ORDER OF THE COURT (Eighth Chamber)
10 July 2019 (*)
(Appeal — Article 181 of the Rules of Procedure of the Court — EU trade mark — Opposition proceedings — Application for registration of the figurative mark containing the word element ‘Cheapflights’ — Rejection of the application for registration — Withdrawal of the appeal before the Board of Appeal — Effect on incidental submissions)
In Case C–170/19 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 25 February 2019,
CheapFlights International Ltd, established in Speenoge (Ireland), represented by A. von Mühlendahl and H. Hartwig, Rechtsanwälte,
appellant,
the other party to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
THE COURT (Eighth Chamber),
composed of F. Biltgen, President of the Chamber, C.G. Fernlund (Rapporteur) and L.S. Rossi, Judges,
Advocate General: M. Campos Sánchez-Bordona,
Registrar: A. Calot Escobar,
having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court,
makes the following
Order
1        By its appeal, CheapFlights International Ltd (‘CheapFlights’) asks the Court of Justice to set aside the order of the General Court of the European Union of 11 December 2018, CheapFlights International v EUIPO — Momondo Group (Cheapflights) (T‑565/17, ‘the order under appeal’, EU:T:2018:923) by which the General Court (i) found that there was no longer any need to adjudicate on the action in so far as it was 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) concerning opposition proceedings between CheapFlights and Momondo Group Ltd (‘the decision at issue’), with regard to the goods and services in Classes 9, 16, 35 and 42 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, in respect of which the Opposition Division of EUIPO had rejected the opposition filed by CheapFlights; and (ii) dismissed the action as inadmissible as to the remainder.
2        In support of its appeal, the appellant raises a single ground of appeal, alleging infringement 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) in conjunction with Article 71(3) 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).
The appeal
3        Pursuant to Article 181 of the Rules of Procedure of the Court, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.
4        That provision must be applied in the present case.
5        On 15 May 2019, the Advocate General took the following position:
‘2.      It is apparent from the order under appeal that CheapFlights had filed notice of opposition to registration of the mark Cheapflights applied for by Momondo Group for certain goods and services in Classes 9, 16, 35, 38, 39 and 41 to 44 of the Nice Agreement. The Opposition Division had rejected that opposition for the goods and services in Classes 9, 16 and 35 and for some of the services in Class 42 of that agreement. By contrast, it had upheld that opposition for other services in Class 42 and for those in Classes 38, 39, 41, 43 and 44, which was contested by Momondo Group which filed an appeal, on 21 August 2007, before the Board of Appeal. In the context of that appeal, CheapFlights put forward, in its response, incidental submissions as provided for in Article 8(3) of Regulation No 216/96, seeking annulment of the decision of the Opposition Division, in particular in so far as it had rejected the opposition in part.
3.      Following the decision of 31 August 2009 of the Fourth Board of Appeal of EUIPO by which it upheld that appeal, a decision which was annulled by the General Court by its judgment of 5 May 2011, CheapFlights International v OHIM — Cheapflights (Cheapflights) (T‑460/09, not published, EU:T:2011:198) in which it was held that there was a likelihood of confusion, the Presidium of the Boards of Appeal of OHIM, by the decision at issue, remitted the case to the Grand Board of Appeal for further decision.
4.      After having referred the application for registration of the mark Cheapflights to the EUIPO examiner for examination in the light of the absolute grounds for refusal, the Grand Board of Appeal concluded that the opposition and the appeal proceedings had become devoid of purpose and were therefore to be closed. The Grand Board of Appeal came to that conclusion having inferred from the examiner’s re-examination of the absolute grounds for refusal that the application for registration of the trade mark Cheapflights had been rejected for all of the services in respect of which the Opposition Division had upheld the opposition, namely some of the services in Class 42 and those in Classes 38, 39, 41, 43 and 44 of the Nice Agreement.
