Order of 13 Dec 2017, C-468/17 (Morton s of Chicago v EUIPO), ECLI:EU:C:2017:964.

ORDER OF THE COURT (Tenth Chamber)

13 December 2017 (*)

(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

Order

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        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        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        That provision must be applied in the present case.

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.

2.      The appeal consists of four grounds of appeal, all alleging infringement of Article 8(4) of Regulation No 207/2009.

3.      By the first and second grounds of appeal, the appellant challenges the assessment of the evidence undertaken by the General Court on the issue of whether or not the use of the earlier sign was of merely local significance (paragraphs 28 to 33 and 73 of the judgment under appeal).

4.      I note, in this regard, that the appraisal of the facts and the assessment of the evidence do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal. By those grounds of appeal, the appellant does not rely on any distortion of the facts but seeks to call into question the factual assessments made by the General Court in the context of the application of Article 8(4) of Regulation No 207/2009. Those two grounds of appeal are therefore manifestly inadmissible.

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.

6.      By the third and fourth grounds of appeal, the appellant claims that the General Court misinterpreted the English-law rules relating to an action for passing off in the context of the application of Article 8(4) of Regulation No 207/2009. It argues that the General Court erred in finding that the intervener did indeed own the goodwill (paragraphs 37 to 44 of the judgment under appeal) and that there was a likelihood of actionable misrepresentation (paragraphs 50 to 56 of the judgment under appeal).

7.      It should be noted that, as regards the examination, in the context of an appeal, of the findings made by the General Court with regard to national law the protection of which is claimed by a party, the Court of Justice has jurisdiction to determine, first of all, whether the General Court, on the basis of the documents and other evidence submitted to it, distorted the wording of the national provisions at issue or of the national case-law relating to them, or of the academic writings concerning them; second, whether the General Court, in regard to those particulars, made findings that were manifestly inconsistent with their content; and, lastly, whether the General Court, in examining all those particulars, attributed to one of them, for the purpose of establishing the content of the national law at issue, a significance which is not appropriate in the light of the other particulars, where that is manifestly apparent from the documentation in the case file (judgment of 5 July 2011, Edwin v OHIM, C-263/09 P, EU:C:2011:452, paragraph 53).

8.      In the present case, however, the appellant merely invokes alleged errors in the assessment of the English-law rules relating to actions for passing off and does not put forward any argument capable of proving that the General Court distorted the wording of the national provisions at issue or of the national case-law relating to those provisions.

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

 Costs

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:

1.      The appeal is dismissed.

2.      Morton’s of Chicago Inc. shall bear its own costs.

Luxembourg, 13 December 2017.

A. Calot Escobar

E. Levits

Registrar

President of the Tenth Chamber

*      Language of the case: English.