ORDER OF THE COURT (Third Chamber)

12 February 2015 (*)

(Appeal — Community trade mark — Appeal brought by an ‘other party to the proceedings before the Board of Appeal’ which did not lodge a response before the General Court — Not an intervener before the General Court — Appeal manifestly inadmissible)

In Case C‑35/14 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 22 January 2014,

Enercon GmbH, established in Aurich (Germany), represented by J. Eberhardt, Rechtsanwalt,

appellant,

the other parties to the proceedings being:

Gamesa Eólica SL, established in Sarriguren (Spain), represented by E. Armijo Chávarri, abogado,

applicant at first instance,

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

defendant at first instance,

THE COURT (Third Chamber),

composed of M. Ilešič (Rapporteur), President of the Chamber, A. Ó Caoimh, C. Toader, E. Jarašiūnas and C.G. Fernlund, Judges,

Advocate General: Y. Bot,

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 of Justice,

makes the following

Order

1        By its appeal, Enercon GmbH (‘Enercon’) asks the Court to set aside the judgment of the General Court of the European Union in Gamesa Eólica v OHIM — Enercon (Blended shades of green) (T‑245/12, EU:T:2013:588, ‘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 1 March 2012 (Case R 260/2011-1) concerning invalidity proceedings between Gamesa Eólica SL and Enercon (‘the contested decision’).

 Legal context

2        The second paragraph of Article 56 of the Statute of the Court of Justice of the European Union provides:

‘[A]n appeal may be brought by any party which has been unsuccessful, in whole or in part, in its submissions. However, interveners other than the Member States and the institutions of the Union may bring such an appeal only where the decision of the General Court directly affects them.’

3        Article 134(1) of the Rules of Procedure of the General Court provides:

‘The parties to the proceedings before the Board of Appeal [of OHIM] other than the applicant may participate, as interveners, in the proceedings before the General Court by responding to the application in the manner and within the period prescribed.’

4        Article 135(1) of those rules reads as follows:

‘The Office and the parties to the proceedings before the Board of Appeal other than the applicant shall lodge their responses to the application within a period of two months from the service of the application.’

5        Article 7(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) is worded as follows:

‘The following shall not be registered:

(b)      trade-marks which are devoid of any distinctive character;

…’

 Background to the dispute and the contested decision

6        On 30 January 2003, following an application filed by Enercon, OHIM registered the following sign as a Community trade mark under the number 2 346 542 (‘the mark at issue’):

7        The goods in respect of which the mark at issue was registered 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: ‘Wind energy converters, and parts therefor’.

8        The mark at issue was described in the application form as a ‘colour mark’.

9        On 26 March 2009, Gamesa Eólica SL (‘Gamesa’) filed an application for a declaration of invalidity of the mark at issue. By decision of 8 December 2010, the Cancellation Division of OHIM granted that application on the basis of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(b) thereof.

10      By the contested decision, the First Board of Appeal of OHIM upheld the appeal brought by Enercon against that invalidity decision on the ground, inter alia, that the mark at issue was composed of a figurative sign consisting of a two‑dimensional shape made up of colours and that it was of sufficiently distinctive character.

 The procedure before the General Court and the judgment under appeal

11      By application lodged at the Registry of the General Court on 4 June 2012, Gamesa brought an action for the annulment of the contested decision. In support of its action, Gamesa put forward three pleas in law. The first plea in law alleged infringement of Article 7(1)(b) of Regulation No 207/2009 on the ground that the First Board of Appeal of OHIM had erred in re-categorising the mark at issue, which was a colour mark, as a figurative mark and had considered that the mark at issue had a distinctive character. The second plea in law alleged infringement of Article 62 of Regulation No 207/2009 and of the principle of functional continuity. The third plea in law alleged infringement of Article 52(1)(b) of Regulation No 207/2009, in that the Board of Appeal should have found that Enercon acted in bad faith when filing its application for registration of the mark at issue.

12      After rejecting the second plea in law put forward by Gamesa, the General Court upheld the first plea in law and annulled the contested decision on the ground that the First Board of Appeal had relied on a mistaken perception of the nature and characteristics of the mark at issue and committed an error of assessment in finding that the mark at issue was not a colour mark but rather a two-dimensional figurative mark made up of colours. Having found that error of assessment concerning the nature of the mark at issue, the General Court did not examine whether the mark had any distinctive character.

