Opinion of the Advocate General — ECLI:EU:C:2023:915
Date: 2023-11-23
Language of the case: English

summary reproduced in the Court’s Digest of case-law, the General Court’s erroneous interpretation of the scope of the requirement of a continuing interest in bringing proceedings sets a precedent for future cases, without there being any certainty as to whether that precedent will apply regardless of the matter in question or only in the context of proceedings relating to the EU trade mark. 20 EUIPO takes the view that the suspensive effect of actions brought before the General Court tends to reinforce the need for an in concreto assessment of whether the action retains a purpose, that is to say whether its outcome could confer a specific advantage on the parties. Indeed, it is difficult to understand why the rationale underpinning the requirement for an earlier right to be valid on the date on which EUIPO takes a decision becomes irrelevant for the purpose of determining whether the action before the General Court retains its purpose merely because a provisional decision has been taken by EUIPO. 21 Third, EUIPO states that the matter of the disappearance of the earlier right during proceedings has given rise to contradictory decisions on the part of the General Court as regards the application of the requirement of a continuing interest in bringing proceedings. It cites in that regard the judgments of 15 March 2012, Cadila Healthcare v OHIM – Novartis (ZYDUS) (T‑288/08, not published, EU:T:2012:124, paragraph 22), and of 8 October 2014, Fuchs v OHIM – Les Complices (Star within a circle) (T‑342/12, EU:T:2014:858, paragraphs 26 to 29), as well as the orders of 26 November 2012, MIP Metro v OHIM – Real Seguros (real,- BIO) (T‑549/11, not published, EU:T:2012:622, paragraph 23), and of 4 July 2013, Just Music Fernsehbetriebs v OHIM – France Télécom (Jukebox) (T‑589/10, not published, EU:T:2013:356, paragraph 36). It also states that the Court of Justice has had only a brief opportunity to address that question in a specific context, namely that of the order of 8 May 2013, Cadila Healthcare v OHIM (C‑268/12 P, not published, EU:C:2013:296), with the result that no general principle can be derived from that judgment to the effect that the EU judicature is prohibited, for the purpose of assessing whether an interest in bringing proceedings continues to exist, from taking account of facts which postdate the decision challenged before it. 22 According to EUIPO, given that filing an application for revocation or for a declaration of invalidity constitutes a common means of defence in intellectual property disputes, the Court’s guidance is required in order to clarify the effects of the disappearance of the earlier right during the proceedings, a matter which is of crucial importance for users of the EU trade mark system. The interpretation provided by the EU judicature is likely to influence significantly the way in which the requirement to have a continuing interest in bringing proceedings will be applied by the national courts throughout the European Union, in particular as regards the consequences to be drawn from the disappearance of an earlier right in the context of pending court proceedings. 23 Fourth, EUIPO submits that the present appeal also raises, in the light of paragraph 27 of the judgment under appeal, an important matter of a procedural nature that is not limited to the field of intellectual property law, namely that of the consequences to be drawn from the rule that the author of the annulled act must refer back to the date on which it had adopted that act for the purpose of adopting the replacement act. The question arises whether that rule may be extended to the point of requiring EUIPO, when the case is referred back to it, not to take account of the effects of Article 50(3) TEU and Articles 126 and 127 of the withdrawal agreement, and thus to examine the relative ground for refusal at issue in relation to a territory in which the mark applied for will not, in any event, enjoy any protection, contrary to the scheme and purpose of Article 8 of Regulation 2017/1001. Findings of the Court 24 As a preliminary point, it must be noted that it is for the appellant to demonstrate that the issues raised by its appeal are significant with respect to the unity, consistency or development of EU law (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, not published, EU:C:2021:1050, paragraph 20 and the case-law cited). 25 Furthermore, as is apparent from the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union, read in conjunction with Article 170a(1) and Article 170b(4) of the Rules of Procedure, the request that an appeal be allowed to proceed must contain all the information necessary to enable the Court to give a ruling on whether the appeal should be allowed to proceed and to specify, where the appeal is allowed to proceed in part, the pleas in law or parts of the appeal to which the response must relate. Given that the objective of the mechanism provided for in Article 58a of that statute whereby the Court determines whether an appeal should be allowed to proceed is to restrict review by the Court to issues that are significant with respect to the unity, consistency or development of EU law, only grounds of appeal that raise such issues and that are established by the appellant are to be examined by the Court in an appeal (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, not published, EU:C:2021:1050, paragraph 21 and the case-law cited). 