ORDER OF THE COURT (Seventh Chamber)

15 January 2019 ( )

(Appeal — Article 181 of the Rules of Procedure of the Court — EU trade mark — Invalidity proceedings — Three-dimensional mark in the shape of a part of a prosthetic hip — Mark consisting in a shade of pink — Withdrawal of applications for declarations of invalidity and closure of the invalidity proceedings — Action of the proprietor of the mark seeking the annulment of decisions closing proceedings — Action declared to be inadmissible by the Board of Appeal)

In Case C‑463/18 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 13 July 2018,

CeramTec GmbH, established in Plochingen (Germany), represented by A. Renck, Rechtsanwalt,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

C5 Medical Werks, established in Grand Junction (United States),

intervener at first instance,

THE COURT (Seventh Chamber),

composed of T. von Danwitz, President of the Chamber, M. Berger (Rapporteur) and C. Vajda, Judges,

Advocate General: G. Hogan,

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, CeramTec GmbH asks the Court to set aside the judgment of the General Court of the European Union of 3 May 2018, CeramTec v EUIPO — C5 Medical Werks (Shape of a part of a prosthetic hip and others) (T‑193/17 to T‑195/17, ‘the judgment under appeal’, EU:T:2018:248), by which the General Court dismissed its actions for annulment of the three decisions of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 February 2017 (Cases R 929/2016–4, R 928/2016–4 and R 930/2016–4) relating to invalidity proceedings between C5 Medical Werks and CeramTec (‘the contested decisions’).

2 In support of its appeal, the appellant raises two grounds of appeal, the first alleging infringement of Article 59 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) and the second alleging infringement of Article 36 of the Statute of the Court of Justice of the European Union.

The appeal

3 Pursuant to Article 181 of its Rules of Procedure, 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 It is appropriate to apply that provision in the present case.

5 On 12 November 2018, the Advocate General took the following position:

‘1. For the reasons set out below, I propose that the Court should, in accordance with Article 181 of the Rules of Procedure, dismiss the appeal in the present case as being, in part, manifestly inadmissible and, in part, manifestly unfounded and order the appellant to pay the costs, in accordance with Article 137 and 184(1) of the Rules of Procedure.

2. In support of its appeal, the appellant relies on two grounds, alleging, respectively, infringement of Article 59 of Regulation No 207/2009 and infringement of Article 36 of the Statute of the Court of Justice of the European Union.

The first ground of appeal, alleging infringement of Article 59 of Regulation No 207/2009

3. The first ground of appeal is divided into three parts.

The first part, alleging incorrect application of the criterion for assessing whether a decision adversely affected a party

4. The appellant considers that, in paragraphs 23 and 29 of the judgment under appeal, the General Court erred in law in its assessment of the concept of a ‘decision adversely affecting a party’ within the meaning of Article 59 of Regulation No 207/2009 which provides that ‘any party to proceedings adversely affected by a decision may appeal’. The appellant claims that the General Court was not entitled to base its assessment as to whether the decision adversely affected a party solely on the status, in EUIPO’s register, of the three EU trade marks of the appellant in respect of which C5 Medical Werks had filed, before EUIPO, applications for declarations of invalidity (‘the contested marks’). According to the appellant, the assessment of the concept of a ‘decision adversely affecting a party’ should have been based on whether or not the Cancellation Division of EUIPO allowed its claim requesting that the ‘request for a declaration … be rejected’. In that regard, the appellant maintains that the Cancellation Division closed the proceedings without deciding on that claim.

5. The appellant also submits that even if legal consequences for the status of the contested marks in EUIPO’s register were a requirement for establishing that a decision adversely affected a party, that requirement would have been fulfilled by virtue of Article 57(6) of Regulation No 207/2009 which provides that ‘a record of [EUIPO’s] decision on the application ... for a declaration of invalidity shall be entered in the Register once it has become final’. The appellant considers that, in accordance with Article 56(3) of Regulation No 207/2009, that entry establishes the inadmissibility of any further applications for a declaration of invalidity filed by the same party.

