JUDGMENT OF THE COURT (Fifth Chamber)
20 June 2024 (*)
(Appeal – EU trade mark – Application for EU figurative mark Abresham Super Basmati Selaa Grade One World’s Best Rice – Earlier non-registered United Kingdom word mark BASMATI – Regulation (EC) No 207/2009 – Article 8(4) – Regulation (EU) 2017/1001 – Article 72 – Relative ground for refusal – Opposition – Appeal before the Board of Appeal – Dismissal – Action before the General Court – Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community – Articles 126 and 127 – Transition period – Effects of the end of the transition period on the protection of the earlier mark – Circumstances after the adoption of the decision at issue – Continuance of the purpose of the action and of the interest in bringing proceedings)
In Case C‑801/21 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 17 December 2021,
European Union Intellectual Property Office (EUIPO), represented by D. Gaja, D. Hanf, E. Markakis and V. Ruzek, acting as Agents,
appellant,
supported by:
Federal Republic of Germany, represented by J. Heitz, M. Hellmann, D. Klebs and J. Möller, acting as Agents,
intervener in the appeal,
the other party to the proceedings being:
Indo European Foods Ltd, established in Harrow (United Kingdom), represented by A. Norris KC, and N. Welch, Solicitor,
applicant at first instance,
THE COURT (Fifth Chamber),
composed of E. Regan, President of the Chamber, Z. Csehi, M. Ilešič, I. Jarukaitis and D. Gratsias (Rapporteur), Judges,
Advocate General: M. Szpunar,
Registrar: A. Lamote, Administrator,
having regard to the written procedure and further to the hearing on 14 September 2023,
after hearing the Opinion of the Advocate General at the sitting on 23 November 2023,
gives the following
Judgment
1        By its appeal, the European Union Intellectual Property Office (EUIPO) asks the Court of Justice to set aside the judgment of the General Court of the European Union of 6 October 2021, Indo European Foods v EUIPO – Chakari (Abresham Super Basmati Selaa Grade One World’s Best Rice) (T‑342/20, EU:T:2021:651; ‘the judgment under appeal’), by which the General Court, first, annulled the decision of the Fourth Board of Appeal of EUIPO of 2 April 2020 (Case R 1079/2019-4) (‘the decision at issue’), relating to opposition proceedings between Indo European Foods Ltd and Mr Hamid Ahmad Chakari, and, second, dismissed Indo European Foods’ action as to the remainder.
Legal context
The Withdrawal Agreement
2        The first, fourth and eighth paragraphs of the preamble to the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7; ‘the Withdrawal Agreement’), which was concluded on 30 January 2020 and entered into force on 1 February 2020, state:
‘Considering that on 29 March 2017 the [United Kingdom], following the outcome of a referendum held in the United Kingdom and its sovereign decision to leave the European Union, notified its intention to withdraw from the [Union] in accordance with Article 50 [TEU] …,
…
Recalling that, pursuant to Article 50 TEU … and subject to the arrangements laid down in this Agreement, the law of the Union … in its entirety ceases to apply to the United Kingdom from the date of entry into force of this Agreement,
…
Considering that it is in the interest of both the Union and the United Kingdom to determine a transition or implementation period during which … Union law … should be applicable to and in the United Kingdom, and, as a general rule, with the same effect as regards the Member States, in order to avoid disruption in the period during which the agreement(s) on the future relationship will be negotiated’.
3        Article 1 of the Withdrawal Agreement, entitled ‘Objective’, provides:
‘This Agreement sets out the arrangements for the withdrawal of the [United Kingdom] from the [Union] …’
4        According to Article 126 of that agreement, entitled ‘Transition period’:
‘There shall be a transition or implementation period, which shall start on the date of entry into force of this Agreement and end on 31 December 2020.’
5        Article 127 of the Withdrawal Agreement, entitled ‘Scope of the transition’, states, in paragraphs 1, 3 and 6 thereof:
‘1.      Unless otherwise provided in this Agreement, Union law shall be applicable to and in the United Kingdom during the transition period.
…
3.      During the transition period, the Union law applicable pursuant to paragraph 1 shall produce in respect of and in the United Kingdom the same legal effects as those which it produces within the Union and its Member States, and shall be interpreted and applied in accordance with the same methods and general principles as those applicable within the Union.
…
6.      Unless otherwise provided in this Agreement, during the transition period, any reference to Member States in the Union law applicable pursuant to paragraph 1, including as implemented and applied by Member States, shall be understood as including the United Kingdom.’
Regulation (EC) No 207/2009
6        Recitals 3, 4 and 7 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (‘Regulation No 207/2009’), state:
‘(3)      For the purpose of pursuing the Community’s said objectives it would appear necessary to provide for Community arrangements for trade marks whereby undertakings can by means of one procedural system obtain Community trade marks to which uniform protection is given and which produce their effects throughout the entire area of the Community. The principle of the unitary character of the Community trade mark thus stated should apply unless otherwise provided for in this Regulation.
(4)      The barrier of territoriality of the rights conferred on proprietors of trade marks by the laws of the Member States cannot be removed by approximation of laws. In order to open up unrestricted economic activity in the whole of the internal market for the benefit of undertakings, trade marks should be created which are governed by a uniform Community law directly applicable in all Member States.
