ORDER OF THE COURT (Chamber determining whether appeals may proceed)
21 December 2021 (*)
(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‑538/21 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 26 August 2021,
Republic of Cyprus, represented by S. Malynicz QC, S. Baran, Barrister, and V. Marsland, Solicitor,
appellant,
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, S. Rodin (Rapporteur) and N. Piçarra, Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, J. Kokott,
makes the following
Order
1        By its appeal, the Republic of Cyprus asks the Court to set aside the judgment of the General Court of the European Union of 16 June 2021, Cyprus v EUIPO – Filotas Bellas & Yios (Halloumi Vermion) (T‑281/19 and T‑351/19, not published, EU:T:2021:362; ‘the judgment under appeal’), whereby the General Court dismissed its action seeking annulment of the decisions of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 February 2019 (Case R 2298/2017-4) and of 9 April 2019 (Case R 2297/2017-4), in relation to invalidity proceedings between the Republic of Cyprus and Filotas Bellas & Yios AE.
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, where it raises an issue that is significant with respect to the unity, consistency or development of Union 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 of Justice 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, relying on five arguments, submits that its appeal raises issues that are significant with respect to the unity, consistency or development of EU law.
7        By its first argument, which relates to the first ground of appeal, the appellant submits that the General Court, in paragraphs 35, 36 and 103 of the judgment under appeal, infringed Article 8(1)(b) 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) by failing to identify that the essential function of certification marks is to distinguish certified goods from other goods, and by applying by analogy the case-law relating to collective marks when assessing the likelihood of confusion. In that context, the appellant submits that the analysis of the likelihood of confusion in relation to commercial origin cannot apply to certification marks, since they do not indicate such origin. In its view, if the essential function had been correctly identified, it would have been found that there was a likelihood of confusion.
8        Thus, the question arises as to the determination of the essential function of a certification mark and of the criteria for assessing the likelihood of confusion in the case of such a mark. According to the appellant, that question goes beyond its appeal, since the Court of Justice has not yet had the opportunity to give a ruling in that regard and it is necessary to determine whether the General Court correctly applied the case-law of the Court of Justice on collective marks to certification marks. That has an impact on the scope of the protection and validity of all national and EU certification marks.
9        By its second, third and fourth arguments, which relate to the second to fourth grounds of appeal, the appellant submits that the General Court erred in law by incorrectly assessing the distinctive character of the earlier certification marks when examining the likelihood of confusion.
10      First, the appellant claims that the General Court did not accord the earlier certification marks a distinctive character, which is defined by the appellant as the capacity to distinguish the certified goods or services from other goods or services. In that connection, the appellant takes the view that the General Court wrongly considered the certification marks at issue to be a generic name or an indication of the type of goods, by assessing their distinctive character in the sense of their capacity to indicate an origin. In that context, the General Court disregarded the case-law of the Court of Justice arising from the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314).
11      Second, the appellant, relying on the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), submits that the General Court erred by failing to take into account the independent distinctive character or commercial use of the certification marks, despite the fact that evidence of such use was produced before it.
12      Third, the appellant submits that the General Court referred, in paragraph 65 of the judgment under appeal, to its case-law in cases concerning individual marks, according to which the word ‘halloumi’ was descriptive, in order to assess the distinctive character of the certification marks. Furthermore, the General Court disregarded the judgment of 8 November 2016, BSH v EUIPO (C‑43/15 P, EU:C:2016:837, paragraphs 58 to 60) and the order of 27 April 2006, L’Oréal v OHIM (C‑235/05 P, not published, EU:C:2006:271), according to which the comparison of the marks must remain free from any consideration of distinctive character. The appellant further submits that, if the General Court had correctly analysed the concept of ‘distinctive character’, it would have found there to be a likelihood of confusion.
13      Those grounds of appeal raise the fundamental question of the type of distinctive character which must be accorded to national certification marks and all certification marks in general.