6. I consider that the arguments relied on in support of the first part of the first ground of appeal cannot succeed.

7. On 21 April 2016, following the withdrawal by C5 Medical Werks of its applications, before EUIPO, for declarations of invalidity in respect of the contested marks, the Cancellation Division of EUIPO closed the cases and ordered C5 Medical Werks to pay the costs. By the contested decisions, the Fourth Board of Appeal dismissed the three actions brought by the appellant against the decisions of the Cancellation Division on the basis that those decisions had no negative consequences on the status of the contested marks and did not adversely affect the appellant.

8. I consider that the General Court did not err in law in finding, in paragraphs 23 and 29 of the judgment under appeal, that the Board of Appeal had correctly held that the decisions of the Cancellation Division closing the proceedings for declarations of invalidity had not adversely affected the appellant as required by Article 59 of Regulation No 207/2009, since the contested marks remained on EUIPO’s register.

9. In my view, a procedure relating to an application for a declaration of invalidity pursuant to Article 56(1) of Regulation No 207/2009 may not proceed following a withdrawal of the relevant application by the party that filed it. Since the appellant’s claims requesting that the applications for declarations of invalidity be rejected were dependent on continuance of the invalidity procedures initiated by C5 Medical Werks, the General Court was correct in holding, in paragraph 23 of the judgment under appeal, that the Board of Appeal was fully entitled to find that, as a result of the withdrawal of the applications for declarations of invalidity, the cases had become devoid of purpose and hence it was no longer necessary to expressly dismiss those applications.

10. I also consider that, contrary to the appellant’s submission, the General Court’s finding, in paragraph 32 of the judgment under appeal, that annulment of the decisions of the Cancellation Division of 21 April 2016 closing the case would not necessarily have led to a favourable decision being made on the merits of the validity of the contested marks, is correct. The General Court thus correctly considered that the appellant sought to rely on a future and uncertain interest.

11. In that regard, it should be recalled that an applicant’s interest in bringing proceedings must, in the light of the purpose of the action, exist at the stage of lodging the action, failing which the action will be inadmissible (judgment of 26 February 2015, Planet v Commission, C‑564/13 P, EU:C:2015:124, paragraph 31 and the case-law cited). If the interest which an applicant claims concerns a future legal situation, it must demonstrate that the prejudice to that situation is already certain. It cannot concern a future and uncertain or hypothetical situation (judgments of 20 June 2013, Cañas v Commission, C‑269/12 P, not published, EU:C:2013:415, paragraph 16 and of 23 November 2017, Bionorica and Diapharm v Commission, C‑596/15 P and C‑597/15 P, EU:C:2017:886, paragraph 84).

12. Consequently, the first part of the first ground of appeal should, in my opinion, be rejected as manifestly unfounded.

The second part, alleging incorrect application of the concept of a ‘decision adversely affecting a party’ by requiring, in addition, an ‘interest in seeing the contested measure annulled’

13. The appellant claims that the General Court erred in law, in paragraph 22 of the judgment under appeal, by requiring, inter alia, that the appellant have an interest in seeing the contested measure annulled. According to the appellant, the ‘interest to see the contested measure annulled’ is to be examined only if a party’s claims have been upheld. However, as the appellant’s claims were not upheld by the Cancellation Division, the requirement of ‘interest to see the contested measure annulled’ had no bearing in those circumstances.

14. That argument should be rejected as manifestly unfounded. In paragraph 22 of the judgment under appeal, the General Court cited settled case-law pursuant to which an action for annulment brought by a natural or legal person is admissible only in so far as that person has an interest in having the contested act annulled. Such an interest requires that the annulment of that act must be capable, in itself, of having legal consequences and that the action may therefore, through its outcome, procure an advantage to the party which brought it (judgment of 27 February 2014, Stichting Woonlinie and Others v Commission, C‑133/12 P, EU:C:2014:105, paragraph 54).

