25 January 2023 (*)

(Action for annulment – EU trade mark – Opposition proceedings – Application for EU word mark SMILEY – Earlier EU word marks SMILEY, SMILEY TV and SMILEY – Cross-claim – No interest in bringing proceedings – Inadmissibility)

In Case T‑785/21,

SC Ha Ha Ha Production SRL,

established in Cãlineşti (Romania), represented by O. Anghel, lawyer,

applicant,

European Union Intellectual Property Office (EUIPO),

represented by T. Frydendahl, acting as Agent,

defendant,

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

The Smiley Company SPRL,

established in Brussels (Belgium), represented by B. Fontaine, lawyer,

THE GENERAL COURT (Seventh Chamber),

composed of K. Kowalik-Bańczyk, President, E. Buttigieg (Rapporteur) and G. Hesse, Judges,

Registrar: E. Coulon,

having regard to the written part of the procedure, inter alia:

–having regard to the cross-claim of the intervener lodged at the Court Registry on 31 March 2022,

–having regard to the plea of inadmissibility relating to the cross-claim, raised by EUIPO by document lodged at the Court Registry on 28 June 2022,

–having regard to the response of the applicant to the cross-claim, lodged at the Court Registry on 13 July 2022,

–having regard to the observations of the intervener on the plea of inadmissibility relating to the cross-claim, lodged at the Court Registry on 9 August 2022,

makes the following

By its action under Article 263 TFEU, the applicant, SC Ha Ha Ha Production SRL, seeks, inter alia, the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 October 2021 (Case R 2936/2019-5) (‘the contested decision’).

By its cross-claim based on Article 182 of the Rules of Procedure of the General Court, the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the Court, The Smiley Company SPRL, seeks the partial annulment of that same decision.

Background to the dispute

On 6 December 2017, the applicant, SC Ha Ha Ha Production, filed an application for registration of an EU trade mark with EUIPO in respect of the word sign SMILEY.

The mark applied for covered various services falling, following the restriction made during the proceedings before EUIPO, within Class 41 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.

On 18 July 2018, the intervener, The Smiley Company, filed a notice of opposition to the registration of the mark applied for in respect of, inter alia, the services referred to in paragraph 4 above.

The opposition was based on the following earlier marks:

–the EU word mark SMILEY, registered for goods in Classes 18 and 25;

–the EU word mark SMILEY TV, registered for services in Classes 35 and 38 (‘earlier word mark 2’);

–the EU word mark SMILEY, registered for various services in Class 41, in particular the services ‘entertainer services’, ‘film production’, ‘television entertainment’, ‘publication of books’ and ‘publication of texts (other than publicity texts)’ (‘earlier word mark 3’).

The grounds relied on in support of the opposition were those set out in Article 8(1)(a) and (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).

Following the applicant’s request, EUIPO asked the intervener to produce evidence of genuine use of earlier word mark 3 relied on in support of the opposition. The intervener complied with that request within the prescribed period.

On 31 October 2019, the Opposition Division rejected the opposition.

On 20 December 2019, the intervener filed a notice of appeal with EUIPO against the Opposition Division’s decision.

By decision of 15 January 2021, the Board of Appeal dismissed the appeal. On 26 March 2021, the intervener appealed against that decision before the Court. By decision of 23 September 2021, the Board of Appeal revoked the decision of 15 January 2021. On 21 October 2021, it adopted the contested decision.

By the contested decision, the Board of Appeal upheld the appeal. In particular, first, it found that the relevant public was made up of the general public and the professional public, residing in the territory of the European Union, with a medium to high level of attention. Secondly, it found that earlier word mark 2 and the mark applied for were visually and aurally similar to a high degree, or even aurally identical if the element ‘tv’ of earlier word mark 2 was not pronounced. The Board of Appeal also found that the signs at issue were conceptually similar to a degree that was at least average, if not high. Thirdly, the Board of Appeal found that the services in Class 41 covered by the mark applied for were similar to the services in Classes 35 and 38 covered by earlier word mark 2. Consequently, the Board of Appeal concluded that there was a likelihood of confusion, in accordance with Article 8(1)(b) of Regulation 2017/1001.

Forms of order sought

In the cross-claim, the intervener claims that the Court should:

–annul the contested decision in so far as the Board of Appeal found that earlier word mark 3 had not been put to genuine use in relation to the services ‘entertainer services’, ‘film production’, ‘television entertainment’, ‘publication of books’ and ‘publication of texts (other than publicity texts)’;

–order EUIPO to pay the costs of the cross-claim.

In its plea of inadmissibility, EUIPO contends that the Court should:

–dismiss the cross-claim as inadmissible;

–order the intervener to pay the costs of the cross-claim.

