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

ORDER OF THE GENERAL COURT (Ninth Chamber)

15 November 2018 (*)

(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark NOVENCO — Earlier EU word mark Novenco — Cancellation of the international registration — Action which has become devoid of purpose — No need to adjudicate)

In Case T‑45/18,

Novenco Building & Industry A/S, established in Næstved (Denmark), represented by A. Rasmussen, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Śliwińska and A. Folliard-Monguiral, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, and intervener before the General Court, being

Novenco Ventilator (Beijing) Co. Ltd, established in Beijing (China), represented by T. de Haan and P. Péters, lawyers,

concerning, first, an action brought against the decision of the Second Board of Appeal of EUIPO of 7 November 2017 (Case R 2354/2016-2), relating to opposition proceedings between Novenco Building & Industry andNovenco Ventilator (Beijing), and, secondly, a cross-claim made against that same decision,

THE GENERAL COURT (Ninth Chamber),

composed of S. Gervasoni, President, L. Madise and R. da Silva Passos (Rapporteur), Judges,

Registrar: E. Coulon,

makes the following

Order

 Background to the dispute, procedure and forms of order sought by the parties

1        On 13 August 2013, the intervener, Novenco Ventilator (Beijing) Co. Ltd, obtained from the International Bureau of the World Intellectual Property Organisation (WIPO) international registration designating the European Union under number 1187938. That registration was notified to the European Union Intellectual Property Office (EUIPO) on 2 January 2014, 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        International registration No 1187938, based on Chinese basic registration No 12270105, for which protection was sought, was the figurative sign reproduced below:

3        The goods in respect of which registration with EUIPO was sought are in Class 7 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, and correspond to the following description: ‘Extractors for mines; mine working machines; machinery and equipment for geological exploration, mining and mineral separation; petrochemical apparatus; earth moving machines; hoisting machines; metalworking machines; engine boilers used in power station and its accessory machines; wind-powered electricity generators; wind-powered installations for generating electricity; gas separation apparatus; gas liquefaction apparatus, namely nitrogen liquefaction apparatus, hydrogen liquefaction apparatus and helium liquefaction apparatus; compressors for machines; blowing machines for the compression, exhaustion and transport of gases; blowing machines for the compression, sucking and carrying of grain; suction machines for industrial purposes; pneumatic transporters; blowing machines; compressed air machines; blowing machines for the compression, sucking and carrying of dust; garbage disposals; self-propelled road sweeping machines’.

4        The application was published in the Community Trade Marks Bulletin on 3 January 2014.

5        On 7 July 2014, the applicant, Novenco Building & Industry A/S, filed a notice of opposition against international registration No 1187938 in respect of the goods referred to in paragraph 3 above. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

6        The opposition was based on the earlier EU word mark Novenco, registered on 29 June 2005 under number 3579505, designating goods in Class 11 and corresponding to the following description: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’.

7        By decision of 12 December 2016, the Opposition Division rejected the opposition in its entirety on the grounds that there was no likelihood of confusion.

8        On 16 December 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

9        By decision of 7 November 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO upheld the appeal in part in respect of ‘engine boilers used in power station and its accessory machines’ in Class 7 and covered by the international registration. However, the Board of Appeal dismissed the appeal in so far as it related to the other goods in Class 7.

10      By application lodged at the Court Registry on 29 January 2018, the applicant brought the present action. It claims that the Court should:

–        annul in part the contested decision as regards the goods in respect of which the Board of Appeal rejected the opposition;

–        order EUIPO to pay the costs incurred in the present action and in the course of the administrative proceedings before EUIPO.

11      EUIPO lodged its reply at the Court Registry on 30 April 2018. It contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

12      The intervener lodged its reply at the Court Registry on 3 May 2018. By separate document lodged at the Court Registry on the same day, the intervener filed a cross-claim pursuant to Article 182 et seq. of the Rules of Procedure of the General Court. In its reply and cross-claim, the intervener contends that the Court should:

–        dismiss the action;

–        annul paragraph 1 of the operative part of the contested decision;

–        order the applicant to pay the costs.

13      By separate document lodged at the Court Registry on 6 July 2018, the applicant sought a ruling, pursuant to Article 130(2) of the Rules of Procedure, that there was no need to adjudicate on the action. In that regard, it informed the Court, in essence, that, in accordance with Article 6(3) of the Protocol relating to the Madrid Agreement concerning the international registration of marks, adopted at Madrid on 27 June 1989 (OJ 2003 L 296, p. 22), the protection conferred by international registration No 1187938 could no longer be relied on, given that that international registration had been removed from the register kept by the International Bureau of WIPO on 3 July 2018, and that cancellation was to be published in the gazette produced by WIPO on 19 July 2018. More particularly, the applicant brought to the Court’s attention the fact that the Chinese basic registration on which international registration No 1187938 was based was rejected by way of a final decision and therefore had been ‘declared invalid’ by the Chinese Trademark Review and Adjudication Board on 28 November 2016. The applicant added that, by document dated 9 May 2018, the Chinese Trademark Office notified the International Bureau of WIPO of that ‘invalidity’. Annexed to its application, the applicant sent, inter alia, to the Court, first, a copy of the decision of 28 November 2016, second, a copy of the notification of 9 May 2018 and, third, an extract of WIPO’s database demonstrating that, in China, the Chinese basic registration had been ‘declared invalid’ for all the goods and services concerned, that fact having been registered on the database on 3 July 2018. Finally, the applicant asked the Court to declare that the decision of the Opposition Division of EUIPO and the contested decision are devoid of purpose, given that the basis of the actions before the Court had ‘ceased to have effect’.

