62017TO0565
ORDER OF THE GENERAL COURT (Second Chamber)
11 December 2018 (
*1
)
(EU trade mark — Opposition proceedings — Application for EU figurative mark Cheapflights — Referral of the trade mark application to the examiner for examination of the absolute grounds for refusal — Challenge by the proprietor of the earlier mark — Grounds of the contested decision containing an assessment of the validity of the earlier mark — Challenge by the proprietor of the earlier mark — Partial inadmissibility — Incidental submissions made on the basis on Article 8(3) of Regulation (EC) No 216/96 — Withdrawal of the appeal before the Board of Appeal — No need to adjudicate in part)
In Case T‑565/17,
CheapFlights International Ltd, established in Speenoge (Ireland), represented by A. von Mühlendahl and H. Hartwig, 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 being
Momondo Group Ltd, established in London (United Kingdom),
ACTION brought against the decision of the Grand Board of Appeal of EUIPO of 1 June 2017 (R 1893/2011-G) relating to opposition proceedings between CheapFlights International and Momondo Group,
THE GENERAL COURT (Second Chamber),
composed of M. Prek (Rapporteur), President, F. Schalin and M.J. Costeira, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 18 August 2017,
having regard to the response lodged at the Court Registry on 6 November 2017,
having regard to the written questions put by the General Court to the parties and their answers to those questions lodged at the Court Registry on 29 June and 4 July 2018,
makes the following
Order
Background to the dispute
1
On 30 October 2003, the legal predecessor of Momondo Group Ltd, the other party to the proceedings before the Board of Appeal, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced 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)).
2
Registration as a mark was sought for the following figurative sign:
3
The goods and services in respect of which registration was applied for are in Classes 9, 16, 35, 38, 39 and 41 to 44 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, for each of those classes, to the following description:
–
Class 9: ‘Computer hardware and computer software; computer software; computer software for natural language searches of databases; user guides and instruction manuals provided in electronic form’;
–
Class 16: ‘Printed matter; catalogues, brochures and leaflets; periodicals and magazines; user and instruction manuals’;
–
Class 35: ‘Compiling, storing, analysing and retrieving data and information; maintaining, indexing and electronically distributing information materials; creating indexes of information, websites and other information sources; creating indexes of information, sites and other resources available on a global computer network’;
–
Class 38: ‘Providing and/or operating search engines; services allowing users of a global computer network to conduct searches for information on a wide variety of subject matters; providing an on-line link to information in the fields of entertainment, health, family, personal finance, shopping and travel’;
–
Class 39: ‘Travel services, travel agency, booking and ticket services; car hire services, holiday transport, holiday travel reservation, information services for travellers and holidaymakers, preparation of reports relating to travel news for travellers, route planning services, provision of databases (travel information) for travellers, providing and/or operating booking engines for flight and travel, consultancy and advisory services for all the foregoing’;
–
Class 41: ‘Holiday entertainment; provision of news for travellers; the organisation of competitions’;
–
Class 42: ‘Computer services; custom design of question-answering functionality of world wide web sites, maintenance, monitoring and analysing performance of world wide web sites; computer programming; research and design services relating to computer software and computer hardware; weather report services, graphic design services, website design services, provision of databases (weather information) for travellers’;
–
Class 43: ‘Hotel and accommodation services, arranging holiday accommodation, provision of databases (accommodation information) for travellers; providing and/or operating hotel booking engines’;
–
Class 44: Medical advisory services for travellers’.
4
The trade mark application was published in Community Trade Marks Bulletin No 49/2004 of 6 December 2004.
5
On 2 March 2005, the applicant, CheapFlights International Ltd, brought opposition proceedings against registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6
The opposition was based, in particular, on the earlier national figurative mark registered under the Irish number 227053, designating services in Classes 35, 36, 38, 39 and 41 to 44, reproduced below:
7
The ground relied upon in support of the opposition was the likelihood of confusion between the signs at issue.
8
On 22 June 2007, the Opposition Division rejected the opposition in respect of the goods and services in Classes 9, 16 and 35 and in respect of certain services in Class 42, namely ‘computer services; computer programming; research and design services relating to computer software and computer hardware; graphic design services’.
