ORDER OF THE COURT (Chamber determining whether appeals may proceed)
30 September 2020 (*)
(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 a significant issue with respect to the unity, consistency or development of EU law – Appeal not allowed to proceed)
In Case C‑240/20 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 5 June 2020,
Giorgio Armani SpA, established in Milan (Italy), represented by S. Martínez-Almeida y Alejos-Pita, abogada,
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 R. Silva de Lapuerta, Vice-President of the Court, M. Safjan and C. Toader (Rapporteur), Judges,
Registrar: A. Calot Escobar,
having regard to the position of the Judge-Rapporteur and after hearing the Advocate General, M. Szpunar,
makes the following
Order
1        By its appeal, Giorgio Armani SpA asks the Court of Justice to set aside the judgment of the General Court of the European Union of 26 March 2020, Armani v EUIPO – Asunción (le Sac 11) (T‑654/18, not published, EU:T:2020:122; ‘the judgment under appeal’), whereby the General Court dismissed its action for annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 August 2018 (Case
R 2464/2017‑4) relating to opposition proceedings between Mr Asunción and Giorgio Armani.
Whether the appeal should be allowed to proceed
2        Pursuant to 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 of Justice to rule on that request.
5        In accordance with Article 170b(3) of those rules, the Court’s decision on the request that the appeal be allowed to proceed is to take the form of a reasoned order.
6        In support of its request that the appeal be allowed to proceed, the appellant submits that each of the two grounds of appeal raises issues that are significant with respect to the unity and consistency of EU law, for the purposes of the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union.
7        In the first place, the appellant submits that the issue raised in its first ground of appeal is significant with respect to the unity and consistency of EU law in so far as it concerns the concept of ‘retail sale’, as it appears in particular in paragraph 34 of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), and of paragraph 50 of the judgment of 18 January 2011, Advance Magazine Publishers v OHIM – Capela & Irmãos (VOGUE) (T‑382/08, not published, EU:T:2011:9), in accordance with which sales to traders who are using purchased goods in their own business process or activity and not as end consumers cannot be deemed to be ‘retail sales’.
8        By that ground, the appellant calls into question paragraph 49 of the judgment under appeal, in which the General Court held, departing from the case-law cited in the previous paragraph, that traders can purchase products at retail.
9        Furthermore, according to the appellant, the intervention of the Court of Justice on this point provides an opportunity to increase consistency between the interpretation of the concepts of ‘retail sale’ and ‘consumer’ in EU trade mark law and consumer law.
10      In the second place, the appellant submits that the issue raised in the second ground of appeal is significant with respect to the unity and consistency of EU law since the General Court departed, in its assessment of the likelihood of confusion between the marks at issue, from the criteria and principles established by the relevant case-law.
11      In that regard, the appellant complains, in essence, that the General Court held, in paragraph 84 of the judgment under appeal, that the dominant element in the mark applied for is the term ‘sac’ and not the visual elements, taking the view that the Spanish public would not understand the meaning of the term ‘le sac’ on the ground that it is a foreign term. According to the appellant, that assessment of the General Court departs from the case-law which states that consumers will recognise the meaning of such a foreign term due to its similarity to the term in their own language (judgments of 5 October 2017, Wolf Oil v EUIPO, C‑437/16 P, not published, EU:C:2017:737, and of 8 September 2010, Icebreaker v OHMI – Gilmar (ICEBREAKER), T‑112/09, not published, EU:T:2010:361, paragraph 41).
12      The appellant also complains that the General Court did not comply with the case-law in accordance with which the conditions under which the goods or services are marketed are relevant for assessing the degree of similarity between the marks concerned (orders of 30 June 2010, Royal Appliance International v OHIM, C‑448/09 P, not published, EU:C:2010:384, paragraphs 85
and 86, and of 4 September 2014, Goldsteig Käsereien Bayerwald v OHIM, C‑150/14 P, not published, EU:C:2014:2180, paragraph 27). In that regard, it also submits that the General Court failed to take account of the fact that, in the fashion sector, greater weight must be given to the visual elements of the opposing signs, as is apparent, in particular, from paragraph 69 of the judgment of 7 May 2009, NHL Enterprises v OHIM – Glory & Pompea (LA KINGS) (T‑414/05, not published, EU:T:2009:145).
13      At the outset, it should be observed 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).
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 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, to that effect, order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 14 and the case-law cited).
15      Thus, 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 with respect 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 (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 15 and the case-law cited).
16      Accordingly, a request that an appeal be allowed to proceed which does not contain the information referred to 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).
17      In the present case, by its arguments set out in paragraphs 7 to 12 of this order, the appellant submits, in essence, that the significance of the issues raised in its appeal results from the alleged inconsistency of the judgment under appeal with the case-law of the Court of Justice and the General Court.
