ORDER OF THE COURT (Eighth Chamber)

17 July 2014 ( )

(Appeals — Article 181 of the Rules of Procedure of the Court — Community trade mark — Opposition proceedings — Article 169(1) of the Rules of Procedure — Appeal not challenging the operative part of the judgment under appeal — Appeal manifestly inadmissible)

In Case C‑490/13 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 12 September 2013,

Cytochroma Development Inc., established in Saint Michael (Barbados), represented by S. Malynicz, Barrister, instructed by A. Smith, Solicitor,

appellant,

the other party to the proceedings being:

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

defendant at first instance,

THE COURT (Eighth Chamber),

composed of C.G. Fernlund (Rapporteur), President of the Chamber, C. Toader and E. Jarašiūnas, Judges,

Advocate General: P. Mengozzi,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, pursuant to Article 181 of the Rules of Procedure of the Court,

makes the following

Order

1 By its appeal, Cytochroma Development Inc. (‘Cytochroma Development’) asks the Court to set aside the judgment of the General Court in Cytochroma Development v OHIM — Teva Pharmaceutical Industries (ALPHAREN), T‑106/12, EU:T:2013:340 (‘the judgment under appeal’) whereby the General Court annulled the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 2 December 2011 (Case R 1235/2011-1, ‘the contested decision’), relating to opposition proceedings between Teva Pharmaceutical Industries Ltd (‘Teva’) and Cytochroma Development.

Legal context

2 Article 1d(2) 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), as amended by Commission Regulation (EC) No 2082/2004 of 6 December 2004 (OJ 2004 L 360, p. 8; ‘Regulation No 216/96’), provides:

‘If the case is referred to another Board, that Board shall not comprise members who were party to the contested decision. This provision shall not apply if the case is referred to the Grand Board.’

Background to the dispute

3 Ineos Healthcare Ltd — the appellant’s predecessor in law — filed an application for registration, as a Community trade mark, of the word sign ‘ALPHAREN’ for goods in the pharmaceutical and veterinary fields. Teva, the proprietor of the earlier word mark ALPHA D3, opposed that application on the ground that there was a likelihood of confusion.

4 By decision of 9 October 2007, the Opposition Division of OHIM upheld that opposition. Cytochroma Development’s predecessor in law brought an appeal before OHIM against that decision of the Opposition Division.

5 By decision of 24 March 2009 (‘the 2009 decision’), the Second Board of Appeal of OHIM dismissed that appeal, concluding that there was a likelihood of confusion.

6 Cytochroma Development’s predecessor in law brought an action before the General Court against the 2009 decision.

7 By its judgment in Ineos Healthcare v OHIM — Teva Pharmaceutical Industries (ALPHAREN), T‑222/09, EU:T:2011:36 (‘the first judgment’), the General Court upheld the action in part and annulled the 2009 decision in part on the ground that, during its examination of the case, the Second Board of Appeal had taken into account — in respect of two of the categories of goods referred to in the application for registration (‘Category A goods and Category C goods’) — information which it had searched for on the internet, of its own motion, rather than merely assessing the evidence produced by the parties themselves.

8 The Presidium of the Boards of Appeal of OHIM remitted the case to the First Board of Appeal so that it could give a new decision, in accordance with Article 65(6) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

9 By the contested decision, the First Board of Appeal of OHIM rejected the application for a Community trade mark in respect of the Category A goods and the Category C goods and dismissed the appeal against the decision of the Opposition Division, holding that there was a likelihood of confusion between the marks at issue. In finding that the goods covered by the marks at issue were closely linked and complementary, it relied on evidence presented by the parties in the proceedings that gave rise to the 2009 decision and on evidence adduced by Teva in response to the communication of the Board of Appeal following the partial annulment of the 2009 decision.

The procedure before the General Court and the judgment under appeal

10 By an application lodged at the Registry of the General Court on 29 February 2012, Cytochroma Development — which has held the rights attached to the application for registration of the Community trade mark since 23 September 2011 — brought an action for annulment of the contested decision.

11 In support of its action for annulment, the appellant relied on four pleas in law.

12 The first plea in law alleged infringement of Article 1d(2) of Regulation No 216/96, as a result of the composition of the Board of Appeal that gave a new decision after the annulment of the 2009 decision.

13 By its second plea in law Cytochroma Development alleged infringement of Article 65(6) of Regulation No 207/209 and of Article 1d(1) of Regulation No 216/96, in that nothing in the operative part of the first judgment required that the Board of Appeal undertake a new examination and that it would have sufficed for it to reject the opposition as regards the goods in respect of which the 2009 decision had been annulled.

14 The third plea in law alleged infringement of Article 76(1) of Regulation No 207/2009, on the basis of the evidence taken into consideration by the Board of Appeal in examining the case.

15 By its fourth plea in law Cytochroma Development alleged that the Board of Appeal had breached the principle of legal certainty and Article 17 of the Charter of Fundamental Rights of the European Union (‘the Charter’) concerning the right to property.

16 The General Court upheld the first plea in law in paragraph 32 of the judgment under appeal and annulled the contested decision on the ground that one of the members of the Second Board of Appeal that had adopted the 2009 decision had also sat on the First Board of Appeal that had adopted the contested decision.