15. The appellant claims that pursuant to the case-law relied upon by the General Court in paragraph 31 of the judgment under appeal, the interest to bring an action for annulment may also follow from a hypothetical outcome in the future.

16. That argument should be rejected as manifestly unfounded. It is clear from the case-law cited in paragraph 11 above that the interest to bring an action for annulment cannot follow from a hypothetical outcome in the future.

17. The appellant also claims that even if an interest in the annulment of the judgment under appeal were a requirement, the appellant has such an interest by virtue of Article 56(3) of Regulation No 207/2009 and the general principle of the right to judicial review.

18. I consider that that argument should be rejected as manifestly unfounded.

19. From that perspective, as the General Court rightly noted in paragraph 33 of the judgment under appeal, the question whether a decision adversely affects a party must be evaluated with respect to the instant proceedings and not in comparison with, or in conjunction with, other proceedings. In that regard, the General Court rightly found, in paragraph 32 of the judgment under appeal, that the annulment of the decisions of the Cancellation Division of 21 April 2016 would not necessarily have led to a favourable decision being made on the merits of the validity of the contested marks. Consequently, the interest on which the appellant sought to rely was future and uncertain.

20. The appellant claims that, in paragraphs 31 and 32 of the judgment under appeal, the General Court incorrectly applied the law and distorted the facts in finding that the appellant did not have a vested and present interest in the continuation of the procedures in so far as it regarded the national parallel proceedings as a future and uncertain situation. The General Court failed to take into account that the parallel proceedings before the national court were already taking place at the time the appeal was filed.

21. That argument should be rejected as manifestly unfounded.

22. Under the second subparagraph of Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal is limited to points of law. The General Court thus has exclusive jurisdiction to assess the evidence. The appraisal of the facts and the assessment of the evidence thus do not, save where the facts or evidence have been distorted, constitute a point of law which is subject, as such, to review by the Court ofJustice on appeal (order of 21 November 2013, Kuwait Petroleum and Others v Commission, C‑581/12 P, not published, EU:C:2013:772, paragraph 28). It should also be noted that such distortion must be obvious from the documents before the Court, without there being any need to carry out a new assessment of the facts and the evidence (judgment of 21 September 2006, JCB Service v Commission, C‑167/04 P, EU:C:2006:594, paragraph 108).

23. At paragraph 31 of the judgment under appeal, the General Court cited settled case-law under which an applicant’s interest in the annulment of the contested act must be vested and present and, where the interest which an applicant claims concerns a future legal situation, the applicant must demonstrate that the prejudice to that future situation is already certain. An applicant cannot, accordingly, rely on future and presently uncertain and hypothetical situations to justify its interest in applying for annulment of the contested act.

24. The General Court found, in paragraph 32 of the judgment under appeal, that the annulment of the decisions of the Cancellation Division of 21 April 2016 would not necessarily have led to a favourable decision being made on the merits of the validity of the contested marks and that consequently the interest on which the appellant sought to rely was future and uncertain.

25. There is absolutely no indication from paragraph 32 of the judgment under appeal that the General Court failed to take into account that parallel proceedings were pending before a national court. Indeed, in paragraph 33 of that judgment the General Court specifically referred to the existence of other proceedings before EU trade mark courts and considered that they had no bearing on the conditions for the admissibility of the action before the Board of Appeal.

26. Consequently, the second part of the first ground of appeal should, in my opinion, be rejected as manifestly unfounded.

The third part, alleging error in law in so far as the unilateral withdrawal of an application for a declaration of invalidity is legally void and constitutes a decision adversely affecting a party

27. The appellant submits, in paragraphs 132 to 140 of its appeal, that the General Court erred by failing to come to the conclusion that closure of the proceedings by the Cancellation Division of EUIPO constituted a decision that adversely affected it.

