, the Court grants the application for revision, holds that, following the withdrawal of the opposition, the action for annulment has become devoid of purpose and that there is therefore no longer any need to adjudicate, and declares that each party is to bear its own costs relating to the annulment proceedings.