Case C‑801/21 P

European Union Intellectual Property Office

v

Indo European Foods Ltd

Judgment of the Court (Fifth Chamber) of 20 June 2024

(Appeal – EU trade mark – Application for EU figurative mark Abresham Super Basmati Selaa Grade One World’s Best Rice – Earlier non-registered United Kingdom word mark BASMATI – Regulation (EC) No 207/2009 – Article 8(4) – Regulation (EU) 2017/1001 – Article 72 – Relative ground for refusal – Opposition – Appeal before the Board of Appeal – Dismissal – Action before the General Court – Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community – Articles 126 and 127 – Transition period – Effects of the end of the transition period on the protection of the earlier mark – Circumstances after the adoption of the decision at issue – Continuance of the purpose of the action and of the interest in bringing proceedings)

1. Action for annulment – Admissibility criteria – Interest in bringing proceedings – To be considered of the Court's own motion

   (Art. 263, fourth para., TFEU)

   (see paragraphs 45, 76)

2. Action for annulment – Purpose – Claim for annulment of a decision, based on an earlier right that disappeared after that decision was adopted – Continuing existence of the purpose of the action – Condition – No withdrawal of the contested act

   (Art. 263 TFEU)

   (see paragraphs 58, 59)

3. EU trade mark – Appeals procedure – Action before the EU judicature – Action brought against a decision rejecting an opposition to registration of an EU trade mark – Interest in bringing proceedings – Condition – Action capable of procuring a benefit for the party bringing it – Criteria for assessment

   (Art. 263, fourth para., TFEU; European Parliament and Council Regulation 2017/1001, Art. 72)

   (see paragraphs 78-83)

4. EU trade mark – Appeals procedure – Action before the EU judicature – Jurisdiction of the General Court – Direction issued to EUIPO – Precluded

   (European Parliament and Council Regulation 2017/1001, Art. 72(6))

   (see paragraph 93)

Résumé

The Court of Justice, hearing an appeal brought by the European Union Intellectual Property Office (EUIPO), which it dismisses, rules on the issue of the continuing existence of the purpose of the action and on the issue of the opponent’s continuing interest in bringing proceedings, following the disappearance, on a date subsequent to the decision confirming the rejection of the opposition and to the bringing of an action before the General Court against that decision, of the protection conferred on the earlier right due to the end of the transition period established by the Agreement on the withdrawal of the United Kingdom from the European Union. ( 1 )

On 14 June 2017, Mr Chakari filed an application with EUIPO for registration of the EU figurative mark Abresham Super Basmati Selaa Grade One World’s Best Rice, for goods made from rice. Indo European Foods Ltd filed a notice of opposition ( 2 ) on the basis of the earlier non-registered United Kingdom word mark BASMATI, which, under the applicable law in the United Kingdom, would allow it to prevent the use of the mark applied for. The Opposition Division rejected the opposition.

Subsequently, by decision of 2 April 2020 (‘the decision at issue’), the Board of Appeal upheld the rejection of the opposition on the ground that Indo European Foods had failed to prove that the name ‘basmati’ would allow it to prohibit the use of the mark applied for in the United Kingdom.

By judgment of 6 October 2021, ( 3 ) the General Court annulled the decision at issue. It held, first, that the United Kingdom’s withdrawal from the European Union had not caused the dispute to become devoid of purpose, given that the decision at issue had been adopted in the course of the transition period during which the earlier mark concerned continued to receive the same protection as it would have received had the United Kingdom not withdrawn from the European Union. Second, it held that Indo European Foods’ interest in bringing proceedings continued to exist.

EUIPO therefore brought an appeal against that judgment, raising a single ground of appeal alleging infringement of the requirement that the applicant should continue to have an interest in bringing proceedings.

Findings of the Court

In the first place, the Court of Justice rules on the General Court’s examination of whether the purpose of the dispute continued to exist. Thus, the Court of Justice finds that EUIPO’s line of argument that the General Court confused the issue of the continuing interest in bringing proceedings with the date on which the legality of a contested decision must be assessed is based on a misreading of the General Court’s judgment. As regards the purpose of the dispute, the General Court merely examined whether it continued to exist in the light of the end of the transition period which had occurred during the proceedings before it.

