Provisional text

ORDER OF THE COURT (Eighth Chamber)

31 January 2017 (*)

(Appeal — Rules of Procedure of the Court of Justice — Article 181— EU trade mark — Invalidity proceedings — Figurative mark containing the word element ‘animal’)

In Case C‐485/16 P

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 7 September 2016,

**Universal Protein Supplements Corp.,**established in New Brunswick (United States), represented by S. Malynicz QC,

appellant,

the other parties to the proceedings being:

**European Union Intellectual Property Office**

defendant at first instance,

**H Young Holdings plc,** established in Newbury (United Kingdom),

intervener at first instance,

THE COURT (Eighth Chamber),

composed of M. Vilaras, President of the Chamber, J. Malenovský and D. Šváby (Rapporteur), Judges,

Advocate General: N. Wahl,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court,

makes the following

**Order**

1        By its appeal, Universal Protein Supplements Corp. seeks to have set aside the judgment of the General Court of 29 June 2016, *Universal Protein Supplements* v *EUIPO — H Young Holdings (animal)* (T‐727/14 and T‐728/14, not published, ‘the judgment under appeal’, EU:T:2016:372), by which that court dismissed its action seeking the annulment of two decisions of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 July 2014 (Cases R 2054/2013-1 and R 2058/2013-1), relating to invalidity proceedings between Universal Protein Supplements and H Young Holdings (‘the decisions at issue’).

**Legal context**

2        Under the heading ‘Relative grounds for refusal’, Article 8 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) states, in paragraph (4) thereof:

‘Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)       rights to that sign were acquired prior to the date of application for registration of the EU trade mark, or the date of the priority claimed for the application for registration of the EU trade mark;

(b)       that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.’

3        Article 53 of that regulation, entitled ‘Relative grounds for invalidity’, provides, in paragraph 1 thereof, as follows:

‘1. An EU trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:

...

(c)       where there is an earlier right as referred to in Article 8(4) and the conditions set out in that paragraph are fulfilled.’

4        Under the heading ‘Application for revocation or for a declaration of invalidity’, Rule 37 of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) provides, in point b(ii) thereof, as follows:

‘An application to the Office for revocation or for a declaration of invalidity pursuant to Article 55 of the Regulation shall contain:

...

(b)      as regards the grounds on which the application is based,

...

(ii)      in the case of an application pursuant to Article [53(1) of Regulation No 207/2009], particulars of the right on which the application for a declaration of invalidity is based and if necessary particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity’.

**Background to the dispute**

5        In the judgment under appeal, the General Court summarised the facts of the action before it as follows:

‘1      On 16 August 2002, the intervener, H Young Holdings plc, filed two applications for registration of EU trade marks with the European Union Intellectual Property Office (EUIPO), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended ... by [Regulation No 207/2009].

2      The marks in respect of which registration was sought were the following figurative signs:

–        in Case T‐727/14:

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–        in Case T‐728/14:

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3.      The goods and services for which registration was sought fall within Classes 3, 6, 8, 9, 12, 14, 16, 18, 20 to 22, 24, 25, 27, 28, 35, 36, 39 and 42 within the meaning 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, in particular, for goods within Class 25, to the following description: “Clothing, footwear, headgear, baseball caps, sweatshirts, t-shirts; sports clothing; wet suits; gloves; headbands; sports hats and helmets; sports footwear; sports shoes; gymnastic clothing; bandannas.”

4      The applications for marks were published in the *Community Trade Marks Bulletin* No 36/2003, of 28 April 2003 (in Case T‐727/14), and No 71/2003, of 1 September 2003 (in Case T‐728/14), and registered on 7 December 2006 (in Case T‐727/14) and on 13 April 2006 (in Case T‐728/14). The two EU trade marks were renewed on 2 September 2012.

5      On 11 June 2012, the applicant, Universal Protein Supplements Corp., filed applications for declarations of invalidity against those EU trade marks on the basis of Article 53(1)(c), read in conjunction with Article 8(4), of Regulation No 207/2009. The applications for declarations of invalidity referred to goods within Class 25 covered by the contested marks and were based on the unregistered word mark ANIMAL used in the course of trade for “clothing” falling within Class 25.

6      In the application forms seeking declarations of invalidity filed with EUIPO, the applicant stated that its [non-registered] mark had been used “in the territory of the European Union”. In the explanations attached to those forms, the applicant stated that it had used the mark ANIMAL for clothing in the European Union, and in specific countries thereof, since 1993.

7      In its statement of grounds of appeal lodged with the Cancellation Division on 20 October 2012, after the latter made requests for regularisation, the applicant produced various documents seeking to demonstrate that its [non-registered] sign ANIMAL had been used for clothing in various European Union countries. However, it did not give details of the provisions of national law on which it based its applications for declarations of invalidity.

