Opinion of the Advocate General — ECLI:EU:C:2016:915
Date: 2016-12-01
Language of the case: French
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment;Appeal - unfounded
Origin: France

Summary 83. As none of the grounds of appeal submitted by EUIPO is successful, the appeal must be dismissed in its entirety. VI – Costs 84. Under Article 184(2) of the Rules of Procedure of the Court of Justice, the Court is to make a decision as to costs where it dismisses the appeal. 85. It follows from Article 138(1) in conjunction with Article 184(1) of the Rules of Procedure that the unsuccessful party is to be ordered to pay costs if they have been applied for. Since Mr Szajner has made such an application and EUIPO has been unsuccessful, the latter must be ordered to pay the costs. 86. It also follows from Article 184(4) of the Rules of Procedure that an intervener at first instance which has not itself brought the appeal can be ordered to pay its own costs if it has participated in the written or oral part of the proceedings before the Court of Justice. In accordance with this, Forge de Laguiole SARL, which in this instance took part in the written proceedings, should be ordered to pay its own costs. VII – Conclusion 87. On the basis of the above considerations, I propose that the Court of Justice should: (1) dismiss the appeal; (2) order EUIPO to bear its own costs and to pay those incurred by Mr Gilbert Szajner; (3) order Forge de Laguiole SARL to bear its own costs. 1 Original language: German. 2 The dispute over the use of the name ‘Laguiole’ has spanned a period of more than 20 years, the latest stage being a decision by the French Cour de Cassation (Court of Cassation) of 4 October 2016; on this and generally on the background to the case, see Tymen, E., ‘Une nouvelle manche dans la guerre autour des couteaux Laguiole’, Le Figaro of 11.10.2016, available at http://www.lefigaro.fr/conjoncture/2016/10/11/20002-20161011ARTFIG00196-une-nouvelle-manche-dans-la-guerre-autour-des-couteaux-laguiole.php. 3 Annex 4 to the response by Mr Szajner. 4 See judgment of 21 October 2014, Szajner v OHIM — Forge de Laguiole (LAGUIOLE) (T‑453/11, EU:T:2014:901, paragraph 51) (‘judgment under appeal’). 5 Judgments of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452), and of 27 March 2014, OHIM v National Lottery Commission (C‑530/12 P, EU:C:2014:186). 6 OJ 1994 L 11, p. 1. 7 OJ 2009 L 78, p. 1. 8 Paragraphs 1 and 2 of the judgment under appeal. 9 See paragraph 2 of the judgment under appeal, and paragraphs 5 and 6 of the decision by the Board of Appeal of EUIPO of 1 June 2011 (Annex 1 to the claim at first instance) (‘decision at issue’). 10 Paragraphs 3 to 8 of the judgment under appeal. 11 Paragraphs 9 and 33 of the judgment under appeal. 12 Paragraphs 34 and 41 of the judgment under appeal; paragraphs 87 to 90 of the decision at issue (Annex 1 to the defence at first instance). 13 Paragraph 34 of the judgment under appeal; paragraphs 91 to 94 of the decision at issue (Annex 1 to the defence in first instance). 14 Paragraph 38 of the judgment under appeal. 15 Paragraph 42 of the judgment under appeal. 16 Paragraph 43 of the judgment under appeal. 17 Paragraph 45 of the judgment under appeal. 18 Paragraphs 51 and 52 of the judgment under appeal. 19 Paragraphs 53, 73 and 74 of the judgment under appeal. 20 Paragraphs 161 to 165 of the judgment under appeal. 21 Paragraph 166 and point 1 of the operative part of the judgment under appeal. 22 Formerly Article 133(2) of the Rules of Procedure of the General Court of 2 May 1991. 23 See, for example, judgments of 21 July 2016, EUIPO v Grau Ferrer (C‑597/14 P, EU:C:2016:579), and of 11 December 2014, OHIM v Kessel (C‑31/14 P, not published, EU:C:2014:2436); and the order of 8 May 2014, OHIM v Sanco (C‑411/13 P, not published, EU:C:2014:315). 24 See, in particular, Article 65(4) of Regulation No 207/2009 and the judgment invoked by Mr Szajner of 12 October 2004, Vedial v OHIM (C‑106/03 P, EU:C:2004:611, paragraph 26 et seq.). 25 Point 32 of this Opinion. 26 See also the judgment of 12 October 2004, Vedial v OHIM (C‑106/03 P, EU:C:2004:611, paragraph 27). 