ORDER OF THE COURT (Tenth Chamber)
30 April 2020 (*)
(Appeal — EU trade mark — Opposition proceedings — Invalidity of the mark cited by the opposing party — Appeals which have become devoid of purpose — No need to adjudicate)
In Joined Cases C‑608/18 P, C‑609/18 P and C‑767/18 P,
APPEALS under Article 56 of the Statute of the Court of Justice of the European Union, lodged on 24 September and 5 December 2018,
Republic of Cyprus, represented by S. Malynicz, QC, S. Baran, Barrister, and V. Marsland, Solicitor,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO), represented by D. Gája, H. O’Neill and D. Botis, acting as Agents,
defendant at first instance,
Papouis Dairies Ltd, established in Latsia (Cyprus), represented by N. Korogiannakis, dikigoros,
Pagkyprios organismos ageladotrofon (POA) Dimosia Ltd, established in Latsia (Cyprus), represented by N. Korogiannakis, dikigoros,
M.J. Dairies EOOD, established in Sofia (Bulgaria), represented by D. Dimitrova, advocat,
interveners at first instance,
THE COURT (Tenth Chamber),
composed of I. Jarukaitis, President of the Chamber, E. Juhász and M. Ilešič (Rapporteur), Judges,
Advocate General: P. Pikamäe,
Registrar: A. Calot Escobar,
having decided, after hearing the Advocate General, to give a decision by reasoned order, pursuant to Article 149 of the Rules of Procedure of the Court of Justice, applicable to appeal proceedings by virtue of Article 190 of those rules,
makes the following
Order
1        By its appeals, the Republic of Cyprus seeks to have set aside:
–      the judgment of the General Court of the European Union of 13 July 2018, Cyprus v EUIPO — Papouis Dairies (PALLAS HALLOUMI) (T‑825/16, not published, EU:T:2018:482), by which that Court dismissed its action for annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 September 2016 (Case R 2065/2014-4), relating to opposition proceedings between the Republic of Cyprus and Papouis Dairies Ltd;
–      the judgment of the General Court of 13 July 2018, Cyprus v EUIPO — POA (COWBOYS HALLOUMI) (T‑847/16, not published, EU:T:2018:481), by which that Court dismissed its action for annulment of the decision of the Fourth Board of Appeal of EUIPO of 22 September 2016 (Case R 2781/2014-4), relating to opposition proceedings between the Republic of Cyprus and Pagkyprios organismos ageladotrofon (POA) Dimosia Ltd; and
–      the judgment of the General Court of 25 September 2018, Cyprus v EUIPO — M.J. Dairies (BBQLOUMI) (T‑384/17, not published, EU:T:2018:593), by which that Court dismissed its action for annulment of the decision of the Fourth Board of Appeal of EUIPO of 10 April 2017 (Case R 496/2016-4), relating to opposition proceedings between the Republic of Cyprus and M.J. Dairies EOOD (together ‘the judgments under appeal’).
Legal context
2        Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1) was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), which entered into force on 23 March 2016. It was repealed and replaced, with effect from 1 October 2017, by 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). However, in view of the date of the facts giving rise to the disputes, the present appeals must be examined in the light of Regulation No 207/2009.
3        Under Article 8 of that regulation:
‘1.      Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:
...
(b)      if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected;
2.      For the purposes of paragraph 1, “earlier trade marks” means:
(a)      trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the [EU] trade mark ...:
...
(ii)      trade marks registered in a Member State ...;
...
5.      Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where ... in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’
The background to the disputes and the judgments under appeal
4        On 12 September 2012, Papouis Dairies applied to EUIPO for registration of the following sign as a European Union trade mark:
5        On 19 October 2012, Pagkyprios organismos ageladotrofon (POA) Dimosia applied to EUIPO for registration of the following sign as a European Union trade mark:
6        On 9 July 2014, M.J. Dairies applied to EUIPO for registration of the following sign as a European Union trade mark:
7        Registration of those marks was requested, in particular, for cheese products in Class 29 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.
