Order of 26 Jun 2018, C-325/17 (Windrush Aka v EUIPO), ECLI:EU:C:2018:519.

ORDER OF THE COURT (Ninth Chamber)

26 June 2018 (*)

(Appeal — Article 181 of the Rules of Procedure of the Court of Justice — EU trade mark — Revocation proceedings — Word mark The Specials — Genuine use — Consent of the proprietor of the trade mark)

In Case C-325/17 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 31 May 2017,

Windrush Aka LLP, established in London (United Kingdom), represented by S. Malynicz, QC, instructed by S. Britton and S. Tregear, Solicitors,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO), represented by D. Botis and J. Crespo Carrillo, acting as Agents,

defendant at first instance,

Jerry Dammers, residing in London, represented by B. Brandreth, Barrister, instructed by C. Fehler, Solicitor,

intervener at first instance,

THE COURT (Ninth Chamber),

composed of C. Vajda (Rapporteur), President of the Chamber, E. Juhász and C. Lycourgos, Judges,

Advocate General: H. Saugmandsgaard Øe,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, pursuant to Article 181 of the Rules of Procedure of the Court of Justice,

makes the following

Order

1        By its appeal, Windrush Aka LLP asks the Court to set aside the judgment of the General Court of the European Union of 22 March 2017, Windrush Aka v EUIPO — Dammers (The Specials) (T-336/15, ‘the contested judgment’, EU:T:2017:197), by which that Court dismissed its action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 March 2015 (Case R 1412/2014-1), relating to revocation proceedings between Windrush Aka and Mr Dammers (‘the contested decision’).

 Background to the dispute

2        In the judgment under appeal, the General Court summarised the factual background to the dispute before it as follows:

‘1      On 27 July 2005, the intervener, Mr Jerry Dammers, obtained the registration, under the number 3725082, of the EU word mark The Specials from [EUIPO], pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1)).

2      The goods and services in respect of which [that mark] was registered were in Classes 9, 16, 25 and 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, and corresponded, for each of those classes, to the following description:

...

3      On 30 October 2012, the applicant, Windrush Aka ... filed an application for revocation of [the mark], on the basis of Article 51(1)(a) of Regulation No 207/2009, in respect of all of the goods and services referred to in paragraph 2 above, on the ground of lack of genuine use of that mark.

4      By decision of 17 March 2014 the Cancellation Division partially upheld the application for revocation. It revoked the [EU word mark The Specials] in respect of the goods and services referred to in paragraph 2 above, with the exception of ‘compact discs [audio-video]’ and ‘electronic publications [downloadable]’ in Class 9, for which it maintained the validity of the registration of [that] mark.

5      On 19 May 2014, [Windrush Aka] filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division in so far as that division had maintained the validity of the registration of [that] mark in respect of the goods referred to in paragraph 4 above.

6      By [the contested decision], the First Board of Appeal of EUIPO upheld the appeal in part. It annulled the decision of the Cancellation Division in so far as that division had maintained the validity of the registration of the [EU word mark The Specials] in respect of ‘electronic publications [downloadable]’ in Class 9 and revoked that mark in respect of those goods. By contrast, it confirmed the validity of [that mark] in respect of ‘compact discs [audio-video]’ in Class 9, on the ground that that mark had been used by a third party with [Mr Dammers’s] consent and had been put to genuine use in connection with those goods.’

3        As regards that consent, it should be added that, in paragraphs 37 to 45 of the contested decision, the First Board of Appeal of EUIPO (‘the Board of Appeal’) rejected Windrush Aka’s argument that, by virtue of the agreement concluded on 8 June 1979 between Chrysalis Records Ltd (‘Chrysalis’) and ‘The Specials’, the music group of Mr. Dammers (‘the agreement of 8 June 1979’), Mr Dammers had assigned to the latter the rights to the EU word mark The Specials (‘the contested mark’). It concluded that that mark had been used by Chrysalis with the consent of Mr Dammers.

