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

23 April 2020 (*)

(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‑936/19 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 20 December 2019,

Rubik’s Brand Ltd, established in London (United Kingdom), represented by K. Szamosi, ügyvéd, and M. Borbás, ügyvéd,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Simba Toys GmbH & Co. KG, established in Fürth (Germany), represented by O. Ruhl, Rechtsanwalt,

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of R. Silva de Lapuerta, Vice-President of the Court, S. Rodin and D. Šváby (Rapporteur), Judges,

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

Registrar: A. Calot Escobar,

makes the following

Order

1        By its appeal, Rubik’s Brand asks the Court of Justice to set aside the judgment of the General Court of the European Union of 24 October 2019, Rubik’s Brand v EUIPO — Simba Toys (Shape of a cube with surfaces having a grid structure) (T‑601/17, not published, EU:T:2019:765), by which the General Court dismissed the appellant’s action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 June 2017 (Case R 452/2017-1), concerning invalidity proceedings between Simba Toys and Rubik’s Brand.

 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        The third paragraph of Article 58a of that statute provides that 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 the Statute of the Court of Justice of the European Union, 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(3) of those rules, the Court’s decision on the request that the appeal be allowed to proceed is to take the form of a reasoned order.

6        In support of its request that the appeal be allowed to proceed, the appellant relies on four arguments which, it argues, raise issues that are significant with respect to the unity, consistency or development of EU law.

7        The appellant claims that the first argument raises an issue that is significant with respect to the consistency and development of EU law. In that regard, the appellant argues that, following the annulment of the decision of 1 September 2009 of the Second Board of Appeal by the Court in the judgment of 10 November 2016, Simba Toys v EUIPO (C‑30/15 P, EU:C:2016:849), the Board of Appeal adopted a new decision (‘the decision at issue’) based on a new interpretation of the assessment criteria laid down in Article 7(1)(e)(ii) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) without first inviting the parties to express an opinion on the new assessment criteria established in the judgment in Simba Toys v EUIPO (C‑30/15 P, EU:C:2016:849). The appellant claims to have been thus deprived of the right to submit new legal arguments and facts and to draw the Board’s attention to well-known facts. It follows that the decision at issue, confirmed by the judgment under appeal, was based on facts and grounds on which the appellant has not had the opportunity to express an opinion, which constitutes an infringement of the right to a fair hearing and the right to equality of arms, enshrined in Article 47 of the Charter of Fundamental Rights of the European Union (‘the Charter’) and reflected in Article 73 of Regulation No 40/94.

8        The appellant maintains that, since neither Regulation No 40/94 nor case-law requires the Board of Appeal to invite the parties to submit observations on new grounds or facts after the annulment of a first decision by an EU Court, the right to be heard is systematically infringed, which is an evident and serious inconsistency. It is therefore necessary for the Court to provide clear legal guidance in order to provide an answer to that issue, which is significant with respect to the consistency and development of EU law. Finally, the appellant claims that that error had a direct impact on the content of the judgment under appeal, since, if it had been able to present its arguments and facts, the General Court would have determined the case differently.

9        The appellant claims that the second argument raises an issue that is significant with respect to the consistency and development of EU law. In that argument, the appellant alleges that the General Court infringed Article 7(1)(e)(ii) of Regulation No 40/94 by failing properly to identify the essential characteristics of the mark. The General Court took an abstract and general approach to the ‘essential characteristics’, while, according to the judgment of 14 September 2010, Lego Juris v OHIM, (C‑48/09 P, EU:C:2010:516, paragraph 69), the General Court should have carried out a clear and precise assessment concerning a specific element of the sign. In particular, the appellant claims that the essential characteristic of the mark is the black and bold ‘#’ grid structure with black grooves at the end of each line, rather than ‘black lines and little squares on each face of the cube’, as was found by the General Court. That error allegedly affected the second step of the assessment regarding functionality and, accordingly, vitiated both the assessment and the conclusion in the judgment under appeal. According to the appellant, the Court must state clearly in case-law that the essential characteristics of a three-dimensional sign must be identified and defined precisely and concretely, in a manner consistent with the graphic representation of the sign. Finally, the appellant argues that, if the General Court had correctly identified the essential characteristic of the sign, it might have come to different conclusions regarding the functionality of those characteristics.

10      The appellant maintains that the third argument raises an issue that is significant with respect to the consistency and development of EU law. In that argument, the appellant alleges that, in paragraphs 88 and 90 of the judgment under appeal, the General Court reached conclusions that were inconsistent with the judgment of 18 June 2002, Philips (C‑299/99, EU:C:2002:377, paragraph 78), by making findings that the appellant considers to be restricting and simplifying. In particular, although the ground for refusal on the basis of functionality cannot be overcome simply by establishing that there are other shapes which allow the same result to be obtained, the existence of alternative shapes is relevant when examining the rationale of the ground for refusal and the underlying public interest. The appellant submits that, when assessing the functionality of a sign, reference can be made to alternative shapes, and such shapes can be taken into account. However, the judgment under appeal departed from that interpretation ab ovo by not considering the possibility that any alternative shapes might exist when assessing the functionality of a three-dimensional sign and, consequently, contradicted the judgment in Philips (C‑299/99, EU:C:2002:377).

11      The appellant claims that the fourth argument raises issues that are significant with respect to the unity, consistency and development of EU law. In that argument the appellant complains that the General Court infringed Article 17 of the Charter and Article 7(1)(e)(ii) of Regulation No 40/94 by failing to strike a correct and proportionate balance between the rights and interests of the trade mark proprietor, on the one hand, and those of competitors, on the other. When the General Court assessed the functionality of the shapes in paragraphs 43 and 97 of the judgment under appeal, it took into account only the ‘public interest’, which was inconsistent with the judgments of 14 September 2010, Lego Juris v OHIM (C‑48/09 P, EU:C:2010:516) and of 18 June 2002, Philips (Case C‑299/99, EU:C:2002:377). In doing so, the General Court infringed the fundamental right to property of trade mark proprietors and infringed a fundamental principle of trade mark law, namely the need to strike a balance between the right to property and fair competition.

