18 September 2012 (*1)

(Appeal – Community trade mark – Application for registration of the word sign ‘OMNICARE’ – Opposition – Decision of the Board of Appeal rejecting the application – Action – Judgment of the General Court dismissing that action – Withdrawal of the opposition – Appeal – No need to adjudicate)

In Case C‑588/11 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 21 November 2011,

Omnicare Inc., established in Covington (United States), represented by M. Edenborough, QC,

applicant,

the other parties to the proceedings being:

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,

defendant at first instance,

Astellas Pharma GmbH, established in Munich (Germany), represented by M.L. Polo Carreño, abogada,

intervener at first instance,

THE COURT (Seventh Chamber),

composed of J. Malenovský, President of the Chamber, G. Arestis and D. Šváby (Rapporteur), Judges,

Advocate General: P. Mengozzi,

Registrar: A. Calot Escobar,

after hearing the Advocate General,

makes the following

1By its appeal, Omnicare Inc. (‘Omnicare’) seeks to have set aside the judgment of the General Court of the European Union of 9 September 2011 in Case T‑290/09 Omnicare v OHIM – Astellas Pharma (OMNICARE) (‘the contested judgment’), in which the General Court dismissed the action which Omnicare had brought against the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 14 May 2009 (Case R 402/2008-4) upholding the opposition filed by Yamanouchi Pharma GmbH, of which Astellas Pharma GmbH (‘Astellas’) is the successor in title, against the application for the registration of the word sign ‘OMNICARE’ as a Community trade mark and, consequently, rejecting that application (‘the contested decision’).

2On 19 June 2000, Omnicare submitted the disputed application. That application concerns services in Class 42 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Conducting clinical and laboratory research for others, excluding urologists, in the field of pharmaceuticals’.

3That application was opposed by Yamanouchi Pharma GmbH, the proprietor of the earlier German trade mark OMNICARE, on the basis of the relative ground for refusal enacted by Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). That opposition was initially dismissed by the Opposition Division of OHIM, then subsequently upheld in the contested decision.

4In the contested judgment, given on 9 September 2011, the General Court dismissed the action brought by Omnicare against the contested decision.

5By its appeal, brought on 21 November 2011, Omnicare sought to have that judgment set aside, complaining that the General Court had wrongly concluded that the earlier trade mark had been put to genuine use.

6On 23 December 2011, Omnicare also submitted an application for interim measures, seeking an order prohibiting OHIM from rejecting the disputed application pending a ruling on its appeal.

7In its defence, OHIM requested that that appeal be dismissed as inadmissible or, in any event, unfounded.

8By document lodged at the Court Registry on 6 March 2012, Omnicare asked the Court to declare that the appeal proceedings had become devoid of purpose owing to a transaction between Omnicare and Astellas. By document lodged on the same day, Astellas submitted an identical request, stating that it had withdrawn its opposition before OHIM on 22 September 2011.

9In its observations, lodged on 21 March 2012, OHIM confirmed that the opposition had been withdrawn in September 2011 and stated that it had no objections to make regarding that joint request, but asked that Omnicare be ordered to pay the costs. OHIM also asked the Court to clarify the situation by indicating that there is no impediment to OHIM’s accepting the withdrawal of an opposition and the limitation of an application made after a judgment of the General Court has been handed down, in circumstances such as those in the present case.

10By order of the President of the Court of 19 July 2012 in Joined Cases C‑587/11 P‑R and C‑588/11 P‑R Omnicare v OHIM, the application for interim measures referred to in paragraph 6 of this order was dismissed and the costs were reserved.

Findings of the Court

11The withdrawal by Astellas of the opposition which it had filed against the application submitted by Omnicare, following a transaction between those parties, has the effect of putting an end to the dispute concerning the rejection of that application, with the result that that appeal has become devoid of purpose (see, to that effect, order of 19 May 2009 in Case C‑565/07 P AMS v OHIM, paragraphs 14 and 15).

12Accordingly, it must be held that there is no need to adjudicate on that dispute.

13Under those circumstances, it is not for the Court to give a ruling on a point of law as requested by OHIM.

Costs

14Under Article 69(6) of the Rules of Procedure of the Court of Justice, which applies to appeals by virtue of Article 118 of those Rules, where a case does not proceed to judgment the costs are to be in the discretion of the Court.

15It should be stated, first, as is apparent from the documents in which Omnicare and Astellas asked the Court to declare that the appeal proceedings had become devoid of purpose, that the withdrawal of the opposition was effected during a transaction between those two parties and that neither asks that the other be ordered to pay the costs.

16Second, as argued by OHIM, which asks that the applicant be ordered to pay the costs of the appeal proceedings and of the proceedings for interim measures, the applicant could have limited, or even avoided, those costs by informing the Court earlier of the evidence justifying a decision not to adjudicate on the appeal.

17Accordingly, Omnicare must be ordered to pay the costs incurred by OHIM in the course of those proceedings, with Omnicare and Astellas each bearing their own costs.

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

3. Omnicare Inc. and Astellas Pharma GmbH shall each bear their own costs.

[Signatures]

*

Language of the case: English.