ORDER OF THE COURT (Chamber determining whether appeals may proceed)
17 January 2022 (*)
(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‑599/21 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 21 September 2021,
AM.VI. Srl, established in Naples (Italy),
Quinam Limited, the successor in law to Fashioneast Sàrl, established in London (United Kingdom),
represented by A. Camusso and M. Baghetti, avvocati,
appellants,
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, I. Jarukaitis (Rapporteur) and M. Ilešič, 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 their appeal, AM.VI. Srl and Quinam Limited ask the Court to set aside the judgment of the General Court of the European Union of 14 July 2021, Fashioneast and AM.VI. v EUIPO – Moschillo (RICH JOHN RICHMOND) (T‑297/20, not published, EU:T:2021:432; ‘the judgment under appeal’), by which the General Court dismissed their action for annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 March 2020 (Case R 1381/2019‑2), relating to revocation proceedings between Moschillo Srl, on the one hand, and Fashioneast and AM.VI., on the other.
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 those rules of procedure, in the situations referred to in the first paragraph of Article 58a of that statute, the appellant is required 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 those rules, the Court is to rule on the request that the appeal be allowed to proceed, as soon as possible, in the form of a reasoned order.
6        In support of their request that the appeal be allowed to proceed, the appellants rely on two grounds of appeal, alleging, respectively, distortion of the facts and infringement of Articles 15 and 51 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1).
7        In their first ground of appeal, the appellants submit, first, that the General Court erred in holding that the mark in question had not been used, by finding that a declaration made by a third-party licensee to prove the use of the mark in question was incorrect.
8        Second, the appellants argue, the General Court erred in finding, in paragraph 38 of the judgment under appeal, that the elements ‘rich’ and ‘richmond’ never appeared together and constituted two autonomous signs which are not used as a single trade mark, even though it is apparent from the evidence provided by the appellants that those elements have always been used in a congruous and complementary fashion. In addition, the appellants submit that the General Court erred in concluding, in paragraph 40 of that judgment, that the sub-brand corresponds to the element ‘rich’, whereas the appellants had stated clearly before the General Court that the sub-brand in question was RICH JOHN RICHMOND.
9        Third, the appellants submit that the General Court rejected as evidence of genuine use two licence agreements filed by the appellants concerning the entire RICHMOND trade mark portfolio. That, they argue, is a crucial error, given that the grant of licences for the mark in question was relevant in order to determine whether that mark had been put to genuine use.
10      Thus, the appellants submit, the General Court committed multiple errors in its assessment of the evidence before it, which led it to apply incorrectly Articles 15 and 51 of Regulation No 207/2009.
11      In that regard, the appellants state that the present appeal contributes to the unity, consistency and development of EU law by making it possible to provide guidance on the criteria applicable to the admissibility and assessment of evidence in actions seeking to determine whether an EU trade mark has been put to genuine use.
12      By their second ground of appeal, the appellants submit, inter alia, that, in the light of the case-law, and in particular the judgment of 10 December 2015, Sony Computer Entertainment Europe v OHIM – Marpefa (Vieta) (T‑690/14, not published, EU:T:2015:950, paragraph 45), the General Court committed multiple errors. In the first place, it is claimed, the General Court found, without any supporting evidence, that the element ‘john’ in the mark in question was distinctive and, in the second place, that the lack of use of that element on the goods in question altered the distinctive character of that mark.
13      In this regard, the appellants state that the present appeal should be allowed in order to obtain guidance on the correct application of Articles 15 and 51 of Regulation No 207/2009, in the interests of the consistency and development of EU law.
14      It must be recalled that it is for an 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).
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 Court’s 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, by which 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 (see, inter alia, orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 14, and of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 21).
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 detail and equal clarity 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 (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 22).
17      Accordingly, a request that the 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).
18      In the present case, it should be noted, as regards the first ground of appeal, that the appellants, by their arguments summarised in paragraphs 7 to 10 of the present order, seek, first, to call into question the factual assessments made by the General Court in relation to the evidence presented before it. Such arguments, however, cannot demonstrate 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 12 November 2021, König Ludwig International v EUIPO, C‑465/21 P, not published, EU:C:2021:922, paragraph 16 and the case-law cited).
19      Second, in so far as, by those arguments, the appellants rely on distortions of the facts and evidence which the General Court allegedly committed when assessing the genuine use of the mark in question, it should be noted that such arguments cannot, in principle, be capable, as such and even if well founded, of raising an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 10 November 2021, Comercializadora Eloro v EUIPO, C‑415/21 P, not published, EU:C:2021:924, paragraph 21 and the case-law cited).
20      As regards the second ground of appeal, it must be stated that, by their arguments summarised in paragraph 12 of the present order, the appellants are in fact seeking to call into question the factual assessment made by the General Court concerning the distinctive character of the element ‘john’ of the mark in question and the General Court’s finding that the lack of use of that element on the goods in question altered the distinctive character of that mark. However, as has been stated in paragraph 18 of the present order, such an argument cannot demonstrate that the appeal raises an issue that is significant with respect to the consistency or development of EU law.
21      In those circumstances, it must be stated that the arguments put forward by the appellants in support of their request that the 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.
22      In the light of all of the foregoing considerations, the appeal should not be allowed to proceed.
Costs
23      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.
24      Since the present order was adopted before the appeal was served on the other party to the proceedings and, therefore, before that party could have incurred costs, it is appropriate to decide that the appellants are to bear their own costs.
On those grounds, the Court (Chamber determining whether appeals may proceed) hereby orders:
1.      The appeal is not allowed to proceed.
2.      AM.VI. Srl and Quinam Limited shall bear their own costs.
Luxembourg, 17 January 2022.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.