JUDGMENT OF THE GENERAL COURT (Third Chamber)
12 June 2019 (*)
(EU trade mark — Opposition proceedings — Application for EU word mark VOGUE — Earlier EU word mark VOGA — Suspension of the administrative procedure — Rule 20(7)(c) of Regulation (EC) No 2868/95 (now Article 71(1) of Delegated Regulation (EU) 2018/625) — Rule 50(1) of Regulation No 2868/95)
In Case T‑346/18,
Advance Magazine Publishers, Inc., established in New York, New York (United States), represented by T. Alkin, Barrister, and N. Hine, Solicitor,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Enovation Brands, Inc., established in Aventura, Florida (United States), represented by R. Almaraz Palmero, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 March 2018 (Case R 259/2017-4) concerning opposition proceedings between Enovation Brands and Advance Magazine Publishers,
THE GENERAL COURT (Third Chamber),
composed of S. Frimodt Nielsen, President, I.S. Forrester (Rapporteur) and E. Perillo, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 29 May 2018,
having regard to the response of EUIPO lodged at the Court Registry on 24 August 2018,
having regard to the response of the intervener lodged at the Court Registry on 21 August 2018,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 24 July 2013, the applicant, Advance Magazine Publishers, Inc., filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) by virtue of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (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        The mark for which registration was sought is the word sign VOGUE.
3        The goods and services in respect of which registration was sought are in, inter alia, Classes 32, 33 and 43 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 32: ‘Beers; premixed beer-based alcoholic beverages’;
–        Class 33: ‘Alcoholic beverages (except beers); cider; perry; wine; liqueurs; spirits; cocktails; pre-mixed alcoholic beverages (other than beer based)’;
–        Class 43: ‘Services for providing drink; hotel, bar, wine-bar, café and restaurant services; nightclub services (provision of drink); catering; nursery and crèche services; rental of equipment for preparing and dispensing drink’.
4        On 9 October 2013, the predecessor in law of the intervener, Enovation Brands, Inc., filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
5        The opposition was based on the earlier EU word mark VOGA, designating, inter alia, goods in Class 33.
6        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
7        On 2 December 2016, the Opposition Division upheld the opposition in part and rejected the application in respect of the following goods and services:
–        Class 32: ‘Beers; premixed beer-based alcoholic beverages’;
–        Class 33: ‘Alcoholic beverages (except beers); cider; perry; wine; liqueurs; spirits; cocktails; pre-mixed alcoholic beverages (other than beer based)’;
–        Class 43: ‘Catering services; bar, wine-bar, café and restaurant services; nightclub services (provision of drink); catering’.
8        On 2 February 2017, the applicant filed a notice of appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
9        On 3 April 2017, the applicant filed a request for the suspension of the opposition proceedings on the ground that, on 31 March 2017, it filed with EUIPO an application for a declaration of invalidity of the mark VOGA on the basis, on the one hand, of Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001) and, on the other, of Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001).
10      In essence, in that action for a declaration of invalidity, the applicant argued that the intervener acted in bad faith when it filed the application for the trade mark under Article 52(1)(b) of Regulation No 207/2009. As to the grounds of invalidity provided for in Article 53(1)(a) of that regulation, the applicant submits that there was a conflict concerning the registration of the earlier mark in relation to the EU figurative trade mark reproduced below, which was registered under No 14273296 and covers services in Classes 41 and 43, and of the EU word mark VOGUE, which was registered under No 183756 for goods and services in Classes 9, 16, 25 and 41:
11      By decision of 27 March 2018 in Case R 259/2017-4 (‘the contested decision’), the Fourth Board of Appeal rejected the request for suspension and upheld the decision of the Opposition Division.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision in so far as it rejected the request for suspension;
–        order EUIPO to pay the costs incurred by the applicant.
13       EUIPO contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs;
–        in the alternative, annul the contested decision;
–        order EUIPO to bear only its own costs.
14      The intervener contends that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs, including those incurred during the administrative procedure before EUIPO.
Law
15      The applicant raises a single plea in law, alleging infringement by the Board of Appeal of Commission Regulation (EC) No 2868/95 of 13 December 1995, implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) and in particular Rule 20(7)(c) of that regulation (now Article 71(1) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 of the European Parliament and of the Council on the European Union trade mark and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), read in conjunction with Rule 50(1) of that regulation.
