ORDER OF THE COURT (Eighth Chamber)

29 April 2022 (*)

(Appeal – Article 181 of the Rules of Procedure of the Court of Justice – EU trade mark – Appeal brought by a party which was not unsuccessful in its submissions at first instance – Appeal manifestly inadmissible)

In Case C‑420/21 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 9 July 2021,

Valvis Holding SA, established in Bucharest (Romania), represented by D. Bogdan, G. Bozocea and M. Stănescu, avocați,

appellant,

the other parties to the proceedings being:

Sun Stars & Sons Pte Ltd, established in Singapore (Singapore), represented by M. Maček, odvetnik, and C. Saettel, avocate,

applicant at first instance,

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

THE COURT (Eighth Chamber),

composed of N. Jääskinen (Rapporteur), President of the Chamber, M. Safjan and M. Gavalec, Judges,

Advocate General: J. Kokott,

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, Valvis Holding SA asks the Court of Justice to set aside the judgment of the General Court of the European Union of 12 May 2021, Sun Stars & Sons v EUIPO – Valvis Holding (AC AQUA AC) (T‑638/19, not published, EU:T:2021:256; ‘the judgment under appeal’), by which the General Court dismissed the action brought by Sun Stars & Sons Pte Ltd seeking annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 August 2019 (Case R 649/2018-4), concerning opposition proceedings between Sun Stars & Sons and Valvis Holding (‘the decision at issue’).

 Legal context

2        The first and second paragraphs of Article 56 of the Statute of the Court of Justice of the European Union provides:

‘An appeal may be brought before the Court of Justice, within two months of the notification of the decision appealed against, against final decisions of the General Court and decisions of that Court disposing of the substantive issues in part only or disposing of a procedural issue concerning a plea of lack of competence or inadmissibility.

Such an appeal may be brought by any party which has been unsuccessful, in whole or in part, in its submissions. However, interveners other than the Member States and the institutions of the Union may bring such an appeal only where the decision of the General Court directly affects them.’

 Background to the dispute

3        The background to the dispute is set out in paragraphs 1 to 12 of the judgment under appeal and may be summarised as follows.

4        On 5 January 2016, Valvis Holding, filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), in the version in force on that date. Registration as a mark was sought for a composite three-dimensional sign consisting of the shape of a transparent bottle with an octagonal base and word elements inside a vertical label placed on a side of the bottle.

5        On 31 May 2016, Sun Stars & Sons filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009, in the version in force on that date. The opposition was based on a number of earlier rights, including the earlier EU three-dimensional trade mark consisting of the shape of a bottle, registered on 20 April 2009 under No 7041098, and the Slovenian three-dimensional mark registered on 11 January 2010 under No 200970433.

6        By decision of 12 February 2018, the Opposition Division rejected the opposition in its entirety, on the ground that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

7        On 11 April 2018, Sun Stars & Sons filed a notice of appeal against that decision before EUIPO, which the Fourth Board of Appeal dismissed by the decision at issue.

 The procedure before the General Court and the judgment under appeal

8        By application lodged at the Registry of the General Court on 25 September 2019, Sun Stars & Sons brought an action seeking the annulment of the decision at issue.

9        In support of its action, Sun Stars & Sons relied on two pleas in law, alleging, first, an error of assessment by the Board of Appeal as to the proof of genuine use of the earlier Slovenian mark, referred to in paragraph 5 of the present order, and, second, infringement of Article 8(1)(b) of Regulation 2017/1001.

10      By the judgment under appeal, the General Court rejected the second plea and dismissed the action in its entirety, finding therefore that there was no longer any need to examine the first plea in law of the action, and ordered Valvis Holding to pay the costs.

 Forms of order sought by the appellant and procedure before the Court of Justice

11      By its appeal, Valvis Holding submits that the Court should, in part, set aside the judgment under appeal.

12      In support of its appeal, Valvis Holding relies on three grounds of appeal, alleging (i) infringement of Article 8(1)(b) of Regulation No 207/2009, in the version applicable to the facts of the case, in that the General Court failed correctly to assess certain items of evidence, (ii) infringement of Article 41(3) of Regulation No 207/2009, in the version applicable to the facts of the case, and of Article 173(1) to (3) of the Rules of Procedure of the General Court, in that the General Court reversed the burden of proof and infringed the appellant’s rights of defence, respectively, and (iii) infringement of Article 134(1) of the Rules of Procedure of the General Court, in that the General Court wrongly apportioned the costs.

