ORDER OF THE GENERAL COURT (First Chamber)

4 July 2013(*)

(Community trade mark – Opposition proceedings – Revocation of the earlier Community mark – No need to adjudicate)

In Case T‑589/10,

Just Music Fernsehbetriebs GmbH, established in Landshut (Germany), represented by T. Kaus, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,

defendant,

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

France Télécom, established in Paris (France), represented by C. Bertheux Scotte, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 14 October 2010 (Case R 1408/2009-1), concerning opposition proceedings between France Télécom and Just Music Fernsehbetriebs GmbH,

THE GENERAL COURT (First Chamber),

composed of J. Azizi, President, S. Frimodt Nielsen and E. Buttigieg (Rapporteur), Judges,

Registrar: E. Coulon,

makes the following

Order

 Background to the dispute, procedure and forms of order sought

1        On 2 August 2007, the applicant, Just Music Fernsehbetriebs GmbH, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The mark in respect of which registration was sought is the following figurative sign:

3        The services in respect of which registration was sought are in Classes 38 and 41 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 38: ‘Broadcasting of film, television and radio programmes, music, videos and other data, including video clips; transmission of audio, video and other signals via broadcasting systems, including via cable, satellite, internet protocol, the internet, to mobile terminals’;

–        Class 41: ‘Radio or television entertainment; editing of radio and television programmes; production of film, television and radio programmes, music and videos’.

4        The application for a Community trade mark was published in Community Trade Marks Bulletin No 2/2008 of 14 January 2008.

5        On 11 April 2008, the intervener, France Télécom, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), against registration of the trade mark applied for in respect of the services referred to in paragraph 3 above.

6        The opposition was based on the following earlier Community figurative mark (‘the earlier mark’):

7        The earlier mark designated, inter alia, services in Classes 38 and 41, corresponding, for each of those classes, to the following description:

–        Class 38: ‘Telecommunications, communications by telephone, radio telephone, telegram, fibreoptic and cable network, and all telecomputing means; communication via computer terminals; cellular telephone communication services; transmission and dissemination of data, sound and images, transmission of information by data transmission accessible by access code or terminals; services relating to the transmission of information and of data by telematic means with a view to obtaining information contained in data banks and image banks; dissemination of information by electronic means, among other[s] via worldwide communications networks (internet) or private access networks (intranet), providing access to telephone, radio telephone, computer and data transmission networks, providing connections to a computer network, connection by means of telecommunications to a global computer network; cable television broadcasting; providing access to digital music websites on the internet; providing access to MP3 websites on the internet; providing digital music by telecommunication; downloading of video games, digital data and software, namely transmission of program[me]s or data by means of telecomputing networks’;

–        Class 41: ‘Entertainment; cultural activities; television and radio entertainment; ticket reservation and booking services for entertainment, cultural events; electronic library services for the supply of electronic information (including archive information) in the form of electronic texts, audio and/or video information and data, games and entertainment; publication of texts, sound and/or visual media of all kinds and of multimedia media (interactive discs, audio-digital compact discs with read‑only memory), publication of multimedia program[me]s; film production and videotape film production’.

8        The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(5), respectively, of Regulation No 207/2009).

9        On 30 September 2009, the Opposition Division upheld the opposition and rejected the application for registration in respect of all services covered by it (‘the decision of the Opposition Division’). The Opposition Division essentially found that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.

10      On 23 November 2009, the applicant filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

11      By decision of 14 October 2010 (‘the contested decision’), the First Board of Appeal of OHIM upheld the decision of the Opposition Division and dismissed the appeal.

12      By application lodged at the Registry of the General Court on 29 December 2010, the applicant brought the present action. The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to annul the decision of the Opposition Division and to uphold the application for registration;

–        order OHIM to pay the costs;

–        order the intervener to pay the costs incurred by the applicant in the proceedings before the Board of Appeal and the Opposition Division.

13      In addition, in the application, the applicant asks the Court, ‘in the alternative’, to stay proceedings until a definitive decision is reached on the application for revocation filed by the applicant on 21 December 2010 at OHIM against the earlier mark.

14      By documents lodged at the Court Registry on 22 and 28 February 2011, OHIM and the intervener respectively submitted their observations on the request for a stay of proceedings. Whereas OHIM did not object to it, the intervener sought the dismissal of that request.

15      By decision of 29 June 2011, the President of the First Chamber of the General Court dismissed the request for a stay of proceedings brought by the applicant.

16      On 7 April 2011, the intervener lodged a response at the Court Registry. The intervener claims that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs, including those incurred by the intervener before the Opposition Division and the Board of Appeal.

17      On 15 April 2011, OHIM lodged a response. OHIM claims that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

18      On 25 July 2011, the applicant lodged a reply.

19      No application for leave to lodge a rejoinder having been made, pursuant to Article 135(2) of the Rules of Procedure of the General Court, the written procedure was closed on 15 September 2011.

