ORDER OF THE COURT (Chamber determining whether appeals may proceed)
30 January 2024 (*)
(Appeal – EU trade mark – Determination as to whether appeals should be allowed to proceed – Article 170(b) 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‑614/23 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 6 October 2023,
Markus Schneider, residing in Bonn (Germany), represented by M. Bergermann and D. Graetsch, Rechtsanwälte,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Frutaria Innovation, SL, formerly Frutaria Comercial de Frutas y Hortalizas, SL, established in Saragossa (Spain),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed),
composed of L. Bay Larsen, Vice-President of the Court, P.G. Xuereb and A. Kumin (Rapporteur), Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, M. Campos Sánchez-Bordona,
makes the following
Order
1 By his appeal, Mr Markus Schneider asks the Court of Justice to set aside the judgment of the General Court of the European Union of 26 July 2023, Schneider v EUIPO – Frutaria Innovation (frutania) (T‑109/22, EU:T:2023:423; ‘the judgment under appeal’), by which the General Court dismissed his action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 December 2021 (Case R 1058/2017-1), relating to opposition proceedings between Frutaria Innovation, SL, and Mr Schneider.
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 of Justice to rule on that request.
5 In accordance with Article 170b(1) and (3) of the Rules of Procedure, the Court is to rule as soon as possible on the request that the appeal be allowed to proceed, in the form of a reasoned order.
Arguments of the appellant
6 In support of his request for the appeal to be allowed to proceed, the appellant asks, first of all, that the present proceedings be stayed until the adoption of a final decision in the invalidity proceedings concerning the earlier mark No 5 922 885, namely the figurative mark Frutaria, which the appellant has brought before EUIPO (Case No C 53 087) and which relate to the allegedly purely descriptive nature of the dominant word element forming that mark.
7 By decision of 4 May 2023 in those invalidity proceedings the Cancellation Division [of EUIPO] upheld the registration of the earlier mark on the ground that, due to the graphic design, the sign was perceived as a trade mark and had at least a minimum level of distinctive character. The appellant argues that that decision, against which he has filed an appeal, is obviously incorrect and blatantly contradicts the findings of the General Court in the judgment under appeal. He submits that it is very likely that the Board of Appeal will annul that decision and that it will find that the figurative mark Frutaria is not eligible for protection.
8 In those circumstances, the appellant states that in order to avoid the delivery of contradictory decisions and the appellant being deprived of his position of priority over more recent trade mark applications, acquired by the filing of his application for registration of a mark for the figurative sign ‘frutania’ on 16 July 2013, it is necessary to stay the present proceedings so as to ensure that the judgment under appeal does not acquire res judicata authority before a final decision is delivered in the invalidity proceedings.
9 In addition, the appellant asks the Court of Justice to clarify how the general scope of protection of a trade mark should be determined. More specifically, he submits that it is settled case-law that when examining the likelihood of confusion, the mark must be accepted, in principle, as registered. However, he argues that if, as in the present case, a trade mark is registered solely because it contains other elements (graphic designs), in addition to a clearly descriptive element (Frutaria), then that should be taken into account when determining the scope of protection of the trade mark. In that regard, the question arises as to whether it is permissible, as the General Court allegedly did, to identify an element which is not per se capable of protection, as dominant, and to carry out an examination of the likelihood of confusion on that basis of that element.
10 Furthermore, the appellant submits that it is of significance with respect to EU law to determine whether distinctive character may be assessed differently in the context of the registration of a trade mark than in the context of the examination of the likelihood of confusion. The registrability of the earlier trade mark Frutaria is based on the fact that, in addition to the word element, it also contains graphic elements. However, those latter elements are not taken into consideration in the examination of the likelihood of confusion. The appellant submits, in essence, that such an approach causes legal uncertainty and requires clarification by the Court.
11 Lastly, the appellant highlights the fact that a situation, in which a term that cannot be registered in a Member State owing to a lack of distinctive character could become a term that can be protected, may lead to a considerable risk of abuse and unfairness. In that regard, the appellant suggests remedying that situation by taking into account, when interpreting the scope of protection of a trade mark, all the ‘suitable’ publics and not only those that have been selected.
12 According to the appellant, all the issues raised in the present case are relevant with respect to the unity, consistency and development of EU law.
Findings of the Court
13 As a preliminary point, it must be observed that it is for the appellant to demonstrate that the issues raised by his 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).
14 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 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 (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).
15 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, 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 (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).
16 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).
17 As regards, in the present case, the request that the present proceedings be stayed, that request cannot be granted at this stage of the proceedings, taking account, inter alia, of Article 55(1)(b) of the Rules of Procedure.
18 As regards the appellant’s arguments summarised in paragraphs 6 to 12 above, it should be observed that only errors of law resulting from the judgment under appeal are capable of raising an issue that is significant with respect to the unity, consistency and development of EU law (order of 8 December 2021, Franz Schröder v EUIPO, C‑473/21 P, EU:C:2021:1001, paragraph 15 and the case-law cited).
19 However, in his request for the appeal to be allowed to proceed, the appellant not only fails to point to any provision of EU law alleged to have been infringed or to identify which paragraphs of the judgment under appeal may be vitiated by an error of law committed by the General Court, but he also does not allege the existence of such an error, since, in fact, he merely challenges the decision made by the Cancellation Division of EUIPO in another set of proceedings.
20 The appellant has therefore not complied with the requirements referred to in paragraph 15 above.
21 In those circumstances, it must be held that the request submitted by the appellant 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.
22 In the light of the foregoing, the appeal should not be allowed to proceed.
Costs
23 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.
24 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 his own costs.
On those grounds, the Court (Chamber determining whether appeals may proceed) hereby orders:
1. The appeal is not allowed to proceed.
2. Mr Markus Schneider shall pay his own costs.
Luxembourg, 30 January 2024.
A. Calot Escobar | | L. Bay Larsen |
Registrar | | President of the Chamber determining whether appeals may proceed |