In case T-589/10, opposition proceedings which started in 2008 regarding figurative trademarks JUKEBOX and JUKE BOX both registered for services in Classes 38 and 41, arrived in the General Court regarding a procedural question.
OHIM had upheld the opposition in 2010 and the Applicant Just Music Fernsehbetriebs GmbH brought an action for annulment of the contested decision by the Board of Appeal. In the alternative, it requested to stay the proceedings until definite decision regarding the revocation action brought by Just Music against earlier CTM owned by France Telecom.
In December 2011, the Cancellation Division cancelled the earlier mark for lack of genuine use for 5 years. In 2012 Just Music informed the Court of the definitive nature of the revocation decision and requested the Court to declare that there was no need to adjudicate, in so far as the earlier mark no longer existed and however was not to be interpreted as an indication that it wished to discontinue the proceedings within the meaning of Article 99 of the Rules of Procedure.
France telecom requested to dismiss the claim for no need to adjudicate claiming that the opposition had been upheld in 2008 before the earlier CTM was revoked.
Just Music and OHIM quoted as supporting case-law the case T-548/11 ‘real QUALITY’, and claimed that the procedural consequences were there is no need to adjudicate and the opposed CTM must be registered.
France Telecom further submitted that the contested decision would necessarily have legal effects precluding the registration of the mark applied for. It added that Just Music could, from a legal point of view, submit a new application for registration but that registration would have effect only from the date on which the earlier mark was revoked, that is to say, 21 December 2010 (date of application for revocation).
The General Court held necessary to determine whether, following the revocation of the earlier mark, annulment of the contested decision could still procure an advantage for Just Music. It is settled case-law that the interest in bringing proceedings must continue until the final decision, failing which there will be no need to adjudicate, which presupposes that the action must be likely, if successful, to procure an advantage for the party bringing it.
In the light of the definitive revocation of the earlier CTM and the fact that that the decisions of OHIM bodies have no effect – since according to Articles 64 (3) and 65 (5) CTMR, appeals have suspensive effect and the contested decisions had not become definitive- where the Court finds that there is no need to adjudicate, a judgment of the Court on the substance of the case is not likely, if successful, to procure an advantage for Just Music. Moreover, in the light of the definitive revocation of the earlier mark, France Telecom has not established that it retains an interest that could justify the Court ruling on the substance in the present case.
The Court therefore finds that there is no longer any need to adjudicate on the action for annulment and condemned each party to bear their own costs.