18      In that regard, the appellant alleges, first of all, that there is a contradiction between, on the one hand, paragraph 49 of the judgment under appeal and, on the other, paragraph 34 of the judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte (C‑418/02, EU:C:2005:425), and paragraph 50 of the judgment of 18 January 2011, VOGUE (T‑382/08, not published, EU:T:2011:9), concerning the scope of the concept of ‘retail sale’. Second, the appellant submits that there is an alleged contradiction between, on the one hand, paragraph 84 of the judgment under appeal and, on the other, the judgment of 5 October 2017, Wolf Oil v EUIPO
(C‑437/16 P, not published, EU:C:2017:737), paragraph 41 of the judgment of 8 September 2010, ICEBREAKER
(T‑112/09, not published, EU:T:2010:361), and paragraph 69 of the judgment of 7 May 2009, LA KINGS (T‑414/05, not published, EU:T:2009:145), concerning the criteria for assessing the risk of confusion.
19      Although the appellant thus identifies the errors of law allegedly committed by the General Court, it is neither sufficiently explained nor, in any event, demonstrated by the arguments relied on in support of its request that the appeal be allowed to proceed, how such errors, assuming that they are established, raise significant issues with respect to the unity and consistency of EU law which justify the appeal being allowed to proceed.
20      In accordance with the burden of proof which lies with the appellant requesting that the appeal be allowed to proceed, the appellant must demonstrate that, independently of the issues of law raised 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. In order to demonstrate that that is the case, it is necessary to establish 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 (order of 4 June 2020, Société des produits Nestlé v Amigüitos pets & life and EUIPO, C‑97/20 P, not published, EU:C:2020:442, paragraph 18 and the case-law cited).
21      Such a demonstration is lacking in the present case, in so far as, with regard, first, to the argument relied on in paragraphs 7 and 8 of this order, the appellant does not provide the slightest information on the similarity of the situations referred to in the case-law cited, capable of establishing the existence of the contradiction relied on (see, to that effect, order of 13 February 2020, Confédération nationale du Crédit Mutuel v Crédit Mutuel Arkéa, C‑867/19 P, not published, EU:C:2020:103, paragraph 18). Next, with regard to the arguments relied on in paragraphs 10 to 12 of this order, it should be noted that the appellant confines itself to asserting that the second ground of appeal is relevant to the consistency of EU law, without, however, demonstrating how the manner of assessing the distinctive and dominant character of the word elements of the figurative mark applied for, when comparing the similarity of the signs, and the failure to apply the case-law on the relevance of the conditions under which the goods are marketed for assessing the degree of similarity between the signs, which it alleges, raise significant questions with respect to the unity or consistency of EU law.
22      Furthermore, it should be noted that, as is clear from the case-law, an argument that the General Court departed from its earlier case-law is not, in itself, sufficient to establish that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, the applicant having to comply, to that end, with all the requirements set out in paragraph 15 of this order (order of 4 June 2020, Société des produits Nestlé v Amigüitos pets & life and EUIPO, C‑97/20 P, not published, EU:C:2020:442, paragraph 21 and the case-law cited).
23      The contention that the General Court disregarded the case-law of the Court of Justice in a given judgment is not sufficient, in itself, to establish, in accordance with the burden of proof which lies with the appellant requesting that an appeal be allowed to proceed, that the appeal raises an issue which is significant with respect to the unity, consistency or development of EU law. For that purpose, the party requesting that its appeal be allowed to proceed must set out, succinctly but clearly and precisely, first, where the conflict which it alleges lies, identifying both the paragraphs of the judgment or order under appeal which it is calling into question and those of the decision of the Court of Justice which were disregarded, and, second, the specific reasons for which it takes the view that such a conflict raises an issue which is significant with respect to the unity, consistency or development of EU law (orders of 4 June 2020, Société des produits Nestlé v Amigüitos pets & life and EUIPO, C‑97/20 P, not published, EU:C:2020:442, paragraph 20, and of 7 October 2019, L’Oréal v EUIPO, C‑589/19 P, not published, EU:C:2019:842, paragraph 16 and the case-law cited). None of those requirements is satisfied in the present case.
24      Finally, with regard to the arguments relied on in paragraph 9 of this order, the appellant also fails to provide any information as to the concrete reasons for which the analysis of the concept of ‘retail sale’ in the light of consumer law is a significant issue with respect to the unity, consistency or development of EU law. The Court has previously held that the novelty of a question of law does not in itself allow that question to be classified as significant with respect to the unity or consistency of EU law, since the appellant must always specify why that question is so significant in that regard (see, to that effect, order of 13 February 2020, Confédération nationale du Crédit Mutuel v Crédit Mutuel Arkéa, C‑867/19 P, not published, EU:C:2020:103, paragraph 15 and the case-law cited).
25      It must therefore be found that the appellant, in making its arguments, does not comply with all the requirements set out in paragraph 15 of this order.
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.      Giorgio Armani SpA shall bear its own costs.
Luxembourg, 30 September 2020.
A. Calot Escobar
R. Silva de Lapuerta
Registrar
President of Chamber determining whether appeals may proceed
*      Language of the case: English.