…
(7)      The rights in a Community trade mark should not be obtained otherwise than by registration, and registration should be refused in particular … if it conflicts with earlier rights.’
7        Article 1(2) of Regulation No 207/2009 provides:
‘An EU trade mark shall have a unitary character. It shall have equal effect throughout the Union: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Union. This principle shall apply unless otherwise provided for in this Regulation’.
8        Article 8 of that regulation, entitled ‘Relative grounds for refusal’, states, in paragraph 4:
‘Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:
(a)      rights to that sign were acquired prior to the date of application for registration of the EU trade mark, or the date of the priority claimed for the application for registration of the EU trade mark;
‘(b)      that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.’
Regulation (EU) 2017/1001
9        Regulation No 207/2009 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).
10      Article 1(2) and Article 8(4) of Regulation 2017/1001 are worded in the same terms as, respectively, Article 1(2) and Article 8(4) of Regulation No 207/2009.
11      Article 72 of Regulation 2017/1001, entitled ‘Actions before the Court of Justice’, provides:
‘1.      Actions may be brought before the General Court against decisions of the Boards of Appeal in relation to appeals.
2.      The action may be brought on grounds of lack of competence, infringement of an essential procedural requirement, infringement of the TFEU, infringement of this Regulation or of any rule of law relating to their application or misuse of power.
3.      The General Court shall have jurisdiction to annul or to alter the contested decision.
…
6.      [EUIPO] shall take the necessary measures to comply with the judgment of the General Court or, in the event of an appeal against that judgment, the Court of Justice.’
12      Article 139 of that regulation, entitled ‘Request for the application of national procedure’, states in paragraphs 1 to 3:
‘1.      The applicant for or proprietor of an EU trade mark may request the conversion of his EU trade mark application or EU trade mark into a national trade mark application:
(a)      to the extent that the EU trade mark application is refused, withdrawn, or deemed to be withdrawn;
…
2.      Conversion shall not take place:
…
(b)      for the purpose of protection in a Member State in which, in accordance with the decision of [EUIPO] or of the national court, grounds for refusal of registration or grounds for revocation or invalidity apply to the EU trade mark application or EU trade mark.
3.      The national trade mark application resulting from the conversion of an EU trade mark application or an EU trade mark shall enjoy in respect of the Member State concerned the date of filing or the date of priority of that application or trade mark …’
Background to the dispute
13      The facts of the dispute, as set out in paragraphs 1 to 12 of the judgment under appeal, may be summarised as follows.
14      On 14 June 2017, Mr Chakari filed an application for registration of an EU trade mark with EUIPO, which was published in the European Union Trade Marks Bulletin
No 169/2017 of 6 September 2017.
15      The mark applied for is the following figurative sign:
16      Registration was sought in respect of goods made from rice in Classes 30 and 31 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.
17      On 13 October 2017, Indo European Foods filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in the preceding paragraph. The opposition was based on the earlier non-registered United Kingdom word mark BASMATI, referring to rice. The ground relied on in support of the opposition was that set out in Article 8(4) of Regulation 2017/1001. Indo European Foods argued, in essence, that it was entitled, under the applicable law in the United Kingdom, to prevent use of the mark applied for, on the basis of the ‘extended’ form of the ‘action for passing off’.
18      By decision of 5 April 2019, the Opposition Division rejected the opposition in its entirety, on the ground that the evidence submitted by Indo European Foods was insufficient to prove, in accordance with Article 8(4) of Regulation 2017/1001, that the earlier mark concerned had been used in the course of trade of more than mere local significance before the relevant date and in the relevant territory.
19      On 16 May 2019, Indo European Foods filed a notice of appeal with EUIPO against that decision of the Opposition Division.
20      By the decision at issue, the Fourth Board of Appeal of EUIPO dismissed that appeal as unfounded on the ground that Indo European Foods had not demonstrated that the name ‘basmati’ would allow it to prohibit the use of the mark applied for in the United Kingdom on the basis of the ‘extended’ form of passing off.
The procedure before the General Court and the judgment under appeal
21      By application lodged at the Registry of the General Court on 2 June 2020, Indo European Foods brought an action for annulment and alteration of the decision at issue.
22      In support of its action, the applicant relied on a single plea in law, alleging infringement of Article 8(4) of Regulation No 207/2009.
23      In its response, EUIPO submitted, inter alia, that, in so far as the opposition to registration of the mark applied for was based on an earlier non-registered United Kingdom trade mark, the protection conferred on the latter mark by United Kingdom law remained relevant during the transition period provided for in Articles 126 and 127 of the Withdrawal Agreement (‘the transition period’), but that, upon the expiry of that period, the opposition proceedings and the action before the General Court would be devoid of purpose. Furthermore, EUIPO argued that, since the annulment of the decision at issue could no longer procure any advantage for the applicant at first instance, the latter no longer had a legal interest in bringing proceedings in the procedure before the General Court.
24      In the first place, in paragraphs 15 to 23 of the judgment under appeal, the General Court examined EUIPO’s arguments relating to the subject matter of the opposition proceedings and of the action.
