ORDER OF THE COURT (Chamber determining whether appeals may proceed)
26 November 2020 (*)
(Appeal – EU trade mark – Prior 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‑418/20 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 8 September 2020,
Scorify UAB, established in Vilnius (Lithuania), represented by V. Viešūnaitė, advokatė,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO)
defendant at first instance,
Scor SE, established in Paris (France), represented by C. de Callataÿ and T. de Haan, avocats,
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed),
composed of R. Silva de Lapuerta, Vice-President of the Court, N. Piçarra (Rapporteur) and S. Rodin, Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, G. Hogan,
makes the following
Order
1 By its appeal, Scorify UAB asks the Court of Justice to set aside the judgment of the General Court of the European Union of 8 July 2020, Scorify v EUIPO – Scor (SCORIFY) (T‑328/19, not published, EU:T:2020:311; ‘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 26 March 2019 (Case R 1639/2018-4), relating to opposition proceedings between Scor SE and Scorify UAB.
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 first decides that it should be allowed to do so.
3 In accordance with the third paragraph of Article 58a of the 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, 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 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 raises four arguments, by which it submits that the issues of law raised by its appeal, which relate to infringements 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), are significant with respect to the unity of case-law.
7 By its first argument, the appellant submits that, in the context of the assessment of the visual, phonetic and conceptual similarity of the signs at issue, the General Court, in paragraphs 80 to 88 of the judgment under appeal, failed to apply the relevant case-law and consequently infringed Article 8(1)(b) of Regulation 2017/1001 by giving excessive importance to the first four letters ‘s’, ‘c’, ‘o’ and ‘r’, which were common to the signs at issue and formed the whole of the earlier mark and the beginning of the dominant element of the mark at issue. Therefore, it ignored the effect produced by the figurative element and the suffix ‘ify’ in the mark at issue. Not only are that element and that suffix capable of producing a strong effect, their cumulative effects are also considerable in the context of a global assessment.
8 Therefore, according to the appellant, the General Court failed, first, to apply the case-law according to which the global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression created by them (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25).
9 Second, the General Court allegedly failed to apply the case-law according to which it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 35) and according to which, when assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components, the relative position of the various components within the arrangement of the composite mark being taken into account only accessorily (judgment of 22 April 2008, Casa Editorial el Tiempo v OHIM – Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, not published, EU:T:2008:121, paragraph 45).
10 By its second argument, the appellant criticises the General Court for having erred, in paragraphs 67 to 70 of the judgment under appeal, in its assessment of the phonetic comparison of the signs at issue and, accordingly, for having infringed Article 8(1)(b) of Regulation 2017/1001. That error also vitiates the conclusion reached by the General Court in paragraph 70 of the judgment under appeal that the signs at issue are phonetically similar to an average degree. In making that comparison, the General Court failed, in fact, to take into account the very different endings of the signs at issue and the difference in rhythm and intonation of those signs, which, in the present case, are influenced by the suffix ‘ify’ in the mark at issue. Those elements play a very significant role in the way in which the signs at issue are perceived phonetically.
11 The appellant submits that the statement of reasons in the paragraphs of the judgment under appeal referred to above not only is insufficient, but also fails to apply the principle of the phonetic comparison of the marks and the rule that the overall phonetic impression produced by a sign is particularly influenced by the number and sequence of its syllables and also by its rhythm and intonation, as is established in settled case-law (judgments of 25 February 2016, FCC Aqualia v OHIM – Sociedad General de Aguas de Barcelona (AQUALOGY), T‑402/14, not published, EU:T:2016:100, paragraphs 65 and 66, and of 29 January 2020, Vinos de Arganza v EUIPO – Nordbrand Nordhausen (ENCANTO), T‑239/19, not published, EU:T:2020:12, paragraph 33).
12 According to the appellant, the issue of law raised therein is significant because it confirms that it is not sufficient, in order to justify a phonetic similarity between the signs at issue, to take into account only several matching letters in those signs despite the difference in their syllables and in their rhythm and intonation.