26 Accordingly, a request that an appeal be allowed to proceed must, in any event, set out clearly and in detail the grounds on which the appeal is based, identify with equal clarity and detail the issue of law raised by each ground of appeal, specify whether that issue is significant with respect to the unity, consistency or development of EU law and set out the specific reasons why that issue is significant according to that criterion. As regards, in particular, the grounds of appeal, the request that an appeal be allowed to proceed must specify the provision of EU law or the case-law that has been infringed by the judgment or order under appeal, explain succinctly the nature of the error of law allegedly committed by the General Court, and indicate to what extent that error had an effect on the outcome of the judgment or order under appeal. Where the error of law relied on results from an infringement of the case-law, the request that the appeal be allowed to proceed must explain, in a succinct but clear and precise manner, first, where the alleged contradiction lies, by identifying the paragraphs of the judgment or order under appeal which the appellant is calling into question as well as those of the ruling of the Court of Justice or the General Court alleged to have been infringed, and second, the concrete reasons why such a contradiction raises an issue that is significant with respect to the unity, consistency or development of EU law (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, not published, EU:C:2021:1050, paragraph 22 and the case-law cited). 27 In the present case, it follows from paragraph 19 of the judgment under appeal, cited by EUIPO, that, according to the General Court, to find that the litigation becomes devoid of purpose when, in the course of proceedings, an event occurs as a result of which an earlier mark could lose the status of a non-registered trade mark or of another sign used in the course of trade of more than local significance, in particular following the possible withdrawal of the Member State concerned from the European Union, would amount to taking into account matters arising after the adoption of the contested decision, which are not capable of affecting the merits of that decision since the lawfulness of a decision must be assessed with reference, in principle, to the date on which that decision was adopted. 28 Furthermore, the General Court took the view, in paragraph 27 of the judgment under appeal, also cited by EUIPO, that, following the annulment of the Board of Appeal’s decision, the action brought before that body by Indo European Foods became pending again, with the result that it was for the Board of Appeal to take a new decision on that action by reference to the situation at the time that it was brought. In addition, according to the General Court, the case-law cited by EUIPO merely confirms that, in any event, the mark on which the opposition is based cannot be required to subsist after the adoption of the decision of the Board of Appeal. 29 Therefore, in the context of the United Kingdom’s withdrawal from the European Union and the expiry of the transition period in the course of the proceedings, the General Court, as EUIPO points out, held, in paragraph 28 of the judgment under appeal, that the action brought before it had not become devoid of purpose and that Indo European Foods’ interest in bringing proceedings subsisted. 30 It should be noted, in the first place, that EUIPO clearly describes its single ground of appeal, stating that the General Court, first of all, conflated the procedural requirement of an interest in bringing proceedings with the review of the substantive legality of the decision at issue, next, that it did not assess in concreto whether Indo European Foods’ interest in bringing proceedings continued, as regards the benefit that the annulment of the decision at issue could secure for it, that it, in addition, refused to consider the fact that the latter had not complied with its obligation to show that its interest in bringing proceedings continued even though nothing would suggest that it so continued after the end of the transition period and, lastly, that it held, in essence, that EUIPO was not to take account of the effects flowing from Article 50(3) TEU and from Articles 126 and 127 of the withdrawal agreement, thereby disregarding the relevant provisions of Regulation 2017/1001, in particular the principle of territoriality of intellectual property law. 31 In particular, EUIPO has set out in detail the paragraphs of the grounds of the judgment under appeal which, in its view, are inconsistent with the case-law of the Court of Justice relating to the continuation of the interest in bringing proceedings, set out, inter alia, in paragraph 42 of the judgment of 7 June 2007, Wunenburger v Commission (C‑362/05 P, EU:C:2007:322), and in paragraph 65 of the judgment of 28 May 2013, Abdulrahim v Council and Commission (C‑239/12 P, EU:C:2013:331), but also with the provisions of Regulation 2017/1001 relating to the registration of marks, their enforceability and the implementation of the principle of territoriality, and with Article 50(3) TEU and Articles 126 and 127 of the withdrawal agreement, identifying both the paragraphs at issue in the judgment under appeal and the provisions and decisions allegedly infringed. 32 In the second place, the appellant criticises the General Court for having held, in paragraph 28 of the judgment under appeal, that the case had not become devoid of purpose and that Indo European Foods’ interest in bringing proceedings subsisted. Thus, it is clear from the request that the appeal be allowed to proceed that the allegedly incorrect interpretation of the procedural requirements adopted by the General Court influenced the operative part of the judgment under appeal. In accordance with the case-law cited by EUIPO and referred to in paragraph 8 of the present order, the purpose must continue, like the interest in bringing proceedings, until the delivery of the legal decision, failing which there will be no need to adjudicate (judgment of 7 June 2007, Wunenburger v Commission, C‑362/05 P, EU:C:2007:322, paragraph 42 and the case-law cited). 