ORDER OF THE GENERAL COURT (Tenth Chamber)
15 July 2020 (*)
(Action for annulment — Community design — Invalidity proceedings — Registered Community design representing fluid distribution equipment — Suspension of the proceedings before the Board of Appeal — Act not open to challenge — Preparatory act — Inadmissibility)
In Case T‑840/19,
Koopman International BV, established in Amsterdam (Netherlands), represented by G. van den Bergh and B. Brouwer, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Tinnus Enterprises LLC, established in Plano, Texas (United States), represented by A. Odle, lawyer,
the other party to the proceedings before the Board of Appeal of EUIPO being
Mystic Products Import & Export, SL, established in Badalona (Spain),
ACTION brought against the provisional decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 September 2019 (Case R 1008/2018-3), relating to invalidity proceedings between Mystic Products Import & Export and Koopman International, on the one hand, and Tinnus Enterprises, on the other hand,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov, President, E. Buttigieg (Rapporteur) and K. Kowalik-Bańczyk, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 10 December 2019,
having regard to the plea of inadmissibility raised by EUIPO by document lodged at the Court Registry on 27 February 2020,
having regard to the response of the intervener lodged at the Court Registry on 10 February 2020,
having regard to the observations of the intervener on the plea of inadmissibility, lodged at the Court Registry on 14 April 2020,
having regard to the decision of 13 February 2020 rejecting the application to join Cases T‑838/19 to T‑842/19,
makes the following
Order
Background to the dispute
1        The intervener, Tinnus Enterprises LLC, is the holder of registered Community design No 1 431 829-0005, filed on 10 March 2015, and applied to the products ‘fluid distribution equipment’.
2        On 14 June 2016 and 19 April 2017, respectively, the other party to the proceedings before the Board of Appeal of EUIPO, Mystic Products Import & Export, SL, and the applicant, Koopman International BV, filed separate applications for a declaration of invalidity of the contested design. Those applications were based on Article 25(1)(b) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), read in conjunction with, in particular, Article 8(1) of that regulation.
3        In accordance with Article 54 of Regulation No 6/2002, EUIPO decided on 30 August 2017 to deal with the two abovementioned applications for a declaration of invalidity in a single procedure.
4        By decision of 30 April 2018, the Invalidity Division stated that the contested design was invalid on the basis of Article 25(1)(b) of Regulation No 6/2002, read in conjunction with Article 8(1) of that regulation.
5        On 31 May 2018, the intervener appealed against the decision of the Invalidity Division referred to in paragraph 4 above. That appeal was brought before the Third Board of Appeal of EUIPO.
6        On 18 September 2019, the Third Board of Appeal adopted an interim decision suspending the appeal proceedings referred to in paragraph 5 above, pending a definitive decision of the General Court in Case T‑574/19, Koopman International v EUIPO — Tinnus Enterprises and Mystic Products (Fluid distribution equipment) (‘the contested decision’).
7        The Board of Appeal stated the following grounds for its decision:
‘18. The decision in the present proceedings may depend on the outcome of the action before the General Court. Both the contested design in case T‑574/19 and the contested design in the case at hand were included in the same multiple application and both invalidity applications were based on the same parallel application for a patent for a technical solution. The question of whether the contested designs subsist in features of the appearance of a product which are solely dictated by their technical function must be evaluated in a uniform manner, since it concerns both contested designs.
19. Under the circumstances, and after balancing the interests of all three parties, for reasons of legal certainty, economy of proceedings and sound administration, the Board deems it appropriate to suspend the present appeal proceedings pending a final decision in Case T‑574/19.’
Forms of order sought
8        In the application, the applicant claims that the Court should:
–        annul the contested decision and decide that the Board of Appeal should resume the proceedings in Case R 1008/2018-3;
–        order the intervener to pay the costs incurred by it.
9        In its plea of inadmissibility, EUIPO contends that the Court should:
–        dismiss the action as inadmissible;
–        order the applicant to pay the costs.
10      In its response, the intervener contends that the Court should:
–        dismiss the action;
–        confirm the contested decision;
–        order the applicant to pay the costs incurred by it.