16      The applicant argues, in essence, that the Board of Appeal committed manifest errors of assessment by refusing to suspend the opposition proceedings until a decision was adopted in the invalidity proceedings. First, the Board of Appeal refused to carry out a prima facie analysis of the applicant’s chances of success in the invalidity proceedings. Second, it failed properly to assess and weigh up the interests of the applicant in the invalidity proceedings in the exercise of its discretion. Third, it was incorrect to regard the fact that the invalidity proceedings had been brought after the application for registration of the word sign VOGUE was filed as a ground allowing those proceedings to be disregarded.
17      EUIPO, supported by the intervener, disputes that line of argument. Furthermore, the intervener argues that the application for partial annulment is inadmissible because the applicant failed to indicate which part of the contested decision was covered by that application.
18      As a preliminary remark, it should be noted that, in the application, the applicant seeks the annulment of the contested decision in so far as it rejected the request for a suspension. It is thus clear that, in paragraphs 40 to 45 of the contested decision, the Board of Appeal set out the reasons for the rejection of the request for suspension made under Rule 20(7)(c) of Regulation No 2868/95, which therefore enabled it to rule on the opposition. Accordingly, the intervener cannot claim that the applicant had failed to state which part of the contested decision formed the basis of its application for annulment and that that application should therefore be declared inadmissible.
19      As regards whether the Board of Appeal committed a manifest error of assessment by rejecting the request for a suspension, first of all, it must be borne in mind that Rule 20(7)(c) of Regulation No 2868/95, applicable to proceedings before the Board of Appeal in accordance with Rule 50(1) of that regulation, provides that EUIPO may suspend opposition proceedings where a suspension is appropriate in the circumstances.
20      In addition, it is clear from the case-law that the Board of Appeal has a broad discretion as to whether or not to suspend ongoing proceedings. Suspending proceedings remains optional for the Board of Appeal, which will do so only if it considers it appropriate. Accordingly, the proceedings before it are not automatically suspended as a result of a request for suspension being made by a party before it (judgment of 25 November 2014, Royalton Overseas v OHIM — S.C. Romarose Invest (KAISERHOFF), T‑556/12, not published, EU:T:2014:985, paragraph 30).
21      Moreover, it is clear from the case-law that, in exercising its discretion with respect to the suspension of proceedings, the Board of Appeal must observe the general principles governing procedural fairness within a European Union governed by the rule of law. It follows that, in exercising that discretion, the Board of Appeal must take into account not only the interests of the party whose application for an EU mark is being contested, but also those of the other parties. The decision whether or not to suspend the proceedings must follow upon a weighing of the competing interests (see judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 33 and the case-law cited).
22      The fact that the Board of Appeal has a broad discretion to suspend proceedings before it does not mean that the assessment of that discretion falls outside the scope of judicial review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ascertaining that no manifest error of assessment or misuse of powers has occurred (see judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 31 and the case-law cited).
23      In the present case, it must be noted that, contrary to EUIPO’s assertions, the rejection of the request for suspension was not based primarily on the fact that it was impossible for the Board of Appeal properly to assess the applicant’s chances of success in the invalidity proceedings. Indeed, first of all, it is apparent from the suspension decision that the Board of Appeal observed that ‘the earlier mark should never have been granted, due to the existence of bad faith and because that mark [was] in conflict with the appellant’s earlier rights in the mark VOGUE’. Furthermore, the Board of Appeal noted that the appellant attached its application for a declaration of invalidity to that request for suspension and the Board found that that was accompanied by a substantial amount of evidence. Next, the Board of Appeal found that ‘no further information about the subject matter, let alone prospects of success of the cancellation proceedings, [had] been submitted’. Furthermore, the Board of Appeal stated that it could verify the existence of the cancellation proceedings and pointed out that those proceedings had been brought ‘three days before submitting the request for suspension … and nearly 12 years after the filing of the [intervener’s] earlier mark’. Finally, the Board of Appeal concluded in recital 44 of the suspension decision that, ‘given that the applicant did not indicate the chances of success which it [expected] from [the invalidity proceedings] or why it was not in a position to initiate those proceedings before the contested decision was taken, it [was] not for the Board to enter into the substance of those proceedings and not appropriate to allow the losing appellant to escape from the outcome of the present proceedings by launching other proceedings’.