33 In the third place, in accordance with the burden of proof which lies with an appellant requesting that an appeal be allowed to proceed, the appellant must demonstrate that, independently of the issues of law invoked in its appeal, the appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law, the scope of that criterion going beyond the judgment under appeal and, ultimately, its appeal (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, not published, EU:C:2021:1050, paragraph 27). 34 In order to demonstrate that that is the case, it is necessary to establish both the existence and significance of such issues by means of concrete evidence specific to the particular case, and not simply arguments of a general nature (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, not published, EU:C:2021:1050, paragraph 28). 35 In the present case, EUIPO identifies the issue raised by its single ground of appeal, which consists, in essence, in determining the date and circumstances to be taken into account in order to assess whether the purpose of the dispute and the interest in bringing proceedings subsist where, first, the dispute brought before the General Court relates to a decision adopted following opposition proceedings based on an earlier right protected only in the United Kingdom and, second, the transition period came to an end during the proceedings before the General Court. More generally, according to EUIPO, that issue concerns the impact of the disappearance, in the course of the proceedings, of the earlier right in question on the existence of the purpose of the proceedings and on Indo European Foods’ interest in bringing proceedings. 36 Moreover, EUIPO sets out the specific reasons why such an issue is significant with respect to the unity, consistency and development of EU law. 37 In particular, EUIPO states that that issue concerns the fundamental procedural requirement of having an interest in bringing proceedings and principles that constitute the pillars of intellectual property law, namely the principle of territoriality, the principle of the unitary character of the EU trade mark and the fundamental concept of the essential function of a trade mark, in the context of the end of the transition period. 38 In that regard, first of all, it emphasises the horizontal nature of the requirement that there must be a continuing interest in bringing proceedings and the fact that there is a divergence in the interpretation of that requirement both within the General Court and between the General Court and the Court of Justice. 39 Next, it states that clarification by the Court of Justice is necessary both for the users of the EU trade mark system and for the national courts, in particular in view of the fact that the issue raised concerns not only the effect of the withdrawal agreement on pending proceedings, but also all situations, frequently regarding intellectual property, where an earlier right ceases to exist during the judicial proceedings, in particular in the event of revocation or expiry of a trade mark. In particular, as regards the matter of the interest in bringing proceedings in the event of an earlier right ceasing to exist during those proceedings, EUIPO sets out the General Court’s contradictory case-law on the matter. In addition, it notes that the Court of Justice addressed that issue only in a specific context, namely that which led to the delivery of the order of 8 May 2013, Cadila Healthcare v OHIM (C‑268/12 P, not published, EU:C:2013:296). 40 Lastly, it observes that the matter of determining what consequences are to be drawn from the rule that the author of the annulled measure must refer back to the date of that act in order to adopt the replacement act, in particular in the context of the withdrawal agreement and the end of the transition period, is an important matter of a procedural nature that is not limited to intellectual property law. 41 Thus, it is apparent from the request that the appeal be allowed to proceed that the issue goes beyond the scope of the judgment under appeal and, ultimately, that of the appeal. 42 In the light of the matters set out by EUIPO, it must be held that its request that the appeal be allowed to proceed demonstrates to the requisite legal standard that the appeal raises an issue that is significant with respect to the unity, consistency and development of EU law. 43 In the light of the foregoing considerations, the appeal should be allowed to proceed in its entirety. Costs 44 Under Article 170b(4) of the Rules of Procedure, where an appeal is allowed to proceed, wholly or in part, having regard to the criteria set out in the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union, the proceedings are to continue in accordance with Articles 171 to 190a of those rules. 45 Under Article 137 of the Rules of Procedure, applicable to proceedings on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the judgment or order which closes the proceedings. 46 Accordingly, since the request that the appeal be allowed to proceed must be allowed, the costs must be reserved. On those grounds, the Court (Chamber determining whether appeals may proceed) hereby orders: 1. The appeal is allowed to proceed. 2. The costs are reserved. Luxembourg, 7 April 2022. A. Calot Escobar L. Bay Larsen Registrar President of the Chamber determining whether appeals may proceed * Language of the case: English.