9
By contrast, the Opposition Division upheld the opposition in respect of the other services in Class 42, namely ‘custom design of question-answering functionality of world wide web sites, maintenance, monitoring and analysing performance of world wide web sites; weather report services, website design services, provision of databases (weather information) for travellers’, together with the services in Classes 38, 39, 41, 43 and 44.
10
On 21 August 2007, the other party to the proceedings before EUIPO brought an appeal against the decision of the Opposition Division in so far as the latter had allowed the applicant’s opposition.
11
By decision of 31 August 2009, the Fourth Board of Appeal of EUIPO upheld the appeal brought by the other party to the proceedings before EUIPO, on the ground that there was no likelihood of confusion between the marks at issue.
12
By application lodged at the Registry of the General Court on 16 November 2009, the applicant brought an action challenging the decision of the Fourth Board of Appeal of EUIPO of 31 August 2009, which was registered as Case T‑460/09.
13
By judgment of 5 May 2011, CheapFlights International v OHIM — Cheapflights (Cheapflights) (T‑460/09, not published, EU:T:2011:198), the Court upheld the plea alleging likelihood of confusion and annulled the decision of the Fourth Board of Appeal.
14
By decision of the Presidium of the Boards of Appeal of 20 September 2011, the case was remitted to the Grand Board of Appeal for further decision as Case R 1893/2011-G.
15
By interim decision of 4 July 2012 (‘the interim decision’), the Grand Board of Appeal referred the trade mark application to the examiner for re-examination with respect to absolute grounds for refusal.
16
By two decisions of 30 November 2016 and 14 February 2017, the examiner refused registration of the mark applied for in respect of the services in Classes 38, 39, 41, 43 and 44, together with the services in Class 42, that is, ‘custom design of question-answering functionality of world wide web sites, maintenance, monitoring and analysing performance of world wide web sites; weather report services, website design services, provision of databases (weather information) for travellers’, with regard to which the Opposition Division had upheld the opposition. The examiner also refused registration of the mark applied for in respect of ‘computer software; computer software; computer software for natural language searches of databases’ in Class 9, and in respect of ‘printed matter; catalogues, brochures and leaflets; periodicals and magazines’ in Class 16, with regard to which the Opposition Division had rejected the opposition.
17
By decision of 1 June 2017 (‘the contested decision’), in the first place, the Grand Board of Appeal inferred from the re-examination of the absolute grounds for refusal that the trade mark application had been rejected in respect of all services with regard to which the Opposition Division had upheld the opposition and that, accordingly, the opposition and appeal proceedings had become devoid of purpose and had to be closed.
18
In the second place, the Grand Board of Appeal declared that the trade mark application was eligible for registration in respect of ‘computer hardware; user guides and instruction manuals provided in electronic form’ in Class 9, ‘user and instruction manuals’ in Class 16, ‘compiling, storing, analysing and retrieving data and information; maintaining, indexing and electronically distributing information materials; creating indexes of information, websites and other information sources; creating indexes of information, sites and other resources available on a global computer network’ in Class 35, together with ‘computer services; computer programming; research and design services relating to computer software and computer hardware; graphic design services’ in Class 42.
Forms of order sought
19
The applicant claims that the Court should:
–
annul the contested decision;
–
order EUIPO, and the proprietor of the mark applied for in the event that it should intervene in the present proceedings, to pay the costs.
20
EUIPO contends that the Court should:
–
dismiss the action;
–
order the applicant to pay the costs.
21
On 16 January 2018, after the present action had been brought, EUIPO informed the Court that, on 21 December 2017, the other party to the proceedings had withdrawn its appeal, which had been lodged with the Board of Appeal on 21 August 2007 and which is referred to in paragraph 10 above. EUIPO inferred from that withdrawal that the applicant’s third plea in law had become devoid of purpose.
22
On 13 February 2018, the applicant submitted its observations on EUIPO’s letter of 16 January 2018, by which it refuted the inference that its third plea had become devoid of purpose.
Law
23
The applicant puts forward four pleas in law in support of its action. The first three pleas allege, respectively, infringement of Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001), of the second sentence of Article 75 of Regulation No 207/2009 (now the second sentence of Article 94(1) of Regulation 2017/1001), and of Article 8(3) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 1996 L 28, p. 11). By its fourth plea, the applicant claims, in essence, that certain reasons stated in the contested decision call into question or deny the validity of the earlier national trade mark of which the applicant is the proprietor.
