ORDER OF THE COURT (Chamber determining whether appeals may proceed)

2 February 2024 (*)

(Appeal – EU trade mark – Determination as to whether appeals should be allowed to proceed – Article 170b of the Rules of Procedure of the Court of Justice – Request failing to demonstrate that an issue is significant with respect to the unity, consistency or development of EU law – Refusal to allow the appeal to proceed)

In Case C‑597/23 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 26 September 2023,

Apart sp. z o.o., established in Suchy Las (Poland), represented by J. Gwiazdowska, radca prawny,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

S. Tous, SL, established in Manresa (Spain),

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed)

composed of L. Bay Larsen, Vice-President of the Court, J.-C. Bonichot (Rapporteur) and L.S. Rossi, Judges,

Registrar: A. Calot Escobar,

having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, A. Collins,

makes the following

Order

1        By its appeal, Apart sp. z o.o. asks the Court to set aside the judgment of the General Court of the European Union of 26 July 2023, Apart v EUIPO – S. Tous (Representation of the outline of a bear) (T‑591/21, EU:T:2023:433, ‘the judgment under appeal’), by which the General Court dismissed its action for the annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 July 2021 (Case R 222/2020-5), relating to invalidity proceedings between Apart and S. Tous, SL.

 The request that the appeal be allowed to proceed

2        Under the first paragraph of Article 58a of the Statute of the Court of Justice of the European Union, an appeal brought against a decision of the General Court concerning a decision of an independent board of appeal of EUIPO is not to proceed unless the Court of Justice first decides that it should be allowed to do so.

3        In accordance with the third paragraph of Article 58a of that statute, an appeal is to be allowed to proceed, wholly or in part, in accordance with the detailed rules set out in the Rules of Procedure of the Court of Justice, where it raises an issue that is significant with respect to the unity, consistency or development of EU law.

4        Under Article 170a(1) of the Rules of Procedure, in the situations referred to in the first paragraph of Article 58a of that statute, the appellant is to annex to the appeal a request that the appeal be allowed to proceed, setting out the issue raised by the appeal that is significant with respect to the unity, consistency or development of EU law and containing all the information necessary to enable the Court to rule on that request.

5        In accordance with Article 170b(1) and (3) of the Rules of Procedure, the Court is to rule on the request that the appeal be allowed to proceed, as soon as possible, in the form of a reasoned order.

6        In support of its request that the appeal be allowed to proceed, the appellant submits that its appeal raises issues that are significant with respect to the unity, consistency and development of EU law. In that regard, it puts forward two pleas in law, each divided into two parts, alleging infringement of Article 7(1)(b) and (e)(iii) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), respectively.

7        By the first part of its first ground of appeal, the appellant claims that, by holding, in paragraph 67 of the judgment under appeal, that the fact that the jewellery market is saturated with the shape of a teddy bear is irrelevant to the assessment of the distinctive character of the contested mark, the General Court infringed Article 7(1)(b) of Regulation No 40/94. It thus failed to have regard to the Court’s case-law resulting from the judgment of 7 October 2004, Mag Instrument v OHIM (C‑136/02 P, EU:C:2004:592, paragraph 31), cited in paragraph 43 of the judgment under appeal, according to which the more closely the shape registered as a mark resembles the shape most likely to be taken by the goods at issue, the greater the likelihood of the registered shape being devoid of any distinctive character.

8        It is therefore significant with respect to the unity, consistency and development of EU law to determine the significance, for the purpose of assessing the distinctive character of a figurative mark, of the fact that the market is saturated with a shape of goods corresponding to the shape of that mark, in order to harmonise the assessment of the distinctive character of trade marks by the courts.

9        By the second part of its first ground of appeal, the appellant criticises the General Court for having held, in paragraph 71 of the judgment under appeal, that the contour of the contested mark presented sufficient evidence to conclude that it could not be compared with a simple geometric shape and that it was capable of conveying a message to the addressee. It also found, in paragraph 54 of the judgment under appeal, that the contour of the contested mark was subtle and, in paragraph 70 of that judgment, that a sign which is excessively simple and consists of a basic geometric figure is not, in accordance with the case-law resulting from the judgment of 12 September 2007, Cain Cellars v OHIM (Representation of a pentagon) (T‑304/05, EU:T:2007:271, paragraph 22), capable, as such, of conveying a message which consumers can remember.

