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

13 December 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 is significant with respect to the unity, consistency or development of EU law – Refusal to allow the appeal to proceed)

In Case C‑387/21 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 23 June 2021,

Asolo LTD, established in Limassol (Cyprus),

WeMo Brands BV, established in Capelle aan den IJssel (Netherlands),

represented by W.E. Pors and N. Dorenbosch, advocaaten,

appellants,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Red Bull GmbH, established in Fuschl am See (Austria),

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of L. Bay Larsen, Vice-President of the Court, K. Jürimäe (Rapporteur) and N. Piçarra, Judges,

Registrar: A. Calot Escobar,

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

makes the following

Order

1        By its appeal, the original appellant, Asolo LTD, which WeMo Brands BV seeks to replace, asks the Court of Justice to set aside the judgment of the General Court of the European Union of 28 April 2021, Asolo v EUIPO – Red Bull (FLÜGEL) (T‑509/19, not published, EU:T:2021:225; ‘the judgment under appeal’), by which the General Court dismissed its action for annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 May 2019 (Case R 201/2019-4), concerning invalidity proceedings between Red Bull GmbH and Asolo.

 The proceedings before the Court of Justice and the request to replace Asolo made by WeMo Brands

2        By letters lodged at the Court Registry on 22 and 29 September 2021, Asolo’s representative, also granted a power of attorney by WeMo Brands, informed the Court, providing supporting evidence, of the fact that the EU word mark FLÜGEL, which was the subject of invalidity proceedings between Red Bull and Asolo (‘the contested mark’), was transferred from Asolo to WeMo Brands and that that trade mark transfer was entered in the Register of EU trade marks on 28 September 2021.

3        In so doing, WeMo Brands implicitly made a request to replace Asolo as appellant for the purposes of the present proceedings.

4        Having been requested to submit its observations on those letters, Asolo, by letter lodged at the Court Registry on 28 October 2021, confirmed the transfer of the contested mark. On that occasion, it also indicated that it agreed with the request to replace it for the purposes of the present proceedings made by WeMo Brands.

5        In those circumstances, WeMo Brands was added for the purposes of the proceedings determining whether the appeal should be allowed to proceed, without prejudice, in the event of that appeal being allowed to proceed, to the right of the other parties to the proceedings to submit their observations on the replacement request and the decision regarding that request.

 The request that the appeal be allowed to proceed

6        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.

7        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.

8        Under Article 170a(1) of the Court’s Rules of Procedure, in the situations referred to in the first paragraph of Article 58a of the 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 of Justice to rule on that request.

9        In accordance with Article 170b(1) and (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.

10      In support of their request that the appeal be allowed to proceed, the appellants submit that the four grounds of their appeal, alleging infringement of Article 52(1)(a) of Council Regulation No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), read in conjunction with Article 8(5) of that regulation, and of Article 36 of the Statute of the Court of Justice of the European Union, raise issues that are significant with respect to the unity, consistency or development of EU law.

11      By their first ground of appeal, the appellants dispute the General Court’s assessment of the earlier mark’s reputation. First of all, that ground raises significant issues relating to the requirements that must be met by surveys intended to establish the reputation of a mark. The appellants criticise the General Court for departing from its own case-law resulting from, inter alia, the judgment of 15 December 2005, BIC v OHIM (Shape of an electronic lighter) (T‑263/04, not published, EU:T:2005:464, paragraph 86) and relating to the phenomenon known as ‘the market leader effect’.

12      Next, according to the appellants, that ground of appeal raises issues relating to the burden of proving the existence of a reputation. They argue that the General Court disregarded its own case-law, referred to in paragraph 70 of the judgment under appeal, according to which, in order to have probative value, a survey must be carried out in the objective circumstances in which the marks at issue are present on the market. The General Court interpreted the lack of information necessary to establish whether the survey submitted by Red Bull satisfied those conditions to the appellants’ detriment, whereas the burden of proving the reputation of the mark relied on lies with the person applying for a declaration of invalidity.