25      After stating, in paragraph 16 of that judgment, that the transition period ran from 1 February to 31 December 2020, it noted, in paragraph 17 of that judgment, that the subject matter of the dispute was, in the present case, the decision at issue, in which the Board of Appeal had ruled on the existence of the ground of opposition relied on by the applicant at first instance. Furthermore, in paragraph 17, the General Court held, in the light of its case-law, that the existence of a relative ground for opposition had to be assessed, at the latest, at the time when EUIPO gives a decision on the opposition. The General Court pointed out that, although, in a recent judgment, it had held that the earlier mark on which the opposition was based had to be valid not only at the time of publication of the application for registration of the mark applied for, but also at the time when EUIPO gave a decision on the opposition, there was a certain line of case-law to the contrary according to which, in order to assess whether there exists a relative ground for opposition, it was appropriate to look at the time of filing of the application for registration of an EU trade mark against which a notice of opposition had been filed on the basis of an earlier trade mark.
26      Thus, the General Court held, in paragraph 18 of the judgment under appeal, that there was no need to decide that question in the present case, given that the decision at issue had been taken during the transition period, that is to say, on a date on which, in the absence of provisions to the contrary in the Withdrawal Agreement, Regulation 2017/1001 continued to apply to earlier non-registered United Kingdom trade marks used in the course of trade, and that, therefore, the relevant earlier mark continued to receive the same protection as it would have received had the United Kingdom not withdrawn from the European Union.
27      Next, in paragraph 19 of that judgment, the General Court held that, in any event, for it to find that the litigation becomes devoid of purpose when, in the course of the proceedings, an event, such as the possible withdrawal of the Member State concerned from the European Union occurs, as a result of which an earlier trade mark could lose the status of a non-registered trade mark or of another sign used in the course of trade of more than local significance, would amount to taking into account matters arising after the adoption of the contested decision, which are not capable of affecting the merits of that decision. The General Court stated that, in order to assess the legality of the decisions of the Boards of Appeal of EUIPO, in principle it had to take into account the date of those decisions.
28      Lastly, in paragraph 20 of the judgment under appeal, the General Court concluded from the considerations set out in paragraphs 25 to 27 of the present judgment that, irrespective of the decisive moment to which reference was made, namely the moment of filing of the trade mark application or the moment of the decision of the Board of Appeal, the earlier trade mark relied on in support of the opposition was capable of forming the basis of the latter. In paragraphs 21 and 22 of the judgment under appeal, the General Court also found that that conclusion was not called into question by the judgments of 14 February 2019, Beko v EUIPO – Acer (ALTUS) (T‑162/18, EU:T:2019:87), and of 2 June 2021, Style & Taste v EUIPO – The Polo/Lauren Company (Representation of a polo player) (T‑169/19, EU:T:2021:318). In paragraph 23 of the judgment under appeal, it concluded that the United Kingdom’s withdrawal from the European Union had not rendered the dispute devoid of purpose.
29      In the second place, in paragraphs 24 to 28 of the judgment under appeal, the General Court rejected EUIPO’s line of argument regarding the alleged disappearance of Indo European Foods’ interest in bringing proceedings.
30      In that regard, first of all, in paragraph 25 of the judgment under appeal, the General Court set out the settled case-law according to which the interest in bringing proceedings must, in the light of the purpose of the action, exist at the stage of lodging the action and must continue until the delivery of the judicial decision, failing which there will be no need to adjudicate, which presupposes that the action must be liable, if successful, to procure an advantage to the party bringing it; the General Court also stated that, if that interest in bringing proceedings disappears in the course of proceedings, its decision on the merits cannot bring the applicant in question any benefit.
31      Next, in paragraph 26 of that judgment, the General Court rejected EUIPO’s argument that the applicant at first instance had no interest in bringing proceedings because the applicant for the EU trade mark at issue would be able to convert his application into national trade mark applications in all the Member States of the European Union, on the ground that that consideration applied, in principle, to any opposition proceedings.
32      Lastly, in paragraph 27 of that judgment, the General Court held that EUIPO’s argument that the Board of Appeal before which the dispute would be referred if the General Court were to annul the decision at issue would be obliged to dismiss the appeal in the absence of an earlier trade mark protected by the law of a Member State, proceeded from the incorrect premiss that the Board of Appeal would have to place itself, for the purposes of assessing the facts, at the time of its new decision. According to the General Court, in such a situation, it is for the Board of Appeal to take a decision on the same appeal by reference to the situation prevailing at the time when the appeal was brought before it, since the appeal becomes pending again at the same stage as it was before the decision at issue. The General Court therefore held that the case-law cited by EUIPO in support of its reasoning was irrelevant and that that case-law merely confirmed that, in any event, the mark on which the opposition is based cannot be required to continue to exist subsequent to the decision of the Board of Appeal.
33      In paragraph 28 of that judgment, the General Court concluded that the case had not become devoid of purpose and that Indo European Foods’ interest in bringing proceedings continued to exist. Consequently, it examined, in paragraphs 31 to 72 of the judgment under appeal, the claim for annulment of the decision at issue and the single plea in support of that claim. It held that that plea was well founded and that that decision therefore had to be annulled. However, after examining, in paragraphs 73 to 79 of that judgment, the application by Indo European Foods for the opposition be upheld, the General Court concluded that the conditions for the exercise of its power of alteration were not satisfied and rejected that application.
34      On the basis of those considerations, the General Court, first, annulled the decision at issue and, second, dismissed the action as to the remainder.
