Corte di giustizia UE n. 2098/2018

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 5 July 2018 ( * ) (Appeal — EU trade mark — Invalidity proceedings — Withdrawal of the application for a declaration of invalidity — Appeal which has become devoid of purpose — No need to adjudicate) [OSCURATO:PERSONA] C‑162/18 P, APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 28 February 2018, Wenger SA, established in Delémont (Switzerland), represented by A. Sulovsky, Rechtsanwältin, appellant, the other parties to the proceedings being: [OSCURATO:PERSONA] (EUIPO), represented by D. Botis, acting as Agent, defendant at first instance, [OSCURATO:PERSONA], established in Baar (Switzerland), intervener at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of A. [OSCURATO:PERSONA] (Rapporteur), [OSCURATO:PERSONA] of the [OSCURATO:PERSONA], A. Prechal and E. Jarašiūnas, [OSCURATO:PERSONA], [OSCURATO:PERSONA]: E. [OSCURATO:PERSONA], [OSCURATO:PERSONA]: A. [OSCURATO:PERSONA], having decided, after hearing the [OSCURATO:PERSONA], to give a decision by reasoned order, in accordance with [OSCURATO:PERSONA] 149 of the Rules of Procedure of the [OSCURATO:PERSONA], makes the following [OSCURATO:PERSONA] 1 By its appeal, Wenger SA seeks to have set aside the judgment of the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] of 23 January 2018, Wenger v EUIPO — [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) (T‑869/16, not published, ‘the judgment under appeal’, EU:T:2018:23), by which the [OSCURATO:PERSONA] dismissed its action for annulment of the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 20 September 2016 ([OSCURATO:PERSONA] R 2098/2015‑5) relating to invalidity proceedings brought by [OSCURATO:PERSONA] against Wenger. Background to the dispute and the judgment under appeal 2 On 20 August 2008, Wenger filed an application for registration of the word sign [OSCURATO:PERSONA] as an EU trade mark. 3 That mark was registered on 16 June 2009. 4 On 17 June 2014, [OSCURATO:PERSONA] filed an application with EUIPO for a declaration that that mark was invalid. 5 By decision of 19 August 2015, the [OSCURATO:PERSONA] of EUIPO partially rejected that application. 6 On 19 October 2015, [OSCURATO:PERSONA] filed a notice of appeal against that decision. By the decision of 20 September 2016, the [OSCURATO:PERSONA] of Appeal of EUIPO upheld the appeal, finding that the registration of the contested mark was invalid. 7 By application lodged at the Registry of the [OSCURATO:PERSONA] on 7 December 2016, Wenger sought annulment of that latter decision. 8 By the judgment under appeal, the [OSCURATO:PERSONA] dismissed Wenger’s action and ordered it to pay the costs of the proceedings. Procedure before the [OSCURATO:PERSONA] 9 By letter dated 12 March 2018, Wenger informed the [OSCURATO:PERSONA] that, following an amicable agreement concluded between itself and [OSCURATO:PERSONA], the latter had, on 6 March 2018, withdrawn its application to EUIPO for a declaration of invalidity of the mark [OSCURATO:PERSONA]. Wenger enclosed with that letter EUIPO’s certification relating to the change of lawyer representing [OSCURATO:PERSONA] and to the withdrawal of the application for a declaration of invalidity. 10 In that letter, Wenger noted that [OSCURATO:PERSONA] had withdrawn its application for a declaration of invalidity of the mark in question before the decision of the [OSCURATO:PERSONA] of Appeal of EUIPO of 20 September 2016 declaring the registration of that mark to be invalid could take effect and become final. As a result of that withdrawal, it claims, the present appeal proceedings have become devoid of purpose, with the result that there is no longer any need to adjudicate on the appeal. Wenger has therefore asked the [OSCURATO:PERSONA] to set aside the judgment under appeal, to declare that the application for a declaration of invalidity has been withdrawn and to take all necessary measures to maintain the contested mark. 11 [OSCURATO:PERSONA] has not taken a position on Wenger’s request for a ruling that there is no need to adjudicate. 12 By letter of 20 April 2018, EUIPO stated that it had no objection to a declaration that the proceedings are now devoid of purpose, while requesting the [OSCURATO:PERSONA] not to order it to pay the costs. The appeal 13 It should be noted, at the outset, that an appellant’s interest in bringing appeal proceedings presupposes that the appeal must be likely, if successful, to procure an advantage for it (order of 16 May 2013, Volkswagen v OHIM , C‑260/12 P, not published, EU:C:2013:316, paragraph 13 and the case-law cited). 14 In the present case, none of the parties has claimed any interest in pursuing the present proceedings. 15 In that regard, it is common ground that the agreement reached between Wenger and [OSCURATO:PERSONA] led to the withdrawal by the latter of the application for a declaration of invalidity which it had filed in respect of the mark owned by Wenger and, thus, that agreement had the effect of bringing to an end the dispute concerning that application for a declaration of invalidity. 16 As that application had been withdrawn, as follows from [OSCURATO:PERSONA] 66(1), read in conjunction with [OSCURATO:PERSONA] 71(3), of Regulation (EU) 2017/1001 of the [OSCURATO:PERSONA] and of the Council of 14 June 2017 on the [OSCURATO:PERSONA] trade mark (OJ 2017 L 154, p. 1), before the decision of the [OSCURATO:PERSONA] of Appeal of EUIPO of 20 September 2016 declaring registration of the contested mark invalid took effect and had become final, it must be held, on account of that withdrawal, that that decision has become inoperative (see, to that effect, order of 12 April 2018, Cryo-Save v EUIPO , C‑327/17 P, not published, EU:C:2018:235, paragraph 15). 17 In those circumstances, the present appeal has become devoid of purpose, and there is accordingly no need to adjudicate on it. Costs 18 [OSCURATO:PERSONA] 149 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, applicable to the procedure on appeal pursuant to [OSCURATO:PERSONA] 190 thereof, where a case does not proceed to judgment, the [OSCURATO:PERSONA] is to give a decision as to costs. 19 In accordance with [OSCURATO:PERSONA] 142 of those rules, applicable to the procedure on appeal pursuant to [OSCURATO:PERSONA] 184(1) thereof, costs are, in such a case, to be in the discretion of the [OSCURATO:PERSONA], subject, however, to the provisions of [OSCURATO:PERSONA] 184(2) to (4) of those rules. 20 In the present case, there is no need to rule because of the agreement reached between Wenger and [OSCURATO:PERSONA]. It follows therefrom that the fact that there is no need to adjudicate is attributable to the appellant and the intervener at first instance. 21 However, the proceedings before the [OSCURATO:PERSONA] involved a written part in which the intervener at first instance did not participate. Consequently, in accordance with [OSCURATO:PERSONA] 184(4) of the Rules of Procedure, that intervener cannot be ordered to pay the costs incurred by EUIPO in the present proceedings. 22 Accordingly, it is appropriate to order the appellant alone to bear its own costs and to pay the costs incurred by EUIPO. 23 Finally, it is not for the [OSCURATO:PERSONA] to rule on the costs relating to the proceedings at first instance, since there is no need to rule on the present appeal and since, therefore, the judgment under appeal has not been set aside. On those grounds, the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] hereby orders: 1. There is no need to adjudicate on the present appeal. 2. Wenger SA shall bear its own costs and shall pay those incurred by the [OSCURATO:PERSONA] (EUIPO) in the context of the present proceedings. Luxembourg, 5 July 2018. A. [OSCURATO:PERSONA] A. [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] * Language of the case: English.