ORDER OF THE COURT (Chamber determining whether appeals may proceed)
11 October 2023 (*)
(Appeal – Community design – 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‑359/23 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 8 June 2023,
Tinnus Enterprises LLC, established in Plano, Texas (United States), represented by A. von Mühlendahl, H. Hartwig and T. Wuttke, Rechtsanwälte,
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, I. Jarukaitis (Rapporteur) and D. Gratsias, Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, J. Richard de la Tour,
makes the following
Order
1        By its appeal, Tinnus Enterprises LLC asks the Court of Justice to set aside the judgment of the General Court of the European Union of 29 March 2023, Tinnus Enterprises v EUIPO – Mystic Products (Fluid distribution equipment) (T‑545/21, ‘the judgment under appeal’, EU:T:2023:176), by which the General Court dismissed its action for the annulment and alteration of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 June 2021 (Case R 1011/2018-3), concerning invalidity proceedings between Mystic Products Import & Export, SL and Tinnus Enterprises.
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 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        Under Article 170a(1) of the Rules of Procedure, in the situations referred to in the first paragraph of Article 58a of the 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 General Court made three errors in the interpretation and application of Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), which raise issues that are significant with respect to the unity, consistency and development of EU law.
7        It submits that the proper interpretation and application of the ground for invalidity deriving from that provision are at the heart of the law on Community designs, since a significant number of applications for a declaration of invalidity are based on it, and are often, as in the present case, decisive in establishing whether or not a Community design exists. This, it is argued, requires that that provision be subject to coherent and consistent rules of application and interpretation. However, the different approaches taken by the different chambers of the General Court to some of the issues raised by the appellant are evidence of an absence of unity and consistency. In addition, the issue raised is significant with respect to the development of EU law. New issues arise, such as that concerning the definition of ‘features of appearance’ within the meaning of that provision. The intervention of the Court of Justice is therefore required not only to ensure the unity and consistency of EU law, but also to prevent the same mistakes being made by the General Court, EUIPO or other courts with jurisdiction and competent national authorities, and to provide guidance on the development of the law on Community designs.
8        Thus, in the first place, the appellant claims that the General Court erred in failing to define the concept of ‘features of appearance’ within the meaning of Article 8(1) of Regulation No 6/2002, whereas a determination of that concept is a necessary prerequisite for assessing whether those ‘features’ are ‘solely dictated’ by the technical function of the product represented by the design at issue. As a result of that error, the General Court, first, erred in holding, in paragraphs 30, 31 and 48 of the judgment under appeal, that the ‘features of appearance’ of the design at issue were limited to four of its elements. According to the appellant, it is clear that ‘features of appearance’ are to be distinguished from the components of a product. The appellant submits that that concept should be understood as referring to the visually perceptible features of the various elements of the design under consideration, in particular the lines, contours, colours, shape, texture and/or materials of the product itself or its ornamentation. The appellant states that the Court of Justice, however, has not yet given an interpretation of the concept of ‘features of appearance’, which is also not defined by Regulation No 6/2002. Secondly, the General Court erred in finding, in paragraph 83 of the judgment under appeal, that European patent application EP 3 0005 948 A2 was not sufficient to demonstrate that, in the present case, the cylindrical shape of the housing – the latter being, according to the appellant, one of the features of appearance to be taken into account – was not solely dictated by technical considerations, relying, in that regard, on mere speculation, which was, however, contradicted by that application and by the existence of alternative designs.
9        In the second place, the appellant submits that, even if it is accepted that the General Court was correct in limiting its assessment to four components of the product disclosed by the Community design at issue, the General Court erred in law by focusing its analysis on the technical function of those elements of the design and by limiting itself to finding that they performed such a function, without taking into account that a declaration of invalidity requires that the features under consideration be dictated ‘solely’ by their technical function. The General Court thus erroneously disregarded the fact that the appearance of the four elements or components at issue was dictated not solely by their technical function but at least to some extent also by concrete design choices by the designer. In that regard, the appellant states that the Court of Justice has not, to date, had the opportunity to distinguish between ‘features of appearance’ of a product which are ‘dictated by its technical function’ and those which are ‘solely’ dictated by its technical function.
10      In the third place, the appellant submits that, even if it is accepted that the General Court did not commit the two infringements of Article 8(1) of Regulation No 6/2002 identified above, it nevertheless erred in law by incorrectly implementing the obligation to take account of all the objective circumstances relevant to each individual case, imposed by paragraphs 36 and 37 of the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172). Contrary to the requirements of that judgment, the General Court did not properly assess the relevance of the existence of alternative designs fulfilling the same technical function or the existence of patent protection.
11      Thus, first, in paragraph 91 of the judgment under appeal, the General Court concluded that the existing alternative designs registered in the name of the appellant were an ‘indication’ of the appellant’s ‘intention’ to enjoy exclusive protection, equivalent to that conferred by a patent, in respect of the ‘technical solution’ that is the basis of the product concerned. As is apparent from paragraph 45 of the judgment of 19 October 2022, Praesidiad v EUIPO – Zaun (Post) (T‑231/21, EU:T:2022:649), the existence of alternative designs fulfilling the same technical function should always be an argument in favour of the holder of the design under consideration, as well as evidence that considerations relating to the visual appearance of the design were, at least in part, decisive in its creation.