20      By document lodged at the Court Registry on 8 November 2011, the applicant notified the Court of the decision of the Cancellation Division of OHIM of the same date declaring that the earlier mark had been revoked under Article 51(1)(a) of Regulation No 207/2009 (‘the revocation decision’). The Cancellation Division essentially found that the intervener failed to show genuine use of the earlier mark in the European Union for a continuous period of five years in accordance with that provision. The mark was declared revoked as from 21 December 2010, the date on which the application for revocation was lodged at OHIM by the applicant. In accordance with the decision of the President of the First Chamber of the General Court of 28 November 2011, the revocation decision was added to the file in the present case.

21      By document lodged at the Court Registry on 23 February 2012, the applicant, on the one hand, informed the Court of the definitive nature of the revocation decision and, on the other, requested the Court to declare that there was no need to adjudicate, in so far as the earlier mark no longer existed. The applicant also requested that the intervener be ordered to pay the costs, in the light of the fact that it had filed an opposition on the basis of a mark which had not been put to genuine use and because the intervener had rejected the applicant’s offer to settle the matter amicably.

22      By document lodged at the Court Registry on 6 March 2012, OHIM stated that it had no objection to the finding that there was no need to adjudicate pursuant to Article 113 of the Rules of Procedure but that the applicant should be ordered to pay the costs.

23      By document lodged at the Court Registry on 8 March 2012, the intervener requested dismissal of the application for an order that there was no need to adjudicate. The intervener claimed, in essence, that the revocation of the earlier mark had no bearing on the present case, since the revocation took effect as from 21 December 2010, whereas the Court had to rule on an opposition filed in 2008, at which time the earlier mark was valid. No observations were submitted by the intervener with regard to costs.

24      In response to a written question from the Court, the applicant, by document lodged at the Court Registry on 24 May 2012, stated that its application for an order that there was no need to adjudicate of 23 February 2012 was not to be interpreted as an indication that it wished to discontinue the proceedings within the meaning of Article 99 of the Rules of Procedure.

25      By order of 2 July 2012, the Court reserved for the final judgment its decision on the applicant’s application of 23 February 2012 for an order that there is no need to adjudicate.

26      By document lodged at the Court Registry on 11 January 2013, the applicant again requested the Court to find that there is no need to adjudicate following the definitive revocation of the earlier mark. In support of its new application, the applicant relied on the order of 26 November 2012 in Case T‑548/11 MIP Metro v OHIM – Real Seguros (real,-QUALITY), not published in the ECR.

27      On 13 February 2013, the Court informed the parties of the following measures of organisation of procedure. First, the Court invited OHIM and the intervener to give their views on, inter alia, the conclusions to be drawn for the present proceedings from the order in real,-QUALITY, paragraph 26 above. Second, the Court invited all the parties to give their views on the procedural consequences that they consider should be drawn by OHIM so far as concerns the application for registration in the case of an order that there is no need to adjudicate, annulment of the contested decision or dismissal of the present action.

28      By documents lodged at the Court Registry on 6 and 11 March 2013 respectively, OHIM and the applicant stated their support for the finding in the present case that there is no need to adjudicate. In addition, they stated that, if the Court were to find that there is no need to adjudicate, the application for registration must be upheld in its entirety, notwithstanding the contrary decisions taken by the Opposition Division and the Board of Appeal.

29      By document lodged at the Court Registry on 11 March 2013, the intervener stated that it opposed the finding in the present case that there is no need to adjudicate. In addition, the intervener stated that, if the Court were to find that there is no need to adjudicate, the contested decision would necessarily have legal effects precluding the registration of the mark applied for. According to the intervener, the applicant could, from a legal point of view, submit a new application for registration but that registration would have effect only from the date on which the earlier mark was revoked, that is to say, 21 December 2010. The intervener also stated that, in the light of the length of the proceedings due to, inter alia, the conduct of the applicant which brought an appeal before the Board of Appeal and an action before the General Court, the applicant should be ordered to pay the costs incurred before the General Court, the Board of Appeal and the Opposition Division in accordance with Article 87(6) of the Rules of Procedure.

 Law

30      Under Article 114(1) of the Rules of Procedure, a party applying for a decision on admissibility, on lack of competence or other preliminary plea not going to the substance of the case is to make the application by a separate document. Article 114(3) of those Rules provides that, unless the Court otherwise decides, the remainder of the proceedings are to be oral. Under Article 114(4) thereof, the Court is to decide on the application or reserve its decision for the final judgment.

31      Having heard the parties in accordance with Article 114(2) of the Rules of Procedure, the Court considers that it has sufficient information on the basis of the documents in the case to rule on the present action by way of reasoned order.

32      By its first head of claim, the applicant seeks the annulment of the contested decision by which the First Board of Appeal of OHIM dismissed its appeal and upheld the decision of the Opposition Decision rejecting the application for registration of a Community trade mark in respect of all services covered by that mark submitted by the applicant, holding, in essence, that there was a likelihood of confusion between the mark applied for and the earlier mark within the meaning of Article 8(1)(b) of Regulation No 207/2009.