10      Consequently, it is significant with respect to the unity, consistency and development of EU law to determine what is meant by the simple shape of the mark and, more specifically, whether the subtle, blurred contour and the rounded shapes of a mark are sufficient for it to be considered that consumers are able to memorise it. According to the appellant, an answer to those questions would standardise the assessment, by the courts, of the distinctive character of simple trade marks, given in particular that the Court has ruled only on the concept of a ‘shape’ (see, judgment of 14 March 2019, Textilis, C‑21/18, EU:C:2019:199, paragraphs 35 and 36) and not on that of a ‘simple shape’.

11      By the first part of its second ground of appeal, the appellant claims that, by holding that the contested mark was not a sign consisting exclusively of a shape which increases the value of the goods, the General Court infringed Article 7(1)(e)(iii) of Regulation No 40/94. In so doing, it also failed to have regard the case-law resulting from the judgment of 6 October 2011, Bang & Olufsen v OHIM (Representation of a loudspeaker) (T‑508/08, EU:T:2011:575), according to which Article 7(1)(e)(iii) of Regulation No 40/94 covers shapes such as jewellery, in relation to which it seems natural that the value of the goods depends to a large extent on its shape. Furthermore, it failed to take into account the fact that the shape of the contested mark evokes positive emotions, namely childhood nostalgia, which determine the purchase of the goods by increasing their attractiveness.

12      Therefore, it is significant with respect to the unity, consistency and development of EU law to determine whether a figurative sign which evokes emotions in consumers may be regarded as a sign consisting of a shape which increases the value of the goods for the purposes of Article 7(1)(e)(iii) of Regulation No 40/94, which makes it possible to standardise the assessment of that concept by the courts.

13      By the second part of its second ground of appeal, the appellant claims that the General Court infringed Article 7(1)(e)(iii) of Regulation No 40/94, in that it held, in paragraph 90 of the judgment under appeal, that the contested mark did not consist exclusively of the shape of the goods, without, however, examining which characteristics of the shape of the mark and of the goods affected the consumer’s decision to purchase, or whether they were original or functional characteristics. According to the appellant, only the original features of the goods, and not the generic features, are decisive and may increase the value of the goods. It is therefore significant with respect to the unity, consistency and development of EU law to determine whether, in order to be refused registration within the meaning of Article 7(1)(e)(iii) of Regulation No 40/04, a sign must be completely identical to the shape of the goods or whether, on the contrary, the identity for the purposes of that provision applies only to the original elements of the goods and of the sign. The answer to that question would have the effect of harmonising the assessments of that provision by the courts.

14      As a preliminary point, it must be recalled that it is for the appellant to demonstrate that the issues raised by its appeal are significant with respect to the unity, consistency or development of EU law (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 20, and of 11 July 2023, EUIPO v Neoperl, C‑93/23 P, EU:C:2023:601, paragraph 18).

15      Furthermore, as is apparent from the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union, read together with Article 170a(1) and Article 170b(4) of the Rules of Procedure, the request that an appeal be allowed to proceed must contain all the information necessary to enable the Court to give a ruling on whether the appeal should be allowed to proceed and to specify, where the appeal is allowed to proceed in part, the pleas in law or parts of the appeal to which the response must relate. Given that the objective of the mechanism provided for in Article 58a of that statute whereby the Court determines whether an appeal should be allowed to proceed is to restrict review by the Court to issues that are significant with respect to the unity, consistency or development of EU law, only grounds of appeal that raise such issues and that are established by the appellant are to be examined by the Court in an appeal (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 21, and of 11 July 2023, EUIPO v Neoperl, C‑93/23 P, EU:C:2023:601, paragraph 19).

