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

ORDER OF THE GENERAL COURT (Second Chamber)

14 February 2019 (*)

(EU trade mark — Opposition proceedings — Application for an EU figurative mark representing a cross — Revocation of the contested decision — Action which has become devoid of purpose — No need to adjudicate)

In Case T‑137/18,

Chrome Hearts LLC, established in Hollywood, California (United States), represented by M. de Justo Bailey, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

defendant,

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

Shenzhen Van St. Lonh Jewelry Co. Ltd, established in Shenzhen (China),

ACTION brought against the decision of the Fifth Board of Appeal of EUIPO of 19 December 2017 (Case R 766/2017‑5), relating to opposition proceedings between Chrome Hearts and Shenzhen Van St. Lonh Jewelry Co.,

THE GENERAL COURT (Second Chamber),

composed of M. Prek, President, F. Schalin and M.J. Costeira (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 2 March 2018,

makes the following

Order

1        By document lodged at the Court Registry on 2 March 2018, the applicant, Chrome Hearts LLC, brought the present action, seeking partial annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 December 2017 (Case R 766/2017‑5), relating to opposition proceedings between it and Shenzhen Van St. Lonh Jewelry Co. Ltd (‘the contested decision’), in so far as that decision contains an error in the comparison of the goods at issue.

2        By letter of 14 March 2018, EUIPO informed the applicant of its intention to revoke the contested decision in order to make a proper comparison of the goods at issue.

3        By letter lodged at the Court Registry on 11 April 2018, the applicant submitted an application for a declaration that there was no need to adjudicate, on the ground that, in essence, should the contested decision be revoked, the present action would become devoid of purpose and there would therefore no longer be any need to adjudicate on it. Furthermore, the applicant requested the Court to order EUIPO to pay the costs.

4        By letter lodged at the Court Registry on 20 April 2018, EUIPO informed the Court that revocation proceedings had been initiated, that they were still ongoing and that the decision to be taken would have effect only after it had become final. Accordingly, in the light of those circumstances, EUIPO took the view that it could not, at that stage, comment on the possible finding that the action had become devoid of purpose and that there was therefore no longer any need to adjudicate on it.

5        By letter from the Registry of 20 June 2018, the Court, in the context of the measures of organisation of procedure provided for in Article 89 of its Rules of Procedure, requested the parties, first, to indicate whether the decision to revoke had become final, secondly, to submit their observations, pursuant to Article 131(1) of the Rules of Procedure, on the possible finding that, as a result of that decision to revoke, the action had become devoid of purpose and that there was therefore no longer any need to adjudicate on it, and, thirdly, to submit their observations, pursuant to Article 69(d) of the Rules of Procedure, on the possible staying of the proceedings pending the outcome of the revocation proceedings.

6        The applicant replied to the Court’s questions by letter lodged at the Court Registry on 3 July 2018. The applicant submitted, in essence, that, first, the action had become devoid of purpose, even though the decision to revoke had not yet been taken, and that, secondly, there was no need to stay the proceedings, because they had become devoid of purpose. Finally, the applicant requested the Court to order EUIPO to pay the costs.

7        EUIPO replied to the Court’s questions by letter lodged at the Court Registry on 5 July 2018. It reiterated, in essence, the finding that the action could not be declared devoid of purpose as long as the decision to revoke, which had not yet been taken, had not become final. Furthermore, pursuant to Article 69(d) of the Rules of Procedure, EUIPO requested that the proceedings be stayed for a period of four months. Finally, EUIPO did not apply for costs.

8        By letter lodged at the Court Registry on 27 July 2018, the applicant claimed that the Court should reject EUIPO’s request for the proceedings to be stayed. Furthermore, the applicant requested the Court to order EUIPO to pay the costs.

9        By decision of 30 August 2018, the Court stayed the proceedings until 28 December 2018, on the basis of Article 69(d) of the Rules of Procedure.

10      By letter lodged at the Court Registry on 8 November 2018, EUIPO informed the Court that, by decision of 19 July 2018, the Fifth Board of Appeal of EUIPO had revoked the contested decision pursuant to Article 103 of 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) and that no action had been brought against that decision. EUIPO indicated that there was, consequently, no longer any need to adjudicate on the present action and requested the Court to make an order to that effect. It did not apply for costs.

11      By letter lodged at the Court Registry on 16 November 2018, the applicant signalled its agreement with EUIPO’s application for a declaration that there is no need to adjudicate. Furthermore, the applicant requested the Court to order EUIPO to pay the costs.

12      Under Article 130(2) and (7) of the Rules of Procedure, the Court may, if a party so requests, declare that the action has become devoid of purpose and that there is no longer any need to adjudicate on it. In the present case, as the applicant and EUIPO have applied for a declaration that the action has become devoid of purpose and that there is no longer any need to adjudicate on it, the Court, finding that it has sufficient information from the documents in the case file, has decided to rule on that application without taking further steps in the proceedings.

13      Pursuant to Article 103(4) of Regulation 2017/1001, it is sufficient to state in the present case that, in the light of the revocation of the contested decision, the present action has become devoid of purpose and that there is no longer any need to adjudicate on it (see, to that effect, order of 14 June 2017, Márquez Alentà v EUIPO — Fiesta Hotels & Resorts (Representation of an ant), T‑657/16, not published, EU:T:2017:425, paragraph 5 and the case-law cited).

14      Article 137 of the Rules of Procedure provides that, where a case does not proceed to judgment, the costs are to be in the discretion of the Court.

15      In the light of the circumstances of the present case, the Court considers that EUIPO must be ordered to pay the costs.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby orders:

1.      There is no longer any need to adjudicate on the action.

2.      The European Union Intellectual Property Office (EUIPO) shall pay the costs.

Luxembourg, 14 February 2019.

*      Language of the case: English.

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