12      At the outset, it should be observed 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 (see order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 13 and the case-law cited).

13      Furthermore, as is apparent from the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union, read in conjunction with Article 170b(1) and Article 170c(4) of the Court’s 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 and 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 (see order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 14 and the case-law cited).

14      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 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 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 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 (see order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 15 and the case-law cited).

15      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 (see order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 16 and the case-law cited).

16      In that regard, concerning, in the first place, the argument set out in paragraphs 7 and 8 above, in which the appellant alleges that its right to be heard, enshrined in Article 73 of Regulation No 40/94 and in Article 47 of the Charter, has been infringed to the extent that the Board of Appeal did not invite the parties to submit observations following the resumption of the proceedings before the Board of Appeal after the annulment of its first decision by an EU Court and before the adoption of the decision at issue, it must be pointed out that, in accordance with the burden of proof which lies with the appellant requesting that the appeal be allowed to proceed, such an argument does not, in itself, establish that the appeal raises an issue that is significant with respect to the consistency or development of EU law, the appellant having to comply, to that end, with all the requirements set out in paragraph 14 above.

17      In the present case, the appellant merely states that it is in the interest of the consistency and development of EU law that the Court provide clear guidance concerning the resumption of proceedings relating to the invalidity of a mark before the Board of Appeal after the annulment of its first decision by an EU Court. First, the appellant does not provide any specific reason why, in such a situation, the settled case-law on the right to be heard, enshrined in Article 73 of Regulation No 40/94, is not clear. Second, even if the judgment under appeal were assumed to be vitiated by an error in law affecting its right to be heard, the appellant has also failed to state specifically the extent to which that error affected the outcome of the judgment under appeal.

18      In the second place, as regards the argument set out in paragraph 9 above, it must be pointed out, first, that the appellant is seeking in actual fact to call into question the factual assessment made by the General Court when identifying the essential characteristics of the sign concerned. Consequently, that argument cannot raise an issue that is significant with respect to the consistency or development of EU law (order of 12 March 2020, Roxtec v EUIPO, C‑893/19 P, not published, EU:C:2020:209, paragraph 17).

19      Second, as regards the alleged inconsistency with the judgment of 14 September 2010, Lego Juris v OHIM (C‑48/09 P, EU:C:2010:516, paragraph 69), the appellant does not specify which paragraphs of the judgment under appeal it is contesting and has failed to show, in accordance with the conditions set out in paragraphs 13 and 14 above, how that inconsistency, if it were assumed to be established, raises an issue that is significant with respect to the unity, consistency and development of EU law which would justify allowing the appeal to proceed.

20      In the third place, as regards the argument set out in paragraph 10 above, it should be noted that, in the light of the requirements set out in paragraphs 13 and 14 above, the explanations provided by the appellant are not sufficiently clear and precise to enable the Court to understand what specific point of law that is significant with respect to the consistency and development of EU law is raised by that argument. In any event, the fact that an appeal raises certain points of law specific to the judgment under appeal does not in itself allow the conclusion to be reached that the Court must allow the appeal to proceed. The appellant must demonstrate that, independently of the points of law invoked in its appeal, the appeal raises one or more issues that are significant with respect to the unity, consistency and development of EU law, the scope of that criterion going beyond the judgment under appeal and, ultimately, its appeal. Furthermore, in order to demonstrate that that is the case, it is necessary to establish both the existence and significance of such issues by means of concrete evidence specific to the particular case and not simply arguments of a general nature (order of 12 March 2020, Roxtec v EUIPO, C‑893/19 P, not published, EU:C:2020:209, paragraph 19). It is not apparent from the present request that this has been demonstrated, as the appellant merely states that, as it is inconsistent with the judgment of 18 June 2002, Philips (C‑299/99, EU:C:2002:377), the judgment under appeal is inconsistent with a ‘landmark decision’ that is an ‘orientation point in the field of the three-dimensional trademarks’.

21      In the fourth place, as regards the argument in paragraph 11 above, according to which the General Court’s interpretation of the ‘public interest’ criterion was incorrect and disproportionate, it must be noted that, in accordance with the burden of proof which lies with the appellant requesting that the appeal be allowed to proceed, such an argument is not, in itself, sufficient to establish that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, the appellant having to comply, to that end, with all the requirements set out in paragraph 13 and 14 above (see, to that effect, order of 12 March 2020, Roxtec v EUIPO, C‑893/19 P, not published, EU:C:2020:209, paragraph 21). In the present case, the appellant merely asserts, in a general manner, that the General Court incorrectly interpreted that criterion, without stating precisely and specifically how that interpretation, first, infringed Article 17 of the Charter and Article 7(1)(e)(ii) of Regulation No 40/94 and, second, raises an issue that is significant with respect to the unity, consistency or development of the EU law.

22      Finally, the appellant does not set out the grounds of appeal or the points of law on which those grounds are based in its request that the appeal be allowed to proceed.

23      In those circumstances, it must be concluded that the arguments put forward by the appellant in support of its request that the appeal be allowed to proceed are not capable of establishing that the first, second, third or fourth arguments raise issues that are significant with respect to the unity, consistency or development of EU law.

24      In the light of the foregoing, the appeal should not be allowed to proceed.

 Costs

25      Under Article 137 of the Rules of Procedure, 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.

26      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.      Rubik’s Brand Ltd shall bear its own costs.

Luxembourg, 23 April 2020.

*      Language of the case: English.