13      Lastly, the same ground of appeal raises a new issue relating to the probative value of a survey, particularly in connection with an affidavit by the proprietor of a mark. That issue is likely to contribute to the development of EU law, in particular in the absence of case-law on that subject. According to the appellants, account must be taken, by analogy, of the case-law of the Court of Justice according to which a market survey cannot, by itself, establish the existence of distinctive character acquired through use (judgment of 19 June 2014, Oberbank and Others, C‑217/13 and C‑218/13, EU:C:2014:2012, paragraph 48). Moreover, according to the settled case-law of the General Court, an affidavit has no probative value on its own (judgment of 5 October 2020, Laboratorios Ern v EUIPO – SBS Bilimsel Bio Çözümler (apiheal), T‑51/19, not published, EU:T:2020:468, paragraph 110 and the case-law cited).

14      By their second ground of appeal, the appellants criticise the General Court for having wrongly concluded, in paragraphs 124 and 125 of the judgment under appeal, that the consumer will establish the existence of a link between the Red Bull slogan ‘… verleiht flügel’ and the word ‘flügel’ forming part of that slogan and used by the contested mark. That approach is at odds with the ‘need for availability’, as it would allow persons to monopolise common words simply because they form part of a slogan.

15      That ground of appeal thus raises two issues of principle, concerning, first, the way in which the existence of a link between two signs must be assessed when the mark relied on is a slogan, and, second, the possibility that the way the mark is used in practice is taken into account in assessing whether there is a link between two signs. The case-law of the Court provides little guidance as to the extent of the protection of slogans and has not yet settled the issue of whether the way in which a mark is used in practice should be taken into account.

16      By their third ground of appeal, the appellants dispute the General Court’s assessment relating to the unfair advantage taken of the earlier mark’s reputation.

17      That ground of appeal raises two fundamental issues. The first issue is whether the intentions of the proprietor of the contested mark should be taken into account in the assessment of whether unfair advantage has been taken of the distinctive character or the repute of the earlier mark. In that regard, the appellants observe the existence of a contradiction between, on the one hand, the case-law of the General Court cited in paragraph 134 of the judgment under appeal, according to which the intention of the proprietor of the contested mark to take unfair advantage of the distinctive character or the repute of the earlier mark should not be taken into account, and, on the other hand, the case-law of the Court of Justice, which states the opposite (judgments of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraphs 47 and 48, and of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 40). The second issue, which concerns proof that unfair advantage has been taken of the earlier mark’s reputation in a case where the two marks have coexisted on the market for 20 years, is a new issue.

18      By their fourth ground of appeal, the appellants criticise the General Court’s assessments regarding due cause in respect of the use of the contested mark. They complain that the General Court failed to have regard to the case-law of the Court of Justice, in particular the judgment of 6 February 2014, Leidseplein Beheer and de Vries (C‑65/12, EU:C:2014:49, paragraphs 27, 46 and 48), inasmuch as it used a narrow interpretation of the concept of ‘due cause’.

19      Thus, according to the appellants, that ground of appeal raises an issue of principle relating to the interpretation of that concept, which has given rise to little case-law. That ground of appeal also raises new issues relating to factors relevant for the purpose of assessing due cause.

20      As a preliminary point, it must be recalled that it is for the party requesting that an appeal be allowed to proceed 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).

21      Further, 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 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 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 (see, inter alia, orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 14, and of 11 November 2021, Sun Stars & Sons v EUIPO, C‑425/21 P, not published, EU:C:2021:927, paragraph 13).

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

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

24      As regards, in the first place, the arguments referred to in paragraphs 11 to 13 of the present order, which may be examined together and which allege, in essence, that the General Court has departed from the case-law relating to the phenomenon known as ‘the market leader effect’ and the conditions of the probative value of a survey, it must be noted that, in accordance with the burden of proof which lies with the person requesting that an appeal be allowed to proceed, such arguments are not, in themselves, sufficient to establish that the present appeal raises an issue that is significant with respect to the unity, consistency or development of EU law. To that end, the person making that request must comply with all the requirements set out in paragraph 22 of the present order (see, to that effect, orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 17, and of 10 November 2021, Comercializadora Eloro v EUIPO, C‑415/21 P, not published, EU:C:2021:924, paragraph 19).