8      Following the intervener’s observations alleging that the applicant had not provided any information as to the national law that could confer on it the right to prohibit the use of a more recent mark, the applicant, in the rejoinder before the Cancellation Division submitted on 4 June 2013, stated that it had demonstrated use of its [non-registered] trade mark in Belgium, the Czech Republic, Germany, France, Italy, Luxembourg, Hungary, the Netherlands, Austria, Romania, Slovakia and Sweden. As regards the relevant national legislation, the applicant attached an extract of the guidelines concerning procedures before EUIPO (“the EUIPO Guidelines”), namely the table entitled “National rights which constitute ‘earlier rights’ within the sense of Article 8(4) of [Regulation No 207/2009]” .... The applicant stated that the table explained the protection of [non-registered] rights in the Member States of the European Union.

9      On 29 August 2013, the Cancellation Division rejected the applications for declarations of invalidity of the EU trade marks at issue and ordered the applicant to pay the costs. It held, in essence, that the applicant had not produced any information relating to the rights relied on or to the conditions that must be satisfied in order to prohibit use of the contested marks in accordance with the rights in force in each of the Member States referred to. It found in particular that a general reference to the national legislation listed for information purposes in the table included in the EUIPO guidelines concerning opposition proceedings on the basis of Article 8(4) of Regulation No 207/2009 could not be regarded as sufficient.

10      On 21 October 2013, the applicant filed a notice of appeal against the Cancellation Division’s decision.

11      By [the decisions at issue], the First Board of Appeal of EUIPO dismissed the appeals and ordered the applicant to pay the costs. It held, in essence, that the applicant had not shown the existence, nature and scope of the [non-registered] national rights that it [had] relied on in support of its applications for declarations of invalidity since it [had] not [satisfied] the obligation laid down in Rule 37(b)(ii) of [Regulation No 2868/95]. More specifically, the Board of Appeal held that by merely asserting that its [non-registered] mark had been used in Belgium, the Czech Republic, Germany, France, Italy, Luxembourg, Hungary, the Netherlands, Austria, Romania, Slovakia and Sweden, and producing the table of national rights [annexed to the EUIPO Guidelines] to which it made general reference, the applicant had not satisfied the requirement laid down in Rule 37(b)(ii) of Regulation No 2868/95 under which the application for a declaration of invalidity must contain particulars of the right on which that application is based and, if necessary, particulars showing that the applicant is entitled to adduce the earlier right as grounds for invalidity. According to the Board of Appeal, the applicant did not rely on any provision or any right. It considered that a general reference to the table in the EUIPO [G]uidelines does not enable EUIPO to identify the national right upon which the application for a declaration of invalidity is based.’

**The procedure before the General Court and the judgment under appeal**

6        By applications lodged at the Registry of the General Court on 10 October 2014, Universal Protein Supplements brought two actions for annulment of the decisions at issue.

7        In support of its actions, it relied on two pleas in law: the first alleging infringement of Article 8(4) of Regulation No 207/2009 and Rule 37(b)(ii) of Regulation No 2868/95 and the second alleging that EUIPO did not of its own motion obtain information on the rights in the Member States concerned, in breach of Article 76 of Regulation No 207/2009.

8        By order of 16 April 2015, the General Court joined Cases T‐727/14 and T‐728/14 for the purposes of the written and oral procedure and the judgment.

9        By the judgment under appeal, the General Court dismissed the applications as unfounded.

**Forms of order sought before the Court of Justice**

10      By its appeal, Universal Protein Supplements claims that the Court should:

–        set aside the judgment under appeal;

–        annul the decisions at issue;

–        order EUIPO and the owner of the trade marks to bear their own costs and to pay the costs incurred by Universal Protein Supplements.

**The appeal**

11      Under Article 181 of its Rules of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court of Justice may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

12      That provision must be applied in the present case.

13      In support of its appeal, Universal Protein Supplements relies on three grounds of appeal. First, the appellant submits that the General Court infringed Article 8(4) of Regulation No 207/2009 and Rule 37(b)(ii) of Regulation No 2868/95. Secondly, it alleges that the General Court failed to take into account the results of its own measures of organisation of procedure. Thirdly and in the last place, Universal Protein Supplements submits that EUIPO failed in its duty to obtain information of its own motion about the law of the Member States.

*The second ground of appeal*

14      By its second ground of appeal, the appellant alleges that the General Court failed to take into account the information obtained in its own measures of organisation of procedure. More specifically, the General Court is claimed to have failed to take into account three matters arising from those measures. The appellant relies in this connection on, first, the fact that EUIPO did not declare the application for a declaration of invalidity inadmissible, secondly, the provision of a copy of the EUIPO Manual and, thirdly, the EUIPO’s response to the question of the scope of the Guidelines which replaced that manual and which are applicable to the proceedings at issue.