 The procedure before the General Court and the judgment under appeal

4        By application lodged at the Registry of the General Court on 25 June 2015, Windrush Aka brought an action for annulment of the contested decision.

5        In support of its action, Windrush Aka had relied on a single plea in law alleging, in essence, infringement of Article 15(2) of Regulation No 207/2009 in that the Board of Appeal erred in finding that Mr Dammers had, for the purposes of that provision, validly consented to the use of the contested mark by a third party.

6        That plea consisted of five complaints, alleging (i) failure to consider Article 15(2) of Regulation No 207/2009, (ii) infringement the concept of ‘consent’ as an autonomous concept of EU law, (iii) reversal of the burden of proving consent to the use of the contested mark by a third party, (iv) failure to consider certain provisions of the agreement of 8 June 1979 and (v) taking into account irrelevant considerations.

7        It is indicated in paragraphs 12 and 13 of the judgment under appeal that, in its application, Windrush Aka did not dispute the Board of Appeal’s assessment that the contested mark had been put to genuine use in relation to ‘compact discs [audio-video]’. Consequently, the General Court dismissed as inadmissible the claim, raised by Windrush Aka for the first time at the hearing of 6 December 2016, that the amount of the royalties paid to Mr Dammers was too low to establish genuine use of the contested mark. It held that that claim could not be considered to be an amplification of the abovementioned single plea or to be closely connected with it.

8        By letter of 9 January 2017, Mr Dammers informed the General Court that it had wrongly associated royalty payments paid by the British Broadcasting Corporation (BBC), produced as evidence, with a compact disc and that, therefore, the General Court should not take account of the part of his arguments based on that evidence. As it is not a document provided for in the Rules of Procedure of the General Court, that letter was not added to the case file.

9        On 24 February 2017, Windrush Aka lodged a request to reopen the oral procedure. That request was rejected by the General Court.

10      By the judgment under appeal, the General Court dismissed the action of Windrush Aka and ordered it to pay the costs of the proceedings.

 Forms of order sought by the parties to the appeal

11      Windrush Aka asks the Court to set aside the judgment under appeal and order EUIPO and Mr Dammers to pay the costs.

12      EUIPO and Mr Dammers contend that the Court should dismiss the appeal and order Windrush Aka to pay the costs.

 The appeal

13      Under Article 181 of the Rules of Procedure of the Court of Justice, where an 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.

14      That provision should be applied to the present appeal.

15      Windrush Aka raises four grounds in support of its appeal.

 The first ground of appeal, alleging distortion of the evidence and incorrect assessment of the facts

 Arguments of the parties

16      By its first plea, Windrush Aka criticises the General Court for not having taken into account, in the judgment under appeal, the withdrawal by Mr Dammers, by his letter of 9 January 2017, of the evidence consisting of the royalty payments by the BBC.

17      According to Windrush Aka, it is apparent, inter alia, from paragraphs 37, 54, 58 and 61 of the judgment under appeal that, in finding that Mr Dammers had succeeded in demonstrating use of the contested trade mark with its consent, the General Court took into account, without distinction, the royalties paid by third parties who used that trade mark, thus including those paid by the BBC.

18      Consequently, Windrush Aka claims that the General Court distorted the facts and evidence by considering the royalties paid by third parties in their entirety in the judgment under appeal, despite the formal withdrawal by Mr Dammers. That distortion is, it is claimed, evident having regard to the documents which were or should have been included in the General Court’s case file.

19      EUIPO and Mr Dammers consider that this ground of appeal must be rejected.

 Findings of the Court

20      The distortion alleged by Windrush Aka is based on the allegation that the General Court based its decision, in the judgment under appeal, on the evidence of use of the mark at issue adduced by Mr Dammers, without taking into account the fact that some of that evidence, namely the royalties paid by the BBC, had been withdrawn by Mr Dammers.

