ORDER OF THE COURT (Seventh Chamber)

24 October 2013 ( )

(Appeal – Community trade mark – Word mark Color Focus – Application for a declaration of invalidity made by the proprietor of the Community word mark Focus – Declaration of invalidity – Surrender – Article 149 of the Rules of Procedure – Appeal which has become devoid of purpose – No need to adjudicate)

In Case C‑593/12 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 17 December 2012,

Lancôme parfums et beauté & Cie, established in Paris (France), represented by A. von Mühlendahl, Rechtsanwalt,

appellant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,

defendant at first instance,

Focus Magazin Verlag GmbH, established in Munich (Germany), represented by R. Schweizer, Rechtsanwalt,

intervener at first instance,

THE COURT (Seventh Chamber),

composed of J.L. da Cruz Vilaça (Rapporteur), President of the Seventh Chamber, acting as President of the Chamber, and G. Arestis and J.‑C. Bonichot, Judges,

Advocate General: P. Cruz Villalón,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, pursuant to Article 149 of the Rules of Procedure of the Court of Justice,

makes the following

Order

1 By its appeal, Lancôme parfums et beauté & Cie (‘Lancôme’) seeks to have set aside the judgment of 5 October 2012 in Case T‑204/10 Lancôme v OHIM – Focus Magazin Verlag (COLOR FOCUS) (‘the judgment under appeal’), by which the General Court of the European Union dismissed the action that it had brought against the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 11 February 2010 (Case R 238/2009-2), concerning proceedings brought by Focus Magazin Verlag GmbH (‘Focus Magazin’) for a declaration of invalidity in respect of the word mark COLOR FOCUS registered by Lancôme (‘the contested decision’).

Background to the dispute and the judgment under appeal

2 On 30 September 1999, Lancôme filed an application for registration of the word mark COLOR FOCUS at OHIM under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). The goods covered by that application are in Class 3 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the purposes of Registration of Marks, as revised and amended, and correspond to the following description: ‘Cosmetic and make-up preparations’. That mark was registered on 30 June 2004.

3 On 25 August 2004, Focus Magazin filed an application, pursuant to Article 55 of Regulation No 40/94, for a declaration that that mark was invalid, on the basis of the earlier word mark FOCUS of which it was proprietor. The ground put forward in support of the application for a declaration of invalidity was that referred to in Article 52(1)(a) of Regulation No 40/94, read in conjunction with Article 8(1)(b) of that regulation.

4 By decision of 12 December 2008, the Cancellation Division of OHIM granted the application for a declaration of invalidity.

5 On 13 February 2009, Lancôme brought an appeal before the Board of Appeal of OHIM against the decision of the Cancellation Division.

6 By the contested decision, the Second Board of Appeal of OHIM upheld the decision of the Cancellation Division, having found, in essence, that there was a likelihood of confusion between the earlier mark and the mark in respect of which a declaration of invalidity was sought. Moreover, it rejected the argument that the application for a declaration of invalidity amounted to an abuse of rights.

7 By the judgment under appeal, the General Court dismissed the action brought by Lancôme against the contested decision.

8 By its appeal, Lancôme seeks to have set aside the judgment under appeal, essentially on the ground that the General Court was wrong to reject the pleas in law that it had relied on at first instance, that is to say, that there was no likelihood of confusion between the two marks and that Focus Magazin’s assertion of rights based on a mark that it never intended to use amounts to an abuse of rights.

Findings of the Court

9 Under Article 149 of the Rules of Procedure, which applies to appeal proceedings pursuant to Article 190(1) of those rules, if the Court declares that the action has become devoid of purpose and that there is no longer any need to adjudicate, the Court may at any time of its own motion, on a proposal from the Judge-Rapporteur and after hearing the parties and the Advocate General, decide to rule by reasoned order.

10 That provision must be applied in the context of the present appeal since, by document lodged at the Court Registry on 7 June 2013, Lancôme informed the Court that it had surrendered the Community mark in question and notified OHIM accordingly, and asked the Court to declare that the appeal had therefore become devoid of purpose and that there was no need to adjudicate on it.

11 In its observations, lodged on 13 June 2013, OHIM stated that, in its view, there was nothing to preclude the proceedings from being declared devoid of purpose, while requesting that Lancôme be ordered to bear the costs.

12 Focus Magazin did not submit any observations on the matter.

13 In order for an appellant to have an interest in bringing appeal proceedings, the appeal must be likely, if successful, to procure an advantage for it (see to that effect, inter alia, Case C‑552/09 P Ferrero v OHIM [2011] ECR I‑2063, paragraphs 43 and 44; the order of 19 January 2006 in Case C‑82/04 P Audi v OHIM, paragraph 20; and the order of 11 October 2007 in Case C‑301/05 P Wilfer v OHIM, paragraph 19).

14 In the present case, it is not disputed that, as a consequence of Lancôme’s surrender of the Community mark COLOR FOCUS, the proceedings for a declaration of invalidity in respect of that mark have been brought to an end, since none of the parties has demonstrated any interest in pursuing the present proceedings (see, to that effect, the orders in Audi v OHIM, paragraph 23, and Wilfer v OHIM, paragraph 23).

15 In those circumstances, it must be held that the present appeal has become devoid of purpose and that there is therefore no need to adjudicate.

Costs

16 Under Article 142 of the Rules of Procedure of the Court of Justice, which applies to appeal proceedings pursuant to Article 184(1) of those rules, where a case does not proceed to judgment the costs are to be in the discretion of the Court.

17 In the present case, it is not disputed that the appeal has become devoid of purpose owing to Lancôme’s surrender of the Community mark, the declaration of invalidity in respect of which Lancôme contested. Accordingly, as the fact that there is no longer any need to adjudicate is attributable to Lancôme, it must be ordered to pay the costs of the present proceedings.

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

1. There is no need to adjudicate on the appeal.

2. Lancôme parfums et beauté & Cie shall pay the costs of the present proceedings.

[Signatures]