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

5 May 2021 (*)

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

In Case C‑29/21 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 18 January 2021,

Tinnus Enterprises LLC, established in Plano, Texas (United States), represented by A. Odle and R. Palijama, advocaten,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Koopman International BV, established in Amsterdam (Netherlands), represented by G. van den Bergh and B. Brouwer, advocaten,

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of R. Silva de Lapuerta, Vice-President of the Court, M. Ilešič and E. Juhász (Rapporteur), Judges,

Registrar: A. Calot Escobar,

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

makes the following

Order

1        By its appeal, Tinnus Enterprises LLC asks the Court of Justice to set aside the judgment of the General Court of the European Union of 18 November 2020, Tinnus Enterprises v EUIPO – Mystic Products and Koopman International (Fluid distribution equipment) (T‑574/19, EU:T:2020:543; ‘the judgment under appeal’), whereby the General Court dismissed its action seeking annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 June 2019 (Case R 1002/2018-3), relating to invalidity proceedings between Mystic Products Import & Export and Koopman International, of the one part, and Tinnus Enterprises, of the other part.

 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 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 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 those rules, the Court is to rule on the request that the appeal be allowed to proceed in the form of a reasoned order.

6        In support of its request that the appeal be allowed to proceed, the appellant submits that its appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, which, in its view, justifies the appeal being allowed to proceed.

7        The appellant claims that the important question is whether, by the judgment under appeal, the General Court, by misapplying Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), opened the door to a limitation on the protection of designs, which is contrary to the objective and rules laid down in that regulation and in Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 28).

8        In particular, it criticises the General Court for finding that, where one of the features of appearance of the individual elements of a product is dictated solely by its technical function, the design of the product concerned is, as a whole, excluded from protection as a design under Regulation No 6/2002. It submits that Article 8(1) of that regulation should be applied so that only features of appearance of a product which are dictated solely by its technical function should not be taken into consideration in order to examine whether the other features of the design fulfil the requirements for protection.

9        In that regard, the appellant submits that the General Court erred in examining, under Article 8(1) of Regulation No 6/2002, only one of the features of appearance of certain components of the product at issue, that is to say, the shape. It claims that, after having wrongly found that the shape of one of the components was dictated solely by the technical function of the product, the General Court held, in paragraph 47 of the judgment under appeal, that no other feature of appearance is eligible for protection, given that it is ‘logical’ that the features of appearance of the product as a whole necessarily coincide with those of the individual elements of which it is composed. According to the appellant, the General Court failed to examine, in the light of recital 10 of Regulation No 6/2002, whether other features of a design fulfil the requirements for protection relating to novelty and individual character under Article 4(1) and Articles 5 and 6 of that regulation.

10      In so doing, the General Court misapplied, according to the appellant, the criteria laid down by the Court of Justice in its judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172). Moreover, it submits that, although that judgment sets out the criteria for determining whether the relevant features of appearance of a product are dictated solely by its technical function, it does not explain what is meant by the concept of ‘features of appearance of a product’. The absence of a definition of that concept requires its autonomous and uniform interpretation throughout the European Union, which must be sought in the light of the context and the objective pursued by the legislation in question. The appellant claims that, by that judgment, the Court of Justice did not dispel the doubts as to whether a design may confer rights over the other features of appearance of a product where its individual elements include a feature of appearance which is dictated solely by its technical function.

11      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).

12      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, 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 (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).

13      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 which 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).

14      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).

15      In the present case, it must be stated at the outset that, although the appellant relies on the error of law allegedly committed by the General Court which, in its view, raises an important issue, it does not provide the slightest indication of the specific reasons for which that issue should be significant with respect to the unity, consistency or development of EU law.

16      In particular, as regards the argument summarised in paragraph 8 of the present order, it is sufficient to note that it is based on a misreading of the judgment under appeal. The General Court recalled, in paragraph 23 of the judgment under appeal, that the exclusively functional features of the design at issue need not be taken into consideration in assessing whether other features of the design at issue fulfil the conditions for obtaining protection. Next, contrary to the appellant’s claims, the General Court held, in paragraph 24 of the judgment under appeal, that it is apparent from Article 8(1) of Regulation No 6/2002 and recital 10 of that regulation that, if it is found that at least one of the features of appearance of the product concerned is not dictated solely by the technical function of that product, the design at issue remains valid and confers protection on that feature.

17      As regards the argument set out in paragraph 9 of the present order, the appellant seeks, in reality, to call into question the factual assessment made by the General Court when examining the features of appearance of the product concerned. It is not possible, by such a line of argument, to state that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 11 February 2020, Rutzinger-Kurpas v EUIPO, C‑887/19 P, not published, EU:C:2020:91, paragraph 14 and the case-law cited).

18      In any event, it must be pointed out that that line of argument is the result of a truncated reading of the judgment under appeal. The General Court found, in paragraph 34 of the judgment under appeal, that, since the Board of Appeal had found that all the features of appearance of the product concerned were dictated by its technical function and had therefore concluded that the contested design was invalid, it was not necessary for it to examine its novelty and individual character. In addition, it pointed out, in paragraph 48 of the judgment under appeal, that the appellant itself had agreed that the four individual elements of the product concerned did indeed constitute the features of its appearance.

19      As regards the argument summarised in paragraph 10 of the present order, in so far as it alleges misapplication of the criteria set out in the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), it must be noted that the appellant does not specify the criteria which it claims are incorrectly applied, or the paragraphs of that judgment which have been disregarded in that regard, and does not demonstrate, in accordance with the requirements set out in paragraph 13 of the present order, how that failure, assuming it were established, would raise an issue that is significant with respect to the unity, consistency or development of EU law. In so far as the appellant submits that the concept of ‘features of appearance of a product’ requires a uniform interpretation within the European Union, it must be noted that it does not set out the specific reasons capable of demonstrating that the Court’s position in that regard is significant with regard to the unity, consistency or development of EU law.

20      In those circumstances, it must be held 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.

21      In the light of all of the foregoing, the request that the appeal be allowed to proceed must be rejected.

 Costs

22      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.

23      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.      Tinnus Enterprises LLC shall bear its own costs.

Luxembourg, 5 May 2021.

A. Calot Escobar

 

R. Silva de Lapuerta

Registrar

President of the Chamber determining

whether appeals may proceed


*      Language of the case: English.