13      Valvis Holding also submitted, by separate document, a request that the appeal be allowed to proceed in accordance with Article 170a(1) of the Rules of Procedure of the Court of Justice.

14      By order of 23 September 2021, Sun Stars & Sons v EUIPO – Valvis Holding (AC AQUA AC) (T‑638/19, not published, EU:T:2021:679; ‘the rectification order’), the General Court rectified the second point of the operative part of the judgment under appeal by ordering Sun Stars & Sons, and not Valvis Holding, to pay the costs.

15      On 4 October 2021, the Registry of the Court of Justice asked Valvis Holding whether, in the light of the rectification order, it wished to maintain its appeal.

16      By letter lodged at the Court Registry on 6 October 2021, Valvis Holding informed the Court that it was withdrawing the third ground of appeal but that it was maintaining the first two grounds of appeal in so far as, by the rectification order, the General Court had failed to examine those grounds of appeal.

 The appeal

17      Under Article 181 of the Rules of Procedure of the Court of Justice, where the appeal is, inter alia, in whole or in part, manifestly inadmissible, 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.

18      That provision must be applied in the present case.

19      It must be borne in mind that, in accordance with the second paragraph of Article 56 of the Statute of the Court of Justice of the European Union, while an appeal may be brought by any party which has been unsuccessful, in whole or in part, in its submissions before the General Court, interveners other than the Member States and the EU institutions may bring such an appeal only where the decision of the General Court directly affects them.

20      In that connection, it should be observed that Valvis Holding was an intervener in the proceedings before the General Court which gave rise to the judgment under appeal, with the result that it had to satisfy the two cumulative conditions which stem from the second paragraph of Article 56 of that statute.

21      In the present case, it is sufficient to note that since, following the rectification order, the General Court ultimately upheld all the claims made by Valvis Holding, the latter is not entitled to bring an appeal before the Court of Justice against the judgment under appeal, since the first cumulative condition laid down in the second paragraph of Article 56 of that statute is not satisfied.

22      An appeal that does not seek to have the judgment under appeal, that is to say the operative part thereof, set aside, even in part, but merely to amend some of the grounds of that judgment, is inadmissible (judgment of 25 July 2018, Société des produits Nestlé SA and Others v Mondelez UK Holdings & Services, C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, paragraphs 42 and 50 and the case-law cited).

23      In the present case, it should be noted that Valvis Holding’s appeal no longer seeks to have the judgment under appeal – in particular the second point of the operative part – set aside, but relates only to certain grounds of that judgment. In particular, Valvis Holding submits that the General Court infringed Article 8(1)(b) of Regulation No 207/2009, in the version applicable to the facts of the present case, in its assessment of certain items of evidence, and also infringed Article 41(3) of Regulation No 207/2009 and Article 173(1) to (3) of the Rules of Procedure of the General Court as regards the burden of proof and respect for the rights of the defence, respectively.

24      It follows that, since it is directed against certain grounds of the judgment under appeal and Valvis Holding was not unsuccessful, even in part, in its submissions before the General Court, the appeal must be dismissed as manifestly inadmissible.

25      Since the present order closes the proceedings, there is no longer any need to adjudicate on the request that the appeal be allowed to proceed, made in accordance with Article 170a(1) of the Rules of Procedure of the Court of Justice.

 Costs

26      Under Article 137 of the Rules of Procedure of the Court of Justice, applicable to proceedings 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 has been made before the appeal was served on the defendant at first instance and, consequently, before the latter could have incurred costs, it is appropriate to decide that Valvis Holding is to bear its own costs.

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

1.      The appeal is dismissed as manifestly inadmissible.

2.      Valvis Holding SA shall bear its own costs.

Luxembourg, 29 April 2022.

*      Language of the case: English.