Procedure and the forms of order sought before the Court of Justice
35      By document lodged on the same date as the present appeal, EUIPO requested, pursuant to Article 170a(1) of the Rules of Procedure of the Court of Justice, that its appeal be allowed to proceed, in accordance with the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union.
36      By order of 7 April 2022, EUIPO v Indo European Foods (C‑801/21 P, EU:C:2022:295), the appeal was allowed to proceed.
37      By decision of the President of the Court of Justice of 16 June 2022, the Federal Republic of Germany was granted leave to intervene in support of the form of order sought by EUIPO.
38      By order of the President of the Court of Justice of 16 December 2022, EUIPO v Indo European Foods (C‑801/21 P, EU:C:2022:1049), Walsall Conduits Ltd’s application for leave to intervene in support of the form of order sought by the applicant at first instance was rejected.
39      By its appeal, EUIPO, supported by the Federal Republic of Germany, claims that the Court should:
–        set aside the judgment under appeal;
–        declare that there is no need to adjudicate on the action brought by the applicant at first instance against the decision at issue;
–        order the applicant at first instance to pay the costs of the present proceedings and of the proceedings before the General Court.
40      Indo European Foods contends that the Court should:
–        dismiss the appeal, and
–        order EUIPO to pay the costs of the present proceedings.
The appeal
41      In support of its appeal, EUIPO raises a single ground of appeal, alleging infringement of the requirement that the applicant retain an interest in bringing proceedings. That ground of appeal is divided into three parts; the first alleges an error of law, in that the General Court confused the assessment of the continuing interest in bringing proceedings with the review of the legality of the act at issue; the second alleges an error of law and an inadequate statement of reasons, in so far as the General Court did not assess, in concreto, whether Indo European Foods’ interest in bringing proceedings continued in the light of the specific features of EU trade mark law; and the third part alleges infringement of Article 72(6) of Regulation 2017/1001, in so far as the General Court required EUIPO not to take account of the legal effects of the end of the transition period provided for by the Withdrawal Agreement.
Admissibility
42      Indo European Foods disputes the admissibility of the appeal on two grounds. First, EUIPO has put forward, in its appeal, a new line of argument which it did not submit before the General Court. In particular, EUIPO has changed the line of argument which it had initially put forward before the General Court by claiming for the first time before the Court of Justice that, as regards the question of whether the purpose of the dispute still exists, there are divergent lines of case-law within the General Court. Second, the General Court’s finding that the action before it has not become devoid of purpose relates to matters of fact.
43      In the first place, it should be noted that, while it is true that the jurisdiction of the Court of Justice when examining an appeal is limited to the legal review of findings made in relation to the pleas and arguments debated before the General Court, an appellant is nevertheless entitled to lodge an appeal relying, before the Court of Justice, on grounds and arguments which arise from the judgment under appeal itself and which seek to criticise, in law, its correctness (see, to that effect, judgment of 2 February 2023, Spain and Others v Commission, C‑649/20 P, C‑658/20 P and C‑662/20 P, EU:C:2023:60, paragraphs 29 and 30 and the case-law cited).
44      In the present case, EUIPO submits that the General Court made errors of law in finding, in the judgment under appeal, that Indo European Foods’ action had not become devoid of purpose and that that party had retained its interest in obtaining annulment of the decision at issue notwithstanding the end of the transition period which occurred during the proceedings before the General Court; the latter, in that regard, relied on a line of case-law which is not consistent with the case-law of the Court of Justice regarding the requirement for an assessment in concreto of the continuing interest in bringing proceedings.
45      This appeal therefore calls into question the merits in law of the assessment, carried out by the General Court in the judgment under appeal, of whether the purpose of the dispute before it continues to exist and whether the interest of the applicant at first instance in bringing proceedings continues to exist. The question of whether there is no need to adjudicate on the ground that the purpose of the dispute and the interest in bringing proceedings no longer continue to exist must, in any event, be examined by the General Court of its own motion (see, to that effect, judgment of 6 September 2018, Bank Mellat v Council, C‑430/16 P, EU:C:2018:668, paragraph 49 and the case-law cited).
46      The first ground for inadmissibility relied on by Indo European Foods must therefore be rejected.
47      In the second place, it is sufficient to note that, although the assessment of those facts does not constitute, save where the facts have been distorted, a question of law which is subject, as such, to review by the Court of Justice in the context of an appeal, the latter, however, has jurisdiction under Article 256 TFEU to review the legal characterisation of those facts by the General Court and the legal conclusions which it has drawn from them (see, to that effect, judgments of 24 March 2022, PJ and PC v EUIPO, C‑529/18 P and C‑531/18 P, EU:C:2022:218, paragraph 55 and the case-law cited, and of 22 June 2023, Gmina Miasto Gdynia and Port Lotniczy Gdynia-Kosakowo v Commission, C‑163/22 P, EU:C:2023:515, paragraphs 79 and 99).
48      In the present case, EUIPO does not dispute the General Court’s assessment of the facts in paragraphs 17 to 28 of the judgment under appeal, but rather the General Court’s legal characterisation of those facts and the legal conclusions which it drew from them, namely that the purpose of the action and Indo European Foods’ interest in bringing proceedings continued to exist. The second ground for inadmissibility raised by Indo European Foods must, therefore, also be rejected.