15      The Court has already had the opportunity to state that, as the wording of Article 88 of the Rules of Procedure of the General Court makes clear, the decision to put questions to the parties is a matter which is entirely within the discretion of that Court, which may, at any stage of the proceedings, prescribe any measure of organisation of procedure referred to in Articles 64 and 65 of those Rules. The use of that power does not, however, have any automatic effect on the outcome of the dispute, as the General Court remains free in its absolute discretion to assess the value to be given to the various legal and factual matters which have been submitted to it or which it has itself adduced (see, inter alia, order of 29 October 2004, *Ripa di Meana* v *Parliament*, C‐360/02 P, EU:C:2004:690, paragraph 28, and judgment of 20 March 2014, *Rousse Industry* v *Commission*, C‐271/13 P, not published, EU:C:2014:175, paragraph 24).

16      Therefore, the General Court was fully entitled not to refer in the judgment under appeal to the answers submitted by the parties following the measures of organisation of procedure brought by that court. Contrary to what is claimed by the appellant, the absence of any such reference does not therefore mean that the General Court did not take those answers into account.

17      Consequently, the second ground of appeal must be rejected as manifestly unfounded.

*The first and third grounds of appeal*

18      It is appropriate to examine the first and third grounds of appeal together.

19      By its first ground of appeal, the appellant claims that the General Court infringed Article 8(4) of Regulation No 207/2009 and Rule 37(b)(ii) of Regulation (EC) No 2868/95 inasmuch as it held that Universal Protein Supplements had not identified the relevant Member States whose national law it was relying upon, or identified in sufficient detail the content of the relevant national provisions, or, lastly, the scheme of the national provisions leading to the prohibition of EU trade marks post-dating the appellant’s non-registered mark. More specifically, Universal Protein Supplements alleges that the General Court incorrectly held, in paragraphs 30 and 31 of the judgment under appeal, that the details contained in the table entitled ‘National rights which constitute “earlier rights” within the sense of Article 8(4) of [Regulation No 207/2009]’, annexed to the EUIPO Guidelines, were insufficient and that that table did not contain citations of the provisions of the national laws referred to in it.

20      By its third ground of appeal, the appellant claims that the General Court erred in law by rendering, in paragraph 48 of the judgment under appeal, the duty on EUIPO to carry out a verification conditional on it having been previously provided by the applicant for a declaration of invalidity with the necessary particulars regarding the applicable national rights.

21      It must be pointed out in this connection that, in accordance with settled case-law, where one of the grounds adopted by the General Court is sufficient to sustain the operative part of its judgment, any defects that might vitiate other grounds given in the judgment concerned in any event have no bearing on that operative part and, accordingly, the ground of appeal relying on such defects is ineffective and must be dismissed (judgment of 29 November 2012, *United Kingdom* v *Commission*, C‐416/11 P, not published, EU:C:2012:761, paragraph 45).

22      In the present case, it must be held that the General Court found that the appellant had satisfied neither of the two cumulative requirements set out in Rule 37(b)(ii) of Regulation (EC) No 2868/95. It thus stated, in paragraphs 30 to 34 of the judgment under appeal, that the appellant had not provided the evidence establishing the content of the national legislation it had relied on. It also held in paragraphs 35 to 38 of that judgment that, decisively, the appellant had not provided evidence demonstrating that it fulfilled the conditions required, in accordance with those national laws, in order to have use of an EU trade mark prohibited pursuant to an earlier right.

23      Accordingly, even if the General Court were to have incorrectly held that the appellant had not provided evidence establishing the content of the national legislation it had relied on, or that the duty on EUIPO to carry out a verification of the relevance of the evidence produced by an applicant for a declaration of invalidity was only applicable if EUIPO had been previously provided by that applicant with the necessary particulars regarding the applicable national rights, such errors have no effect on the operative part of the judgment under appeal since the assessment in paragraphs 35 to 38 of that judgment provides sufficient grounds for such an operative part.

24      Therefore, even if the present grounds of appeal were to be held well founded, they would not be capable of resulting in the judgment under appeal being set aside.

25      Consequently, the first and third grounds of appeal must be dismissed as ineffective.

26      In the light of all the foregoing considerations, the appeal must be dismissed.

**Costs**

27      Under Article 137 of the Rules of Procedure of the Court of Justice, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. In the present case, since the present order was adopted before the appeal was served on the defendant and therefore before the latter could have incurred costs, it must be held that Universal Protein Supplements is to bear its own costs.

On those grounds, the Court (Eighth Chamber) hereby orders:

1.      **The appeal is dismissed.**

2.      **Universal Protein Supplements Corp. shall pay its own costs.**

Luxembourg, 31 January 2017.

| A. Calot Escobar | | M. Vilaras |
| ---------------- | | ---------- |

| Registrar | | President of the Eighth Chamber |
| --------- | | ------------------------------- |

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- Language of the case: English.