25      However, in the present case, the appellants have not complied with all of those requirements. Although they identify the errors of law allegedly committed by the General Court, they do not explain to the requisite standard or, in any event, show how such errors of law, even if established, raise issues that are significant with respect to the unity, consistency or development of EU law that would justify the appeal being allowed to proceed.

26      Moreover, as regards more particularly the line of argument summarised in paragraph 13 of the present order, the appellants merely rely on the lack of case-law.

27      It must be borne in mind that the fact that an issue of law has not been examined by the General Court or by the Court of Justice does not, however, mean that that issue is necessarily one of significance with respect to the development of EU law, as the person requesting that an appeal be allowed to proceed remains bound to demonstrate that significance by providing detailed information regarding not only the novelty of that issue, but also the reasons for that issue’s significance in relation to the development of EU law (order of 6 October 2020, Bergslagernas Järnvaru v EUIPO, C‑284/20 P, not published, EU:C:2020:799, paragraph 15 and the case-law cited).

28      In the second place, as regards the line of argument referred to in paragraphs 14 and 15 of the present order, by which the appellants criticise the General Court for having infringed the ‘need for availability’, it should be noted that, although the appellants identify the error of law allegedly committed by the General Court, they do not set out the reasons why that error, even if established, raises an issue that is significant with respect to the unity, consistency or development of EU law.

29      The appellants merely refer to the limited nature of the Court’s case-law concerning the extent of the protection of slogans and the lack of case-law relating to the taking into account of the way in which a mark is used in practice in order to assess whether there is a link between two signs. As is apparent from paragraph 27 of the present order, such a line of argument is not in itself sufficient to establish that the present appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.

30      In the third place, as regards the line of argument summarised in paragraphs 16 and 17 of the present order, the significance of the issues raised in connection with that line of argument relates, first, to the existence of a contradiction between the judgment under appeal and the case-law of the Court of Justice as to whether the intentions of the proprietor of a contested mark should be taken into account in the assessment of whether unfair advantage has been taken of the distinctive character or the repute of an earlier mark and, second, to the novelty of the issue relating to the proof of that advantage in a specific situation.

31      In that regard, it must be noted that, in accordance with the burden of proof which lies with the person requesting that an appeal be allowed to proceed, such a line of argument is not, in itself, sufficient to establish that that appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, as the person making that request must comply to that end with all the requirements set out in paragraph 22 of the present order.

32      In the present case, first, although the appellants specify the paragraphs of the judgment under appeal that are called into question and those of the rulings of the Court of Justice which have allegedly been infringed, they do not provide the slightest indication of the specific reasons why such a contradiction raises an issue that is significant with respect to the unity, consistency or development of EU law. Second, since the appellants merely refer to the novelty of the second issue, such a line of argument is not, as is apparent from paragraph 29 of the present order, in itself sufficient to establish that the present appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.

33      In the fourth place, as regards the line of argument referred to in paragraphs 18 and 19 of the present order, relating to the concept of ‘due cause’, it should be noted that, although the appellants identify the paragraphs of the judgment under appeal that are called into question and those of the ruling of the Court of Justice which have allegedly been infringed, they do not provide any indication as to the specific reasons why such a contradiction, even if established, raises an issue that is significant with respect to the unity, consistency or development of EU law. In addition, the appellants merely state that the fourth ground of appeal raises new issues relating to factors relevant to the assessment of due cause. Such a line of argument is not, as is apparent from paragraphs 29 and 32 of the present order, in itself sufficient to establish that the present appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.

34      In those circumstances, it must be held that the arguments raised in support of the present request that the appeal be allowed to proceed are not capable of establishing that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.

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

 Costs

36      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.

37      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 appellants are to bear their own costs.

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

1.      The appeal is not allowed to proceed.

2.      Asolo LTD and WeMo Brands BV shall bear their own costs.

Luxembourg, 13 December 2021.

*      Language of the case: English.