 Forms of order sought

13      Enercon claims that the Court should:

–        set aside the judgment under appeal; and

–        order Gamesa to pay the costs.

14      OHIM claims that the Court should:

–        uphold the appeal;

–        set aside the judgment under appeal; and

–        order Gamesa to pay the costs.

15      Gamesa contends that the Court should:

–        dismiss the appeal; and

–        order Enercon to pay the costs.

 The appeal

16      Under Article 181 of its Rules of Procedure, where an 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.

17      In support of its appeal, Enercon relies on two grounds of appeal. By the first, it alleges infringement of its property rights by denial of due legal process and breach of the Rules of Procedure of the General Court. By the second, it alleges infringement of Article 7(1)(b) of Regulation No 207/2009.

 Admissibility of the appeal

 Arguments of the parties

18      Gamesa submits that the present appeal is inadmissible, since Enercon did not respond to the application initiating proceedings and therefore did not participate in the proceedings before the General Court as an intervener.

19      Enercon contends that responding to the application initiating proceedings in accordance with Article 134(1) of the Rules of Procedure of the General Court is not the only way for a party to intervene in the proceedings before the General Court. It argues that account must be taken of the fact that Enercon accepted the language of the proceedings and submitted to the General Court a power of attorney given to its representative. Enercon states that the General Court mentioned it among the parties in the judgment under appeal, that OHIM also referred to it in its written pleadings and that the correspondence exchanged between it and the Court of Justice since the present appeal was filed shows that the latter considers the appeal to be admissible.

20      OHIM has not expressly commented on the admissibility of the present appeal. It noted however, in the context of the ground of appeal relating to infringement of Enercon’s rights of defence, that Enercon deliberately chose not to lodge a response in accordance with Article 134(1) of the Rules of Procedure of the General Court.

 Findings of the Court

21      Under the second paragraph of Article 56 of the Statute of the Court of Justice, an appeal may be brought by any party which has been unsuccessful, in whole or in part, in its submissions. However, interveners other than the Member States and the institutions of the Union may bring such an appeal only where the decision of the General Court directly affects them.

22      It follows from the wording of Article 134(1) of the Rules of Procedure of the General Court that, in order to be considered an intervener before the General Court, a party to the proceedings before the Board of Appeal of OHIM other than the applicant before the General Court must have responded to the application in the manner and within the period prescribed.

23      Pursuant to Article 135(1) of the Rules of Procedure of the General Court, OHIM and the parties to the proceedings before the Board of Appeal other than the applicant are to lodge their responses to the application within a period of two months from the service of the application.

24      In the present case, it is undisputed that Enercon did not submit a response to the application before the General Court, although that application was served on it, and that it merely sent the General Court the power of attorney given to its lawyer and a letter accepting the language of the case. It cannot therefore be regarded as having responded to the application in the manner and within the period prescribed. Moreover, in the judgment of the General Court it is referred to only as ‘the other party to the proceedings before the Board of Appeal of OHIM’.

25      It must therefore be held that that Enercon did not participate in the proceedings before the General Court within the meaning of Article 134(1) of the Rules of Procedure of the General Court, particularly since it neither proposed its own form of order nor stated that it was supporting the form of order sought by either of the other parties. Accordingly, it was not an intervener in the proceedings before the General Court and cannot, therefore, bring an appeal against the judgment of the General Court under the second paragraph of Article 56 of the Statute of the Court of Justice. In that respect, it must be emphasised that an exchange of correspondence between the services of the Court and an applicant cannot in any way prejudge the admissibility of the action brought by it.

26      It follows that the present appeal is manifestly inadmissible.

 Costs

27      Under Article 137 of the Rules of Procedure of the Court of Justice, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the judgment or order which closes the proceedings. Under Article 138(1) of those rules, also applicable to the procedure on appeal by virtue of 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.

28      Since Gamesa has applied for costs and Enercon has been unsuccessful, the latter must be ordered to bear its own costs and to pay those incurred by Gamesa. Consequently, OHIM must be ordered to bear its own costs.

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

1.      The appeal is dismissed.

2.      Enercon GmbH shall bear its own costs and pay those incurred by Gamesa Eólica SL.

3.      The Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) shall bear its own costs.