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‑504/23 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 7 August 2023,
Brooks England Ltd, established in Smethwick (United Kingdom), represented by S.A. Feltrinelli, avvocato,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Brooks Sports, Inc., established in Seattle, Washington (United States),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed)
composed of L. Bay Larsen, Vice-President of the Court, S. Rodin (Rapporteur) and L.S. Rossi, 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, Brooks England Ltd asks the Court of Justice to set aside the judgment of the General Court of the European Union of 7 June 2023, Brooks England v EUIPO – Brooks Sports (BROOKS ENGLAND)
(T‑63/22, EU:T:2023:312; ‘the judgment under appeal’) by which the General Court dismissed the appellant’s action for annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 November 2021 (Case R 2432/2020-4), concerning opposition proceedings between Brooks Sports, Inc. and Brooks England.
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 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 its request that the appeal be allowed to proceed, the appellant submits that its four grounds of appeal raise an issue that is significant with respect to the unity, consistency and development of EU law.
7        By its first ground of appeal, the appellant claims that the General Court, in its assessment of the similarity of the goods covered by the marks at issue, failed to state the reasons why, in paragraph 92 of the judgment under appeal, it attached more importance to the fact that the goods concerned may be manufactured by the same undertakings and sold in the same outlets than to other, more decisive factors. According to the appellant, in doing so, the General Court infringed Article 36 of the Statute of the Court of Justice of the European Union and Article 117(m) of the Rules of Procedure of the General Court.
8        Furthermore, the appellant claims that the General Court infringed its own case-law and that of the Court of Justice relating to the assessment of the similarity of goods and services within the meaning of Article 8(1)(b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), and in particular the judgments of 29 September 1998, Canon (C‑39/97, EU:C:1998:442), and of 8 July 2020, Scorify v EUIPO – Scor (SCORIFY) (T‑328/19, EU:T:2020:311).
9        By its second ground of appeal, the appellant submits that, in finding, in paragraphs 92 and 94 of the judgment under appeal, that bags for cyclists can also be used by persons engaged in other sports activities, the General Court failed to observe the principle according to which, for the purpose of assessing the likelihood of confusion between two marks, the comparison of goods and services covered by those marks must be based, as follows from the judgment of 16 June 2010, Kureha v OHIM – Sanofi-Aventis (KREMEZIN) (T‑487/08, EU:T:2010:237), on the wording of the list of goods or services in respect of which protection is sought. Such an approach is also inconsistent with Article 8(1)(b) of Regulation No 40/94, and fails to observe the principles of legal certainty and the protection of legitimate expectations.
10      By its third ground of appeal, the appellant criticises the General Court for having assessed the similarity of the goods concerned by finding, in paragraphs 54 to 56 of the judgment under appeal, that the earlier mark was registered for the broader category of ‘athletically related footwear’. According to the appellant, the General Court failed to take account of the fact that the earlier mark should be considered to be registered only for ‘running shoes’. Thus, the General Court infringed Article 43(2) of Regulation No 40/94.
11      By its fourth and last ground of appeal, the appellant submits that the General Court infringed Article 8(1)(b) of Regulation No 40/94, Article 117(m) of the Rules of Procedure of the General Court and Article 36 of the Statute of the Court of Justice of the European Union, inasmuch as it failed to state the reasons why it found, in paragraph 92 of the judgment under appeal, that the goods at issue could be manufactured by the same undertakings and sold in the same outlets, whereas no evidence showing such a link had been filed during the proceedings.
12      The appellant states that the four grounds of its appeal are significant with respect to the unity, consistency and development of EU law. According to the appellant, the approach followed by the General Court in the judgment under appeal would lead to the rejection of a large number of applications for registration of EU trade marks on account of alleged similarity of the goods or services covered by the marks under examination.
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      Further, 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 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, 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).
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 26 September 2023, Mordalski v EUIPO, C‑321/23 P, EU:C:2023:705, paragraph 13).
17      In the present case, as regards, in the first place, the arguments set out in paragraphs 7 and 11 above, alleging that the General Court failed to state reasons when it assessed the similarity of the goods concerned, it must be borne in mind that, although it is true, as is apparent from the case-law of the Court of Justice, that a failure to state reasons or an inadequate statement of reasons constitutes an error of law which may be relied on in the context of an appeal, the determination as to whether the appeal is allowed to proceed nevertheless remains subject to specific conditions consisting, for the appellant, in demonstrating, as referred to in paragraph 15 above, that that appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law (order of 17 July 2023, Topcart v EUIPO, C‑270/23 P, EU:C:2023:614, paragraph18 and the case-law cited).
18      In order to demonstrate that that is the case, it is necessary to establish both the existence and significance of such issues by means of concrete evidence specific to the particular case, and not simply arguments of a general nature (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 28 and the case-law cited).
19      In the second place, as regards the appellant’s argument, summarised in paragraph 8 above, alleging that the General Court infringed its own case-law and that of the Court of Justice relating to the assessment criteria as regards the similarity of goods and services, it must be recalled that such a claim 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 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).
20      It must be stated that, in the present case, the appellant does not in any way specify the reasons why, first, the alleged failure to state reasons in the judgment under appeal, and second, the alleged contradiction between the General Court’s assessments and its case-law as well as that of the Court of Justice, raise an issue that is significant with respect to the unity, consistency and development of EU law.
21      In that regard, it is important, moreover, to point out that, as regards the four grounds of its appeal, the appellant merely states, as is apparent from paragraph 12 above, that the approach followed by the General Court in the judgment under appeal would lead to the rejection of a large number of applications for registration of EU trade marks, without, however, specifying the reasons why that issue is significant with respect to the unity, consistency or development of EU law.
22      In the third and last place, as regards the appellant’s arguments, referred to in paragraphs 9 and 10 above, based on the General Court’s assessment of the similarity of the goods covered by the marks at issue, it should be noted that, although the appellant identifies errors of law allegedly committed by the General Court, the fact remains that it merely sets them out and submits arguments of a general nature, without stating the specific reasons why such errors, assuming they are established, raise issues that are significant with respect to the unity, consistency or development of EU law that would justify allowing the appeal to proceed (see, to that effect, order of 19 April 2023, Mendes v EUIPO, C‑42/23 P, EU:C:2023:325, paragraph 15).
23      Therefore, it must be stated that the appellant has not complied with all of the requirements referred to in paragraph 15 above.
24      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.
25      In the light of all of the foregoing considerations, the appeal should not be allowed to proceed.
Costs
26      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.
27      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.      Brooks England Ltd 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.