5.      CheapFlights therefore brought an action before the General Court seeking annulment of the decision at issue. By the order under appeal, the General Court held, first, that there was no longer any need to adjudicate on that action in so far as it was directed against the closure of the appeal proceedings by EUIPO with regard to the goods and services in Classes 9, 16, 35 and 42 of the Nice Agreement and in respect of which the Opposition Division had rejected CheapFlights’ opposition. In that regard, it held, in particular, that, by reason of the withdrawal by Momondo Group of its appeal of 21 August 2007, CheapFlights’ action was no longer capable of procuring, by its outcome, any advantage for CheapFlights which therefore no longer had any interest in bringing proceedings. Secondly, the General Court declared that action inadmissible as to the remainder.
6.      In support of its appeal, CheapFlights puts forward a single ground of appeal, alleging infringement by the General Court, in paragraphs 62 to 64 of the order under appeal, of Article 8(3) of Regulation No 216/96, read in conjunction with Article 71(3) of Regulation 2017/1001.
7.      CheapFlights maintains, in essence, that the General Court erred in law by considering that Momondo Group could withdraw its appeal before EUIPO even though the General Court was dealing with an action for annulment in the case which gave rise to the order under appeal. However, it should be noted that the appellant itself stated that Momondo Group’s appeal before EUIPO, on the one hand, and its own incidental submissions, on the other hand, had different objectives, so that the latter constituted an independent appeal, different from that brought by Momondo Group. Indeed, Momondo Group’s main appeal concerned the goods and services in Classes 38, 39 and 41 and, in part, those in Classes 42, 43 and 44 of the Nice Agreement, whereas the action brought by the appellant related to goods and services in Classes 9, 16, and 35, and, in part, to those in Class 42 of that agreement.
8.      On the basis of that premiss, CheapFlights submits that Momondo Group could have withdrawn its appeal filed before EUIPO on 21 August 2007 at any time, even before the Grand Board of Appeal adopted the decision at issue, dated 1 June 2017, by which it concluded that the opposition proceedings and the appeal proceedings had become devoid of purpose and were therefore to be closed. In that regard, the appellant submits that Momondo Group could also have withdrawn its appeal within 2 months of the notification of that decision, pursuant to Article 71(3) of Regulation 2017/1001, which provides that the decisions of the Boards of Appeal are to take effect only as from the date of expiry of the period referred to in Article 72(5) of that regulation 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.
9.      Unlike CheapFlights, Momondo Group did not bring an action before the General Court against the decision at issue, with the effect, according to the appellant, that its own action was not such as to suspend the appeal brought by Momondo Group before EUIPO, since Momondo Group’s appeal was directed against goods and services other than those covered by CheapFlights’ own action. In so far as there were two different actions, Momondo Group, according to the appellant, no longer had a right to intervene, in any way, in the proceedings before the General Court, given that the decision at issue had become final in respect of Momondo Group. Consequently, CheapFlights claims that the General Court erred in law when it considered that CheapFlights’ action for annulment against the decision at issue had suspended the application of that decision so that it was still possible for Momondo Group to withdraw its appeal before the Board of Appeal.
10.      For the reasons stated below, I propose that the Court should, in accordance with Article 181 of the Rules of Procedure, dismiss the appeal as manifestly unfounded.
11.      First of all, it should be borne in mind that it is settled case-law that a withdrawal of the opposition filed against an application for registration has the effect of putting an end to the dispute concerning the partial rejection of that application (order of 18 September 2012, Omnicare v OHIM, C‑587/11 P, not published, EU:C:2012:575, paragraph 11 and the case-law cited; see, by analogy, as regards invalidity proceedings, order of the President of the Court of Justice of 21 July 2016, Louis Vuitton Malletier v EUIPO, C‑363/15 P and C‑364/15 P, not published, EU:C:2016:595, paragraph 7). That case-law must therefore be applied in the present case.
12.      In the first place, it should be pointed out, as is apparent from the case file and, in particular, paragraph 49 of the order under appeal, that the appellant set out incidental submissions in its response during the initial proceedings before the Board of Appeal under Article 8(3) of Regulation No 216/96. The meaning of that provision is perfectly clear in that it enables, in inter partes proceedings, such as those at issue here, the defendant, in its response, to seek a decision annulling or altering the contested decision on a point not raised in the appeal, while providing that, should the appellant before the Board of Appeal discontinue the proceedings, those submissions would necessarily cease to have effect.