13 By its third argument, the appellant criticises the General Court for having failed, in disregard of the relevant case-law and, once again, in breach of Article 8(1)(b) of Regulation 2017/1001, to take into account, when examining the global assessment of the likelihood of confusion, in paragraphs 80 to 88 of the judgment under appeal, the perception by the relevant public of the marks at issue, despite the fact that it held, in paragraph 38 of the judgment under appeal, that the relevant public consisted of the general public and professionals in the European Union displaying a high level of attention.
14 According to the appellant, it follows from case-law that the global assessment of the likelihood of confusion requires an iterative process that weighs up all the relevant factors (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 10 September 2008, Boston Scientific v OHIM – Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 72). Specifically, it is clear from case-law that the perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the context of that assessment (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25).
15 By the fourth argument of the request that the appeal be allowed to proceed, the appellant submits that, in paragraph 66 of the judgment under appeal, the General Court applied case-law which was not relevant to the case and, consequently, misinterpreted Article 8(1)(b) of Regulation 2017/1001.
16 The settled case-law on which the General Court relied in paragraph 66 of the judgment under appeal, according to which the initial part of the word elements of a mark is liable to attract the consumer’s attention more than the following parts (see, inter alia, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 62) applies in the factual circumstances specific to the cases that gave rise to that case-law, in which the initial part of the mark at issue is independent as compared with other elements of the mark and is perceived as a word by the relevant public. As those are not the factual circumstances of the mark at issue, that case-law cannot, consequently, be relevant in the present case.
17 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 16 September 2019, Kiku v CPVO, C‑444/19 P, not published, EU:C:2019:746, paragraph 11, and of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 13).
18 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 Rules of Procedure of the Court, 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 (order of 3 September 2020, Gamma-A v EUIPO, C‑199/20 P, not published, EU:C:2020:662, paragraph 10).
19 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 or the General Court alleged to have been infringed, and second, 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).
20 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).
21 In the present case, as regards the first and second arguments in the request that the appeal be allowed to proceed, which overlap and which it is appropriate to examine together, the appellant criticises the General Court for having departed from the relevant case-law, referred to in paragraphs 8, 9 and 11 of the present order, in the context of the assessment of the visual, phonetic and conceptual similarity of the signs at issue, and for having given insufficient reasons for its assessment in the context of the phonetic comparison.
22 It should be noted in that regard that, although the appellant identifies errors of law allegedly made by the General Court, it does 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.
23 It is clear from case-law that the fact that an appeal raises certain issues of law specific to the judgment under appeal does not in itself allow the view to be taken that the Court must allow the appeal to proceed. To that end, the appellant must instead demonstrate that, independently of the issues of law invoked in its appeal, its appeal raises one or more issues that are significant with respect to the unity, consistency and development of EU law, the scope of this criterion going beyond the judgment under appeal and, ultimately, its appeal (see, to that effect, order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 18). Furthermore, with regard specifically to the argument that the General Court has departed from the relevant case-law, 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 arguments are not, in themselves, sufficient to establish that this 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 19 of the present order (see, to that effect, order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 17). In the present case, the appellant has not complied with all of those requirements.
24 As regards the third and fourth arguments put forward in the request that the appeal be allowed to proceed, by which the appellant criticises the General Court, respectively, for having failed to take into account, in its examination of the global assessment of the likelihood of confusion, how the marks at issue are perceived by the relevant public, which consists of the general public and professionals in the European Union displaying a high level of attention, and for having applied, in the context of the visual comparison of the signs at issue, case-law which is not relevant in the present case, it must be observed that the appellant neither alleges nor shows that the errors in law allegedly made by the General Court raise an issue that is significant with respect to the unity, consistency or development of EU law.
25 In those circumstances, it must be concluded 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.
26 In the light of all of the foregoing, the appeal should not be allowed to proceed.
Costs
27 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.
28 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. Scorify UAB shall bear its own costs.
Luxembourg, 26 November 2020.
A. Calot Escobar | | R. Silva de Lapuerta |
Registrar | | President of the Chamber determining whether appeals may proceed |