Corte di giustizia UE n. 238/2013

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 24 October 2013 ( * ) (Appeal – Community trade mark – Word mark [OSCURATO:PERSONA] – Application for a declaration of invalidity made by the proprietor of the Community word mark [OSCURATO:PERSONA] – Declaration of invalidity – Surrender – [OSCURATO:PERSONA] 149 of the Rules of Procedure – Appeal which has become devoid of purpose – No need to adjudicate) [OSCURATO:PERSONA] C‑593/12 P, APPEAL under [OSCURATO:PERSONA] 56 of the Statute of the [OSCURATO:PERSONA] of Justice of the [OSCURATO:PERSONA], brought on 17 December 2012, Lancôme parfums et beauté & Cie, established in Paris (France), represented by A. von Mühlendahl, Rechtsanwalt, appellant, the other parties to the proceedings being: Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent, defendant at first instance, [OSCURATO:PERSONA] GmbH, established in Munich (Germany), represented by R. Schweizer, Rechtsanwalt, intervener at first instance, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of J.L. da [OSCURATO:PERSONA] (Rapporteur), President of the [OSCURATO:PERSONA], acting as President of the [OSCURATO:PERSONA], and G. Arestis and J.‑C. Bonichot, Judges, [OSCURATO:PERSONA]: P. [OSCURATO:PERSONA], [OSCURATO:PERSONA]: A. [OSCURATO:PERSONA], having decided, after hearing the [OSCURATO:PERSONA], to give a decision by reasoned order, pursuant to [OSCURATO:PERSONA] 149 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, makes the following [OSCURATO:PERSONA] 1 By its appeal, Lancôme parfums et beauté & Cie (‘Lancôme’) seeks to have set aside the judgment of 5 October 2012 in [OSCURATO:PERSONA] T‑204/10 Lancôme v OHIM – [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) (‘the judgment under appeal’), by which the [OSCURATO:PERSONA] of the [OSCURATO:PERSONA] dismissed the action that it had brought against the decision of the [OSCURATO:PERSONA] of Appeal of the Office for Harmonisation in the [OSCURATO:PERSONA] ([OSCURATO:PERSONA] and Designs) (OHIM) of 11 February 2010 ([OSCURATO:PERSONA] R 238/2009-2), concerning proceedings brought by [OSCURATO:PERSONA] GmbH (‘[OSCURATO:PERSONA]’) for a declaration of invalidity in respect of the word mark [OSCURATO:PERSONA] registered by Lancôme (‘the contested decision’). Background to the dispute and the judgment under appeal 2 On 30 September 1999, Lancôme filed an application for registration of the word mark [OSCURATO:PERSONA] at OHIM under [OSCURATO:PERSONA] (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). The goods covered by that application are in Class 3 of the [OSCURATO:PERSONA] of 15 June 1957 concerning the [OSCURATO:PERSONA] of Goods and Services for the purposes of Registration of [OSCURATO:PERSONA], as revised and amended, and correspond to the following description: ‘Cosmetic and make-up preparations’. That mark was registered on 30 June 2004. 3 On 25 August 2004, [OSCURATO:PERSONA] filed an application, pursuant to [OSCURATO:PERSONA] 55 of [OSCURATO:PERSONA] 40/94, for a declaration that that mark was invalid, on the basis of the earlier word mark [OSCURATO:PERSONA] of which it was proprietor. The ground put forward in support of the application for a declaration of invalidity was that referred to in [OSCURATO:PERSONA] 52(1)(a) of [OSCURATO:PERSONA] 40/94, read in conjunction with [OSCURATO:PERSONA] 8(1)(b) of that regulation. 4 By decision of 12 December 2008, the [OSCURATO:PERSONA] of OHIM granted the application for a declaration of invalidity. 5 On 13 February 2009, Lancôme brought an appeal before the [OSCURATO:PERSONA] of Appeal of OHIM against the decision of the [OSCURATO:PERSONA]. 6 By the contested decision, the [OSCURATO:PERSONA] of Appeal of OHIM upheld the decision of the [OSCURATO:PERSONA], having found, in essence, that there was a likelihood of confusion between the earlier mark and the mark in respect of which a declaration of invalidity was sought. Moreover, it rejected the argument that the application for a declaration of invalidity amounted to an abuse of rights. 