14      By its fifth argument, relating, inter alia, to the fifth ground of appeal, the appellant submits that the General Court wrongly found that there was no bad faith on the part of the proprietor of the contested mark, even though it was not a certified user of the certification mark. The appellant takes the view that, by holding that that proprietor’s intentions were not contrary to honest practices and were consistent with the essential functions of a certification mark, the General Court disregarded the judgments of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO (C‑104/18 P, EU:C:2019:724), of 29 January 2020, Sky and Others (C‑371/18, EU:C:2020:45), and of 21 April 2021, Hasbro v EUIPO – Kreativni Događaji (MONOPOLY) (T‑663/19, EU:T:2021:211), in so far as it relied on the lack of distinctive character of the earlier certification mark to conclude that the proprietor of the contested mark was perfectly free to apply for its registration. Thus, the question relating to the concept of bad faith arises in the circumstances of the present case.
15      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 (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 13 and the case-law cited).
16      Furthermore, as is clear from the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union, read in conjunction 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 (see, in particular, orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 14, and of 6 October 2021, FCA Italy v EUIPO, C‑360/21 P, not published, EU:C:2021:841, paragraph 13).
17      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 under appeal or the 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 (see, to that effect, order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 15 and the case-law cited).
18      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 (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 16 and the case-law cited).
19      In the present case, as regards, in the first place, the arguments set out in paragraphs 7 and 8 of the present order that the General Court disregarded the essential function of the earlier certification marks when assessing the likelihood of confusion, it should be observed that the appellant has failed to explain or, in any event, demonstrate, in a manner that complies with all the requirements set out in paragraph 17 of the present order, how its appeal raises an issue that is significant in the light of those criteria which would justify allowing the appeal.
20      In accordance with the burden of proof which lies with the appellant requesting that an appeal be allowed to proceed, the appellant must demonstrate that, independently of the issues of law invoked in its appeal, the appeal raises one or more issues that are significant with respect to the unity, consistency and development of EU law, the scope of that criterion going beyond the judgment under appeal and, ultimately, its appeal. Accordingly, 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 11 November 2021, Sun Stars & Sons v EUIPO, C‑425/21 P, not published, EU:C:2021:927, paragraph 17).
21      The appellant’s claims that the General Court misapplied Article 8(1)(b) of Regulation No 2017/1001, by disregarding the essential function of a certification mark, are too general to constitute such proof.
22      Further, 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 and development of EU law, and the appellant 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 the development of EU law (order of 30 September 2019, All Star v EUIPO, C‑461/19 P, not published, EU:C:2019:797, paragraph 16).
However, that significance has not been demonstrated in the present request since the appellant merely makes a general assertion that the answer to the question at issue will have an impact on the scope of the protection and validity of certification marks.
23      In the second place, as regards the arguments set out in paragraphs 9
to 13 of the present order that the General Court incorrectly assessed the distinctive character of the earlier certification marks, it must be noted that, in accordance with the burden of proof which lies with the appellant requesting that the appeal be allowed to proceed, such arguments are not, in themselves, sufficient to establish that that appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, the appellant having to comply to that end with all the requirements set out in paragraph 16 of the present order (order of 17 December 2020, Brands Up v EUIPO, C‑404/20 P, not published, EU:C:2020:1058, paragraph 19).
24      The appellant has failed clearly to indicate the paragraphs of the judgment under appeal to which the appeal relates, or the paragraphs of the decisions of the Court of Justice which were disregarded by the General Court, and has failed to demonstrate, to the requisite legal standard, how the analysis carried out by the General Court in the judgment under appeal, as regards the distinctive character of the earlier certification marks when assessing the likelihood of confusion, raises an issue that is significant with respect to the unity, consistency or development of EU law.
25      In the third and last place, as regards the line of argument set out in paragraph 14 of the present order that the General Court erred in finding that there was no bad faith on the part of the proprietor of the contested mark and failed to have regard to the relevant case-law of the Court of Justice and of the General Court, it should be noted that the appellant has failed to specify how the judgment under appeal fails to have regard to the judgments of the Court of Justice and of the General Court to which it refers, and has not provided any information as to the specific reasons why such failure, even if established, would raise an issue that is significant with respect to the unity, consistency or development of EU law. The applicant merely points to bad faith on the part of the proprietor of a mark including an earlier certification mark.
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 the procedure 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 party to the proceedings and, therefore, before it 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.      The Republic of Cyprus shall bear its own costs.
Luxembourg, 21 December 2021.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.