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

23 March 2021 (*)

(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 of law is significant with respect to the unity, consistency or development of EU law – Appeal not allowed to proceed)

In Case C‑639/20 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 26 November 2020,

CEDC International sp. z o.o., established in Oborniki Wielkopolskie (Poland), represented by M. Fijałkowski, radca prawny,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Underberg AG, established in Dietlikon (Switzerland), represented by A. Renck, Rechtsanwalt,

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of R. Silva de Lapuerta, Vice-President of the Court, N. Wahl and F. Biltgen (Rapporteur), Judges,

Registrar: A. Calot Escobar,

having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, J. Richard de la Tour,

makes the following

Order

1        By its appeal, CEDC International sp. z o.o. seeks the partial setting aside of the judgment of the General Court of the European Union of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), (T‑796/16, ‘the judgment under appeal’, EU:T:2020:439), by which the General Court, first, annulled the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2016 (Case R 1248/2015‑4), relating to opposition proceedings between CEDC International and Underberg, in respect of the grounds of opposition set out in Article 8(3) and (4) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), and, second, dismissed the action as to the remainder.

 The request that the appeal be allowed to proceed

2        Pursuant to 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, 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 of the Court of Justice, in the situations referred to in the first paragraph of Article 58a of that statute, the appellant is required 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 those rules, 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 the two grounds of its appeal raise issues that are significant with respect to the unity, consistency and development of EU law.

7        By its first ground of appeal, the appellant alleges infringement of Article 15(1) and (2)(a) of Council Regulation No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) and of Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation No 40/94 (OJ 1995 L 303, p. 1) and, consequently, infringement of Articles 8(1)(a) and (b) and 43(2) and (3) of Regulation No 40/94. By its second ground of appeal, the appellant alleges infringement of the first sentence of Article 36 of the Statute of the Court of Justice of the European Union, in conjunction with the first paragraph of Article 53 of that statute.

8        First, the appellant submits that the first head of claim in the first ground of appeal raises an issue that is significant with respect to the unity, consistency and development of EU law, namely that of the interpretation of the rules applicable to the identification of the subject matter of the protection afforded to an earlier national mark in connection with proof of use. More specifically, the appellant submits that it is necessary to clarify the extent of the EU authorities’ competence to identify the subject matter of such a national mark, defined in the certificate of registration, and, in particular, the effect of the presumption of validity of that mark, arising from the principle of coexistence set out in the fifth recital of Regulation No 40/94, on the competence of those authorities freely to identify the subject matter of the protection afforded to that mark.

9        The appellant criticises the General Court on the ground that it erred in law in assessing the nature of the use of the earlier three-dimensional French mark and, more specifically, in identifying, in connection with proof of use, the subject matter of the protection afforded to that mark without taking into account the presumption of validity of the mark arising from the principle of coexistence. In particular, the appellant takes the view that the General Court altered the subject matter of the protection of that mark by holding, in essence, that the representation of that mark contained a two-dimensional line, even though, according to the appellant, it is apparent from the certificate of registration that the national authority had granted protection to a three-dimensional oblong object representing a blade of grass.

10      In that regard, the appellant states that it follows from the principle of coexistence that the right to verify national trade marks, granted to the EU authorities in opposition proceedings, is limited and cannot lead to a finding which calls into question the registrability of the national mark concerned. It submits that, if EU case-law precludes the distinctive character of a national mark from being called into question, it should, a fortiori, be impossible to call into question the requirement of clarity and precision which the national trade mark authority had to assess before granting the protection.

11      In addition, the appellant submits that that error of law in identifying the subject matter of the protection afforded to the earlier French mark resulted in a series of errors in the assessment of the proof submitted by the appellant to show use of that mark. According to the appellant, the General Court erred in finding that the proof of use submitted by the appellant did not align with the subject matter of the protection conferred by that mark and that, therefore, use of the mark had not been proved.

12      Second, the appellant submits that the second head of claim in the first ground of appeal raises an issue of law that is significant with respect to the unity, consistency and development of EU law, namely whether proof of use in opposition proceedings entails, in the light of the ninth recital of Regulation No 40/94, verification of the distinctive character of an earlier national mark and the obligation to adduce proof of that distinctive character.

13      In that regard, the appellant, in essence, criticises the General Court on the ground that it erred in law in assessing the joint use of the earlier French mark with another mark (label) in connection with proof of use and in finding, in paragraph 177 of the judgment under appeal, that the earlier mark had been used in a form which altered its distinctive character, with the result that its genuine use had not been proved. The appellant submits that the assessment of proof of use of an earlier national mark does not require verification of its distinctive character, as the General Court states in paragraph 172 of the judgment under appeal. According to the appellant, the interpretation proposed by the General Court places an additional burden on the proprietor. It criticises the General Court on the ground that it failed to distinguish between the ratio legis of the proof of use in opposition proceedings and that of the proof of acquired distinctiveness in registration proceedings.

14      By its second ground of appeal, the appellant alleges infringement of the first sentence of Article 36 of the Statute of the Court of Justice of the European Union, in conjunction with the first paragraph of Article 53 of that statute, in that the failure to state reasons which vitiates the judgment under appeal, according to the appellant, is an issue that is significant with respect to the unity, consistency and development of EU law.