8        On 3 January 2013, 1 March 2013 and 12 November 2014, the Republic of Cyprus filed a notice of opposition against the registration of those marks.
9        Those oppositions were based, inter alia, on a United Kingdom certification mark consisting of the word sign HALLOUMI. That mark was registered on 22 February 2002 under number 1451888 for cheese products in Class 29.
10      Those oppositions were also based on Cypriot certification marks. Subsequently, however, the Republic of Cyprus indicated that it was no longer relying upon those Cypriot marks.
11      The grounds relied on in support of the oppositions were those referred to in Article 8(1)(b) and (5) of Regulation No 207/2009.
12      By decisions of 7 July 2014, 10 September 2014 and 15 January 2016, the Opposition Division of EUIPO rejected those oppositions.
13      The Republic of Cyprus filed appeals, which were dismissed by decisions of the Fourth Board of Appeal of EUIPO, which held that there was no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the earlier mark cited and the marks applied for and that nor were the conditions for the application of the ground for refusal laid down in Article 8(5) of that regulation satisfied.
14      By applications lodged at the Registry of the General Court on 24 November 2016, 2 December 2016 and 21 June 2017, the Republic of Cyprus sought the annulment of those decisions.
15      In support of its actions before the General Court, the Republic of Cyprus relied on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
16      By the judgments under appeal, the General Court dismissed the actions and ordered the Republic of Cyprus to pay the costs.
Procedure before the Court of Justice
17      In its appeal in Case C‑767/18 P, lodged on 5 December 2018, and by a letter of the same date to the Registry of the Court, the Republic of Cyprus pointed out that, by decision of 2 May 2018, the United Kingdom Intellectual Property Office had annulled United Kingdom certification mark No 1451888, that is to say, the mark relied on in support of the oppositions which are the subject of the present proceedings before the Court.
18      In the same documents, the Republic of Cyprus argued that that decision, while having been confirmed by a judgment of the High Court of Justice (England & Wales), Chancery Division (United Kingdom), of 28 November 2018, was not final, since the Republic of Cyprus was seeking leave to appeal to the Court of Appeal (England & Wales), Civil Division, (United Kingdom).
19      As a result of that information and the parties having been heard, the proceedings in Cases C‑608/18 P, C‑609/18 P and C‑767/18 P were suspended until it was clarified whether or not that decision would become final.
20      By letter of 1 February 2019, the Republic of Cyprus informed the Court that its application for leave to appeal had been rejected.
21      Subsequently, the Republic of Cyprus lodged a further application with the competent judicial authorities of the United Kingdom to reopen the appeal.
22      By letter of 11 June 2019, the Republic of Cyprus informed the Court that that application had been refused on 7 June 2019, the decision to annul the earlier mark cited in support of the oppositions in question having thus become final.
23      By decision of the President of the Court of Justice of 21 June 2019, Cases C‑608/18 P, C‑609/18 P and C‑767/18 P were joined for the purposes of the written procedure and the decision closing the proceedings, and the proceedings were resumed.
24      By letter of 16 September 2019, the Republic of Cyprus sent to the Court a copy of the decision of 2 May 2018 of the United Kingdom Intellectual Property Office, which had become final following the rejection on 7 June 2019 of the application to reopen the appeal, and referred to the terms of that decision ordering that the registration of the earlier mark at issue be declared invalid and be deemed never to have been made.
25      In their responses filed on 7 October 2019, EUIPO and the interveners at first instance argued that the appeals have become devoid of purpose and that there is therefore no longer any need to adjudicate.
26      The Republic of Cyprus, requested by the Court to take a position on the arguments contained in those pleadings in response, stated, by letter of 25 February 2020, that it now considers that proceeding with the present appeals is not capable of procuring an advantage for it.