11      In its observations on the plea of inadmissibility, the applicant claims that the Court should:
–        reject the plea of inadmissibility;
–        annul the contested decision and decide that the invalidity proceedings in Case R 1008/2018-3 should continue;
–        order EUIPO to pay the costs incurred by it.
Law
12      Under Article 130(1) and (7) of the Rules of Procedure of the General Court, on the application of the defendant, the Court may decide on inadmissibility or lack of competence without going to the substance of the case. In the present case, since EUIPO has requested the Court to give a ruling on inadmissibility, and the Court considers that it has sufficient information available to it from the material in the file, the Court has decided to give a ruling without taking further steps in the proceedings.
13      EUIPO submits that the action is inadmissible in particular on the ground that the contested decision does not constitute a reviewable act. According to EUIPO, that decision constitutes an intermediate step, which does not determine the final position of the Board of Appeal in Case R 1008/2018-3 and does not affect the legal position of the applicant.
14      The applicant notes, first of all, that Article 61(1) of Regulation No 6/2002, which constitutes the legal basis of its appeal, refers to the ‘decisions’ of the Boards of Appeal and does not make any distinction between the different types of decisions of EUIPO and, in particular, between interim decisions and final decisions. According to the applicant, for this reason alone, its appeal is admissible under the abovementioned provision.
15      Next, the applicant points out that Article 263 TFEU, which is the equivalent of Article 61 of Regulation No 6/2002, provides that an action for annulment is directed against acts, other than recommendations or opinions, intended to produce legal effects vis-à-vis third parties. According to the applicant, it follows from this wording that the aforementioned provision, by excluding only recommendations and opinions from its scope, does not distinguish between other acts adopted. In addition, that provision does not make a distinction based on the form of the act in question, but importance is given to the substance of that act. On that basis, EUIPO’s allegation that the contested decision does not constitute a reviewable act is manifestly unfounded.
16      The applicant also notes that, according to the case-law, acts producing binding legal effects ‘capable of affecting the interests’ of the applicant are reviewable. According to the applicant, in the present case, the contested decision affects the interests of the applicant in so far as, by reason of the suspension of the proceedings before the Board of Appeal until the adoption by the General Court of a final decision in Case T‑574/19, Koopman International v EUIPO — Tinnus Enterprises and Mystic Products (Fluid distribution equipment), the Board of Appeal will delay taking a final decision on the application for a declaration of invalidity of the contested design.
17      The applicant points out that the criterion that the contested measure must be ‘capable of affecting the interests’ of the applicant constitutes a very low threshold and does not require the applicant to demonstrate that it has suffered damage or other negative effects as a result of the adoption of that act.
18      The applicant thus contends that the plea of inadmissibility raised by EUIPO should be rejected.
19      Article 61(1) of Regulation No 6/2002 states that actions may be brought before the Court of Justice against decisions of the Boards of Appeal on appeals. Thus, that provision makes the first paragraph of Article 263 TFEU, under which an action for annulment is available against acts, other than recommendations or opinions, intended to produce legal effects vis-à-vis third parties, applicable in the context of Regulation No 6/2002.
20      In order to determine whether an act may be subject to such an action, importance must be given to the substance of that act, the form in which it is adopted being in principle irrelevant to the right to challenge such acts (see judgment of 19 January 2017, Commission v Total and Elf Aquitaine, C‑351/15 P, EU:C:2017:27, paragraph 35 and the case-law cited).
21      It is also clear from settled case-law that only measures the legal effects of which are binding on, and capable of affecting the interests of, the applicant by bringing about a distinct change in his or her legal position may be the subject of an action for annulment (judgments of 11 November 1981, IBM v Commission, 60/81, EU:C:1981:264, paragraph 9; of 17 July 2008, Athinaïki Techniki v Commission, C‑521/06 P, EU:C:2008:422, paragraph 29; and of 19 January 2017, Commission v Total and Elf Aquitaine, C‑351/15 P, EU:C:2017:27, paragraph 36).