33      It is common ground that, by the revocation decision, the Cancellation Division revoked the earlier mark as from 21 December 2010 under Article 51(1)(a) of Regulation No 207/2009 and that that decision has become definitive. It should also be noted that that earlier mark formed the sole basis for the notice of opposition filed by the intervener and the sole basis of both the decision of the Opposition Division and the contested decision.

34      It is therefore necessary to determine whether, following the revocation of the earlier mark, annulment of the contested decision could still procure an advantage for the applicant. It is settled case-law that the interest in bringing proceedings must continue until the final decision, failing which there will be no need to adjudicate, which presupposes that the action must be likely, if successful, to procure an advantage for the party bringing it (Case C‑362/05 P Wunenburger v Commission [2007] ECR I‑4333, paragraph 42, and order of 11 October 2007 in Case C‑301/05 P Wilfer v OHIM, not published in the ECR, paragraph19; Joined Cases T‑494/08 to T‑500/08 and T‑509/08 Ryanair v Commission [2010] ECR II‑5723, paragraph 43 and the case-law cited).

35      In the present case, in the light of the definitive revocation of the earlier mark, it must be noted that, as OHIM and the applicant stated in their answers to the written questions posed by the Court, the mark for which registration was sought by the applicant will be registered both where the contested decision is annulled by the Court and where there is a finding that there is no need to adjudicate, despite the decisions of OHIM bodies rejecting that application for registration.

36      The finding by the Court in the present case that there is no need to adjudicate would have the result that the decision of the Opposition Division and the contested decision would not take effect. More specifically, in accordance with the second sentence of Article 58(1) of Regulation No 207/2009, 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 when no appeal has been lodged at OHIM in the form and within the time-limits prescribed in Article 60 of Regulation No 207/2009 or when such an appeal has been definitively dismissed by the Board of Appeal. However, the present case, where the Court finds that there is no need to adjudicate, does not concern either of those situations, given that the contested decision has not taken effect either. It is clear from Article 64(3) of Regulation No 207/2009 that the decisions of the Boards of Appeal take effect only as from the date of expiration of the period referred to in Article 65(5) of Regulation No 207/2009 or, if an action has been brought before the courts of the Union within that period, as from the date of dismissal of such 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 in real,‑ QUALITY, paragraph 26 above, paragraph 23; see, to that effect and by analogy, order in Case T‑10/01 Lichtwer Pharma v OHIM – Biofarma (Sedonium) [2003] ECR II‑2225, paragraph 17, and order of 11 September 2007 in Case T‑185/04 Lancôme v OHIM – Baudon (AROMACOSMETIQUE), not published in the ECR, paragraph 22).

37      It follows from the foregoing that, in the light of the definitive revocation of the earlier mark and the fact that that the decisions of OHIM bodies have no effect where the Court finds that there is no need to adjudicate, a judgment of the Court on the substance of the case is not likely, if successful, to procure an advantage for the applicant. The Court therefore finds that there is no longer any need to adjudicate on the action for annulment brought by the applicant in accordance with its application contained in the documents of 23 February 2012 and 11 January 2013.

38      The intervener’s argument that the action for annulment still has a purpose, in the light of the fact that the revocation of the earlier mark was declared only from 21 December 2010 and that at the time that the opposition was filed – 11 April 2008 – that mark was still valid, cannot call that finding into question. It has been established in paragraphs 35 and 36 above that a judgment of the Court on the substance of the case is not likely, if successful, to procure an advantage for the applicant. Moreover, in the light of the definitive revocation of the earlier mark, the intervener has not established that it retains an interest that could justify the Court ruling on the substance in the present case.

39      Moreover, in so far as, by the present order, the Court is not in fact carrying out a review of the lawfulness of the contested decision but is merely establishing that the applicant’s interest in bringing proceedings has ceased to exist, there is no longer any need to adjudicate on the applicant’s second head of claim, irrespective of whether it is admissible.

 Costs

40      Under Article 87(6) of the Rules of Procedure, where a case does not proceed to judgment the costs are to be in the discretion of the Court. Pursuant to Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of proceedings before the Board of Appeal are regarded as recoverable costs.

41      In the circumstances of the present case, in the light of the fact that the finding that there is no need to adjudicate stems from the revocation of the earlier mark and, moreover, the fact that, at the time that the contested decision was adopted, that mark would be eligible for protection under Regulation No 207/2009, the Court finds that the applicant and the intervener should be ordered to bear their own costs and to pay those incurred by OHIM.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby orders:

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

2.      Just Music Fernsehbetriebs GmbH and France Télécom shall bear their own costs and shall each pay half of the costs incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

Luxembourg, 4 July 2013.

E. Coulon

       J. Azizi

Registrar

       President