Furthermore, the Court of Justice states that, according to settled case-law, the purpose of the action must, like the interest in bringing proceedings, continue until the final decision, failing which there will be no need to adjudicate, which presupposes that the action or, as the case may be, the appeal must be liable, if successful, to procure an advantage for the party bringing it. It also points out that, where a decision which is the subject of an action for annulment before the General Court has not been formally withdrawn, the General Court is justified in finding that the dispute retains its purpose. Such a finding is not called into question by the fact that the contested decision lapsed after the action was brought.

In the present case, the Court of Justice states that, in order to find that the action had not become devoid of purpose, the General Court relied on the finding that the subject matter of the dispute was the decision at issue, which was adopted before the end of the transition period. Given that EUIPO does not dispute either that, on the date on which the General Court ruled, the decision at issue had not been formally withdrawn, or that the end of the transition period did not have the effect of retroactively eliminating that decision, it concludes that EUIPO’s line of argument is therefore unfounded.

In the second place, the Court of Justice examines the issue of the assessment of whether there is a continuing interest in bringing proceedings. In that regard, it rejects EUIPO’s argument that the General Court failed to take into account the specific nature of opposition proceedings, the essential function of a trade mark, the principle of territoriality and the unitary character of an EU trade mark.

First of all, that line of argument is based on the premiss that, in the case of an action brought against a decision of a Board of Appeal rejecting an opposition, the question of whether an interest in bringing proceedings before the General Court continues to exist must be assessed solely in the light of the legal interests protected by the applicable EU trade mark regulation and thus depends solely on whether there can still be a risk of conflict when the General Court rules. That premiss presupposes limiting the factors which may be taken into consideration in order to assess whether an applicant bringing an action under Article 72 of Regulation 2017/1001 ( 4 ) continues to have an interest in bringing proceedings, as compared with an applicant bringing an action under Article 263 TFEU, and is not supported either in the applicable legislation or in the case-law.

Next, the Court of Justice states that the existence of an interest in bringing an action for annulment requires that, through its outcome, the action must be capable of procuring an advantage to the person which brought it. Thus, the question of whether, as regards a decision rejecting an opposition to the registration of an EU trade mark, the person who has filed such an opposition is likely to derive an advantage from an action brought before the General Court must be assessed in the light of the specific circumstances, in view of all the consequences that may follow from a possible finding of unlawfulness vitiating that decision and in view of the nature of the damage allegedly suffered. In the present case, first, the General Court was entitled to find that the purpose of the action had not disappeared. Second, the decision at issue upheld the rejection of the opposition on the basis of the finding that the conditions for the application of Article 8(4) of Regulation 2017/1001 were not satisfied. Therefore, since it is the infringement of that provision by the Board of Appeal which Indo European Foods invoked in support of its action before the General Court, and since the decision at issue is detrimental to the economic interests of Indo European Foods, the annulment of that decision would be capable of procuring an advantage for it.

Lastly, the fact that the other party before the Board of Appeal could, if the appeal before that body were successful, convert his trade mark application into national trade mark applications in all the Member States as from the end of the transition period, has no bearing on Indo European Foods’ interest in bringing proceedings against the decision at issue.

In the third place, the Court of Justice analyses the line of argument by which EUIPO claims that the General Court infringed Article 72(6) of Regulation 2017/1001 regarding EUIPO’s measures to comply with judgments of the EU Courts, in so far as the General Court required EUIPO not to examine whether there was a continuing interest in bringing proceedings and required it not to take into account the legal effects of the end of the transition period provided for by the Agreement on the withdrawal of the United Kingdom from the European Union.

First, the Court of Justice states that, although the institution, body, office or agency whose act has been declared void is required, in order to comply with a judgment annulling an act and to comply with it fully, to have regard to the operative part of that judgment and the grounds which constitute the essential basis for it, it is not, however, for the General Court to issue orders to EUIPO. Second, it states that the General Court confined itself, in essence, to finding that Indo European Foods had an interest in bringing proceedings before the General Court. Consequently, it cannot be held that the General Court imposed those alleged obligations on EUIPO.

( 1 ) Articles 126 and 127 of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7).

( 2 ) Based on Article 8(4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

( 3 ) Judgment of 6 October 2021, Indo European Foods v EUIPO – Chakari (Abresham Super Basmati Selaa Grade One World’s Best Rice) (T‑342/20, EU:T:2021:651).

( 4 ) 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).