28. According to the settled case-law of the Court, it follows from the second subparagraph of Article 256(1) TFEU, the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union and Article 168(1)(d) of the Rules of Procedure of the Court of Justice that an appeal must indicate precisely the contested elements of the judgment which the appellant seeks to have set aside and also the legal arguments specifically advanced in support of the appeal. In that regard, Article 169(2) of the Rules of Procedure of the Court of Justice specifies that the pleas in law and legal arguments relied on must identify precisely those points in the grounds of the decision of the General Court which are contested (judgment of 28 July 2016, Tomana and Others v Council and Commission (C‑330/15 P, not published, EU:C:2016:601, paragraph 34 and the case-law cited).

29. The appellant has not identified in paragraphs 132 to 140 of its appeal the precise paragraphs of the judgment under appeal that may be vitiated by the error of law alleged in the third part of the first ground of appeal.

30. Consequently, in the light of the case-law referred to in paragraph 28 of the present position, the third part of the first ground of appeal should, in my opinion, be rejected as manifestly inadmissible.

31. It follows from the foregoing considerations that the first ground of appeal should, in my view, be rejected as being, in part, manifestly unfounded and, in part, manifestly inadmissible.

The second ground of appeal, alleging inadequate statement of reasons

32. The appellant submits that the General Court has erred in law by failing to respect its obligation to state the reasons on which the judgment under appeal is based as required under Article 36 of the Statute of the Court of Justice of the European Union.

33. It is clear from the settled case-law of the Court that the obligation to state reasons does not require the General Court to provide an account which follows exhaustively and one by one all the arguments put forward by the parties to the case and that the reasoning may therefore be implicit on condition that it enables the persons concerned to know why the General Court has not upheld their arguments and provides the Court of Justice with sufficient material for it to exercise its power of review (judgment of 20 May 2010, Gogos v Commission (C‑583/08 P, EU:C:2010:287, paragraph 29 and the case-law cited).

34. First, the appellant claims that the General Court, in paragraph 21 of the judgment under appeal, failed to provide a definition of and elaborate on the scope of the criterion relating to a decision adversely affecting a party as provided in the first sentence of Article 59 of Regulation No 207/2009.

35. In paragraphs 22 and 31 of the judgment under appeal, the General Court cited the settled case-law of the Court regarding an interest in bringing proceedings. The General Court thus recalled that an applicant must have an interest in seeing the contested measure annulled and that such an interest can be present only if the annulment of the measure is capable of having legal consequences. The General Court also stated that the interest in the annulment of the contested act must be vested and present and that an applicant may not rely on future and uncertain situations to justify its interest in applying for that annulment.

36. Having outlined the requirement for an interest in bringing proceedings contained in the case-law of the Court, the General Court carried out a thorough examination of the arguments of the appellant to the effect that it was adversely affected by the contested decisions before finally rejecting them. The General Court found in particular that the contested decisions had not adversely affected the appellant, since the Board of Appeal had correctly held that the decisions of the Cancellation Division closing the proceedings for declarations of invalidity had not adversely affected the appellant, since the contested marks remained on EUIPO’s register (see paragraph 23 of the judgment under appeal). The General Court then examined the appellant’s argument in relation to the existence of ‘other adverse effects’ resulting from the absence of a final decision on the merits and rejected any parallel between the situation relating to the surrender of trade marks, examined in judgment of 24 March 2011, Ferrero v OHIM (C‑552/09 P, EU:C:2011:177) and invalidity proceedings (see paragraphs 24 to 30 of the judgment under appeal). That court also held that as the annulment of the decisions of the Cancellation Division of 21 April 2016 would not necessarily have led to a favourable decision on the merits, the interest which the appellant sought to rely on was future and uncertain (see paragraph 32 of the judgment under appeal). The General Court also decided that the Board of Appeal was correct in finding that the existence of parallel proceedings pending before national courts had no bearing on the conditions for the admissibility of the action before that board (see paragraph 33 of the judgment under appeal).

