ORDER OF THE COURT (Chamber determining whether appeals may proceed)
21 March 2023 (*)
(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‑788/22 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 28 December 2022,
Louis Vuitton Malletier SAS, established in Paris (France), represented by P. Roncaglia and
N. Parrotta, avvocati, and P.-Y. Gautier, avocat,
appellant,
the other party to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
THE COURT (Chamber determining whether appeals may proceed)
composed of L. Bay Larsen, Vice-President of the Court, M.L. Arastey Sahún and J. Passer (Judge-Rapporteur), 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, Louis Vuitton Malletier SAS
asks the Court of Justice to set aside the judgment of the General Court of the European Union of 19 October 2022, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern II) (T‑275/21, not published, EU:T:2022:654; ‘the judgment under appeal’), by which the General Court dismissed its action for annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 February 2021 (Case R 1307/2020-5), relating to invalidity proceedings between Mr Wisniewski and Louis Vuitton Malletier.
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        The third paragraph of Article 58a of that statute provides that 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        Article 170a(1) of the Rules of Procedure provides that, 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.
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 submits that the General Court infringed Article 7(3) and Article 51(2) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) by finding, in paragraph 141 of the judgment under appeal, that it had not demonstrated that the contested mark had acquired distinctive character through its use in all the Member States of the European Union. In its view, the criterion followed by the General Court derives from case-law which incorrectly applies the principles relating to shape marks, in particular that of the geographical extent. Furthermore, it contends that requiring that the acquisition of distinctive character of a non-word mark be established in relation to each Member State is incompatible with the unitary character of the EU trade mark, because it is tantamount to treating the internal market as a territory divided into national markets. It argues that, although a compromise solution was adopted in the judgment of 25 July 2018, Société des produits Nestlé and Others v Mondelez UK Holdings & Services (C‑84/17 P, C‑85/17 P and C‑95/17 P, EU:C:2018:596, in particular paragraphs 79 to 83), the judicial authorities continue to assess distinctive character acquired through use at country level instead of carrying out an overall assessment.
8        The appellant submits that that case-law, which is not based on any legal provision, creates an unjust situation in which shape or pattern marks are denied protection and is contrary to the free movement of goods in the internal market. It contends that it is therefore liable to jeopardise the unity, consistency and development of EU law.
9        By its second ground of appeal, the appellant complains that the General Court infringed the rules regarding a fair hearing and the principle of equality of arms, which are set out in Article 47 of the Charter of Fundamental Rights of the European Union (‘the Charter’). It submits that requiring the trade mark proprietor to provide proof of distinctive character acquired through use in all the Member States, rather than only in the country in which distinctive character is disputed, runs counter to a fair apportionment of the burden of proof and constitutes a probatio diabolica.
10      In that regard, the appellant claims that the differences in the General Court’s assessment of distinctive character acquired through use between the first judgment relating to the same case (judgment of 10 June 2020, Louis Vuitton Malletier v EUIPO – Wisniewski (Representation of a chequerboard pattern), T‑105/19, not published, EU:T:2020:258) and the judgment under appeal reflects an inconsistency in EU law and its unity. Furthermore, it submits that the right to a fair hearing and the rules of evidence are protected differently in the field of trade mark law. It contends that the present appeal therefore raises issues of consistency and unity of EU law.
11      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 (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 20 and the case-law cited).
12      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 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 orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 21, and of 16 November 2022, EUIPO v Nowhere, C‑337/22 P, EU:C:2022:908, paragraph 24).
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 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 which have allegedly 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 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 22 and the case-law cited).
14      In the present case, as regards, in the first place, the arguments summarised in paragraphs 7 and 8 of the present order, alleging infringement of Article 7(3) and Article 51(2) of Regulation No 40/94, it must be pointed out that, although the appellant relies on an error of law allegedly committed by the General Court when assessing whether the contested mark had acquired distinctive character through use and identifies, in that regard, the paragraphs of the judgment of the Court of Justice which were allegedly infringed and that of the judgment under appeal which it is calling into question, it does not explain in a clear and precise manner where the alleged contradiction lies. It merely complains that the General Court erred in law in finding, in paragraph 141 of the judgment under appeal, that the appellant had not demonstrated that the contested mark had acquired distinctive character through its use in all the Member States of the European Union, without, however, explaining how exactly the case-law cited has allegedly been infringed. It must therefore be held that the appellant has not complied with all of the requirements set out in paragraph 13 of the present order.
15      Furthermore, in so far as the appellant’s line of argument seeks to call into question factual assessments made by the General Court, it should be borne in mind that such a line of argument is not, in principle, likely to raise an issue that is significant with respect to the development of EU law (see order of 17 October 2022, SFD v EUIPO, C‑383/22 P, not published, EU:C:2022:799, paragraph 15).
16      In the second place, as regards the arguments set out in paragraphs 9 and 10 of the present order, alleging infringement of Article 47 of the Charter, it must be pointed out, without prejudice to the significant place occupied, within the EU legal order, of the right to a fair hearing and the principle of equality of arms, that they do not satisfy the requirements set out in paragraph 13 of the present order. The appellant merely sets out the errors which were allegedly made by the General Court, without, however, explaining, to the requisite legal standard, why those errors, on the assumption that they have been proved, raise issues that are significant with respect to the unity, consistency or development of EU law which would justify the appeal being allowed to proceed (see, to that effect, order of 15 July 2022, Meta Cluster v EUIPO, C‑233/22 P, not published, EU:C:2022:593, paragraph 13).
17      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.
18      In the light of the foregoing considerations, the appeal should not be allowed to proceed.
Costs
19      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.
20      Since the present order was adopted before the appeal was served on the other party to the proceedings and, therefore, before it 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.      Louis Vuitton Malletier SAS shall bear its own costs.
Luxembourg, 21 March 2023.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.