15      More specifically, the appellant submits that the General Court failed to provide adequate reasons, first, in respect of the application of EU law to the identification of the subject matter of the protection afforded to the earlier French mark for the purposes of assessing the proof of its use; second, in respect of the legal assessment of the differences between the form in which that mark has been registered and the form in which it has been used; and, third, in respect of the legal assessment of the joint use of that mark with another mark (label).

16      First, it must 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 (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 13 and the case-law cited).

17      Furthermore, as is clear from the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union, read in conjunction with Article 170a(1) and Article 170b(4) of the Rules of Procedure of the Court, the request that an appeal be allowed to proceed must contain all of 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 the 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 (order of 3 September 2020, Gamma-A v EUIPO, C‑199/20 P, not published, EU:C:2020:662, paragraph 10 and the case-law cited).

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

19      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 such as to justify the appeal being allowed to proceed (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 16 and the case-law cited).

20      In the present case, as regards, in the first place, the arguments summarised in paragraphs 8 to 11 of the present order, according to which the General Court, in essence, erred in law by identifying, in connection with the proof of use, the subject matter of the protection afforded to the earlier national mark without taking into account the presumption of its validity, it must be noted that those arguments do not demonstrate, to the requisite legal standard, that the issue raised is significant with respect to the unity, consistency or development of EU law.

21      In that regard, it is important to emphasise that, in accordance with the burden of proof which rests on an appellant requesting that an appeal be allowed to proceed, the appellant must demonstrate that, independently of the issues of law invoked in its appeal, the appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law, the scope of that criterion going beyond the judgment under appeal and, ultimately, its appeal (order of 3 December 2020, Dermavita v EUIPO, C‑400/20 P, not published, EU:C:2020:997, paragraph 16).

22      The fact that, in the present case, the General Court found, in connection with the assessment of genuine use of the earlier three-dimensional national mark, that the description of that mark could not serve to clarify or make its representation more precise, because the former did not align with the latter, does not mean that the General Court calls into question the registrability or validity of such a mark. As is clear from paragraphs 61 and 63 of the judgment under appeal, the subject matter of the dispute before the General Court was not the validity of the earlier mark, which must be presumed, but whether or not there was genuine use of the earlier French mark, as represented and registered.

23      In addition, the appellant merely points out the need to clarify the rules applicable to identification of the subject matter of the protection afforded to the national mark and the extent of the EU authorities’ competence in that regard, without, however, advancing any argument seeking to call into question the applicability of the rules of EU law on which the General Court relied in order to find that it is the representation of the mark, which must be clear and precise, that defines the subject matter of the protection conferred by the registration, and that the description cannot extend the scope of the mark thereby defined.

24      In those circumstances, the appellant has not demonstrated that the error of law allegedly committed by the General Court raises an issue that is significant with respect to the unity, consistency or development of EU law.

25      As regards the argument set out in paragraph 11 of the present order, it must be held that such an argument, which seeks to call into question the General Court’s assessment of the evidence adduced by the appellant to demonstrate use of that mark, cannot raise an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 6 February 2020, NHS v EUIPO, C‑858/19 P, not published, EU:C:2020:83, paragraph 17).

26      In the second place, as regards the argument set out in paragraphs 12 and 13 of the present order, in so far as the appellant claims that the General Court allegedly required, in paragraph 172 of the judgment under appeal, proof that the earlier national mark constitutes an indication of origin, it should be noted that that argument is based on an isolated reading of that paragraph. In paragraphs 171 to 177 of the judgment under appeal, the General Court examined whether the distinctive character of the earlier national mark, the use of which as a trade mark the appellant had to demonstrate, was not altered by its joint use with other marks. In paragraph 174 of the judgment under appeal, the General Court held that it had not been demonstrated that the earlier mark, when used in conjunction with other marks, continues to be perceived as indicative of origin by the relevant public. Consequently, there is no premiss that, in the judgment under appeal, the General Court verified and required proof of the distinctive character of the earlier national mark or of its perception as indicative of origin.

27      In addition, it appears that, by that argument, the appellant is seeking in actual fact to call into question the factual assessment made by the General Court of the joint use of the earlier national mark with other marks. It should be noted that such an argument cannot raise an issue that is significant with respect to the consistency or development of EU law (see, by analogy, order of 28 May 2020, Hästens Sängar v EUIPO, C‑74/20 P, not published, EU:C:2020:407, paragraphs 23 and 24).

28      In the third and last place, as regards the argument set out in paragraphs 14 and 15 of the present order, alleging a failure of the judgment under appeal to state adequate reasons, it must be noted that such an argument is not, in itself, sufficient for a declaration that the appeal should be allowed to proceed. An appellant requesting that an appeal be allowed to proceed is required to establish that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, in accordance with all of the requirements set out in paragraph 18 of the present order (order of 13 February 2020, ruwido austria v EUIPO, C‑823/19 P, not published, EU:C:2020:100, paragraph 16 and the case‑law cited). It must, however, be held that the appellant has failed to comply with all of those requirements.

29      In those circumstances, it must be concluded that the arguments submitted by the appellant in support of its request that its appeal be allowed to proceed are not capable of establishing that that appeal raises issues that are significant with respect to the unity, consistency or development of EU law.

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

 Costs

31      Under Article 137 of the Rules of Procedure, applicable to appeal proceedings by virtue of Article 184(1) of those rules, a decision as to costs is to be given in the order which closes the proceedings.

32      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.      CEDC International sp. z o.o. shall bear its own costs.

Luxembourg, 23 March 2021.

*      Language of the case: English.