24
It must be noted that, by its first and second pleas, the applicant disputes the lawfulness of the contested decision in so far as the Grand Board of Appeal thereby closed the appeal proceedings so far as concerns the services in Classes 16, 38, 39 and 41 to 43 referred to in paragraph 16 above, in respect of which the examiner had refused registration of the mark applied for. By its third plea, it disputes the lawfulness of the contested decision in so far as the Board of Appeal closed the appeal proceedings so far as concerns the goods and services in Classes 9, 16, 35 and 42 referred to in paragraph 18 above, in respect of which the Opposition Division had rejected the opposition and with regard to which the applicant claims to have brought a cross-appeal in its observations before the Board of Appeal, following the appeal brought by the other party to the proceedings. By its fourth plea, the applicant disputes, in essence, the lawfulness of the contested decision in so far as the latter adopts a position on the validity of the earlier national mark of which the applicant is the proprietor.
25
Under Article 129 of the Rules of Procedure of the General Court, the Court may, at any time of its own motion, after hearing the main parties, decide to rule by reasoned order on whether there exists any absolute bar to proceeding with a case.
26
In the present case, the Court considers that it has sufficient information from the material in the file and has decided to give a decision without taking further steps in the proceedings.
The action in so far as it is directed against the closure of the appeal proceedings with regard to the services in Classes 9, 16, 38, 39 and 41 to 43 in respect of which the examiner refused registration of the mark applied for
27
As is clear from paragraph 15 above, the Grand Board of Appeal, by its interim decision, referred the case to the examiner for re-examination of the trade mark application with respect to the absolute grounds for refusal.
28
In paragraph 13 of the interim decision, the Board of Appeal found that the rejection of the applicant’s opposition in respect of the goods and services in Classes 9, 16 and 35, and in respect of certain services in Class 42, that is to say, ‘computer services; computer programming; research and design services relating to computer software and computer hardware; graphic design services’, had become final. In the same paragraph, the Board of Appeal pointed out that it was suspending the opposition proceedings so far as concerned the services in respect of which the applicant’s opposition had been upheld, and that it was referring the case to the examiner in respect of those services.
29
In its first plea, the applicant criticises the Board of Appeal for failing, contrary to the requirements under Article 72(6) of Regulation 2017/1001, to take the measures necessary to ensure compliance with the judgment of 5 May 2011, Cheapflights (T‑460/09, not published, EU:T:2011:198). In essence, the applicant argues that that judgment required the Board of Appeal to make its assessment as to the existence of a likelihood of confusion between the marks at issue, for the purposes of Article 8(1)(b) of Regulation 2017/1001, by examining the degree of descriptiveness of the word ‘cheapflights’ in regard to the services in question. It is argued that, accordingly, in deciding to refer the case to the examiner, the Board of Appeal failed to examine the likelihood of confusion between the marks at issue, thus disregarding Article 72(6) of Regulation 2017/1001. It submits that the Board of Appeal also erred, in its interim decision, in interpreting the judgment of 5 May 2011, Cheapflights (T‑460/09, not published, EU:T:2011:198) as casting doubt on the registrability of the mark applied for.
30
In its second plea, the applicant criticises the Board of Appeal for having terminated the proceedings without informing the applicant of its intention to close the case without examining the merits of the opposition. The applicant takes the view that it ought to have been consulted beforehand, in light of the radical change in approach with which the Board was to proceed. In failing to do so, the Board disregarded the second sentence of Article 94(1) of Regulation 2017/1001.
31
When questioned, in the context of the measures of organisation of procedure, on its interest in obtaining the annulment of the contested decision in so far as it had closed the appeal proceedings without examining the relative ground for refusal under Article 8(1)(b) of Regulation 2017/1001, the applicant justified the existence of such an interest by referring to the infringements of Article 72(6) and of the second sentence of Article 94(1) of Regulation 2017/1001 allegedly committed by the Grand Board of Appeal.