24      Thus, in view of the above considerations and in particular the conclusion set out in recital 44 of the suspension decision, it follows that the Board of Appeal based its rejection of the applicant’s request for suspension, on the one hand, on the fact that the applicant had not indicated the chances of success of the invalidity proceedings and, on the other, on the fact that the applicant had failed to justify why it was not able to to initiate those proceedings before the decision of the Opposition Division was adopted.
25      That being said, it must be noted that, when the Board of Appeal rules on a request for suspension in the context of opposition proceedings, as in the present case, it is not for the Board to rule on the substance of the invalidity proceedings. Nonetheless, given that the Board of Appeal is required to strike a balance between the interests at issue when exercising its discretion with regard to a request for suspension, the striking of that balance implies conducting, on the basis of the evidence in the file before it, a preliminary assessment of the likelihood of success and taking this assessment into consideration (see, to that effect, judgment of 21 October 2015, Petco Animal Supplies Stores v OHIM — Gutiérrez Ariza (PETCO), T‑664/13, EU:T:2015:791, paragraph 35). In consequence, although the party requesting the suspension must provide the Board of Appeal with the evidence enabling it to carry out that preliminary analysis of the prospects of success of the application for a declaration of invalidity, the Board cannot claim that the same party, which has an interest in the outcome of the annulment proceedings, is able to provide a reliable assessment of its prospects of success.
26      Accordingly, the Board of Appeal was incorrect to base, in part, its rejection of the request for suspension on the applicant’s failure to identify the prospects of success of the invalidity proceedings.
27      As regards the fact that the applicant failed to justify why it was not able to to initiate the invalidity proceedings before the decision of the Opposition Division was adopted, it must be recalled that opposition proceedings and invalidity proceedings are two distinct and autonomous types of proceedings, each with their own effects, and that it is possible to entertain invalidity proceedings irrespective of whether opposition proceedings based on the mark to which the application for a declaration of invalidity relates have been brought and are still pending (judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 38).
28      Each of the two types of proceedings has its own purpose and effects. Opposition is designed to frustrate, under certain conditions, an application for registration of a mark owing to the existence of an earlier mark and rejection of that opposition does not entail the invalidity of the latter mark. Such invalidity can be brought about only where proceedings have been instituted for that purpose. Accordingly, the opportunity available to all to file an application for a declaration of the invalidity of a mark is completely independent of any parallel opposition proceedings in which the earlier trade mark to which the application for a declaration for invalidity relates is involved (judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraphs 39 and 40).
29      Moreover, it should be noted that the General Court has already held that the Board of Appeal cannot refuse to grant a suspension solely on the basis that invalidity proceedings against an earlier trade mark on which the opposition was based had been brought while the opposition proceedings were still pending (judgment of 25 November 2014, KAISERHOFF, T‑556/12, not published, EU:T:2014:985, paragraph 42). However, it is necessary to specify that that does not preclude the Board of Appeal from rejecting a request for suspension when finding, on the basis of relevant and consistent indicia, that the filing of a request for suspension is a delaying tactic.
30      In light of that case-law, it must be held that, even assuming that the decision of the Board of Appeal should be interpreted as having based the rejection of the request for suspension, in part, on an assessment that that request was filed as a delaying tactic, such an assessment cannot be based only on the fact that the applicant failed to justify why it was not able to to bring the invalidity proceedings beforehand.
31      In the light of all the foregoing, it must be held that, by basing its rejection of the request for suspension on the failure of the applicant to indicate, on the one hand, the prospects of success of the invalidity proceedings and, on the other, the reason for why it was not able to bring those proceedings at an earlier stage, the Board of Appeal failed to strike a balance between the parties’ interests within the meaning of the case-law cited in paragraph 21 above and, accordingly, committed a manifest error of assessment.
32      Accordingly, the applicant’s single plea in law must be upheld.
33      Since the examination of the question of a suspension of proceedings is prior to the decision on the opposition, the contested decision must be annulled in its entirety.
Costs
34      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
35      Since EUIPO has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
36      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber),
hereby:
1.      Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 March 2018 (Case R 259/2017-4);
2.      Orders EUIPO to bear its own costs and to pay the costs incurred by Advance Magazine Publishers, Inc.;
3.      Orders Enovation Brands, Inc. to bear its own costs.
Frimodt Nielsen
Forrester
Perillo
Delivered in open court in Luxembourg on 12 June 2019.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.