21      However, the action brought by Windrush Aka before the General Court was directed solely against the Board of Appeal’s finding that Mr Dammers had consented to the use of the contested mark by a third party. As is apparent from paragraphs 37 to 45 of the contested decision, which fall under the heading ‘Consent of the [contested mark] proprietor’, that question concerned whether that mark had been used by Chrysalis with the consent of Mr Dammers, which Windrush Aka contested, arguing that, under the agreement of 8 June 1979, he had assigned the rights to that mark to Chrysalis.

22      In that regard, it is clear from paragraphs 37, 54, 55, 58 and 61 of the judgment under appeal, some of which are cited by Windrush Aka, that the evidence referred to in those paragraphs is that from which the Board of Appeal, in paragraphs 42 to 45 of the contested decision, referred to in those paragraphs of the judgment under appeal, inferred the consent of Mr Dammers to the use of the contested mark by Chrysalis.

23      Having regard to the subject matter of the dispute before the Court, as set out in paragraph 21 of the present order, the references made, in the judgment under appeal, to the royalties paid by third parties therefore did not relate to the royalties paid by the BBC.

24      It should be added that, in his response lodged before the General Court, Mr Dammers had invoked the royalties paid by the BBC only in the eventuality that all his arguments made in relation to the agreement of 8 June 1979, in response to the single plea of Windrush Aka, were rejected.

25      It follows that the allegation of distortion of the evidence, in so far as the conclusions reached by the General Court in the contested judgment are partly dependent on evidence relating to royalties paid by the BBC, notwithstanding the fact that Mr Dammers had withdrawn that evidence, would not, in any event, have any effect on the correctness of those conclusions.

26      Consequently, the first ground of appeal must be rejected as manifestly ineffective.

 The second ground of appeal, alleging infringement of Article 113 of the Rules of Procedure of the General Court

 Arguments of the parties

27      By its second ground of appeal, Windrush Aka claims that the General Court infringed Article 113(2) of its Rules of Procedure by rejecting the application to reopen the oral procedure which Windrush Aka had lodged because of the withdrawal, by Mr Dammers, of the evidence relating to the royalties paid by the BBC.

28      According to Windrush Aka, that withdrawal was highly significant for its action before the General Court and the latter should have ordered the reopening of the oral procedure on the grounds, under Article 113(2)(a) and (b) of the Rules of Procedure, first, that the Court lacked sufficient information as to why Mr Dammers had produced and relied on false evidence concerning the use of the contested mark and, secondly, that there was a risk that the case would be decided on the basis of an argument which had not been debated between the parties, namely the effect of the withdrawal of that evidence and the consequences of that withdrawal for the remainder of the case.

29      EUIPO and Mr Dammers contend that this ground of appeal must be rejected.

 Findings of the Court

30      Under Article 113(2)(a) and (b) of the Rules of Procedure of the General Court, the Court may order the reopening of the oral part of the procedure if it considers that it lacks sufficient information or where the case must be decided on the basis of an argument which has not been debated between the parties.

31      It follows from the very wording of that provision that the General Court has the power, but not the obligation, to order the reopening of the oral part where the conditions for the exercise of the power set out in that provision are fulfilled. It follows that the rejection by the General Court of an application to reopen the oral procedure is not of such a nature as to constitute, in itself, an infringement of Article 113(2).

32      In any event, as is apparent from the Court’s assessment of the first ground of appeal, neither Windrush Aka’s action before the General Court nor the judgment under appeal were based, even in part, on the evidence relating to the royalties paid by the BBC, so that the conditions for the exercise of the Court’s power as regards the reopening of the oral phase, as set out in Article 113(2)(a) and (b) of the Rules of Procedure of the General Court, were not met on account of the withdrawal of that evidence.

33      It follows that the second ground of the appeal must be rejected as manifestly unfounded.

 The third ground of appeal, alleging wrongful classification of a plea raised at the hearing as being new

 Arguments of the parties

34      By its third ground of appeal, Windrush Aka criticises the General Court for having, in paragraphs 12 and 13 of the judgment under appeal, rejected as inadmissible its argument, raised at the hearing, that the amount of the royalties paid to Mr Dammers was too low to establish genuine use of the contested mark, on the ground that, in its application, it had not called into question the Board of Appeal’s assessment regarding genuine use of that mark.