32
It should be observed that although, in the wording applicable at the time when the interim decision was adopted, Article 40 of Regulation No 207/2009 on observations by third parties (now Article 45 of Regulation 2017/1001) did not provide explicitly for the possibility for EUIPO to reopen the examination of absolute grounds on its own initiative, at any time before registration of a trade mark, since that possibility was included in Article 40(3) of Regulation No 207/2009 only after the amendment thereof by Article 38 of Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Regulation No 40/94, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21), there was such a possibility for EUIPO, even in the absence of any express provision to that effect (see judgment of 18 October 2007, Ekabe International v OHIM — Ebro Puleva (OMEGA 3), T‑28/05, EU:T:2007:312, paragraph 47 and the case-law cited).
33
Furthermore, it is apparent from the broad logic of Article 37 and Articles 40 to 42 of Regulation No 207/2009 (now Article 42 and Articles 45 to 47 of Regulation 2017/1001) that an examination of the compliance of a trade mark application with the absolute grounds for refusal is to be conducted solely in the context of ex parte proceedings between the trade mark applicant and EUIPO’s adjudicating bodies. It is in fact only in invalidity proceedings brought against a registered trade mark on the basis of Article 56(1)(a) of Regulation No 207/2009 (now Article 63(1)(a) of Regulation 2017/1001) that the question of whether that mark has been registered in disregard of an absolute ground for refusal is examined in the context of inter partes proceedings.
34
It necessarily follows that where, in inter partes opposition proceedings, EUIPO reopens the examination of absolute grounds for refusal, that then triggers separate ex parte proceedings which run in parallel with the opposition proceedings.
35
Consequently, following the interim decision, the trade mark application was the subject of two separate sets of proceedings: on the one hand, inter partes proceedings relating to compliance of the application with Article 8(1)(b) of Regulation 2017/1001, which came before the Grand Board of Appeal by reason of the appeal brought by the other party to the proceedings against the decision of the Opposition Division, and which were suspended further to the interim decision; on the other hand, ex parte proceedings relating to compliance of the application with Article 7(1)(b) and (c) of Regulation 2017/1001, which came before the examiner.
36
In the context of the ex parte proceedings, as a result of the examiner’s two decisions of 30 November 2016 and 14 February 2017 (see paragraph 16 above), the trade mark application was refused registration on the ground that it was contrary to Article 7(1)(b) and (c) of Regulation 2017/1001 in respect of those services with regard to which the Opposition Division had upheld the applicant’s opposition, and in respect of certain goods and services with regard to which the Opposition Division had rejected the applicant’s opposition. It is apparent from the file before EUIPO that those decisions of the examiner were not the subject of an appeal before the Board of Appeal.
37
In the context of the inter partes proceedings, the Grand Board of Appeal adopted the contested decision. In that decision, it, inter alia, drew the conclusions, in particular in respect of the opposition and appeal proceedings, from the examiner’s refusal to register the mark applied for in respect of certain goods and services.
38
In the first place, as regards the services in respect of which the applicant’s opposition to the mark applied for on the basis of Article 8(1)(b) of Regulation 2017/1001 had been upheld by the Opposition Division, the Grand Board of Appeal notes the examiner’s refusal to register the mark applied for on the basis of Article 7(1)(b) and (c) of that regulation, and finds that the opposition and appeal proceedings had accordingly become devoid of purpose with regard to those services.
39
In the second place, as regards the goods and services in respect of which the Opposition Division had rejected the applicant’s opposition, the Grand Board of Appeal had pointed out in paragraph 13 of its interim decision that the refusal of the opposition had become final with regard to those goods and services. In the contested decision, the Board again notes the examiner’s refusal to register the mark applied for in respect of certain goods and services in Classes 9 and 16. The list of goods and services in respect of which — as the Grand Board of Appeal points out in paragraph 14 of the contested decision — ‘the contested application shall proceed to registration’ comprises the goods and services in Classes 9, 16, 35 and 42 in respect of which the applicant’s opposition had been rejected, with the exception of those goods and services in Classes 9 and 16 in respect of which the registration of the mark applied for was refused by the examiner.
40
In those circumstances, the Court considers it necessary to examine the admissibility of the action in so far as it is directed against the closure of the appeal proceedings by the contested decision with regard to the services in Classes 9, 16, 38, 39 and 41 to 43, in respect of which the examiner refused registration of the mark applied for.
41
According to settled case-law, an action for annulment is not admissible unless the natural or legal person who brought it has an interest in seeing the contested measure annulled. That interest must be vested and present and is evaluated at the date on which the action is brought, pursuant to the case-law (see judgment of 20 October 2016, Lufthansa AirPlus Servicekarten v EUIPO — Mareea Comtur (airpass.ro), T‑14/15, not published, EU:T:2016:622, paragraph 22 and the case-law cited).
