Court of Justice of the European Communities (including Court of First Instance Decisions)

ORDER OF THE GENERAL COURT (Second Chamber)

14 December 2018 (*)

(EU trade mark — Opposition proceedings — Application for registration of the EU trade mark INSPIRED BY ICELAND — Earlier EU word mark ICELAND — Earlier national figurative and word marks Iceland Iceland ICELAND and Iceland — Decision of the Board of Appeal to stay the proceedings and remit the case to the examiner for an examination of the absolute grounds — Act not open to challenge — Article 45(3) of Regulation (EU) 2017/1001 — Manifest inadmissibility)

In Case T‑267/18,

Iceland Foods Ltd, established in Deeside (United Kingdom), represented by S. Malynicz QC, J. Hertzog, J. Warner and C. Hill, Solicitors,

applicant,

v

European Union Intellectual Property Office (EUIPO),

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being:

Íslandsstofa, established in Reykjavik (Iceland),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 7 February 2018 (Case R 340/2017-5), relating to opposition proceedings between Iceland Foods and Íslandsstofa,

THE GENERAL COURT (Second Chamber),

composed of M. Prek (Rapporteur), President, E. Buttigieg and B. Berke, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 30 April 2018,

makes the following

Order

 Facts and proceedings

1        On 9 July 2015, the other party to the proceedings before the Board of Appeal, Íslandsstofa, filed an application for registration of a Community trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).

2        Registration as a mark was sought for the following figurative sign:

3        On 21 September 2015, the applicant, Iceland Foods Ltd, filed a notice of opposition to the mark applied for in respect of the goods and services in Classes 29, 30, 31, 32, 33 and 43 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.

4        The opposition was based on the following earlier rights:

–        the EU word mark ICELAND, registered on 9 December 2014 under number 2 673 374 in respect of goods and services in Classes 7, 11, 16, 29, 30, 31, 32 and 35;

–        the national figurative mark registered in the United Kingdom on 11 April 2014 under number 2 341 223 in respect of goods and services in Classes 3, 4, 5, 6, 7, 8, 9, 11, 16, 20, 21, 29, 30, 31, 32, 33, 35 and 43:

–        the national word mark Iceland, registered in the United Kingdom on 3 July 2015 under number 3 054 649 in respect of goods and services in Classes 23, 30 and 35.

5        By decision of 20 December 2016, the Opposition Division rejected the opposition.

6        On 14 February 2017, the applicant filed a notice of appeal against the decision of the Opposition Division.

7        By decision of 7 February 2018 (‘the contested decision’), the Fifth Board of Appeal stayed the proceedings and remitted the contested mark to the examiner for an examination of the absolute grounds for refusal.

8        By application lodged at the Court Registry on 30 April 2018, the applicant brought the present action.

 Form of order sought by the applicant

9        The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and the other party to the proceedings to bear their own costs and pay those of the applicant.

 Law

10      In support of its action, the applicant raises two pleas in law. By its first plea, it claims, in essence, that, in remitting the case to the examiner, the Board of Appeal infringed Article 71 of Regulation No 207/2009 (now Article 79 of Regulation 2017/1001). By its second plea, the applicant claims that the Board of Appeal infringed the essential procedural requirements provided for in Article 72 of Regulation No 207/2009 (now Article 80 of Regulation 2017/1001), inter alia, the principle of audi alteram partem.

11      Under Article 126 of the Rules of Procedure of the General Court, where the action is manifestly inadmissible, the Court may, on a proposal from the Judge‑Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.

12      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided to give its decision without taking further steps in the proceedings.

13      According to settled case-law, only a measure the legal effects of which are binding on, and capable of affecting the interests of, third parties by bringing about a distinct change in their legal position is an act against which an action for annulment may be brought (judgment of 11 November 1981, IBM v Commission, 60/81, EU:C:1981:264, paragraph 9; see also judgment of 17 April 2008, Cestas v Commission, T‑260/04, EU:T:2008:115, paragraph 67 and the case-law cited).

14      In addition, it is necessary to look to the substance of the measure annulment of which is sought in order to ascertain whether it may be the subject of an action for annulment, the form in which that measure was cast being, in principle, immaterial in that regard (judgments of 11 November 1981, IBM v Commission, 60/81, EU:C:1981:264, paragraph 9, and of 17 April 2008, Cestas v Commission, T‑260/04, EU:T:2008:115, paragraph 68).

15      In that regard, only an act by which its author reaches an unequivocal and definitive position, in a form enabling its nature to be identified, constitutes a decision challengeable by an action for annulment, provided, however, that the decision is not the confirmation of a prior act (order of 12 February 2010, Commission v CdT, T‑456/07, EU:T:2010:39, paragraph 54; see also to that effect, judgment of 26 May 1982, Germany and Bundesanstalt für Arbeit v Commission, 44/81, EU:C:1982:197, paragraph 12).

16      In that regard, it must be noted that, according to the operative part of the contested decision, the Board of Appeal merely remitted the case before the examiner for an examination of the absolute grounds for refusal pursuant to Article 40(3) of Regulation No 207/2009 (now Article 45(3) of Regulation 2017/1001) and stayed the proceedings pending the decision of the examiner.

17      In those circumstances, it cannot be held that the contested decision produces legal effects which are binding on, and capable of affecting the interests of, the applicant by bringing about a distinct change in its legal position within the meaning of the case-law cited in paragraph 13 above.

18      The action must therefore be dismissed as manifestly inadmissible and there is no need to serve the application on EUIPO or the other party to the proceedings before the Board of Appeal of EUIPO.

 Costs

19      Since the present order has been adopted before service of the application on EUIPO, and therefore before EUIPO could have incurred costs, it is sufficient to decide that the applicant must bear its own costs, in accordance with Article 133 of the Rules of Procedure.

On those grounds,

THE GENERAL COURT (Second Chamber),

hereby orders:

1.      The action is dismissed as manifestly inadmissible.

2.      Iceland Foods Ltd shall bear its own costs.

Luxembourg, 14 December 2018.

*      Language of the case: English.

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