37. The appellant’s argument should thus, in my opinion, be rejected as manifestly unfounded as the appellant was in a position to understand why the General Court had not upheld its arguments and the Court of Justice was provided with sufficient material for it to exercise its power of review.

38. Secondly, the appellant claims that, in paragraph 31 of the judgment under appeal, the General Court erred in law by basing its reasoning on three judgments of that court which were not applicable to the present case.

39. That argument should, in my opinion, be rejected as manifestly unfounded as the case-law cited in paragraph 31 of the judgment under appeal is clearly relevant in respect of the admissibility criterion and the requirement for an interest in bringing proceedings, as applied by the General Court. That case-law refers to the requirement that applies in all actions for annulment that an interest in the annulment of a measure be vested and present at the date on which the action for annulment is brought, or, in the event that the claim concerns a future legal situation, that the prejudice to that future situation be already certain. The fact that the cases in question concerned sectors or matters other than trade marks or indeed trade mark proceedings other than proceedings for a declaration of invalidity in no way detracts from the relevance of the case-law cited.

40. Thirdly, the appellant claims that the General Court failed, in paragraph 23 of the judgment under appeal, to explain why the legal status of the contested marks on EUIPO’s register was decisive for the purpose of establishing whether the contested decisions had adversely affected the appellant.

41. That argument should, in my opinion, be rejected as manifestly unfounded. In paragraph 23 of the judgment under appeal, the General Court did not find that the legal status of the contested marks on EUIPO’s register was decisive for the purpose of establishing whether the contested decisions had adversely affected the appellant. While that status was clearly important in the reasoning of the judgment under appeal, the General Court examined and ultimately rejected other arguments raised by the appellant in order to establish that it had been adversely affected by the absence of a final decision on the merits in respect of the contested marks.

42. Thus, in paragraph 22 of the judgment under appeal, the General Court cited case-law under which an applicant has an interest in having a measure annulled only if that remedy is capable of having legal consequences. The General Court considered, in paragraph 23 of the judgment under appeal, that the decisions closing the proceedings for declarations of invalidity had not adversely affected the appellant, since the contested marks remained on EUIPO’s register. In paragraph 29 of the judgment under appeal, the General Court also stated that, had the appellant been successful in having the applications for declarations of invalidity dismissed, there would have been no legal consequence for the status of the contested marks, as they would have remained on EUIPO’s register as from the date of their registration. The General Court, however, proceeded to examine, in paragraphs 31 to 33 of the judgment under appeal, the appellant’s argument that it had an interest in the continuation of the procedures for declarations of invalidity due to there being parallel proceedings before national courts.

43. Fourthly, the appellant claims that the General Court failed to explain, in paragraph 31 of the judgment under appeal, why the fact that there were parallel proceedings pending before national courts at the time it filed its action before the Board of Appeal concerned a future and uncertain situation.

44. That argument should, in my opinion, be rejected as manifestly unfounded. In paragraph 31 of the judgment under appeal, the General Court cited case-law requiring that an applicant have a vested and present interest in the annulment of an act. Moreover, at paragraph 33 of the judgment under appeal, the General Court considered that the legal standard laid down in that case-law had not been met in the present case as the existence of other proceedings before EU trade marks courts had no bearing on the conditions for the admissibility of the action before the Board of Appeal.

45. It follows that the appellant’s second ground of appeal should, in my opinion, be rejected as manifestly unfounded.

46. Since, in my view, the two grounds of appeal put forward by the appellant should be rejected, the appeal should be dismissed in its entirety and the appellant ordered to pay the costs, in accordance with Article 137 and 184(1) of the Rules of Procedure of the Court.’