42
An interest in bringing proceedings is an essential and fundamental prerequisite for any legal proceedings. An applicant’s interest in bringing proceedings must, in the light of the purpose of the action, exist at the stage of lodging the action, failing which the action will be inadmissible (see judgment of 20 October 2016, airpass.ro, T‑14/15, not published, EU:T:2016:622, paragraph 23 and the case-law cited). Such an interest must continue until the final decision, failing which there will be no need to adjudicate (see judgment of 7 June 2007, Wunenburger v Commission, C‑362/05 P, EU:C:2007:322, paragraph 42 and the case-law cited).
43
The existence of an interest in bringing proceedings presupposes that the action must be liable, if successful, to procure an advantage for the party bringing it (see, to that effect, judgment of 7 June 2007, Wunenburger v Commission, C‑362/05 P, EU:C:2007:322, paragraphs 42 to 44 and the case-law cited).
44
It is clear that the annulment of the contested decision, be it on the basis of the first or the second plea in law, is not liable to procure any advantage for the applicant.
45
In the first place, such an annulment would not affect the lawfulness of the refusal, ex proprio motu, to register the mark applied for with regard to certain goods and services as being contrary to Article 7(1)(b)and (c) of Regulation 2017/1001.
46
For the reasons stated in paragraphs 33 to 37 above, the Grand Board of Appeal, in referring the case to the examiner, did not trigger incidental proceedings relating to the validity of the trade mark application — the outcome of which could possibly be contested in an action against the decision of the Grand Board of Appeal — but rather separate ex parte proceedings running in parallel before the examiner. Accordingly, even if the contested decision were annulled, the examiner’s decisions would continue to produce their effects.
47
In the second place and in any event, it should be noted that the sole consequence of the Grand Board of Appeal’s referral of the case to the examiner was that the trade mark application was not refused for registration in respect of those goods and services on account of the existence of a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001, as the applicant had sought in the context of its opposition, but rather on account of the existence of an absolute ground for refusal under Article 7(1)(b) and (c) of that regulation. Inasmuch as there is no difference between the effects of the refusal to register a mark depending on whether that refusal is based on Article 7 or on Article 8 of Regulation 2017/1001, it must be concluded that the annulment of the contested decision would not procure any advantage for the applicant.
48
It follows from the foregoing that the action must be declared inadmissible in so far as it is directed against the closure of the appeal proceedings with regard to the goods and services in Classes 9, 16, 38, 39 and 41 to 43, in respect of which the examiner refused registration of the mark applied for.
The action in so far as it is directed against the closure of the appeal proceedings with regard to the goods and services in Classes 9, 16, 35 and 42 in respect of which the Opposition Division had rejected the opposition
49
By its third plea in law, alleging infringement of Article 8(3) of Regulation No 216/96, the applicant criticises the Grand Board of Appeal for failing to examine the incidental submissions set out in the response which the applicant submitted during the initial proceedings before the Board.
50
The applicant claims that the challenge to the decision of the Opposition Division — in so far as it had rejected its opposition in respect of the goods and services in Classes 9, 16 and 35, and in respect of certain services in Class 42, that is to say, ‘ computer services; computer programming; research and design services relating to computer software and computer hardware; graphic design services’ — satisfied the requirements of Article 8(3) of Regulation No 216/96 and that, consequently, incidental submissions had been put before the Board of Appeal, on which the Grand Board ought to have ruled.
51
EUIPO contends that the applicant did not submit incidental submissions within the meaning of Article 8(3) of Regulation No 216/96. In any event, the plea in law is inadmissible, in so far as the Board of Appeal had, in its interim decision, found that the rejection of the applicant’s opposition had become final with regard to those goods and services. Lastly, in its letter of 16 January 2018 (see paragraph 21 above), EUIPO takes the view that that plea in law has now become devoid of purpose on account of the withdrawal, by the other party to the proceedings before EUIPO, of its notice of appeal of 21 August 2007 against the decision of the Opposition Division.
