the matter at hand

On 14 June 2017 Mr. Chakari's filed an application for the registration of an EU Trade Mark, which was published on 6 September 2017. The mark was a figurative sign intended for goods made from rice in Classes 30 and 31 of the Nice Agreement.

On 13 October 2017, Indo European Foods opposed the registration, citing an earlier non-registered UK word mark "BASMATI" related to rice. Indo European Foods based their opposition on Article 8(4) of Trade Mark Regulation. Indo European Foods argued, in essence, that it was entitled, under the applicable law in the United Kingdom, to prevent use of the mark applied for, on the basis of the ‘extended’ form of the ‘action for passing off’. On 5 April 2019, the Opposition Division of the EUIPO rejected the opposition, stating that Indo European Foods had failed to provide sufficient evidence that the "BASMATI" mark had significant trade use before the relevant date in accordance with article 8(4) of the Trade Mark Regulation.

Indo European Foods appealed this decision on 16 May 2019. However, the Fourth Board of Appeal of EUIPO dismissed that appeal as unfounded on the ground that Indo European Foods had not demonstrated that the name ‘basmati’ would allow it to prohibit the use of the mark applied for in the United Kingdom on the basis of the ‘extended’ form of ‘passing off’.

On 2 June 2020, during the Brexit transition period, Indo European Foods sought annulment and alteration of the EUIPO decision at the General Court. Before the General Court, the EUIPO argued that the UK trade mark's protection was relevant only before and during the Brexit transition period and that the proceedings would become purposeless afterward, which also meant that Indo European Foods could no longer procure any advantage from the proceedings so that it no longer had a legal interest in bringing proceedings. The General Court, however, rejected the EUIPO's Brexit related arguments concluding that the case was not devoid of purpose and that Indo European Foods retained its interest in bringing proceedings: if the General Court were to annul the Board of Appeal’s decision, it was for the Board of Appeal to take a decision on the same appeal by reference to the situation prevailing at the time when the appeal was brought before it, since the appeal becomes pending again at the same stage as it was before the decision at issue (predating Brexit).

Consequently, the General Court examined the claim for annulment of the EUIPO decision and the single plea in support of that claim. It held that that plea was well founded and that that decision therefore had to be annulled. In addition, the General Court concluded that the conditions for the exercise of its power of alteration were not satisfied and rejected that application.

Dissatisfied with the decision of the General Court, the EUIPO brought an appeal before the ECJ claiming an infringement of the requirement that the applicant retains an interest in bringing proceedings. That ground of appeal was divided into three parts; the first alleged an error of law, in that the General Court had confused the assessment of the continuing interest in bringing proceedings with the review of the legality of the act at issue; the second alleged an error of law and an inadequate statement of reasons, in so far as the General Court had not assessed whether Indo European Foods’ interest in bringing proceedings continued in the light of the specific features of EU trade mark law; and the third part alleged infringement of Article 72(6) of the Trade Mark Regulation, in so far as the General Court had required the EUIPO not to take account of the legal effects of the end of the Brexit-transition period.

the judgment of the ecj

With regard to the first complaint of the EUIPO, alleging the General Court’s confusion between, on the one hand, the assessment of the continuing interest in bringing proceedings and, on the other hand, the review of the legality of the act at issue, the ECJ reaffirmed that legal actions must retain a purpose and potential benefit for the party until a final decision, even if the contested decision lapses subsequently (see Wunenburger v Commission, C‑362/05 P) (Paragraph 59). The ECJ establishes that the EUIPO did not contest that the decision was still in effect when the General Court ruled, nor did it argue that the end of the transition period retroactively nullified the decision. Consequently, the ECJ deems that the EUIPO's appeal was rightfully dismissed on this ground (Paragraph 62).

As to the second complaint, alleging a failure to carry out an assessment in concreto of whether the applicant at first instance retained an interest in bringing proceedings, the ECJ firstly rules that while the General Court linked its reasoning to the EUIPO's arguments, it independently assessed and confirmed Indo European Foods' continued interest. According to established case-law, the General Court may raise objections about a party's interest at any stage, essential for procedural admissibility (see Gul Ahmed Textile Mills v Council, C‑100/17 P) (Paragraph 76).

The ECJ, secondly, dismisses EUIPO's argument that the General Court overlooked specific aspects of EU trademark law in assessing Indo European Foods' ongoing interest in legal proceedings. The ECJ considers thereto that the EUIPO's premise, which suggests that the General Court should only consider legal interests protected by the Trade Mark Regulation in such cases, does not align with applicable legislation or case-law. Case-law dictates that an action for annulment must potentially benefit the plaintiff, as demonstrated by Indo European Foods' case (see Mory and Others v Commission, C‑33/14 P and D & A Pharma v EMA, C‑136/22 P) (Paragraph 80). The Court found justification in paragraphs 10 to 12 of the judgment in appeal that upheld the rejection of Indo European Foods' opposition under Article 8(4) of The Trade Mark Regulation, denying protection to their earlier mark (Paragraph 82). This decision's potential economic impact on Indo European Foods supports their ongoing interest in seeking annulment.

Lastly, regarding the alleged failure to state reasons, the ECJ affirms that the General Court's judgment need not exhaustively address every argument but must provide reasoning sufficient for understanding and appellate review (PlasticsEurope v ECHA, C‑119/21 P). The ECJ, on the above grounds, rejects the second complaint as unfound.

The ECJ also dismissed the third complaint of the EUIPO, alleging infringement of Article 72(6) of the Trade Mark Regulation as being unfounded. The ECJ concludes that under Article 72(6) of the Trade Mark Regulation, the EUIPO must comply with judgments from the General Court or, if appealed, the Court of Justice. According to settled case-law, institutions must adhere not only to the operative part but also the essential grounds of annulment to fully comply (IMG v Commission, C‑619/20 P and C‑620/20 P) (Paragraph 92). However, the General Court cannot compel the EUIPO through orders, as clarified in prior rulings (Creative Technology v OHIM, C‑314/05 P) (Paragraph 93). Paragraph 27 of the judgment in appeal responds to the EUIPO's argument on Indo European Foods' interest, affirming the basis for its position. Therefore, the EUIPO's appeal, misinterpreting this point, is dismissed as unfounded, leading to the overall dismissal of the appeal.