49      It follows that the appeal is admissible.
Substance
50      As a preliminary point, it should be noted that the application for registration of the contested mark was filed on 14 June 2017, but that the opposition to registration of that mark was filed on 13 October 2017. Consequently, the present dispute is governed, first, by the substantive provisions of Regulation No 207/2009, in force on 14 June 2017, and, second, by the procedural provisions of Regulation 2017/1001 (see, by analogy, judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12 and the case-law cited).
The first part, alleging confusion between, on the one hand, the assessment of the continuing interest in bringing proceedings and, on the other hand, the review of the legality of the act at issue
–       Arguments of the parties
51      EUIPO, supported by the Federal Republic of Germany, submits that, in paragraphs 17 to 23 of the judgment under appeal, the General Court was wrong to hold that the purpose of the action continued to exist solely on the ground that the end of the transition period was not capable of affecting the legality of the decision at issue on the date on which that decision was adopted.
52      First, according to EUIPO, it follows from the case-law of the Court of Justice that the assessment of the requirement that the purpose of the action and the interest in bringing proceedings must continue to exist is a preliminary assessment that is distinct from the assessment which must be carried out in the context of the review of the legality of the act at issue. The assessment of that requirement involves taking into consideration the possible effects of the annulment of that act on the legal situation of the applicant, whereas the review of legality requires account to be taken of the factual and legal context of the dispute as it stood at the time when that act was adopted.
53      Thus, EUIPO submits, in essence, that, by drawing definitive conclusions concerning the continuing purpose of the dispute from the mere fact that an event is not capable of affecting the legality of the contested act, the General Court erred in law.
54      EUIPO adds that, to find that an action necessarily retains a purpose where the earlier right ceases to exist after the adoption of the contested decision deprives the requirement of a continuing interest in bringing proceedings of much of its effectiveness, since, in that scenario, that requirement is relevant only in situations in which the contested decision has lapsed as a result of the disappearance of that earlier right before the adoption of that decision. Such a consideration also conflicts with the case-law of the Court of Justice, according to which it is necessary to examine in concreto the parties’ actual personal interest in bringing proceedings.
55      Second, EUIPO argues that the conclusion set out in paragraph 19 of the judgment under appeal is based on a misinterpretation of the judgment of 8 October 2014, Fuchs v OHIM – Les Complices (Star within a circle) (T‑342/12, EU:T:2014:858). In the latter judgment, the General Court examined the applicant’s vested and present interest by ruling on the advantage which the applicant could have obtained from the annulment of the decision in question in the case which gave rise to that judgment, in relation to a declaration that there was no need to adjudicate, in a context in which the opposition had been upheld. Thus, according to EUIPO, that judgment rather confirms the General Court’s obligation to carry out an assessment in concreto of the advantage which annulment of the contested decision would be capable of procuring for the applicant.
56      Indo European Foods disputes the merits of that line of argument.
–       Findings of the Court
57      In the first place, it should be noted that, by the first part of its single ground of appeal, EUIPO submits, in essence, that, in paragraphs 17 to 23 of the judgment under appeal, the General Court confused the question of the continuing interest in bringing proceedings with the date on which the legality of a contested decision must be assessed. That line of argument is based on a misreading of that judgment. As follows from paragraphs 24 to 28 of the present judgment, the General Court confined itself, in those paragraphs, to examining the question of whether the purpose of the dispute continued to exist in the light of the end of the transition period which had occurred during the proceedings before it. Consequently, the General Court cannot, in those paragraphs, have made the confusion alleged against it by EUIPO. That line of argument must, therefore, be rejected as unfounded.
58      In the second place, in so far as, by the first part of the single ground of appeal, EUIPO seeks to criticise the General Court for having wrongly held, in paragraphs 17 to 23 of the judgment under appeal, that an action necessarily retains a purpose in the event that the earlier right ceases to exist after the adoption of the contested decision, it must be noted that, according to settled case-law, the purpose of the action must, like the interest in bringing proceedings, continue until the final decision, failing which there will be no need to adjudicate, which presupposes that the action or, as the case may be, the appeal must be liable, if successful, to procure an advantage for the party bringing it (see, to that effect, judgment of 4 September 2018, ClientEarth v Commission, C‑57/16 P, EU:C:2018:660, paragraph 43 and the case-law cited, and order of 30 April 2020, Cyprus v EUIPO, C‑608/18 P, C‑609/18 P and C‑767/18 P, EU:C:2020:347, paragraphs 27 and 28 and the case-law cited).
59      Furthermore, it should be noted that the Court of Justice has repeatedly held that, where a decision which is the subject of an action for annulment before the General Court had not been formally withdrawn, the General Court was justified in finding that the dispute retained its purpose (see, to that effect, judgments of 7 June 2007, Wunenburger v Commission, C‑362/05 P, EU:C:2007:322, paragraphs 48 and 49; of 4 September 2018, ClientEarth v Commission, C‑57/16 P, EU:C:2018:660, paragraph 45; and of 21 January 2021, Leino-Sandberg v Parliament, C‑761/18 P, EU:C:2021:52, paragraph 33). Lastly, again according to the case-law, such a finding is not called into question by the fact that the contested decision lapsed after the action was brought (see, to that effect, judgment of 7 June 2007, Wunenburger v Commission, C‑362/05 P, EU:C:2007:322, paragraph 47).