52
When questioned, in the context of the measures of organisation of procedure, on the continued existence of an interest in obtaining the annulment of the contested decision, in so far as that decision closed the appeal proceedings without an examination of the incidental submissions which the applicant claims to have presented, the latter contended that that interest continued to exist. It argued that the other party to the proceedings before the Grand Board of Appeal was no longer in a position to withdraw its appeal of 21 August 2007.
53
Under Article 8(3) of Regulation No 216/96:
‘In inter partes proceedings, the defendant may, in his or her response, seek a decision annulling or altering the contested decision on a point not raised in the appeal. Such submissions shall cease to have effect should [the party who brought the action before the Board of Appeal] discontinue the proceedings.’
54
In the first place, EUIPO’s argument, to the effect that that aspect of the challenge to the contested decision is inadmissible as being out of time, must be rejected from the outset. It is based on the assumption that, by its interim decision, the Grand Board of Appeal closed the proceedings before it so far as concerns the goods and services with regard to which the Opposition Division had rejected the applicant’s opposition. Inasmuch as the applicant could have challenged the interim decision as from that date, the decision contested in the present action is confirmatory so far as those goods and services are concerned.
55
Only the act by which the body responsible for it determines its position unequivocally and definitively, in a form enabling its nature to be identified, constitutes a decision that may form the subject matter of an action for annulment, on condition, however, that that decision does not constitute confirmation of a prior act (see, to that effect, judgment of 26 May 1982, Germany andBundesanstalt für Arbeit v Commission, 44/81, EU:C:1982:197, paragraph 12).
56
It must be noted that the interim decision is not definitive, as is claimed by EUIPO.
57
Although it is stated in paragraph 13 of the interim decision that rejection of the opposition in respect of the goods and services covered by the mark applied for in Classes 9, 16, 35 and 42, had become final, that approach on the part of the Board of Appeal is not reiterated in any way in the operative part of that decision, since that operative part refers exclusively to referral of the case to the examiner and to suspension of the proceedings until such time as a final decision should be taken on whether the sign can be registered.
58
Irrespective of the grounds on which a decision of a Board of Appeal is based, only the operative part thereof is capable of producing legal effects and, consequently, of adversely affecting a person’s legal interests. By contrast, the assessments made in the grounds of a decision of a Board of Appeal are not in themselves capable of forming the subject matter of an action under Article 72 of Regulation 2017/1001. They can be subject to judicial review by the Courts of the European Union only to the extent that, as grounds of a measure adversely affecting the interests of those concerned, they constitute the essential basis for the operative part of that measure (see, by analogy, judgment of 11 June 2015, Laboratoires CTRS v Commission, T‑452/14, not published, EU:T:2015:373, paragraph 51 and the case-law cited).
59
It necessarily follows that the interim decision did not have the effect of closing the proceedings before the Board of Appeal so far as concerns the goods and services with regard to which the Opposition Division had rejected the applicant’s opposition and to which it refers in paragraph 13 of its grounds.
60
In the second place, it is appropriate to examine the potential consequences of the withdrawal by the other party to the proceedings before EUIPO of its appeal before the Board of Appeal, which it had brought on 21 August 2007 against the decision of the Opposition Division.
61
As the Court has already had occasion to emphasise, it is clear from the wording of Article 8(3) of Regulation No 216/96 that the possibility of presenting submissions seeking the annulment or amendment of the contested decision on a point not raised in the appeal is limited to inter partes proceedings. Those submissions may be made in the response submitted in the context of those proceedings. That is why that provision stated that such submissions are to cease to have effect should the appellant discontinue the proceedings before the Board of Appeal. Thus, in order to challenge a decision of the Opposition Division, separate proceedings, as provided for in Article 60 of Regulation No 207/2009 (now Article 68 of Regulation 2017/1001) are the only legal remedy by which it is certain that an appellant’s objections may be asserted (judgment of 4 February 2016, Meica v OHIM — Salumificio Fratelli Beretta (STICK MiniMINI Beretta), T‑247/14, EU:T:2016:64, paragraph 24).
62
First, contrary to the applicant’s contention in its reply to the question addressed to it by the Court, the other party to the proceedings could still withdraw its appeal of 21 August 2007 before the Board of Appeal even when, by the contested decision, the Grand Board of Appeal had closed the appeal proceedings.