27 See paragraph 25 of the judgment under appeal. 28 See point 20 of this Opinion. 29 See point 24 of this Opinion. 30 Judgment of 27 March 2014, OHIM v National Lottery Commission (C‑530/12 P, EU:C:2014:186, paragraphs 44 and 46). 31 Emphasis added. 32 See, in detail on this, my Opinion in Edwin v OHIM (C‑263/09 P, EU:C:2011:30, point 61 et seq.). 33 Judgments of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452, paragraph 52), and of 27 March 2014, OHIM v National Lottery Commission (C‑530/12 P, EU:C:2014:186, paragraphs 44 and 46). 34 See paragraph 25 of the judgment under appeal. 35 See, in regard to this requirement, judgment of 27 March 2014, OHIM v National Lottery Commission (C‑530/12 P, EU:C:2014:186, paragraphs 55 to 59). 36 See, in this context, Opinion of Advocate General Bot in OHIM v National Lottery Commission (C‑530/12 P, EU:C:2013:782, points 91 and 92), and judgment of 27 March 2014, OHIM v National Lottery Commission (C‑530/12 P, EU:C:2014:186, paragraphs 40 and 44). 37 This is the wording used by the Court of Justice on the retroactive effect of its interpretation of EU law in the preliminary ruling procedure (see, for example, judgment of 22 September 2016, Microsoft Mobile Sales International and Others (C‑110/15, EU:C:2016:717, paragraph 59)). See also in this context paragraph 48 of the judgment under appeal. 38 See paragraphs 25 and 27 and Annexes 5 (p. 1), 5 bis (p. 2) and 7 (p. 1) to Mr Szajner’s response. 39 Paragraph 48 of the judgment under appeal. 40 Thus the line of argument used by the General Court in paragraph 46 of the judgment under appeal (albeit only as an alternative) is not effective. 41 See in particular the judgment, invoked by EUIPO, of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452, paragraphs 71 and 72 and the case-law cited), and also judgment of 26 October 2016, Westermann Lernspielverlage v EUIPO (C‑482/15 P, EU:C:2016:805, paragraph 27 and the case-law cited). 42 Judgment of 27 March 2014, OHIM v National Lottery Commission (C‑530/12 P, EU:C:2014:186, paragraph 37). 43 See point 46 of this Opinion. 44 See in detail on this my Opinion in Edwin v OHIM (C‑263/09 P, EU:C:2011:30, point 49 et seq.). 45 See in this regard judgment of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452, paragraph 50). 46 Opinion of Advocate General Bot in OHIM v National Lottery Commission (C‑530/12 P, EU:C:2013:782, point 86). 47 For more detail on this point, see my Opinion in Edwin v OHIM (C‑263/09, EU:C:2011:30, point 42 et seq.); on the different position of national law in relation to practice or procedure under EU law, see also Kokott, J., ‘Le droit de l’Union et son champ d’application’, La Cour de justice de l’Union européenne sous la présidence de Vassilios Skouris, Bruylant, Brussels, 2015, pp. 349 to 366 (p. 350 ff.). 48 See judgment of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452, paragraph 53); see also order of 29 November 2011, Tresplain Investments v OHIM (C-76/11P, not published, EU:C:2011:790, paragraph 66). 49 Opinion of Advocate General Bot in OHIM v National Lottery Commission (C‑530/12 P, EU:C:2013:782, point 84). 50 Paragraph 44 of the judgment under appeal. 51 Paragraph 46 of the judgment under appeal. 52 See in particular Annex 16 to the response by Mr Szajner. 53 See on this the judgment, invoked by EUIPO, of 29 March 2011, Anheuser-Busch v Budějovický Budvar (C‑96/09 P, EU:C:2011:189, paragraphs 142 to 146), and the Opinion of Advocate General Cruz Villalón in Anheuser-Busch v Budějovický Budvar (C‑96/09 P, EU:C:2010:518, points 69 and 70). 54 See paragraph 81 of the judgment under appeal. 55 See paragraphs 61, 62 and 67 to 69 of the judgment under appeal in relation to the business activities actually pursued by Forge de Laguiole. In the context of examining the likelihood of confusion, see, further, paragraphs 85, 99, 101, 104, 106 and 110 of the judgment under appeal. 56 See, by analogy, orders of 30 January 2014, Industrias Alen v The Clorox Company (C‑422/12 P, EU:C:2014:57, paragraph 38), and of 20 January 2015 in Longevity Health Products v OHIM (C‑311/14 P, not published, EU:C:2015:23, paragraph 39).