ORDER OF THE COURT (Chamber determining whether appeals may proceed)
27 October 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‑495/23 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 2 August 2023,
Wallmax Srl, established in Milan (Italy), represented by L. Goglia and B. Villa, avvocati,
appellant,
the other parties to the proceedings being:
Roxtec AB, established in Karlskrona (Sweden),
applicant at first instance,
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, Z. Csehi (Rapporteur) and D. Gratsias, Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, M. Szpunar,
makes the following
Order
1        By its appeal, Wallmax Srl asks the Court of Justice to set aside the judgment of the General Court of the European Union of 7 June 2023 Roxtec and Wallmax v EUIPO – Wallmax and Roxtec (Representation of a blue square containing eight concentric black circles) (T‑218/22 and T‑219/22, not published, EU:T:2023:317; ‘the judgment under appeal’), by which the General Court dismissed the action brought by Roxtec AB in Case T‑218/22 and that of Wallmax Srl in Case T‑219/22 seeking annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 10 February 2022 (Case R 1093/2021-2), relating to invalidity proceedings between Wallmax Srl and Roxtec AB.
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 to rule on that request.
5        In accordance with Article 170b(1) and (3) of the Rules of Procedure, the Court’s decision on the request that the appeal be allowed to proceed is to be taken 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 submits that the present appeal, alleging infringement of Article 7(1)(e)(ii) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), raises an issue that is significant with respect to the consistency and development of EU law.
7        In that regard, it maintains that the issue raised is of a significance which goes beyond the case at issue and that it has not yet been examined by the Court.
8        In that context, the appellant submits, in the first place, that a mark that has been denied protection because it represents the shape of a product that is dictated by its technical function in relation to the specific product it represents cannot obtain protection for related products which, although not in the same category of goods within the meaning of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, are in any case in a context of proximity and functional and technical continuity with the specific products to which the mark refers. Thus, Article 7(1)(e)(ii) of Regulation No 40/94 should apply not only to the actual product but also to all other products with respect to which protection is specifically sought and in which the actual product must necessarily be placed in order fully to perform its function. If the reasoning of the General Court were to be followed, there would be a risk, where the product concerned and similar or complementary products benefit from the protection of the mark at issue, that a company might appropriate and monopolise, through trade mark law, technical solutions or functional characteristics of a product.
9        In the second place, the appellant claims that the reasoning of the General Court in paragraphs 48 to 50 of the judgment under appeal conflicts with the conclusions reached in paragraph 92 of the judgment of 24 September 2019, Roxtec v EUIPO – Wallmax (Representation of a black square containing seven concentric blue circles) (T‑261/18, EU:T:2019:674).
10      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 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).
11      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 (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).
12      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).
13      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 26 September 2023, Mordalski v EUIPO, C‑321/23 P, EU:C:2023:705, paragraph 13).
14      As regards the argument summarised in paragraph 8 above, relating to the scope of the examination of an absolute ground for invalidity laid down in Article 7(1)(e)(ii) of Regulation No 40/94, it must be observed that the appellant merely sets out the errors allegedly committed by the General Court, without identifying the paragraphs of the judgment under appeal which it is calling into question or setting out the specific reasons why those errors, assuming that they are established, raise issues that are significant with respect to the unity, consistency or development of EU law.
15      As regards the argument relating to the alleged error of law resulting from the infringement of the case-law of the General Court, summarised in paragraph 9 above, it must be recalled that such an argument is not, in itself, sufficient to establish, in accordance with the burden of proof which lies with the person requesting that an appeal be allowed to proceed, that that appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, since that person must comply, to that end, with all the requirements set out in paragraph 12 above (see, by analogy, order of 5 July 2023, Suicha v EUIPO, C‑120/23 P, EU:C:2023:539, paragraph 16 and the case-law cited). None of those requirements is met in the present case. In particular, the request that the appeal be allowed to proceed does not specify the reasons why the alleged contradiction between the case-law of the General Court and the judgment under appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.
16      Furthermore, as regards the arguments summarised in paragraphs 6 and 7 above, relating to the significance of the issue raised by the present appeal with respect to the consistency and development of EU law, it is important to point out that the appellant does not explain, to the requisite legal standard, or, a fortiori, demonstrate, in a manner that complies with all the requirements set out in paragraph 12 above, how its appeal raises an issue that is significant with respect to the consistency and development of EU law, which would justify the appeal being allowed to proceed.
17      The appellant’s mere claims that its appeal raises an issue that is significant with respect to the consistency and development of EU law and that that issue is of a significance which goes beyond the present case are clearly too general to constitute such proof.
18      Lastly, as regards the argument set out in paragraph 7 above, relating to the fact that the Court has not yet ruled on the issue raised, it is sufficient to recall that the fact that an issue of law has not been examined by the Court does not thereby mean that that issue is necessarily one of significance with respect to the unity, consistency or development of EU law, and the person requesting that an appeal be allowed to proceed remains bound to demonstrate that significance by providing detailed information not only on the novelty of that issue, but also on the reasons why that issue is significant in relation to those criteria (see, to that effect, order of 21 December 2021, Cyprus v EUIPO, C‑538/21 P, EU:C:2021:1053, paragraph 22 and the case-law cited). However, that significance has not been demonstrated in the present request since the appellant merely makes a general assertion that the Court has not yet ruled on the issue concerned.
19      It must therefore be found that the appellant has not complied with all of the requirements set out in paragraph 12 above.
20      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.
21      In the light of all of the foregoing, the appeal should not be allowed to proceed.
Costs
22      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.
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.      Wallmax Srl shall bear its own costs.
Luxembourg, 27 October 2023.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.