ORDER OF THE COURT (Chamber determining whether appeals may proceed)
15 December 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‑533/23 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 17 August 2023,
Sanity Group GmbH, established in Berlin (Germany), represented by B. Koch, Rechtsanwalt,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
AC Marca Brands, SL, established in Madrid (Spain),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed)
composed of L. Bay Larsen, Vice-President, M. Safjan and M. Gavalec (Rapporteur), Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, A. Rantos,
makes the following
Order
1        By its appeal, Sanity Group GmbH asks the Court of Justice to set aside the judgment of the General Court of the European Union of 7 June 2023, Sanity Group v EUIPO (T‑541/22, EU:T:2023:310;‘the judgment under appeal’) by which the General Court dismissed the appellant’s action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 June 2022 (Case R 2107/2021-1), concerning opposition proceedings between Sanity Group and AC Marca Brands, SL.
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 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        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 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.
Arguments of the appellant
6        In support of its request that the appeal be allowed to proceed, the appellant submits that the four grounds of its appeal, all based on an infringement of Article 8(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), raise issues that are significant with respect to the unity, consistency and development of EU law.
7        In the first place, the appellant alleges that the General Court, in the context of the assessment of the overall similarity of the marks at issue, erred in finding, in paragraphs 37, 48 and 56 of the judgment under appeal, that the word element ‘Group’ was devoid of distinctiveness. First, it claims such finding is not in line with paragraph 29 of the judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM – Société de développement et de recherche industrielle (ERGO Group) (T‑221/09, EU:T:2011:393), in which the General Court found that the word ‘Group’ was weakly distinctive. Secondly, the General Court disregarded paragraph 49 of the judgment of 12 June 2019, Hansson (C‑705/17, EU:C:2019:481), according to which, since the similarity between two marks must be established by analysing the components of a sign and their relative weight in order to determine, in the light of the particular circumstances of the case, the overall impression made on the public, it cannot therefore be considered in advance and in general that the descriptive elements of the signs at issue must be excluded from the assessment of their similarity.
8        With regard to the significance of that issue with respect to the unity, consistency and development of EU law, the appellant maintains that, in many sectors, it is common for trade marks to include words deriving from Latin or Greek. Concerning the pharmaceutical and cosmetic sectors, many trade marks include the element ‘derma’, derived from Greek, which means ‘skin’ and is descriptive. Thus, the question of how similarity should be assessed in such cases, where applications are based on Article 8(5) of Regulation 2017/1001, is manifestly relevant to all sectors in which descriptive elements are used in the composition of trade marks, including the pharmaceutical and cosmetics sectors. The same applies to conflicts between national trade marks for the purposes of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1) and to infringement proceedings for the purposes of Regulation 2017/1001 or Directive 2015/2436.
9        In the second place, the appellant maintains that, although the General Court noted in paragraph 44 et seq. of the judgment under appeal that the Board of Appeal had incorrectly found that the phonetic similarity of the signs at issue was above average, whereas it should have been regarded as ‘at least average’, it did not take it into account in a fresh assessment of whether that similarity established a link entailing a risk of injury, thus failing to have regard, in particular, to the judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO (C‑471/16 P, EU:C:2017:602), since the existence of such a link must be subject to an overall assessment, in the light of all the relevant factors of the particular case, such as the degree of similarity.
10      In the third place, the appellant complains that the General Court, in paragraphs 70 to 72 of the judgment under appeal, made an assessment of the similarity establishing a link between the marks entailing a risk of injury on the basis of the earlier mark having a ‘substantial reputation’. The appellant states that the General Court did not take into account the fact that such a degree of reputation was rather low with regard to the scale, the degrees of which, as is apparent from the judgment of 19 May 2021, Puma v EUIPO – Gemma Group (Representation of a bounding feline) (T‑510/19, EU:T:2021:281), are mere reputation, substantial reputation, very substantial reputation, and exceptional reputation. Such an omission disregards paragraph 52 of the judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO (C‑471/16 P, EU:C:2017:602), under which all relevant factors should be weighed for the purposes of an overall assessment, with the result that the General Court should have found that there was no link and no risk of injury.
