ORDER OF THE GENERAL COURT (Sixth Chamber)
21 November 2023 (*)
(Action for annulment – EU trade mark – Invalidity proceedings – EU figurative mark FLOW FILTER – Cross-claim – No interest in bringing proceedings – Inadmissibility)
In Case T‑20/23,
Japan Tobacco, Inc., established in Tokyo (Japan), represented by J. L. Gracia Albero and E. Cebollero González, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Dunhill Tobacco of London Ltd, established in London (United Kingdom), represented by I. Fowler, I. Junkar and B. Worbes, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira (Rapporteur), President, P. Zilgalvis and E. Tichy-Fisslberger, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure, in particular:
–        the intervener’s cross-claim lodged at the Registry of the General Court on 5 April 2023,
–        the plea of inadmissibility relating to the cross-claim, raised by EUIPO by separate document lodged at the Court Registry on 21 June 2023,
–        the applicant’s response to the cross-claim, lodged at the Court Registry on 31 May 2023,
–        the intervener’s observations on the plea of inadmissibility, lodged at the Court Registry on 16 August 2023,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, Japan Tobacco, Inc., seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 October 2022 (Case
R 1774/2021-5) (‘the contested decision’).
2        By its cross-claim under Article 182 of the Rules of Procedure of the General Court, the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, Dunhill Tobacco of London Ltd, seeks the annulment of the finding made in paragraph 47 of the contested decision.
Background to the dispute
3        On 12 May 2020, the applicant filed an application with EUIPO for a declaration of invalidity of the EU trade mark which had been registered further to an application filed on 18 December 2018 in respect of the following figurative sign:
4        The goods covered by the contested mark in respect of which a declaration of invalidity was sought are in Class 34 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.
5        The ground relied on in support of the application for a declaration of invalidity was that set out in Article 59(1)(a) of 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), read in conjunction with Article 7(1)(b), (c) and (d) of that regulation.
6        On 15 September 2021, the Cancellation Division rejected the application for a declaration of invalidity.
7        On 15 October 2021, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
8        By the contested decision, the Board of Appeal dismissed the action on the ground that there was no evidence that the contested mark had been registered in breach of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b), (c) and (d) of that regulation.
Forms of order sought
9        In the cross-claim, the intervener claims that the Court should:
–        annul the finding made in paragraph 47 of the contested decision,
–        order the applicant to pay the costs.
10      In its plea of inadmissibility, EUIPO contends that the Court should:
–        dismiss the cross-claim as inadmissible;
–        order the intervener to pay the costs of the cross-claim in the event that a hearing is convened.
11      In its response to the cross-claim, the applicant contends, in essence, that the Court should:
–        dismiss the cross-claim as inadmissible;
–        order the intervener to pay the costs, including those incurred before the Board of Appeal and before the Cancellation Division.
12      In its observations on the plea of inadmissibility of the cross-claim, the intervener contends, in essence, that the Court should:
–        dismiss the plea of inadmissibility;
–        order EUIPO to pay the costs.
Law
13      Pursuant to Article 130(1) of the Rules of Procedure of the General Court, if the defendant so requests, the Court may rule on a plea of inadmissibility without going to the substance of the case. It follows from Article 130(6) of those rules that the Court may decide to open the oral part of the procedure.
14      In the present case, since the Court considers that it has sufficient information from the documents in the file to rule on the plea of inadmissibility submitted by EUIPO, it is not necessary to open the oral part of the procedure.
15      EUIPO and the applicant dispute the admissibility of the cross-claim. They argue, in essence, that the intervener does not have an interest in bringing proceedings since it was not adversely affected by the contested decision.
The fact that the intervener does not agree with all of the findings of the Board of Appeal does not, they submit, justify the filing of a cross-claim.
16      The intervener challenges the plea of inadmissibility. It submits that, if the contested decision were annulled and the case referred back to the Board of Appeal, it would have an interest in bringing proceedings against it.
