Source: EURLEX
Language: en
Format: md

Case T‑565/17

CheapFlights International Ltd

v

European Union Intellectual Property Office

(EU trade mark — Opposition proceedings — Application for EU figurative mark Cheapflights — Referral of the trade mark application to the examiner for examination of the absolute grounds for refusal — Challenge by the proprietor of the earlier mark — Grounds of the contested decision containing an assessment of the validity of the earlier mark — Challenge by the proprietor of the earlier mark — Partial inadmissibility — Incidental submissions made on the basis of Article 8(3) of Regulation (EC) No 216/96 — Withdrawal of the appeal before the Board of Appeal — No need to adjudicate in part)

Summary — Order of the General Court (Second Chamber), 12 December 2018

1. EU trade mark — Observations of third parties and opposition — Examination of the opposition — Scope — Absolute grounds for refusal invoked by the trade mark applicant — Precluded — Right of EUIPO to reopen the examination of absolute grounds on its own initiative

   (Council Regulation No 207/2009, Arts 37, 40 to 42, 56(1)(a); Council Regulation 2015/2424, Art. 38)
2. Action for annulment — Natural or legal persons — Interest in bringing proceedings — Need for a vested and present interest — Assessment at the time when the action was lodged — Action not capable of securing a benefit for the applicant — Inadmissibility

   (Art. 263, fourth para., TFEU)
3. Action for annulment — Actionable measures — Definition — Measures producing binding legal effects — Assessments made in the grounds of a decision of a Board of Appeal — Not included

   (Art. 263, fourth para., TFEU)
4. EU trade mark — Appeals procedure — Appeals before the Boards of Appeal — Challenge to the contested decision by the defendant in its observations — Withdrawal by the other party of its appeal before the Board of Appeal — Effect — Withdrawal at the stage of the proceedings before the General Court — Suspensory nature of an action before the General Court

   (Council Regulation No 207/2009, Art. 71(3); Commission Regulation No 216/96, Art. 8(3))
5. Judicial proceedings — Application initiating proceedings — Formal requirements — Brief summary of the pleas in law on which the application is based — Similar requirements for submissions made in support of a plea

   (Statute of the Court of Justice, Art. 21, first para., and Art. 53, first para.; Rules of Procedure of the General Court, Art. 177(1)(d))

1. It should be observed that although, in the wording applicable at the time when the interim decision was adopted, Article 40 of Regulation No 207/2009 on the European Union trade mark on observations by third parties did not provide explicitly for the possibility for the European Union Intellectual Property Office (EUIPO) to reopen the examination of absolute grounds on its own initiative, at any time before registration of a trade mark, since that possibility was included in Article 40(3) of Regulation No 207/2009 only after the amendment thereof by Article 38 of Regulation 2015/2424 amending Regulation No 207/2009, there was such a possibility for the Office, even in the absence of any express provision to that effect.

   Furthermore, it is apparent from the broad logic of Article 37 and Articles 40 to 42 of Regulation No 207/2009 that an examination of the compliance of a trade mark application with the absolute grounds for refusal is to be conducted solely in the context of ex parte proceedings between the trade mark applicant and the Office’s adjudicating bodies. It is in fact only in invalidity proceedings brought against a registered trade mark on the basis of Article 56(1)(a) of Regulation No 207/2009 that the question of whether that mark has been registered in disregard of an absolute ground for refusal is examined in the context of inter partes proceedings.

   It necessarily follows that where, in inter partes opposition proceedings, the Office reopens the examination of absolute grounds for refusal, that then triggers separate ex parte proceedings which run in parallel with the opposition proceedings.

   (see paras 32-34)
2. See the text of the decision.

   (see paras 41-43)
3. Only the act by which the body responsible for it determines its position unequivocally and definitively, in a form enabling its nature to be identified, constitutes a decision that may form the subject matter of an action for annulment, on condition, however, that that decision does not constitute confirmation of a prior act.

   Furthermore, irrespective of the grounds on which a decision of a Board of Appeal is based, only the operative part thereof is capable of producing legal effects and, consequently, of adversely affecting a person’s legal interests. By contrast, the assessments made in the grounds of a decision of a Board of Appeal are not in themselves capable of forming the subject matter of an action under Article 72 of Regulation 2017/1001 on the European Union trade mark. They can be subject to judicial review by the Courts of the European Union only to the extent that, as grounds of a measure adversely affecting the interests of those concerned, they constitute the essential basis for the operative part of that measure.

   (see paras 55, 58)
4. See the text of the decision.

   (see paras 61-66)
5. See the text of the decision.

   (see para. 73)

[Top](#document1)