ORDER OF THE COURT (Chamber determining whether appeals may proceed)
2 October 2024 (*)
( 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 and development of EU law – Refusal to allow the appeal to proceed )
In Case C‑335/24 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 6 May 2024,
Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented by M. Kefferpütz and K. Wagner, Rechtsanwälte,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
MHCS, established in Épernay (France),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed)
composed of L. Bay Larsen, Vice-President of the Court, N. Piçarra and N. Jääskinen (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 its appeal, Lidl Stiftung & Co. KG asks the Court of Justice to set aside the judgment of the General Court of the European Union of 6 March 2024, Lidl Stiftung v EUIPO – MHCS (Shade of the colour orange) (T‑652/22, ‘the judgment under appeal’, EU:T:2024:152), by which the General Court, although it annulled the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 August 2022 (Case
R 118/2022‑4), in relation to invalidity proceedings between Lidl Stiftung & Co. KG and MHCS, did not declare the contested mark invalid.
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        Under 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 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 its request that the appeal be allowed to proceed, the appellant relies on four grounds, by which it submits that its appeal raises issues that are significant with respect to the unity, consistency or development of EU law, which justify the appeal being allowed to proceed.
7        In the first place, the appellant submits that, in paragraphs 50 to 54 of the judgment under appeal, the General Court failed to apply the case-law arising from the judgment of 6 May 2003, Libertel (C‑104/01, EU:C:2003:244), in so far as it considered that, since there was no risk of deterioration over time, it was not necessary to combine a verbal description with the colour samples in order to meet the requirements of Article 4 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1).
8        According to the appellant, either the General Court based its decision on an obviously inaccurate fact and, consequently, the appeal should be allowed to proceed in order to ensure consistency with the appellant’s right to a fair legal process, or the General Court assumed that the initial trade mark application had been substituted by its digitalised copy, and, therefore, the appeal should be allowed to proceed in order to develop a fundamental point of EU law, which is that of determining when the subject matter of a trade mark is established and whether that determination is final. In that regard, the appellant submits, relying in particular on the judgment of 12 December 2002, Sieckmann (C‑273/00, EU:C:2002:748), that solely the application form as received by EUIPO is decisive. Considering that EUIPO’s and national trade mark registries are mostly digitalised, while earlier trade marks were all filed on paper, a clarification from the Court on the question arising in the present case is necessary with respect to consistency with the EU case-law cited or with respect to the development of EU law in the context of increasing digitalisation.
9        In the second place, the appellant criticises the General Court for having limited the scope of the judgment of 6 May 2003, Libertel (C‑104/01, EU:C:2003:244), and considered the colour sample in itself to be sufficient to be regarded as meeting the requirements of Article 4 of Regulation No 40/94 on the sole ground that subsequent digitalisation had eliminated the risk of deterioration over time. Thus, it should be clarified whether a combination with a verbal description remains necessary where there is a digital or even digitalised registry.
10      Moreover, the Court should, with a view to the development of EU law, clarify that a digital copy of a colour sample cannot, in itself, fulfil the criteria deriving from the judgment of 12 December 2002, Sieckmann (C‑237/00, EU:C:2002:748, paragraph 55), in so far as digitalisation does not make it possible to obtain a faithful rendering of the colour of the sample of the mark and cannot therefore be regarded as a clear, precise and objective representation of the mark within the meaning of that case-law.
11      In the third place, the appellant submits that, in paragraph 57 et seq. of the judgment under appeal, the General Court held that it was for the appellant to substantiate and prove the contradiction between the colour sample at issue and the description containing the scientific definition. In so doing, the General Court failed to have regard to the case-law of the Court of Justice according to which the burden of proof lies with the proprietor of the mark. Consequently, clarification as to the allocation of the burden of proof is required in order to preserve the unity and consistency of EU law.
12      In the fourth and last place, the appellant submits that its appeal makes it possible to develop the criteria deriving from the judgment of 12 December 2002, Sieckmann (C‑273/00, EU:C:2002:748), in so far as the requirements for the verbal description of the mark are concerned. In particular, it submits that the applicable colour system is an essential part of a description which should clarify the colour shade sought. In addition, its appeal raises issues that are significant with respect to the consistency of EU law, in particular with regard to the principles highlighted in the judgment of 12 December 2002, Sieckmann (C‑273/00, EU:C:2002:748), or for the development of EU law, in so far as it would make it possible in particular to establish that, in order to be easily accessible and/or intelligible, a description must be capable of being recognised and understood by the general public, for example, economic operators who are not specialists in a particular (scientific) field. Therefore, it is necessary to provide significant clarification of the requirements to be placed on the perspective from which the description of a colour mark must be understood and the conditions under which that mark fulfils the criteria deriving from the judgment of 12 December 2002, Sieckmann (C‑273/00, EU:C:2002:748).
Findings of the Court
13      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).
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 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).
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, 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 (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 11 July 2024, Puma v EUIPO, C‑248/24 P, EU:C:2024:621, paragraph 16).
17      As regards the arguments set out in paragraphs 7 to 12 above, it should be pointed out that the request that the appeal be allowed to proceed not only sets out in a somewhat vague and imprecise manner the grounds on which the appeal is based, but does not indicate to what extent the errors of law allegedly committed by the General Court affect the result of the judgment under appeal.
18      Furthermore, as regards the line of argument summarised in paragraphs 7 to 11 above, in so far as the appellant submits that the General Court not only departed from the case-law of the Court of Justice, but also limited the scope of that case-law, it should be noted that such a line of argument is not, in itself, sufficient to establish, in accordance with the burden of proof which lies with the appellant 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; to that end, the appellant must comply with all the requirements set out in paragraph 15 above (order of 11 May 2023, Heinze v L’Oréal and EUIPO, C‑15/23 P, EU:C:2023:407, paragraph 19 and the case-law cited). In the present case, the appellant does not provide sufficient information on the similarity of the situations referred to in the allegedly disregarded case-law to make it possible to establish the existence of the contradictions relied on.
19      Lastly, as regards the line of argument set out in paragraph 12 above concerning the clarification of the criteria deriving from the judgment of 12 December 2002, Sieckmann (C‑273/00, EU:C:2002:748), it must be noted that the explanations provided by the appellant in that regard are not sufficiently clear and precise to enable the Court of Justice to understand the nature of the errors of law allegedly committed by the General Court. The appellant merely seeks clarification of the requirements applicable to the verbal description of a mark.
20      In those circumstances, it must be held 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.
21      In the light of the foregoing considerations, 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.      Lidl Stiftung & Co. KG shall bear its own costs.
Luxembourg, 2 October 2024.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.