17 The General Court noted, in paragraph 24 of the judgment under appeal, that, according to Article 1d(2) of Regulation No 216/96, if a case is referred to another Board, that Board must not comprise members who were party to the contested decision (that provision not applying, however, if the case is referred to the Grand Board). It concluded in paragraph 25 that, in the present case, the First Board of Appeal should not have comprised a member of the Second Board of Appeal that had adopted the 2009 decision. The General Court found however, in paragraph 26, that the rule in question had not been respected. It therefore concluded, in paragraph 27, that OHIM had infringed Article 1d(2) of Regulation No 216/96 inasmuch as the same person had been a member of both the Boards of Appeal that had adopted the 2009 decision and the contested decision. It pointed out, moreover, that the person in question had been the rapporteur for both decisions.

18 In paragraph 32 of the judgment under appeal, the General Court added that if OHIM were confronted merely with a finding that the contested decision was vitiated by that unlawful aspect, it would simply give a decision in the present case by means of a Board of Appeal of another composition, and that it was therefore appropriate to examine the other pleas put forward by Cytochroma Development.

19 The General Court first examined and rejected, in paragraphs 42 to 46 of the judgment under appeal, the second and fourth pleas in law put forward in support of the action. It stated that, by the first judgment, it had annulled the 2009 decision, as regards the Category A goods and the Category C goods, on procedural grounds alone, but had in no way ruled on the question whether or not there was a likelihood of confusion between the marks at issue. It concluded that OHIM had therefore been required to re-open the proceedings and to rule again on the opposition as regards the Category A goods and the Category C goods, in order to reach a new decision while having due regard for the operative part and the grounds of the first judgment. The General Court also held that the first judgment, by partially annulling the 2009 decision, had in no way given an assurance that the mark applied for could be registered in respect of the Category A goods and the Category C goods. It also rejected Cytochroma Development’s arguments relating to alleged infringement of the right to intellectual property laid down in Article 17 of the Charter.

20 As regards the third plea in law, alleging infringement of Article 76(1) of Regulation No 207/2009, the General Court — after finding, in paragraph 56 of the judgment under appeal, that, for the purposes of assessing the similarity of the goods at issue, the Board of Appeal had not relied on the information that had made the 2009 decision unlawful — concluded that the Board of Appeal’s considerations in the contested decision concerning that information had to be regarded as having been included for the sake of completeness.

Forms of order sought by the parties before the Court and grounds of appeal

21 By its appeal, Cytochroma Development submits that the Court should set aside the judgment under appeal and order OHIM to pay the costs.

22 OHIM contends that the Court should dismiss the appeal and order Cytochroma Development to pay the costs.

23 In support of its appeal, Cytochroma Development relies on two grounds of appeal.

24 The first alleges infringement of Article 65(6) of Regulation No 207/2009 and Article 1d(1) of Regulation No 216/96 regarding the measures to be taken in order to comply with the first judgment. Cytochroma Development argues that the General Court should have held that OHIM may carry out a new examination of a case only in exceptional circumstances and that such an examination was not justified in the present case.

25 The second ground of appeal alleges infringement of the principle of legal certainty and of Article 17 of the Charter.

The appeal

26 Under Article 181 of the 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.

27 That provision must be applied to the present appeal.

28 Cytochroma Development submits that, although the judgment under appeal annulled the contested decision, as it had requested in its application before the General Court, its appeal is nevertheless admissible because it was successful only in part and it has a genuine interest in bringing such an appeal.

29 However, it must be noted that under Article 169(1) of the Rules of Procedure, an appeal is to seek to have set aside, in whole or in part, the decision of the General Court as set out in the operative part of that decision.

30 As can be seen from point 1 of the operative part of the judgment under appeal, the General Court annulled the contested decision. That annulment, which is unrestricted, therefore concerns the decision in its entirety.

31 That conclusion is supported by the reasoning of the judgment under appeal set out in paragraphs 24 to 27 and 32 thereof. It can be seen from those paragraphs that the contested decision was annulled by the General Court — upholding the first plea in law put forward by Cytochroma Development in support of its action — simply on the basis of OHIM’s infringement of Article 1d(2) of Regulation No 216/96, relating to the composition of the Board of Appeal to which a case is referred after the annulment by the EU judicature of a decision of another Board of Appeal of OHIM.

32 In accordance with Article 169(1) of the Rules of Procedure, an appeal could therefore only seek to challenge the annulment of the contested decision and, accordingly, the very result sought by Cytochroma Development in bringing an action before the General Court.

33 It is clear from the analysis of the two grounds relied on by Cytochroma Development in support of its appeal that it actually seeks to challenge, not the operative part of the judgment under appeal, but certain reasons stated in that judgment, namely (i) those concerning the application of Article 65(6) of Regulation No 207/2009 and Article 1d(1) of Regulation No 216/96 and (ii) those concerning the principle of legal certainty and Article 17 of the Charter.

34 Since the grounds of appeal relied on by Cytochroma Development do not seek to challenge the operative part of the judgment under appeal, they must be rejected as manifestly inadmissible.

35 Accordingly, pursuant to Article 181 of the Rules of Procedure, the appeal must be dismissed.

Costs

36 Under Article 138(1) of the Rules of Procedure, which applies to appeal proceedings pursuant to Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has applied for costs to be awarded against Cytochroma Development and the latter has been unsuccessful, it must be ordered to pay the costs.

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

1. The appeal is dismissed.

2. Cytochroma Development Inc. is ordered to pay the costs.

[Signatures]