14      Under Article 130(5) of the Rules of Procedure, EUIPO and the intervener were invited to make their observations on the applicant’s request for a declaration that there is no need to adjudicate, including the issue of costs.

15      In reply, by letter lodged at the Court Registry on 23 July 2018, EUIPO signified its agreement to the applicant’s request. In addition, it requested that it should not be ordered to pay the costs.

16      By document lodged at the Court Registry on 25 July 2018, the intervener, first, acknowledged that international registration No 1187938 had ‘ceased to have effect’ in the European Union. Secondly, it stated that, pursuant to Article 72(3) of Regulation 2017/1001, the Court had jurisdiction to annul or to alter the contested decision, but could not declare that the contested decision or the decision of the Opposition Division is devoid of purpose. Thirdly, the intervener submits that the applicant’s request should be treated as a discontinuance, given that the ‘cessation of effect’ of international registration No 1187938 in the European Union occurred on a date subsequent to the date when the contested decision was adopted, and requested therefore that the applicant be ordered to pay the costs.

 Law

17      Under Article 130(2) and (7) of the Rules of Procedure, if a party so requests, the Court may declare that the action has become devoid of purpose and that there is no need to adjudicate on it. In the present case, since the applicant applied for a declaration that the action had become devoid of purpose and that there was no longer any need to adjudicate, the Court considers that it has sufficient information from the documents before it to rule on this action by way of a reasoned order.

18      In that respect, the applicant, without being contradicted on this point by the other parties, indicated to the Court, first, that the Chinese Trademark Review and Adjudication Board had adopted a final decision invalidating the Chinese basic registration on which the international registration at issue was based and, secondly, that, as a result of that decision, which was notified to the International Bureau of WIPO in accordance with the Protocol relating to the Madrid Agreement concerning the international registration of marks, the international registration at issue had been removed from the WIPO register. Furthermore, the intervener confirmed that the registration at issue could no longer produce effects in the European Union.

19      In those circumstances, the Court finds that the protection conferred by the international registration at issue may no longer be relied upon and that the present action has become devoid of purpose, since that registration effectively constituted the sole basis of the decision of the Opposition Division and of the contested decision (see, to that effect, order of 10 September 2013, Symbio Gruppe v OHIM — Ada Cosmetic (SYMBIOTIC CARE), T‑562/11, not published, EU:T:2013:493, paragraph 33 and the case-law cited).

20      The Court finds, in that respect, that neither the decision of the Opposition Division nor the contested decision has taken effect. It must be noted that, in accordance with the third sentence of Article 66(1) of Regulation 2017/1001, appeals filed at OHIM have suspensive effect. Accordingly, a decision from which such an appeal lies, such as a decision of an Opposition Division, takes effect only where no appeal has been lodged with EUIPO in the form and within the time limits prescribed in Article 68 of Regulation 2017/1001 or such an appeal has been definitively dismissed by the Board of Appeal. However, the present case does not concern either of those situations, as the contested decision has not taken effect either. In that respect, it is clear from Article 71(3) of Regulation 2017/1001 that the decisions of the Boards of Appeal take effect only as from the date of expiry of the period referred to in Article 72(5) of Regulation 2017/1001 or, if an action has been brought within that period before the EU Courts, as from the date of dismissal of that action. The present case is not concerned with either of those two situations, given that the Court finds that there is no need to adjudicate on the present action (see, to that effect, order of 10 September 2013, SYMBIOTIC CARE, T‑562/11, not published, EU:T:2013:493, paragraph 34 and the case-law cited).

21      It follows from all of the foregoing that there is no longer any need to adjudicate on the present action or, accordingly, on the cross-claim. Contrary to what the intervener maintains, the letter of 6 July 2018, referred to in paragraph 13 above, cannot be treated as the applicant’s discontinuance.

 Costs

22      According to Article 137 of the Rules of Procedure, where a case does not proceed to judgment the costs shall be in the discretion of the Court.

23      In the circumstances of the case, pursuant to Article 137 of the Rules of Procedure, the Court orders that each party is to bear its own costs.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby orders:

1.      There is no longer any need to adjudicate on the main action or the cross-claim.

2.      Each party shall bear its own costs.

Luxembourg, 15 November 2018.

* Language of the case: English.

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