60      In the present case, it is apparent from paragraphs 17 to 23 of the judgment under appeal that the General Court held that Indo European Foods’ action had not lost its purpose on the basis, inter alia, of the finding that the subject matter of the dispute was the decision at issue, adopted on 2 April 2020, in which the Board of Appeal adjudicated on the existence of the ground of opposition relied on by Indo European Foods, and that that decision had been taken before the end of the transition period.
61      EUIPO does not dispute that, as may be inferred from paragraphs 17 to 23 of the judgment under appeal, on the date on which the General Court ruled, the decision at issue had not been formally withdrawn. Furthermore, EUIPO does not in any way claim that the end of the transition period had the effect of retroactively eliminating that decision.
62      It follows that, in so far as it relates to the General Court’s examination of whether the purpose of the dispute continues to exist, EUIPO’s line of argument is also unfounded, with the result that the first part of the single ground of appeal must, in its entirety, be rejected as unfounded.
The second part, alleging a failure to carry out an assessment in concreto of whether the applicant at first instance retained an interest in bringing proceedings
–       Arguments of the parties
63      By the second part of its single ground of appeal, EUIPO, supported, in essence, by the Federal Republic of Germany, complains that the General Court did not carry out an assessment in concreto
of whether Indo European Foods retained an interest in bringing proceedings.
64      In that regard, EUIPO criticises the General Court for having held that the decisive question in the present case was whether, at the time when the application for the contested mark was filed or when the decision at issue was adopted, the earlier mark was capable of forming the basis of the opposition, whereas that consideration did not make it possible to answer the question of whether, despite the legal consequences attaching to the end of the transition period, the registration of the mark applied for was still capable of adversely affecting the legal interests of Indo European Foods as protected by Regulation 2017/1001 and whether, therefore, its interest in bringing proceedings continued to exist.
65      Thus, first, the General Court failed to take into account, when assessing whether the applicant at first instance continued to have an interest in bringing proceedings, the specific nature of opposition proceedings and the essential function of a trade mark.
66      According to EUIPO, it is apparent from the case-law of the General Court that the essential purpose of opposition proceedings is to ensure that an earlier mark can retain its function of identifying origin, by providing for the possibility of refusing registration of a new mark that would be in conflict with that earlier mark because of a likelihood of confusion. No conflict can arise between an EU trade mark application and an earlier mark that had disappeared during the opposition proceedings, given that the mark applied for can be registered only after the end of the opposition proceedings.
67      Second, the General Court failed to take into account the principle of territoriality of an EU trade mark and the unitary character of that mark.
68      In that regard, EUIPO submits that, because of the suspensive effect of the action brought before the General Court, the decision at issue could not be implemented before the end of the transition period, with the result that the mark applied for will not be protected in the territory of the United Kingdom, even if it is ultimately registered. As regards the earlier mark concerned, it continues to enjoy full protection in the United Kingdom, without running the risk of being adversely affected as a result of the registration or use of the mark applied for in the territory of the European Union.
69      The action at first instance had already procured Indo European Foods a specific advantage by preventing the operation of the decision at issue before the end of the transition period, with the result that the objective of the opposition proceedings in question, namely to prevent a conflict with the mark applied for in the territory of the United Kingdom, had already been achieved. That party’s legal interests, as protected by Regulation 2017/1001, can therefore no longer be affected by a decision on the substance, whatever its outcome.
70      That position is, in EUIPO’s view, confirmed by the general scheme of Regulation 2017/1001. According to EUIPO, even if the action were upheld, the other party could, in any event, in view of Article 139 of Regulation 2017/1001, convert his application into national trade mark applications in all EU Member States as from 1 January 2021, retaining the priority of the initial application, and thus obtain protection of the trade mark applied for in the same territory as if the opposition brought against that application had been rejected. In paragraph 26 of the judgment under appeal, the General Court failed to take that specific aspect of the case into account by rejecting those considerations solely on the ground that they apply, in principle, to any opposition proceedings.
71      In the light of those factors, EUIPO submits that paragraphs 24 to 26 of the judgment under appeal are vitiated by three errors of law. First, the General Court infringed the rules governing the apportionment of the burden of proof as regards the requirement for a continuing interest in bringing proceedings. It merely rejected EUIPO’s line of argument, instead of examining Indo European Foods’ arguments that it retained an interest in bringing proceedings.
72      Second, by basing its assessment on whether, abstractly, the earlier right was, at a given time, capable of constituting the basis of the opposition, the General Court failed to carry out an assessment in concreto of the continuing interest in bringing proceedings in the light of the elements set out in paragraphs 65 to 70 of the present judgment.
73      Third, the judgment under appeal, in particular paragraph 26 thereof, does not explain why the General Court rejected EUIPO’s arguments regarding Indo European Foods’ lack of a continuing interest in bringing proceedings, which constitutes an infringement of the obligation to state reasons.
74      Indo European Foods disputes the merits of that line of argument.
–       Findings of the Court
75      As regards, in the first place, the alleged infringement of the rules governing the allocation of the burden of proof relating to the continuing interest in bringing proceedings, it is sufficient to note that it is true that the General Court formally linked its reasoning regarding Indo European Foods’ continuing interest in bringing proceedings to the examination of the arguments put forward by EUIPO. However, it can be inferred from the reasoning set out by the General Court in paragraphs 24 to 28 of the judgment under appeal that, irrespective of the relevance of the arguments put forward by EUIPO, the General Court duly verified whether Indo European Foods did actually have an interest in bringing proceedings and found that that was the case.