16      Accordingly, a request that an appeal be allowed to proceed must, in any event, set out clearly and in detail the grounds on which the appeal is based, identify with equal clarity and detail the issue of law raised by each ground of appeal, specify whether that issue is significant with respect to the unity, consistency or development of EU law and set out the specific reasons why that issue is significant according to that criterion. As regards, in particular, the grounds of appeal, the request that an appeal be allowed to proceed must specify the provision of EU law or the case-law that has been infringed by the judgment or order under appeal, explain succinctly the nature of the error of law allegedly committed by the General Court, and indicate to what extent that error had an effect on the outcome of the judgment or order under appeal. Where the error of law relied on results from an infringement of the case-law, the request that the appeal be allowed to proceed must explain, in a succinct but clear and precise manner, first, where the alleged contradiction lies, by identifying the paragraphs of the judgment or order under appeal which the appellant is calling into question as well as those of the ruling of the Court of Justice or the General Court alleged to have been infringed, and, secondly, the concrete reasons why such a contradiction raises an issue that is significant with respect to the unity, consistency or development of EU law (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 22, and of 11 July 2023, EUIPO v Neoperl, C‑93/23 P, EU:C:2023:601, paragraph 20).

17      A request that an appeal be allowed to proceed which does not contain the information mentioned in the preceding paragraph of the present order cannot, from the outset, be capable of demonstrating that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law that justifies the appeal being allowed to proceed (orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 16, and of 9 November 2023, Consulta v EUIPO, C‑443/23 P, EU:C:2023:859, paragraph 15).

18      In the present case, as regards, in the first place, the arguments summarised in paragraphs 7, 9 and 11 of the present order, alleging that the General Court failed to have regard to its own case-law or that of the Court of Justice, it should be noted that such a line of argument is not, in itself, sufficient to establish, in accordance with the burden of proof which lies with the appellant requesting that an appeal be allowed to proceed, that that appeal raises an issue that is significant with respect to the unity, consistency or development of EU law. To that end, the appellant must comply with all the requirements set out in paragraph 16 above. It must be stated that the appellant does not provide sufficient information on the similarity of the situations referred to in those decisions to establish the reality of the alleged contradictions (see, by analogy, order of 13 July 2023, Hecht Pharma v EUIPO, C‑142/23 P, EU:C:2023:600, paragraph 19).

19      In the second place, the arguments set out in paragraphs 8, 12 and 13 above do not comply with the requirements set out in paragraph 16 above. Although the appellant relies on errors of law allegedly committed by the General Court, the fact remains that it confines itself to putting forward arguments of a general nature, asserting that there is a need to harmonise the case-law, without setting out the specific reasons why such errors, assuming that they are established, raise an issue that is significant with respect to the unity, consistency or development of EU law that would justify allowing the appeal to proceed (see, by analogy, order of 11 October 2023, Emmentaler Switzerland v EUIPO, C‑458/23 P, EU:C:2023:762, paragraph 14).

20      In the third and last place, as regards the argument summarised in paragraph 10 above, by which the appellant claims that the Court has not yet ruled on the concept of a ‘simple shape’, it is sufficient to note that the fact that an issue has not been examined by the Court does not mean that that issue is necessarily significant with respect to the unity, consistency or development of EU law. The person requesting that an appeal be allowed to proceed remains bound to demonstrate that significance by providing detailed information not only on the novelty of that issue, but also on the reasons why that issue is significant in relation to those criteria (see, to that effect, order of 27 October 2023, Wallmax v EUIPO, C‑495/23 P, EU:C:2023:824, paragraph 18).

21      However, that significance has not been demonstrated in the present request since the appellant merely makes a general assertion that the Court has not yet ruled on the issue concerned.

22      In those circumstances, it must be held that the appellant’s request is not capable of establishing that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.

23      In the light of the foregoing considerations, the request that the appeal be allowed to proceed must be refused.

 Costs

24      Under Article 137 of the Rules of Procedure, 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.

25      Since the present order was adopted before the appeal was served on the other parties to the proceedings and, therefore, before they could have incurred costs, it is appropriate to decide that the appellant is to bear its own costs.

On those grounds, the Court (Chamber determining whether appeals may proceed) hereby orders:

1.      The appeal is not allowed to proceed.

2.      Apart sp. z o.o. shall bear its own costs.

Luxembourg, 2 February 2024.

*      Language of the case: English.