According to the intervener, it is not appropriate for the Board of Appeal to regard as definitive and binding the erroneous conclusion that the word element ‘flow filter’ is descriptive of the majority of the goods at issue.
17      Article 72(4) of Regulation 2017/1001 provides that an action before the Court against a decision of a Board of Appeal of EUIPO is ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’.
18      In accordance with settled case-law, an applicant’s legal interest in bringing proceedings constitutes the essential prerequisite for any legal proceedings and must, in the light of the purpose of the action, exist at the time at which the action is brought, failing which that action will be inadmissible.
The legal interest in bringing proceedings presupposes that the action must be liable, if successful, to procure an advantage for the party bringing it.
It follows that, according to the case-law, in so far as a decision of a Board of Appeal upholds in their entirety the claims of the party concerned, that party does not have standing to bring an action before the Court (see judgment of 5 February 2020, Globalia Corporación Empresarial v EUIPO – Touring Club Italiano (TC Touring Club), T‑44/19, not published, EU:T:2020:31, paragraph 27 and the case-law cited).
19      In that regard, it has been held that a decision of a Board of Appeal must be regarded as having upheld the claims of one of the parties before that Board of Appeal, when it has granted the application of that party on the basis of one of the grounds for refusal of registration or for invalidity of a mark or, more generally, of only part of the arguments put forward by that party, even if it did not examine or rejected the other grounds or arguments raised by that party (see judgment of 5 February 2020, TC Touring Club, T‑44/19, not published, EU:T:2020:31, paragraph 28 and the case-law cited).
20      In the present case, the Board of Appeal dismissed the appeal brought by the applicant against the decision of the Cancellation Division, which had dismissed, in its entirety, the application for a declaration of invalidity brought by the applicant.
The Board of Appeal found that there was no evidence that the contested mark had been registered in breach of Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(b), (c) and (d) of that regulation. Thus, notwithstanding the fact that the intervener does not agree with all of the Board of Appeal’s findings, the contested decision upheld its claims in their entirety.
21      It follows that the intervener is not, in the circumstances, entitled to bring a cross-claim against the contested decision.
22      That conclusion is not called into question by the case-law cited by the intervener, since, as is apparent from the judgments cited, and in particular from paragraph 24 of the judgment of 15 October 2008, Powerserv Personalservice v OHIM – Manpower (MANPOWER) (T‑405/05, EU:T:2008:442), and paragraph 25 of the judgment of 6 February 2013, Maharishi Foundation v OHIM (TRANSCENDENTAL MEDITATION) (T‑412/11, not published, EU:T:2013:62), the contested decisions of the Boards of Appeal did not uphold in their entirety the claims of the parties concerned.
23      It follows that the cross-claim is inadmissible.
Costs
24      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.
25      Since the intervener has been unsuccessful in its cross-claim, it must be ordered to bear its own costs and to pay those incurred by the applicant relating to those proceedings, in accordance with the form of order sought by the applicant.
In addition, the applicant has requested that the intervener be ordered to pay the costs incurred before the Board of Appeal and before the Cancellation Division. The treatment of those costs will be examined in the main action. It is therefore appropriate for those costs to be reserved.
26      By contrast, since EUIPO has requested that the intervener be ordered to pay the costs only in the event that a hearing is convened, EUIPO must be ordered to bear its own costs, since no hearing has been organised.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby orders:
1.      The cross-claim is dismissed as inadmissible.
2.      Dunhill Tobacco of London Ltd shall bear its own costs relating to the cross-claim and pay those incurred by Japan Tobacco, Inc., relating to the present proceedings.
3.      The European Union Intellectual Property Office (EUIPO) shall bear its own costs relating to the cross-claim.
4.      The costs relating to the proceedings before the Board of Appeal and before the Cancellation Division are reserved.
Luxembourg, 21 November 2023.
V. Di Bucci
M. J. Costeira
Registrar
President
*      Language of the case: English.