76      Furthermore, it follows from the settled case-law of the Court of Justice that the General Court is entitled to raise of its own motion and at any stage of the proceedings the objection that a party has no interest in maintaining its application, by reason of the occurrence of a fact subsequent to the date on which the document instituting the proceedings was lodged (see, to that effect, judgment of 18 October 2018, Gul Ahmed Textile Mills v Council, C‑100/17 P, EU:C:2018:842, paragraph 38 and the case-law cited), since a failure to satisfy that condition of admissibility is an absolute bar to proceedings (see, to that effect, judgment of 6 September 2018, Bank Mellat v Council, C‑430/16 P, EU:C:2018:668, paragraph 49 and the case-law cited). Furthermore, although the EU judicature must rule only on the heads of claim put forward by the parties, whose role it is to define the framework of the dispute, it cannot necessarily confine itself to the arguments put forward by the parties in support of their claims, or it might be forced, in some circumstances, to base its decisions on erroneous legal considerations (see, to that effect, judgment of 20 January 2021, Commission v Printeos, C‑301/19 P, EU:C:2021:39, paragraph 58 and the case-law cited).
77      In the light of those factors, the first limb of the present part must be rejected as unfounded.
78      As regards, in the second place, the line of argument that the General Court failed, in paragraphs 24 to 27 of the judgment under appeal, to take into account, when assessing Indo European Foods’ continuing interest in bringing proceedings, the specific nature of opposition proceedings, the essential function of a trade mark, the principle of territoriality and the unitary character of an EU trade mark, it should be noted that that line of argument is based on the premiss that, in the case of an action brought against a decision of a Board of Appeal rejecting an opposition, the continuance of an interest in bringing proceedings before the General Court must be assessed solely in the light of the legal interests protected by the applicable EU trade mark regulation and thus depends solely on whether there can still be a risk of conflict when the General Court rules.
79      That premiss, which presupposes limiting, from the outset, the factors which may be taken into consideration by the General Court in order to assess whether an applicant bringing an action under Article 72 of Regulation 2017/1001 continues to have an interest in bringing proceedings, as compared with an applicant bringing an action under Article 263 TFEU, is not supported either in the applicable legislation or in the case-law.
80      In that regard, it is apparent only from the case-law that the existence of an interest in bringing an action for annulment requires that, through its outcome, the action must be capable of procuring an advantage to the person which brought it (judgments of 17 September 2015, Mory and Others v Commission, C‑33/14 P, EU:C:2015:609, paragraph 55, and of 13 July 2023, D & A Pharma v EMA, C‑136/22 P, EU:C:2023:572, paragraph 43).
81      Thus, the question of whether, as regards a decision rejecting an opposition to the registration of an EU trade mark, the person who has filed such an opposition is likely to derive an advantage from an action brought before the General Court seeking annulment of that decision must be assessed in the light of the specific circumstances, in view of all the consequences that may follow from a possible finding of unlawfulness vitiating that decision and in view of the nature of the damage allegedly suffered (see, to that effect, judgment of 28 May 2013, Abdulrahim v Council and Commission, C‑239/12 P, EU:C:2013:331, paragraph 65).
82      In the present case, first, it is apparent from the examination of the first part of the single ground of the present appeal that the General Court was justified in finding that the purpose of the action brought by Indo European Foods had not disappeared. Second, it follows, in essence, from paragraphs 10 to 12 of the judgment under appeal that the decision at issue upheld the rejection of the opposition brought by that party on the basis of the finding that the conditions for the application of Article 8(4) of Regulation 2017/1001 were not satisfied, with the result that Indo European Foods could not, according to that decision, benefit, for the earlier mark in question, from the protection provided for by that provision. Therefore, since it is precisely the infringement of that provision by the Board of Appeal which Indo European Foods invoked in support of its action before the General Court and since that decision is detrimental, in particular, to the economic interests of Indo European Foods, the annulment of that decision would be capable of procuring an advantage for it.
83      Lastly, as regards the argument that, in paragraph 26 of the judgment under appeal, the General Court failed to take into account the fact that, in accordance with Article 139 of Regulation 2017/1001, the other party before the Board of Appeal could, if the appeal before that body were successful, convert his trade mark application into national trade mark applications in all the Member States as from the end of the transition period, suffice it to note that, in the light of what has been stated above, that fact has no bearing on Indo European Foods’ interest in bringing proceedings against the decision at issue.
84      It follows that the second limb of the present part, which is based on an incorrect premiss, must also be rejected as unfounded.
85      As regards, in the third place, the alleged failure to state reasons in the judgment under appeal as regards the factors which led the General Court to reject EUIPO’s arguments concerning Indo European Foods’ lack of a continuing interest in bringing proceedings, it should be noted that, according to settled case-law, the obligation to state reasons does not require the General Court to provide an account that follows exhaustively and one by one all the arguments articulated by the parties to the case, since the reasoning may be implicit, on condition that it enables the persons concerned to understand the grounds of the General Court’s judgment and provides the Court of Justice with sufficient information to exercise its powers of review on appeal (judgment of 9 March 2023, PlasticsEurope v ECHA, C‑119/21 P, EU:C:2023:180, paragraph 144 and the case-law cited).