11      In the fourth and last place, the appellant complains that the General Court failed to take into consideration, in paragraphs 59 to 72 of the judgment under appeal, the fact that the signs coincided only in respect of non-distinctive or weakly distinctive elements, namely Sani and Sany. Such an omission is not in accordance, first, with the interpretation of Article 8(5) of Regulation 2017/1001 as follows from paragraph 52 of the judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO (C‑471/16 P, EU:C:2017:602), and, secondly, the interpretation of Article 4(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25) so far as concerns the taking into consideration of non-distinctive or weakly distinctive elements, as follows from paragraph 49 of the judgment of 12 June 2019, Hansson (C‑705/17, EU:C:2019:481), which applies mutatis mutandis for the purposes of the overall assessment with regard to Article 8(5) of Regulation 2017/1001.
12      Furthermore, according to the appellant, the issues raised have not yet been the subject of an interpretation by the Court of Justice.
13      As regards the arguments referred to in paragraphs 9 to 11 of the present order, the appellant claims that the line of argument set out in paragraph 8 of the present order applies mutatis mutandis to demonstrate the significance of the issues raised with respect to the unity, consistency and development of EU law.
Findings of the Court
14      At the outset, it should be noted 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).
15      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).
16      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 under appeal 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).
17      A request that an appeal be allowed to proceed which does not contain the information mentioned in the previous 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 17 July 2023, Canai Technology v EUIPO, C‑280/23 P, EU:C:2023:596, paragraph 12).
18      In the present case, as regards, in the first place, the arguments summarised in paragraphs 7 and 9 to 11 of the present order, it should be borne in mind that the claim that the General Court disregarded its own case-law and that of the Court of Justice relating to Article 8(5) of Regulation 2017/1001 and Article 4(1)(b) of Directive 2008/95 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 and development of EU law; to that end, the appellant must comply with all the requirements set out in paragraph 16 of the present order (see, by analogy, 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).
19      It must be stated that, although the appellant specifies the paragraphs of the judgment under appeal and those of the rulings of the Court of Justice and the General Court alleged to have been infringed, it does not provide sufficient information regarding the similarity of the situations referred to in those rulings to make it possible to establish the existence of the contradiction relied on (order of 11 May 2023, Heinze v L’Oréal and EUIPO, C‑15/23 P, EU:C:2023:407, paragraph 20 and the case-law cited).
20      The appellant merely states that the General Court disregarded its own case-law or that of the Court of Justice in other cases, without specifying whether and how the situations which are the subject of those cases are similar to the situation at issue in the present case.
21      As regards, in the second place, the line of argument summarised in paragraph 12 of the present order, 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 27 October 2023, Wallmax v EUIPO, C‑495/23 P, EU:C:2023:824, paragraph 18 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 issues concerned.
22      In the third and last place, as regards the arguments referred to in paragraphs 8 and 13 of the present order, it is important to note that the appellant neither explains, to the requisite legal standard, nor, a fortiori, demonstrates, in a manner that complies with all of the requirements set out in paragraph 16 of the present order, how its appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, which would justify the appeal being allowed to proceed.
23      The appellant must demonstrate that, irrespective of the issues of law which it relies on in its appeal, that appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law, the scope of that criterion going beyond the scope of the judgment or order under appeal and, ultimately, that of its appeal. That demonstration itself implies establishing both the existence and the significance of such issues by means of concrete evidence specific to the particular case, and not simply arguments of a general nature (see, to that effect, order of 27 October 2023, Brooks England v EUIPO, C‑504/23 P, EU:C:2023:823, paragraph 17 and the case-law cited).
24      However, the appellant’s claims that the issue concerning the criteria applicable to the assessment of the similarity between two signs which coincide in terms of non-distinctive or weakly distinctive elements is of clear relevance for the purpose of all sectors in which descriptive elements are used in the composition of trade marks, as well as for the purpose of conflicts between national trade marks and of infringement proceedings, are clearly too general to constitute such a demonstration. The appellant merely asserts that the General Court made errors of assessment in this regard, without providing concrete, detailed evidence specific to the present case capable of demonstrating how that issue constitutes one which is significant with respect to the unity, consistency or development of EU law.
25      Furthermore, it is important to recall that the mere fact that an issue may concern a large number of cases clearly cannot be regarded as relevant for the purpose of establishing the legal significance of the issue with respect to the unity, consistency or development of EU law (see, to that effect, order of 11 October 2023, Tinnus Enterprises v EUIPO, C‑356/23 P, EU:C:2023:776, paragraph 17 and the case-law cited).
26      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.
27      In the light of all of the foregoing, the appeal should not be allowed to proceed.
Costs
28      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.
29      Since the present order was adopted before the appeal was served on the other parties to the proceedings and, therefore, before those parties 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.      Sanity Group GmbH shall bear its own costs.
Luxembourg, 15 December 2023.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.