6 As regards the first part of the first ground of appeal, it should be added, in the first place, that the appellant also claims that the General Court failed to consider the subjective dimension of the words ‘party ... adversely affected by a decision’. It claims that, when assessing those words, the General Court should have taken account of the appellant’s personal interest, namely its interest in obtaining a decision that would become final and would prevent perpetual further proceedings between the parties on the same legal issues.

7 However, that argument is based on an erroneous reading of the judgment under appeal. When interpreting the words ‘party ... adversely affected by a decision’, the General Court took into account all the arguments raised by the appellant in relation to adverse legal effects that the closing of the proceedings would necessarily entail and, in particular, the argument that only a final decision on the merits would have allowed it to ensure that no other application for a declaration of invalidity would be lodged by the same party against the same mark on the basis of the same grounds before the tribunal de grande instance de Paris (Regional Court, Paris).

8 Thus, in paragraphs 24 to 29 of the judgment under appeal, the General Court explained the reasons why the theory of the continuation of invalidity proceedings following a surrender of the contested mark, which it derives from the judgment of 24 March 2011, Ferrero v OHIM (C‑552/09 P, EU:C:2011:177) was not applicable in the present case. In addition, in paragraph 32 of the judgment under appeal, the General Court held, as observed by the Advocate General in point 10 of his Position, that ‘the annulment of the decisions of the Cancellation Division of 21 April 2016 would not necessarily have led to a favourable decision being made on the merits of the validity of the contested marks and that consequently the interest in the continuation of the procedures for declarations of invalidity on which the appellant sought to rely was future and uncertain’.

9 It follows that the argument that the General Court failed to consider the alleged subjective dimension of the words ‘party ... adversely affected by a decision’ must be rejected as manifestly unfounded.

10 In the second place, the appellant claims that, in paragraph 32 of the judgment under appeal, the General Court erred in law by applying excessive requirements to the words ‘party ... adversely affected by a decision’, namely the adoption of a subsequent favourable decision on the merits. Thus, it maintains that the General Court failed to distinguish between the admissibility and the merits of the appeal.

11 In that regard, it is appropriate to recall the settled case-law of the Court, which was also cited by the Advocate General in point 14 of his Position, to the effect that having an interest in bringing proceedings is a condition of admissibility, not a condition relating to the merits, that applies to all appeals.

12 Moreover, it should be noted that, in paragraph 31 of the judgment under appeal, the General Court ruled on the applicant’s argument to the effect that it had an interest in the continuation of procedures for declarations of invalidity. In that context, the General Court held that that argument could not be accepted in the light of the settled case-law cited within that paragraph, pursuant to which the interest in the annulment of the contested act must be vested and present and is evaluated as at the date on which the action is brought. Accordingly, an applicant may not rely on future and uncertain situations to justify its interest in applying for annulment of the contested act.

13 After recalling that case-law, which was also cited by the Advocate General in point 11 of his Position, the General Court held, in paragraph 32 of the judgment under appeal, that the interest in the continuation of the procedures for declarations of invalidity on which the appellant sought to rely was future and uncertain.

14 It cannot, therefore, be argued that, in paragraph 32 of the judgment under appeal, the General Court applied excessive requirements to the words ‘party ... adversely affected by a decision’ by making that notion contingent on the potential outcome of the procedure. Since that argument is based on an erroneous reading of the judgment under appeal, it must be rejected as manifestly unfounded.

15 For those reasons and for those given by the Advocate General, the appeal must be dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

Costs

16 Under Article 137 of the Rules of Procedure of the Court of Justice, applicable to appeal proceedings by virtue of Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. Since in this case the present order has been adopted before the appeal was served on the other parties and, consequently, before those parties could have incurred costs, the appellant must be ordered to bear its own costs.

On those grounds, the Court (Seventh Chamber) hereby orders:

1. The appeal is dismissed as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

2. CeramTec GmbH shall bear its own costs.

Luxembourg, 15 January 2019.

A. Calot Escobar T. von Danwitz