7 By the judgment under appeal, the [OSCURATO:PERSONA] dismissed the action brought by Lancôme against the contested decision. 8 By its appeal, Lancôme seeks to have set aside the judgment under appeal, essentially on the ground that the [OSCURATO:PERSONA] was wrong to reject the pleas in law that it had relied on at first instance, that is to say, that there was no likelihood of confusion between the two marks and that [OSCURATO:PERSONA] assertion of rights based on a mark that it never intended to use amounts to an abuse of rights. Findings of the [OSCURATO:PERSONA] 9 [OSCURATO:PERSONA] 149 of the Rules of Procedure, which applies to appeal proceedings pursuant to [OSCURATO:PERSONA] 190(1) of those rules, if the [OSCURATO:PERSONA] declares that the action has become devoid of purpose and that there is no longer any need to adjudicate, the [OSCURATO:PERSONA] may at any time of its own motion, on a proposal from the Judge-Rapporteur and after hearing the parties and the [OSCURATO:PERSONA], decide to rule by reasoned order. 10 That provision must be applied in the context of the present appeal since, by document lodged at the [OSCURATO:PERSONA] on 7 June 2013, Lancôme informed the [OSCURATO:PERSONA] that it had surrendered the Community mark in question and notified OHIM accordingly, and asked the [OSCURATO:PERSONA] to declare that the appeal had therefore become devoid of purpose and that there was no need to adjudicate on it. 11 In its observations, lodged on 13 June 2013, OHIM stated that, in its view, there was nothing to preclude the proceedings from being declared devoid of purpose, while requesting that Lancôme be ordered to bear the costs. 12 [OSCURATO:PERSONA] did not submit any observations on the matter. 13 In order for an appellant to have an interest in bringing appeal proceedings, the appeal must be likely, if successful, to procure an advantage for it (see to that effect, inter alia, [OSCURATO:PERSONA] C‑552/09 P Ferrero v OHIM [2011] ECR I‑2063, paragraphs 43 and 44; the order of 19 January 2006 in [OSCURATO:PERSONA] C‑82/04 P Audi v OHIM , paragraph 20; and the order of 11 October 2007 in [OSCURATO:PERSONA] C‑301/05 P Wilfer v OHIM , paragraph 19). 14 In the present case, it is not disputed that, as a consequence of Lancôme’s surrender of the Community mark [OSCURATO:PERSONA], the proceedings for a declaration of invalidity in respect of that mark have been brought to an end, since none of the parties has demonstrated any interest in pursuing the present proceedings (see, to that effect, the orders in Audi v OHIM , paragraph 23, and Wilfer v OHIM , paragraph 23). 15 In those circumstances, it must be held that the present appeal has become devoid of purpose and that there is therefore no need to adjudicate. Costs 16 [OSCURATO:PERSONA] 142 of the Rules of Procedure of the [OSCURATO:PERSONA] of Justice, which applies to appeal proceedings pursuant to [OSCURATO:PERSONA] 184(1) of those rules, where a case does not proceed to judgment the costs are to be in the discretion of the [OSCURATO:PERSONA]. 17 In the present case, it is not disputed that the appeal has become devoid of purpose owing to Lancôme’s surrender of the Community mark, the declaration of invalidity in respect of which Lancôme contested. Accordingly, as the fact that there is no longer any need to adjudicate is attributable to Lancôme, it must be ordered to pay the costs of the present proceedings. On those grounds, the [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) hereby orders: 1. There is no need to adjudicate on the appeal. 2. Lancôme parfums et beauté & Cie shall pay the costs of the present proceedings. [Signatures] * Language of the case: English.