13.      In the second place, it should be noted that, in the light of Article 67 of Regulation 2017/1001, any party to proceedings adversely affected by a decision may appeal. Consequently, in the system of legal remedies laid down by that regulation, a party, like CheapFlights, whose opposition has been rejected in part, can file an appeal against the decision of partial rejection. In such a case, the appeal will be independent in relation to any other appeal filed by another party to the proceedings that culminated in the contested decision. Thus, discontinuance of the proceedings by the party who brought the action before the Board of Appeal will not result in the appeal lodged by another party to the proceedings becoming devoid of purpose.
14.      It follows from the foregoing that, where the claims of a party to opposition proceedings, such as CheapFlights, have been rejected in part, that party can either file an (independent) appeal against the decision of the Opposition Division, in accordance with Articles 66 and 67 of Regulation 2017/1001, or make incidental submissions seeking annulment or alteration of that decision on a point not raised in that appeal, as provided for in Article 8(3) of Regulation No 216/96.
15.      It is apparent from that system of legal remedies that it is for the respondent in appeal proceedings to determine whether it favours an independent legal remedy or will merely make incidental submissions. In the latter case, its capacity to take part in legal proceedings is inextricably linked to the intentions of the party who brought the action before the Board of Appeal, in the event of discontinuance of the proceedings. By contrast, contrary to what the appellant appears to argue, it cannot be inferred, either from the provisions mentioned above or those of the regulations cited, that the independent or incidental nature of an action brought or presented by a party during proceedings is to be inferred from the content of the submissions presented by that party.
16.      It follows that the appellant’s argument that the incidental submissions which it presented to the Board of Appeal in response to the appeal lodged by Momondo Group constituted, by their very nature, an independent appeal must be dismissed as manifestly unfounded.
17.      In those circumstances, the action brought before the General Court by CheapFlights against the decision at issue was necessarily linked, procedurally, to Momondo Group’s appeal against the decision of the Opposition Division, in so far as the Grand Board of Appeal had ruled on the Opposition Division’s decision as is apparent from paragraphs 6 and 14 of the decision at issue. Furthermore, under Article 71(3) of Regulation 2017/1001, an appeal, brought within the prescribed periods, leads to the suspension of the taking effect of decisions of the Board of Appeal.
18.      It must therefore be held, in the light of the case-law referred to in paragraph 11 of the present position, that the General Court did not err in law in finding, in paragraphs 62 to 64 of the order under appeal, that it was possible for Momondo Group to withdraw its appeal of 21 August 2007 before the Board of Appeal and, in paragraph 66 of that order, that such a withdrawal meant, as a result, that the Board of Appeal was no longer required to rule on the incidental submissions presented by CheapFlights. Moreover, it should be observed that, since Article 8(3) of Regulation No 216/96 does not vary the effects of discontinuance depending on the underlying reason for it, that article does not have any bearing on the outcome of the appeal.
19.      The General Court was therefore right to conclude, in paragraph 69 of the order under appeal, that the action brought before it by CheapFlights had become devoid of purpose and that there was therefore no longer any need to adjudicate on it. As a result, the General Court did not commit any error of law, contrary to what was alleged by the appellant.
20.      In the light of all of the foregoing considerations, it is necessary to reject the single ground of appeal and, consequently, the appeal in its entirety as being manifestly unfounded, and to order the appellant to pay the costs, in accordance with Article 137 and Article 184(1) of the Rules of Procedure.’
6        For the same reasons as those given by the Advocate General, the appeal must be dismissed as being manifestly unfounded.
Costs
7        Under Article 137 of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. In this case, since the present order has been made before the appeal has been served on the respondent, and therefore before the latter could have incurred costs, CheapFlights must be ordered to bear its own costs.
On those grounds, the Court (Eighth Chamber) hereby orders:
1.      The appeal is dismissed as being manifestly unfounded.
2.      CheapFlights International Ltd shall bear its own costs.
Luxembourg, 10 July 2019.
A. Calot Escobar
F. Biltgen
Registrar
President of the Eighth Chamber
*      Language of the case: English.