ORDER OF THE COURT (Chamber determining whether appeals may proceed)
17 April 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‑780/22 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 22 December 2022,
Zaun Ltd, established in Wolverhampton (United Kingdom), represented by C. Weber, Rechtsanwalt,
appellant,
the other parties to the proceedings being:
Praesidiad Holding, established in Zwevegem (Belgium),
applicant at first instance,
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, L.S. Rossi and O. Spineanu-Matei (Rapporteur), 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, Zaun Ltd asks the Court of Justice to set aside the judgment of the General Court of the European Union of 19 October 2022, Praesidiad v EUIPO – Zaun (Poteau) (T‑231/21, not published, EU:T:2022:649; ‘the judgment under appeal’), by which the General Court, first, annulled the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 February 2021 (Case R 2068/2019-3) and, second, rejected the application lodged by Zaun Ltd on 27 March 2018 in respect of the declaration of invalidity of the design registered under No 127204-0001.
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, 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 those rules, 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 that the appeal be allowed to proceed, the appellant states that it has raised three grounds in support of its appeal.
7        By its first ground, the appellant claims that, since the contested design is exclusively technical, the General Court misapplied the principles deriving from the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), which jeopardises the consistency of the case-law of the European Courts.
8        In that regard, first, the appellant relies on the lack of clarity of that judgment, in particular in paragraph 32 thereof, as regards the criteria which have to be applied where features are exclusively technical. It submits that that question requires clarification from the Court, inter alia, due to the different assessments of the circumstances and the evidence produced by the Board of Appeal and the General Court in the present case.
9        Second, the General Court did not take into account in the judgment under appeal all the circumstances of the present case, in particular, all the evidence, and placed too much emphasis on the visibility of the product at issue to the public.
10      Third, the existence of alternative designs is an auxiliary criterion which can only support other objective criteria. According to the appellant, if there are only a few design alternatives and if, visually, they differ only slightly, as in the present case, it is even easier to conclude that technical considerations played the main role in the choice of design. Paragraphs 30 to 32 of the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), must be interpreted as meaning that not every slightly alternative design is likely to exclude the technical aspect. Otherwise, Article 8(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1) would be deprived of all effectiveness.
11      By its second ground, the appellant criticises the General Court for failing to take sufficient account of the objective of Article 8(1) of Regulation No 6/2002 which is to prevent technical innovations from being hindered by design law. In the present case, as the Board of Appeal and the General Court have found, there are three other security fence post designs which do not differ significantly. This is because the security fence serves primarily a functional purpose, inter alia that it must be stable and secure, which leaves very little scope for design overall. According to the appellant, Article 8(1) of Regulation No 6/2002 must also apply in such cases in order to avoid the monopolisation of technical solutions. That question must be clarified by the Court of Justice for the purposes of the uniform implementation of the law and the case-law.
12      By its third ground, the appellant submits that, after ‘Brexit’, it had to change its representative. Due to temporal constraints, its new representative was not as familiar with the previous proceedings as the originally appointed British representative, which prevented the appellant from effectively conducting the proceedings before the General Court. That compulsory change of lawyer had the consequence of infringing the right to an effective remedy enshrined in Article 47 of the Charter of Fundamental Rights of the European Union (‘the Charter’). Therefore, it is necessary to develop further EU law in order to prevent discrimination in ongoing procedures.
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 (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 20 and the case-law cited).
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 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 (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 21, and of 16 November 2022, EUIPO v Nowhere, C‑337/22 P, EU:C:2022:908, paragraph 24).
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 (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 22 and the case-law cited).
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 7 December 2022, Compass Tex v EUIPO, C‑550/22 P, not published, EU:C:2022:1044, paragraph 14).
17      In the present case, as regards, first of all, the arguments summarised in paragraphs 7 to 11 of the present order, in so far as the appellant challenges the assessment of the circumstances and the evidence by the General Court, inter alia, in that it differs from that submitted by the Board of Appeal, it is sufficient to note that, since that argument is one of fact, 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, not published, EU:C:2019:854, paragraph 20, and of 15 June 2022, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑121/22 P, not published, EU:C:2022:492, paragraph 19).
18      In addition, where the argument based on a lack of clarity of the judgment of 8 March 2018, DOCERAM (C‑395/16, EU:C:2018:172), in particular paragraph 32 thereof, and the fact that paragraphs 30 to 32 of that judgment must be understood as meaning that not every slightly alternative design may exclude, under Article 8(1) of Regulation No 6/2002, the technical aspect, underpins, in this case, an error of law brought about by failure to have regard to the case-law of the Court, it should be borne in mind that such a line of argument is not, in itself, sufficient to establish, in accordance with the burden of proof which lies with the appellant 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, the appellant must comply to that end with all requirements set out in paragraph 15 of the present order (see, to that effect, order of 7 June 2022, Magic Box Int. Toys v EUIPO, C‑194/22 P, not published, EU:C:2022:463, paragraph17 and the case-law cited). None of those requirements is satisfied in the present case. In particular, the request that the appeal be allowed to proceed does not explain where the alleged contradiction lies between the judgment under appeal and the judgment of 8 March 2018, DOCERAM (C‑395/16. EU:C:2018:172), or the concrete reasons why such a contradiction raises an issue that is significant with respect to the unity, consistency or development of EU law.
19      The same is true, next, as regards the argument in paragraph 11 of the present order, in so far as the appellant alleges that the General Court had not taken sufficient account of the objective of Article 8(1) of Regulation No 6/2002. It must be stated that, although the appellant indeed relies on an error of law allegedly committed by the General Court, the fact remains that it confines itself to listing that error and submitting arguments of a general nature, without setting out specifically the reasons why such an error, assuming that it is established, raises an issue that is significant with respect to the unity, consistency or development of EU law that would justify allowing the appeal to proceed.
20      Finally, as regards the argument set out in paragraph 12 of the present order, alleging infringement of Article 47 of the Charter, it must be borne in mind, without prejudice to the significant place occupied, within the EU legal order, by the right to an effective remedy, that that argument does not satisfy the requirements set out in paragraph 15 of the present order. The appellant confines itself to setting out the alleged obligation to change its representative which it had to face, which consequently led to its new representative having less knowledge of the case. It does not identify the error of law made by the General Court which led to it infringing Article 47 of the Charter, nor does it set out the reason why such an error, if established, raises an important question for the development of EU law which justifies allowing the appeal (see, to that effect, order of 15 July 2022, Meta Cluster v EUIPO, C‑233/22 P, not published, EU:C:2022:593, paragraph 13).
21      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.
22      In the light of all of the foregoing considerations, the request that the appeal be allowed to proceed must be refused.
Costs
23      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.
24      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.      Zaun Ltd shall bear its own costs.
Luxembourg, 17 April 2023.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.