T-100/24

ORDER OF THE GENERAL COURT (Sixth Chamber) 12 November 2024 (*) ( Action for annulment – EU trade mark – Invalidity proceedings – EU word mark SCIO THETA – No interest in bringing proceedings – Inadmissibility ) In Case T‑100/24, Qx World Kft., established in Budapest (Hungary), represented by Á. László and A. Cserny, lawyers, applicant, v European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent, defendant, the other party to the proceedings before the Board of Appeal of EUIPO being SC Scio International SRL, established in Sânmartin (Romania), THE GENERAL COURT (Sixth Chamber), composed of M.J. Costeira (Rapporteur), President, M. Kancheva and P. Zilgalvis, Judges, Registrar: V. Di Bucci, having regard to the written part of the procedure, in particular: –        the plea of inadmissibility put forward by EUIPO by separate document lodged at the Registry of the General Court on 7 May 2024, –        Mandelay Kft.’s application to intervene lodged at the Court Registry on 21 May 2024, –        the applicant’s observations on the plea of inadmissibility lodged at the Court Registry on 2 July 2024, makes the following Order 1        By its action under Article 263 TFEU, the applicant, QX World Kft., seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 20 December 2023 (Cases R 1054/2021-4 and R 1080/2021-4) (‘the contested decision’).  Background to the dispute 2        On 5 May 2020, the applicant filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed by the other party to the proceedings before the Board of Appeal, SC Scio International SRL, on 26 May 2016, for the word sign SCIO THETA. 3        The goods and services covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 10, 35 and 42 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 corresponded, for each of those classes, to the following description: –        Class 10: ‘Medical apparatus, instruments and articles’; –        Class 35: ‘Marketing of medical apparatus, instruments and articles and medical software’; –        Class 42: ‘Design and development of medical software’. 4        The grounds relied on in support of the application for a declaration of invalidity were those referred to, first, in Article 59(1)(b) of 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) and, second, in Article 60(1)(a) of that regulation, read in conjunction with Article 8(1)(b) and Article 8(2)(c) thereof. 5        On 30 April 2021, the Cancellation Division upheld the application for a declaration of invalidity on the basis of Article 59(1)(b) of Regulation 2017/1001 and declared the contested mark to be invalid in its entirety. However, it rejected the application based on Article 60(1)(a) of that regulation, read in conjunction with Article 8(1)(b) and Article 8(2)(c) of that regulation, on the ground that the applicant had not demonstrated that the earlier mark SCIO was well known in one of the countries claimed. 6        On 15 June 2021, the other party to the proceedings before the Board of Appeal filed a notice of appeal with EUIPO against the Cancellation Division’s decision. 7        On the same day, the applicant filed an appeal and a cross-appeal against the Cancellation Division’s decision in so far as it had rejected its application for a declaration of invalidity based on Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) and Article 8(2)(c) of that regulation. 8        By the contested decision, the Board of Appeal dismissed the appeal of the other party to the proceedings and confirmed the Cancellation Division’s decision, in so far as it had upheld the application for a declaration of invalidity based on that party’s bad faith when filing the application for registration of the contested mark, within the meaning of Article 59(1)(b) of Regulation 2017/1001. The Board of Appeal also dismissed the appeals filed by the applicant against the Cancellation Division’s decision. More specifically, as regards the applicant’s main appeal, it considered that that appeal was inadmissible, in so far as the Cancellation Division’s decision had upheld the applicant’s claims by granting its application for a declaration of invalidity and cancelling the contested mark in its entirety. As regards the applicant’s cross-appeal, the Board of Appeal considered that, in the context of the re-examination of the dispute by virtue of the devolutive effect, it was entitled not to re-examine all the grounds and arguments put forward in support of the application for a declaration of invalidity if it was to find, as in the present case with the bad faith of the other party to the proceedings, the existence of an absolute ground for invalidity which was sufficient to confirm the Cancellation Division’s decision.  Forms of order sought 9        The applicant claims, in essence, that the Court should: –        annul the contested decision in so far as it dismissed the applicant’s appeal and cross-appeal against the Cancellation Division’s decision; –        refer the case back to the Board of Appeal. 10      In its plea of inadmissibility, EUIPO contends that the Court should: –        dismiss the action as inadmissible; –        order the applicant to pay the costs in the event that an oral hearing is convened. 11      In its observations on the plea of inadmissibility, the applicant contends, in essence, that the Court should: –        dismiss the plea of inadmissibility; –        declare the action admissible.  Law 12      Pursuant to Article 130(1) of the Rules of Procedure of the General Court, if the defendant so requests, the Court may rule on a plea of inadmissibility without going to the substance of the case. 13      Moreover, Article 126 of the Rules of Procedure provides that, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings. 14      In the present case, the Court considers that it has sufficient information from the documents in the file and has decided to give a decision without taking further steps in the proceedings. 