22      Thus, an action for annulment is, in principle, only available against a measure by which the institution concerned definitively determines its position upon the conclusion of an administrative procedure. On the other hand, intermediate measures whose aim is to prepare the final decision cannot form the subject matter of an action for annulment (see, to that effect, judgment of 13 October 2011, Deutsche Post and Germany v Commission, C‑463/10 P and C‑475/10 P, EU:C:2011:656, paragraph 50 and the case-law cited).
23      In the present case, an appeal was brought by the intervener before the Board of Appeal of EUIPO, pursuant to, in particular, Article 55(1) of Regulation No 6/2002, against the decision of the Invalidity Division declaring the contested design invalid. The Board of Appeal is thus called upon to rule on the validity of that design and, in that context, it may, pursuant to Article 60(1) of that regulation, either exercise any power within the competence of the department which was responsible for the decision appealed against or remit the case to that department for further action.
24      In the contested decision, the Board of Appeal took the view that the decision on the merits of the invalidity proceedings before it could depend on the outcome of the action brought before the General Court in Case T‑574/19, Koopman International v EUIPO — Tinnus Enterprises and Mystic Products (Fluid distribution equipment) and explained the reasons for such an assessment (see paragraph 7 above). Accordingly, it decided to suspend the appeal proceedings before it pending a final decision in the abovementioned case, in accordance with the principles of legal certainty, procedural economy and good administration, after balancing the interests of the parties to the dispute.
25      It is thus apparent that the contested decision constitutes an intermediate measure, the purpose of which is to prepare for the final decision to be adopted by the Board of Appeal. Thus, that decision is not intended to produce binding legal effects capable of affecting the interests of the applicant by bringing about a distinct change in its legal position, in so far as it does not terminate the proceedings before the Board of Appeal and does not definitively determine the position of the Board of Appeal as to the outcome of the appeal before it (see, to that effect, order of 5 September 2019, Iceland Foods v EUIPO, C‑162/19 P, not published, EU:C:2019:686, paragraphs 5 and 6).
26      As regards the applicant’s allegation that the contested decision affects its interests by, in essence, prolonging the uncertainty as to the validity of the contested design (see paragraph 16 above), that uncertainty is merely an unavoidable and purely procedural consequence of that contested decision to suspend the proceedings and cannot have an impact on the finding that the contested decision is an intermediate measure which does not produce legal effects vis-à-vis the applicant capable of affecting its interests by bringing about a distinct change in its legal position (see, to that effect and by analogy, order of 15 March 2019, Silgan Closures and Silgan Holdings v Commission, T‑410/18, EU:T:2019:166, paragraph 27).
27      Moreover, the case-law shows that an intermediate measure is also not capable of forming the subject matter of an action if it is established that the illegality attaching to that measure can be relied on in support of an action against the final decision for which it represents a preparatory step. In such circumstances, the action brought against the decision terminating the procedure will provide sufficient judicial protection (see judgment of 13 October 2011, Deutsche Post and Germany v Commission, C‑463/10 P and C‑475/10 P, EU:C:2011:656, paragraph 53 and the case-law cited).
28      In the present case, as EUIPO submits, it should be pointed out that the applicant has the opportunity of relying on the possible unlawfulness of the contested decision in support of an action before the Courts of the European Union, directed against the final decision of the Board of Appeal, of which the contested decision constitutes a preparatory step. Furthermore, if the applicant considers, at the end of the proceedings before the Board of Appeal, that EUIPO has infringed its obligations with regard to the duration of the proceedings, it will be able to assert its rights by bringing an action that it deems appropriate for that purpose (see, to that effect, order of 15 March 2019, Silgan Closures and Silgan Holdings v Commission, T‑410/18, EU:T:2019:166, paragraph 27). Consequently, the inadmissibility of the present action does not result in a lack of effective judicial protection for the applicant.
29      In the light of the foregoing considerations, it must be concluded that the plea of inadmissibility raised by EUIPO is well founded and that, on that basis, the applicant’s action must be declared inadmissible.
Costs
30      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby orders:
1.      The action is dismissed as inadmissible.
2.      Koopman International BV shall pay its own costs and the costs incurred by the European Union Intellectual Property Office (EUIPO) and by Tinnus Enterprises LLC.
Luxembourg, 15 July 2020.
E. Coulon
A. Kornezov
Registrar
President
*      Language of the case: English.