63
Pursuant to Article 71(3) of Regulation 2017/1001, ‘the decisions of the Board of Appeal shall take effect only as from the date of expiry of the period [for bringing a case before the General Court] or, if an action has been brought before the General Court within that period, as from the date of dismissal of such action or of any appeal filed with the Court of Justice against the decision of the General Court’.
64
Accordingly, as a result of the action brought before the Court by the applicant, paragraph 1 of the operative part of the contested decision — which closes the opposition and appeal proceedings — did not take effect. It therefore remained possible for the other party to the proceedings to withdraw its notice of appeal of 21 August 2007 before the Board of Appeal.
65
In that connection, it may be observed that it is precisely the suspensory nature of an action before the Court that allows it to take into account, even at that stage, the withdrawal of a trade mark application or of the opposition (order of 3 July 2003, Lichtwer Pharma v OHIM — Biofarma (Sedonium), T‑10/01, EU:T:2003:182, paragraphs 16 to 18) or the annulment of a mark forming the basis of the opposition (order of 14 February 2017, Helbrecht v EUIPO — Lenci Calzature (SportEyes), T‑333/14, EU:T:2017:108, paragraph 26).
66
Secondly, and as a result, pursuant to the case-law cited in paragraph 61 above, the consequence of the withdrawal by the other party to the proceedings of its notice of appeal of 21 August 2007 is that the Board of Appeal is, in any event, no longer required to rule on the incidental submissions which the applicant claims to have presented in its observations on that appeal.
67
Thus, should the applicant’s action be allowed and the contested decision annulled on the ground that the Grand Board of Appeal ought to have examined the incidental submissions presented by the applicant, the case would be referred back to the Grand Board of Appeal, which could find only that (i) the other party to the proceedings has withdrawn its appeal; and (ii) pursuant to Article 8(3) of Regulation No 216/96, those submissions had become devoid of purpose.
68
Accordingly, by reason of that withdrawal, that aspect of the present action which the applicant has brought before the Court is no longer capable of procuring, by its outcome, any advantage for the applicant, which therefore no longer has any interest in bringing proceedings. Pursuant to the case-law cited in paragraphs 42 and 43 above, the interest in bringing proceedings is an essential and fundamental prerequisite for any legal proceedings and must continue until the final decision, failing which there will be no need to adjudicate.
69
There is, accordingly, no longer any need to adjudicate on the action in so far as it is directed against the closure of the appeal proceedings with regard to the goods and services in Classes 9, 16, 35 and 42, in respect of which the Opposition Division had rejected the applicant’s opposition.
The action in so far as it is directed against the presence of certain assessments set out in the contested decision
70
In its fourth plea in law, the applicant criticises the Grand Board of Appeal for having (i) in paragraph 7 of the contested decision, summarised the Court’s position in its judgment of 5 May 2011, Cheapflights (T‑460/09, not published, EU:T:2011:198), as ‘confirming the descriptiveness of the word “cheapflights” and the representation of an aeroplane for services related to travel arrangements’; and (ii) in paragraph 16 of the contested decision, in the apportionment of costs, pointed out that ‘the partial rejection of the application [was] based on the descriptive meaning of the word “cheapflights” for the rejected goods and services and hence on a reasoning that would equally apply to the assessment of the distinctive character of the earlier mark, which contains the very same word’. Accordingly, still in paragraph 16 of the contested decision, ‘for reasons of equity, the Board therefore orders each party to bear its own costs …’. The applicant points out that its Irish mark was eligible for registration without the applicant having to demonstrate the acquisition of distinctive character through use.
71
EUIPO contends that this plea is inadmissible in so far as it is contrary to Article 177(1)(d) of the Rules of Procedure, since it has no basis in law or case-law. Furthermore, EUIPO observes that those assertions were made only with regard to the apportionment of the costs, which is not disputed by the applicant. Lastly, it points out that those assertions concern only the word element ‘cheapflights’ and not the applicant’s trade marks.
72
When questioned, in the context of the measures of organisation of procedure, on the admissibility of its action in so far as it is directed against the presence of certain assessments of the descriptive character of the word ‘cheapflights’ in the contested decision, the applicant took the view, in essence, that it is entitled to challenge that aspect of the contested decision, since a correct assessment of the distinctive character of the earlier mark might have led the Board of Appeal to reach a different conclusion.