The appeals
27      It is settled case-law that an applicant’s interest in bringing proceedings must continue until the final decision, failing which there will be no need to adjudicate (see, inter alia, judgments of 28 May 2013, Abdulrahim v Council and Commission, C‑239/12 P, EU:C:2013:331, paragraph 61; of 9 November 2017, HX v Council, C‑423/16 P, EU:C:2017:848, paragraph 30; and of 6 September 2018, Bank Mellat v Council, C‑430/16 P, EU:C:2018:668, paragraph 50).
28      Consequently, the existence of the interest of an appellant in bringing an appeal presupposes that that appeal must be capable, if successful, of procuring an advantage for that appellant (orders of 16 May 2013, Volkswagen v OHIM, C‑260/12 P, not published, EU:C:2013:316, paragraph 13; of 5 July 2018, Wenger v EUIPO, C‑162/18 P, not published, EU:C:2018:545, paragraph 13; and of 12 December 2019, Vans v EUIPO, C‑123/19 P and C‑125/19 P, not published, EU:C:2019:1088, paragraph 20).
29      In the present case, it is common ground between the parties that the earlier trade mark relied upon by the Republic of Cyprus in support of the oppositions which it filed before EUIPO was annulled by a judicial decision which became final on 7 June 2019. It is also clear from the documents submitted to the Court by that Member State that the cancellation of that mark has ex tunc effect, in that the view must be taken that the mark was never registered.
30      It must be noted that, in those circumstances, the present appeals are not capable, if successful, of procuring an advantage for the Republic of Cyprus.
31      Even assuming that the General Court committed errors of law capable of justifying the setting aside of the contested judgments, the fact remains that the earlier mark relied on in support of the oppositions at issue must be regarded as never having been registered. That fact precludes any possibility of a decision, on a new examination of the cases in question, that those oppositions must or should have been upheld.
32      It must be noted, in that regard, that the oppositions at issue are based on Article 8(1)(b) of Regulation No 207/2009 and Article 8(5) of that regulation. For the purposes of the application of each of those provisions, the opposing party must duly rely on an earlier trade mark, within the meaning of Article 8(2) of that regulation. However, in the present case, having withdrawn all lines of argument based on other marks, the Republic of Cyprus relies only on the mark which, since 7 June 2019, has been definitively cancelled with ex tunc effect. In such circumstances, it must be held that those oppositions have definitively become ineffective.
33      Since the result of the present appeals is not capable of procuring an advantage for the appellant, it must be held, in accordance with the case-law referred to in paragraphs 27 and 28 of this order, that there is no need to adjudicate on them.
Costs
34      Under Article 149 of the Rules of Procedure of the Court of Justice, applicable to the procedure on appeal pursuant to Article 190 thereof, where a case does not proceed to judgment, the Court is to give a decision as to costs.
35      In accordance with Article 142 of the Rules of Procedure, applicable to appeal proceedings pursuant to Article 184(1) of those rules, the costs are, in this case, to be in the discretion of the Court.
36      In the present case, it must be held that the fact that there is no need to adjudicate is attributable to the Republic of Cyprus, since its earlier trade mark, relied upon in support of the oppositions at issue, has been annulled.
37      Since the fact that there is no need to adjudicate is attributable to the Republic of Cyprus, it is appropriate that it be ordered to bear its own costs and to pay the costs incurred by EUIPO and the interveners in the present appeal proceedings.
38      It is not for the Court to rule on the costs relating to the proceedings at first instance, since there is no need to rule on the present appeals and since, therefore, the judgments under appeal have not been set aside.
On those grounds, the Court (Tenth Chamber) hereby orders:
1.      There is no need to adjudicate on the appeals.
2.      The Republic of Cyprus is ordered to pay the costs of the appeals.
Luxembourg, 30 April 2020.
A. Calot Escobar
I. Jarukaitis
Registrar
President of the Tenth Chamber
*      Language of the case: English.