35      In that regard, Windrush Aka argues that it had a right to respond to the evidence concerning the royalties paid by the BBC, on which Mr Dammers relied in his reply and at the hearing.

36      EUIPO and Mr Dammers contend that that ground of appeal should be rejected.

 Findings of the Court

37      It should be noted that Windrush Aka does not dispute the finding made by the General Court in paragraphs 12 and 13 of the judgment under appeal, that it had not criticised, in its application, the assessment made by the Board of Appeal regarding the genuine use of the contested mark and that the allegation, raised for the first time at the hearing, that the amount of royalties produced by Mr Dammers was too low to establish such a genuine use does not constitute an amplification of the single plea advanced in support of the action of Windrush Aka nor was it closely connected with that plea.

38      Furthermore, it is apparent from the contested decision and from the judgment under appeal that those royalties had already been invoked before the Board of Appeal, which Windrush Aka does not contest, so that it would have been possible to dispute, in the context of the proceedings before that Board, that genuine use of the contested mark could be demonstrated by the allegedly low amount of the royalties.

39      It follows that the General Court did not err in law by rejecting as inadmissible the allegation relating to the amount of royalties paid to Mr Dammers, on the ground that that allegation was raised for the first time at the hearing.

40      Accordingly, the third ground of appeal must be rejected as manifestly unfounded.

 Fourth ground of appeal, alleging failure to appreciate the legal effect of assignment

 Arguments of the parties

41      Windrush Aka criticises the General Court for failing to appreciate the legal consequences of an assignment in the light of the evidence provided by the proprietor of the contested trade mark, those consequences being that the proprietor unequivocally renounced his rights to that trade mark.

42      In that regard, it cites certain clauses of the agreement of 8 June 1979 in order to show that Mr Dammers had not granted a licence under which Chrysalis had used the contested mark with his consent but had assigned his rights to that mark.

43      EUIPO and Mr Dammers contend that this ground of appeal must be rejected.

 Findings of the Court

44      By this ground of appeal, Windrush Aka confines itself, in essence, to repeating certain arguments put forward before the General Court in the context of the fourth complaint of the single plea in its action, by which it claimed that the Board of Appeal had failed to take account of provisions of the agreement of 8 June 1979, from which it is apparent that Mr Dammers had assigned the rights to use the name of the group ‘The Specials’, including as a trade mark, so that he was no longer the proprietor of those rights.

45      In so doing, Windrush Aka does not challenge the conclusion of the General Court in paragraph 50 of the judgment under appeal, that the question whether or not Mr Dammers had assigned the rights to the name of the group ‘The Specials’ under the agreement of 8 June 1979 is not relevant to establish that the contested mark, which was registered on 27 July 2005, and therefore subsequent to the date of conclusion of that agreement, had not been put to genuine use by Mr Dammers or with his consent. In the absence of such a challenge, the argument that Mr. Dammers had assigned his rights to the contested mark when that agreement was concluded is manifestly ineffective.

46      Consequently, the fourth ground of appeal must be rejected as manifestly ineffective.

47      In the light of the foregoing, the appeal must be dismissed in its entirety as being manifestly unfounded.

 Costs

48      Under Article 184(2) of the Rules of Procedure of the Court of Justice, where the appeal is unfounded, the Court is to make a decision as to the costs. Under Article 138(1) of those Rules, applicable to appeal proceedings by virtue of Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

49      Since EUIPO and Mr Dammers have applied for costs to be awarded against Windrush Aka and the latter has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO and Mr Dammers.

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

1.      The appeal is dismissed as being manifestly unfounded.

2.      Windrush Aka LLP shall pay the costs.

Luxembourg, 26 June 2018.

A. Calot Escobar

C. Vajda

Registrar

      President of the Ninth Chamber

*      Language of the case: English.