12      Second, in paragraphs 82 and 83 of the judgment under appeal, the General Court erred in law in the manner in which it took into account European patent application EP 3 0005 948 A2. In paragraph 83 of that judgment, it did not want to accept that that application was sufficient evidence to demonstrate that, in the present case, the cylindrical shape of the housing was not solely dictated by technical considerations, however in paragraph 82 it relied on that application in order to find that some of the figures contained in it corresponded visually to certain views of the design at issue. By interpreting that evidence to the detriment of the appellant, the General Court distorted it. Its approach in that regard also contradicts the approach previously adopted by the General Court in paragraphs 31 and 32 of the judgment of 19 October 2022, Praesidiad v EUIPO – Zaun (Post) (T‑231/21, EU:T:2022:649).
Findings of the Court
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 17 July 2023, Canai Technology v EUIPO, C‑280/23 P, EU:C:2023:596, paragraph 9).
14      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 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 17 July 2023, Canai Technology v EUIPO, C‑280/23 P, EU:C:2023:596, paragraph 10).
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, 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 17 July 2023, Canai Technology v EUIPO, C‑280/23 P, EU:C:2023:596, paragraph 11).
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 17 July 2023, Canai Technology v EUIPO, C‑280/23 P, EU:C:2023:596, paragraph 12).
17      In the present case, first, as regards the appellant’s argument, set out in paragraph 7 of the present order, that its appeal raises issues that are likely to arise in all cases concerning the invalidity of a Community design on a ground under Article 8(1) of Regulation No 6/2002, it should be pointed out that not only is this merely an argument of a general nature which is not such as to justify the appeal being allowed to proceed, but the 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, by analogy, orders of 4 May 2021, Dermavita v EUIPO, C‑26/21 P, EU:C:2021:355, paragraph 21, and of 6 April 2022, Sanford v EUIPO, C‑19/22 P, EU:C:2022:262, paragraph 22).
18      Second, in so far as, by the arguments set out in paragraphs 7, 8 and 9 above, the appellant argues that the intervention of the Court of Justice is necessary in view of the allegedly novel nature of the issues raised by the appellant, resulting from the fact that there is no case-law of the Court concerning, on the one hand, the concept of ‘features of appearance’ and, on the other, the distinction between ‘features of appearance’ of a product which are dictated by its technical function and those which are dictated ‘solely’ by its technical function, it should be borne in mind that the fact that an issue of law has not been examined by the Court does not, however, mean that that issue is necessarily one of significance with respect to the development of EU law, as the person requesting that an appeal be allowed to proceed remains bound to demonstrate that significance by providing detailed information regarding not only the novelty of that issue, but also the reasons for that issue’s significance in relation to the development of EU law (see, to that effect, order of 24 February 2022, Sony Interactive Entertainment Europe v EUIPO, C‑678/21 P, EU:C:2022:141, paragraph 23 and the case-law cited). However, that significance is not apparent from the present request since the appellant merely makes a general assertion that those two issues have not yet been subject to review by the Court.
19      Third, in so far as, by its arguments summarised in paragraphs 8, 9 and 12 above, the appellant criticises the General Court for having, first of all, held that the ‘features of appearance’ to be taken into account were limited to four elements, next, taken the view that the patent application referred to in paragraph 8 above was not sufficient to show that, in the present case, the cylindrical shape of the housing was not solely dictated by technical considerations and, lastly, attributed incorrect probative value to the patent application referred to in paragraph 12 above, suffice it to note that those findings of the General Court, relating to circumstances and evidence, are factual in nature. Consequently, those arguments cannot raise an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, orders of 10 October 2019, KID-Systeme v EUIPO, C‑577/19 P, EU:C:2019:854, paragraph 20, and of 17 April 2023, Zaun v Praesidiad Holding and EUIPO, C‑780/22 P, EU:C:2023:294, paragraph 17).
20      The same is true of the arguments summarised in paragraph 12, based on an alleged distortion of the patent application by the General Court, since such arguments are not, in principle, 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, orders of 10 November 2021, Comercializadora Eloro v EUIPO, C‑415/21 P, EU:C:2021:924, paragraph 21, and of 5 July 2023, Suicha v EUIPO, C‑120/23 P, EU:C:2023:539, paragraph 15).
21      Fourth, as regards the arguments raised in paragraph 10 above, by which the appellant criticises the General Court for having misapplied the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), and those raised in paragraphs 11 and 12 above, by which the appellant criticises the General Court for having contradicted its earlier case-law, it should be borne in mind that a general claim that the General Court erred in its application of the case-law of the Court of Justice or disregarded its own case-law 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 or development of EU law; to that end, the appellant must comply with all the requirements set out in paragraph 15 of the present order (see, to that effect, orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 17, and of 5 April 2022, Kappes v Sedus Stoll and EUIPO, C‑785/21 P, EU:C:2022:301, paragraph 18).
22      It must be noted that, although the appellant specifies the paragraphs of the judgment under appeal and those of the ruling of the Court of Justice alleged to have been misapplied and the rulings of the General Court alleged to have been disregarded, 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 contradictions relied on (see, to that effect, orders of 13 February 2020, Confédération nationale du Crédit Mutuel v Crédit Mutuel Arkéa, C‑867/19 P, EU:C:2020:103, paragraph 18, and of 6 April 2022, Sanford v EUIPO, C‑19/22 P, EU:C:2022:262, paragraph 19).
23      The appellant merely criticises the General Court, first, for having misapplied the obligation to take account of all of the objective circumstances relevant to the present case resulting from the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), and, second, for having made a different assessment of the circumstances of the present case from that which it made of the circumstances of the case that gave rise to the judgment of 19 October 2022, Praesidiad v EUIPO – Zaun (Post) (T‑231/21, EU:T:2022:649).
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 request that the appeal be allowed to proceed must be refused.
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 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.      Tinnus Enterprises LLC shall bear its own costs.
Luxembourg, 11 October 2023.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.