13 December 2017 (*1)

(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — EU trade mark — Invalidity proceedings — Relative ground for invalidity — Declaration of invalidity — Figurative mark MORTON’S — Earlier non-registered national trade marks — Interpretation and application of national law — Action for passing off)

In Case C‑468/17 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 3 August 2017,

Morton’s of Chicago Inc., established in Chicago (United States), represented by J. Moss, Barrister, and M. Krause, Solicitor,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Mortons the Restaurant Ltd, established in London (United Kingdom),

intervener at first instance,

THE COURT (Tenth Chamber),

composed of E. Levits, President of the Chamber, A. Borg Barthet and M. Berger (Rapporteur), Judges,

Advocate General: M. Szpunar,

Registrar: A. Calot Escobar,

makes the following

1.1 By its appeal, Morton’s of Chicago Inc. requests, first, that the Court set aside the judgment of the General Court of the European Union of 15 May 2017, Morton’s of Chicago v EUIPO — Mortons the Restaurant (MORTON’S) (T‑223/15, not published, EU:T:2017:333) (‘the judgment under appeal’), by which the General Court dismissed its action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 February 2015 (Case R 46/2014‑1), relating to invalidity proceedings between Mortons the Restaurant Ltd and Morton’s of Chicago, and, second, that the intervener be ordered to pay the appellant’s costs.

2.2 In support of its appeal, the appellant raises four grounds, alleging infringement, by the General Court, of 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).

The appeal

3.3 Pursuant to Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

4.4 That provision must be applied in the present case.

5.5 On 7 November 2017, the Advocate General took the following position:

‘1. I am of the view that the Court should dismiss the appeal in the present case as being, in part, manifestly inadmissible and, in part, manifestly unfounded and order the appellant to pay its own costs, in accordance with Article 181 of the Court’s Rules of Procedure, for the following reasons.

5. Furthermore, in the context of the second ground of appeal, the appellant raises a separate complaint alleging infringement by the General Court of the right to be heard, arguing that the General Court took into consideration evidence which did not form part of the case file and on which the parties were therefore unable to submit their observations. That evidence relates to three press articles mentioned by the General Court in a body of evidence showing national and international press coverage of Morton’s Club (paragraph 66 of the judgment under appeal). I note that, since the appellant does not challenge the fact that the evidence in question had been raised before the adjudicating bodies of EUIPO and formed part of the case file before the Board of Appeal, which was sent to the General Court (paragraph 66 of the judgment under appeal), it cannot justifiably claim that it did not have an opportunity to present its comments in that regard. Consequently, the present complaint is manifestly unfounded.

Consequently, it is appropriate at the outset to reject the third and fourth grounds of appeal and, accordingly, to dismiss the appeal in its entirety as being, in part, manifestly inadmissible and, in part, manifestly unfounded.’

6.6 On the same grounds as those stated by the Advocate General, the appeal must be dismissed.

Costs

7.7 Under Article 137 of the Rules of Procedure of the Court of Justice, applicable to the procedure on appeal pursuant to Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings. In the present case, since the present order was adopted before the appeal was served on the other parties and, therefore, before they could have incurred costs, the appellant must be ordered to bear its own costs.

On those grounds, the Court (Tenth Chamber) hereby orders:

Luxembourg, 13 December 2017.

Registrar

President of the Tenth Chamber

ECLI:EU:C:2017:940

* Language of the case: English.