15      In support of its plea of inadmissibility, EUIPO argues that the applicant does not have a legal interest in bringing proceedings, since the Board of Appeal dismissed the appeal filed by the other party to the proceedings against the Cancellation Division’s decision, which had declared the contested mark invalid in its entirety. Furthermore, the fact that the applicant does not agree with all of the Board of Appeal’s findings as regards the appeal and the cross-appeal cannot justify the filing of the present appeal. 16      The applicant disputes the plea of inadmissibility. It maintains that, by dismissing its appeal and its cross-appeal without examining the merits, the Board of Appeal has, in any event, adversely affected it. It claims that that dismissal deprived it of the requested partial annulment of the first-instance decision. Accordingly, the annulment of the contested decision could procure an advantage for the applicant, in so far as it could result in substantive examination of the cross-appeal. 17      Article 72(4) of Regulation 2017/1001 provides that an action before the General Court against a decision of a Board of Appeal of EUIPO is to be ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’. 18      According to settled case-law, an applicant’s legal interest in bringing proceedings constitutes the essential prerequisite for any legal proceedings and must, in the light of the purpose of the action, exist at the time at which the action is brought, failing which that action will be inadmissible. The legal interest in bringing proceedings presupposes that the action must be liable, if successful, to procure an advantage for the party bringing it. It follows that, according to the case-law, in so far as a decision of a Board of Appeal upholds in their entirety the claims of the party concerned, that party does not have standing to bring an action before the Court (see judgment of 5 February 2020, Globalia Corporación Empresarial v EUIPO – Touring Club Italiano (TC Touring Club), T‑44/19, not published, EU:T:2020:31, paragraph 27 and the case-law cited). 19      In that regard, it has been held that a decision of a Board of Appeal must be regarded as having upheld the claims of one of the parties before that Board of Appeal, when it has granted the application of that party on the basis of one of the grounds for refusal of registration or for invalidity of a mark or, more generally, of only part of the arguments put forward by that party, even if it did not examine or rejected the other grounds or arguments raised by that party (see judgment of 5 February 2020, TC Touring Club, T‑44/19, not published, EU:T:2020:31, paragraph 28 and the case-law cited). 20      Given that the various grounds for invalidity all result in exactly the same outcome, it is sufficient that one of those grounds be well founded for an application for a declaration of invalidity to be successful (see, to that effect, order of 14 July 2009, Hoo Hing v OHIM – Tresplain Investments (Golden Elephant Brand), T‑300/08, not published, EU:T:2009:275, paragraph 31 and the case-law cited). 21      Furthermore, it cannot be ruled out that the Board of Appeal, where it considers that one of the grounds for invalidity put forward by the applicant for a declaration of invalidity is well founded, may also decide to examine and, where appropriate, to reject the other grounds for invalidity put forward. However, that part of the reasoning of its decision does not constitute the necessary basis for the operative part upholding the application for a declaration of invalidity, which is justified sufficiently by the ground for invalidity which was upheld. In such a situation, there is no question of a rejection in part of the application for a declaration of invalidity, since the claims of the applicant for a declaration of invalidity are upheld in their entirety (see, to that effect, order of 14 July 2009, Golden Elephant Brand, T‑300/08, not published, EU:T:2009:275, paragraph 35 and the case-law cited). 22      In the present case, the Board of Appeal dismissed the appeal filed by the other party to the proceedings against the Cancellation Division’s decision, which had declared the contested mark invalid in its entirety on the basis of Article 59(1)(b) of Regulation 2017/1001. Thus, notwithstanding the fact that the applicant does not share the Board of Appeal’s assessments relating to the dismissal of its appeals against the Cancellation Division’s decision, the contested decision upheld its claims by confirming the invalidity of the contested mark in its entirety. 23      It follows that, in the light of the considerations recalled in paragraphs 18 and 21 above and since the contested decision has, in any event, fully upheld its claims, the applicant cannot bring an appeal against that decision, with the result that the plea of inadmissibility submitted by EUIPO must be upheld and the appeal dismissed as manifestly inadmissible, without there being any need to examine further the other arguments of the parties. 24      In those circumstances and in accordance with Article 50 of the Rules of Procedure, read in conjunction with Article 142(2) of those rules, there is also no longer any need to rule on the application to intervene submitted by Mandelay.  Costs 25      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 26      Although the applicant has been unsuccessful, EUIPO applied for it to be ordered to pay the costs only in the event that an oral hearing was convened. Since no hearing was held, each party must be ordered to bear its own costs. 27      Moreover, pursuant to Article 144(10) of the Rules of Procedure, Mandelay is to bear its own costs. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby orders: 1.      The action is dismissed. 2.      Each party shall bear its own costs. 3.      Mandelay Kft. shall bear its own costs. Luxembourg, 12 November 2024. V. Di Bucci  M.J. Costeira Registrar  President *      Language of the case: English.