73
Under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, which applies to proceedings before the General Court pursuant to the first paragraph of Article 53 of that statute and Article 177(1)(d) of the Rules of Procedure, all applications initiating proceedings must contain, inter alia, a summary of the pleas on which the application is based. The information given must be sufficiently clear and precise to enable the defendant to prepare his defence and the Court to decide the case. The same considerations also apply to all claims, which must be accompanied by pleas and arguments enabling both the defendant and the Court to assess their validity. Thus, the essential elements of fact and of law on which the action is based must be indicated, at least in summary form, coherently and intelligibly in the application itself. Similar requirements apply where a claim or an argument is relied on in support of a plea in law (see judgment of 13 March 2013, Biodes v OHIM — Manasul Internacional (FARMASUL), T‑553/10, not published, EU:T:2013:126, paragraph 22 and the case-law cited).
74
In essence, the applicant criticises the Board of Appeal for expressing a view, albeit indirectly, on the validity of the applicant’s earlier mark, whereas the Board has no jurisdiction to that effect. The present plea in law is therefore understandable and cannot be disregarded from the outset on the basis on Article 177(1)(d) of the Rules of Procedure.
75
The fact nonetheless remains that the action, in so far as it is directed against the presence of certain assessments of the descriptive character of the word ‘cheapflights’ in the contested decision, must be declared inadmissible, since the passages at issue in the contested decision are not capable of adversely affecting the applicant.
76
As has already been pointed out in paragraph 58 above, regardless of the grounds on which a decision of a Board of Appeal is based, only the operative part thereof is capable of producing legal effects and, consequently, of adversely affecting a person’s legal interests. By contrast, the assessments made in the grounds of a decision are not in themselves capable of forming the subject matter of an action under Article 72 of Regulation 2017/1001. They can be subject to judicial review by the Courts of the European Union only to the extent that, as grounds of a measure adversely affecting the interests of those concerned, they constitute the essential basis for the operative part of that measure.
77
In the present case, it is clear from the broad logic of the contested decision that paragraph 7 thereof was not put forward in support of any paragraph in its operative part. As for paragraph 16 of the contested decision, although it is one of the grounds on which the Grand Board of Appeal relied for the purposes of concluding, in paragraph 2 of the operative part of the decision, that each of the parties should bear its own costs, that aspect of the operative part is not disputed by the applicant. It is, in fact, clear from the application that it is solely the Grand Board of Appeal’s decision to close the opposition and appeal proceedings, set out in paragraph 1 of the operative part of the contested decision, which is disputed, and not the apportionment of costs, set out in paragraph 2 of that operative part.
78
Consequently, the expressions criticised, which are set out in the grounds for the contested decision, cannot be linked to the paragraph of the operative part disputed by the applicant and cannot, in themselves, be subject to an appeal before the Court.
79
In the light of the foregoing, the action must be declared inadmissible in so far as it is directed against, first, the closure, by the contested decision, of the appeal proceedings without examination of the relative ground for refusal under Article 8(1)(b) of Regulation 2017/1001, and, second, the presence of certain assessments relating to the descriptive character of the word ‘cheapflights’ in the contested decision; there is, furthermore, no longer any need to adjudicate on the action in so far as it is directed against the absence of examination, by the Board of Appeal, of the incidental submissions that the applicant claims to have presented on the basis of Article 8(3) of Regulation No 216/96.
Costs
80
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. Under Article 137 of the Rules of Procedure, where a case does not proceed to judgment, the costs are to be in the discretion of the Court.
81
Inasmuch as the present action has, in part, been declared inadmissible and has, in part, become devoid of purpose, a fair application of the abovementioned provisions will be to order the applicant to pay half of the costs incurred by EUIPO, in addition to its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby orders:
1.
There is no longer any need to adjudicate on the action in so far as it is directed against the closure of the appeal proceedings by the decision of the Grand Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 1 June 2017 (Case R 1893/2011-G) with regard to the goods and services in Classes 9, 16, 35 and 42 in respect of which the Opposition Division had rejected the opposition of CheapFlights International Ltd.
2.
The action is dismissed as inadmissible as to the remainder.
3.
CheapFlights International shall pay, in addition to its own costs, half of the costs incurred by EUIPO.
4.
EUIPO shall bear half of its own costs.
Luxembourg, 11 December 2018.
E. Coulon
Registrar
M. Prek
President
(
*1
)	Language of the case: English.