In its response to the cross-claim, the applicant contends, in essence, that the Court should:

–dismiss the cross-claim as unfounded;

–order the intervener to pay the costs, including the costs of the appeal proceedings.

In its observations on the plea of inadmissibility of the cross-claim, the intervener contends that the Court should:

–declare the cross-claim admissible.

Law

Pursuant to Article 130(1) of the Rules of Procedure, if the defendant so requests, the Court may rule on a plea of inadmissibility without going to the substance of the case. It follows from Article 130(6) of those rules that the Court may decide to open the oral part of the procedure.

In the present case, since the Court considers that it has sufficient information from the documents in the file to rule on the plea of inadmissibility raised by EUIPO, it is not necessary to open the oral part of the procedure.

By its plea of inadmissibility, EUIPO disputes the admissibility of the cross-claim. In particular, it submits that the intervener has no interest in bringing proceedings. Given that the contested decision upheld the intervener’s claims in so far as it refused registration of the mark applied for in its entirety, the partial annulment of the contested decision, as sought by the intervener, would not be capable of procuring any advantage for it.

The intervener contests the plea of inadmissibility. It considers that, if the contested decision were altered, that decision could adversely affect it.

In that regard, it should be observed that, under Article 72(4) of Regulation 2017/1001, an action before the Court against a decision of a Board of Appeal is ‘open to any party to proceedings before the Board of Appeal adversely affected by its decision’.

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 grants the application of that party on the basis of one of the grounds for refusal of registration of a mark or, more generally, of only part of the arguments put forward by that party, even if it does not examine or rejects the other grounds or arguments raised by that party (see judgment of 25 September 2015, Copernicus-Trademarks v OHIM – Bolloré (BLUECO), T‑684/13, EU:T:2015:699, paragraph 28 and the case-law cited).

Furthermore, according to the case-law, an applicant’s interest in bringing proceedings is an essential prerequisite for any legal proceeding and must, in the light of the purpose of the action, exist at the time when the action is brought, failing which the action will be inadmissible. The legal interest in bringing proceedings presupposes that the action must be liable, if successful, to procure an advantage to the party bringing it (see judgment of 25 September 2015, BLUECO, T‑684/13, EU:T:2015:699, paragraph 27 and the case-law cited).

If the interest which an applicant claims concerns a future legal situation, it must demonstrate that the prejudice to that situation is already certain. Consequently, an applicant cannot rely on future and uncertain situations to justify its interest in seeking annulment of the contested decision (see order of 16 September 2021, H&H v EUIPO – Giuliani (Swisse), T‑486/20, not published, EU:T:2021:619, paragraph 35 and the case-law cited).

In the present case, the Board of Appeal upheld the intervener’s appeal against the decision of the Opposition Division by which it rejected the opposition brought against the registration of the mark applied for. The notice of opposition filed by the intervener against the registration of the mark applied for and based, inter alia, on Article 8(1)(b) of Regulation 2017/1001 was upheld in its entirety by that same Board of Appeal on the basis of one of the earlier marks relied on in support of the grounds for opposition, namely earlier word mark 2.

Thus, notwithstanding the fact that the intervener does not agree with the Board of Appeal’s considerations relating to the assessment of the evidence aimed at establishing genuine use of earlier word mark 3 in relation to the services ‘entertainer services’, ‘film production’, ‘television entertainment’, ‘publication of books’ and ‘publication of texts (other than publicity texts)’, the contested decision must be regarded as having upheld the intervener’s claims in their entirety.

As regards the intervener’s argument that, if the contested decision were altered by the Court, that decision could adversely affect it, it should be pointed out that such an alteration constitutes a future and uncertain legal situation. That alteration did not exist when the cross-claim was brought and, furthermore, depends on the judgment to be handed down by the Court on the merits of the main action. It follows that the intervener has not established its legal interest in bringing proceedings against the contested decision, as is required by the case-law cited in paragraphs 23 and 24 above.

Accordingly, the intervener’s cross-claim must be dismissed as inadmissible.

Costs

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.

Since the intervener has been unsuccessful in the cross-claim, it must be ordered, in accordance with the forms of order sought by EUIPO and the applicant, to bear its own costs and to pay those incurred by EUIPO and the applicant in relation to the cross-claim.

On those grounds,

hereby orders:

1.The cross-claim is dismissed as inadmissible.

2.The Smiley Company SPRL is ordered to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO) and by SC Ha Ha Ha Production SRL in relation to the cross-claim.

Luxembourg, 25 January 2023.

Registrar

President

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Language of the case: English.