86      As the Advocate General observed, in essence, in point 60 of his Opinion, it is clear, albeit implicitly, from paragraphs 25 to 27 of the judgment under appeal that the General Court found that the arguments put forward by EUIPO concerning Indo European Foods’ interest in bringing proceedings were unfounded since that interest in bringing proceedings existed at the time when the action was brought and had not disappeared during the proceedings before the General Court.
87      That third limb of the present part is, therefore, unfounded, with the result that the second part of the single ground of appeal must be rejected as unfounded.
The third part, alleging infringement of Article 72(6) of Regulation 2017/1001
–       Arguments of the parties
88      EUIPO, supported, in essence, by the Federal Republic of Germany, submits that paragraph 27 of the judgment under appeal requires EUIPO, in breach of Article 72(6) of Regulation 2017/1001, not to examine whether the applicant at first instance retains an interest in obtaining annulment of the decision of the Opposition Division, and requires it to disregard the effects of Article 50(3) TEU and Articles 126 and 127 of the Withdrawal Agreement. Thus, the adoption of the necessary measures to comply with the obligation established in paragraph 27 of the judgment under appeal would require EUIPO to examine, or reject, the application for registration in question, in breach of those provisions.
89      In particular, EUIPO submits that the obligation referred to in paragraph 27 of the judgment under appeal requires it to examine the relative ground for refusal in question in respect of a territory in which the mark applied for cannot enjoy any protection, which flagrantly contradicts the logic and general scheme of the EU trade mark system. Regulation 2017/1001 does not provide any legal basis authorising such a lack of connection between the relevant territory for the examination of that relative ground for refusal and the territory in which protection will be granted. That obligation therefore also infringes the requirement for a continuing interest in bringing proceedings and infringes Article 1(2) and Article 8(4) of Regulation 2017/1001.
90      Indo European Foods disputes the merits of that line of argument.
–       Findings of the Court
91      Under Article 72(6) of Regulation 2017/1001, EUIPO is to take the necessary measures to comply with the judgment of the General Court or, in the event of an appeal against that judgment, the Court of Justice.
92      According to settled case-law relating to Article 266 TFEU, which applies mutatis mutandis to Article 72(6) of Regulation 2017/1001, the wording of which is similar, the institution, body, office or agency whose act has been declared void is required, in order to comply with a judgment annulling an act and to comply with it fully, to have regard not only to the operative part of that judgment but also to the grounds which constitute the essential basis for it, in so far as they are necessary to determine the exact meaning of what is stated in that operative part (judgment of 22 September 2022, IMG v Commission, C‑619/20 P and C‑620/20 P, EU:C:2022:722, paragraph 101 and the case-law cited).
93      However, it follows from Article 72(6) that it is not for the General Court to issue orders to EUIPO (see, to that effect, order of 29 June 2006, Creative Technology v OHIM, C‑314/05 P, EU:C:2006:441, paragraphs 40 to 42, and, by analogy, judgment of 2 October 2014, Strack v Commission, C‑127/13 P, EU:C:2014:2250, paragraph 145 and the case-law cited).
94      In the present case, it is sufficient to note that paragraph 27 of the judgment under appeal is merely a response of the General Court to EUIPO’s argument that Indo European Foods lost, during the proceedings before the General Court, its interest in obtaining the annulment of the decision at issue on the basis that, if the latter decision were to be annulled, the Board of Appeal would be required to dismiss the appeal that had become pending before it again, due to the absence of an earlier mark protected by the law of a Member State.
95      Accordingly, that paragraph confines itself, in essence, to finding that Indo European Foods has an interest in bringing proceedings before the General Court and therefore constitutes the essential support only for the finding that such an interest in bringing proceedings exists. Thus, it cannot be held that, by that paragraph, the General Court, in breach of the case-law referred to in paragraph 93 of the present judgment, imposed on EUIPO the alleged obligations which EUIPO identifies in the present part of its appeal.
96      It follows that the third part of the single ground of appeal, which is based on a misreading of paragraph 27 of the judgment under appeal, must be rejected as unfounded as must, consequently, that ground of appeal. The appeal must, therefore, be dismissed, in its entirety, as unfounded.
Costs
97      Under Article 184(2) of the Rules of Procedure of the Court of Justice, where the appeal is unfounded, the Court is to make a decision as to the costs.
98      According to Article 138(1) of those rules, applicable to appeal proceedings by virtue of Article 184(1) of those rules, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
99      Since Indo European Foods has applied for costs and EUIPO has been unsuccessful, EUIPO must be ordered to pay the costs of the appeal.
100    In accordance with Article 140(1) of those Rules of Procedure, applicable to appeal proceedings by virtue of Article 184(1) of those rules, the Member States and institutions which have intervened in the proceedings are to bear their own costs.
101    Consequently, the Federal Republic of Germany, which has intervened in the present appeal, must bear its own costs.
On those grounds, the Court (Fifth Chamber) hereby:
1.      Dismisses the appeal;
2.      Orders the European Union Intellectual Property Office (EUIPO) to pay the costs;
3.      Orders the Federal Republic of Germany to bear its own costs.
Regan
Csehi
Ilešič
Jarukaitis
Gratsias
Delivered in open court in Luxembourg on 20 June 2024.
A. Calot Escobar
E. Regan
Registrar
President of the Chamber
*      Language of the case: English.