ORDER OF THE COURT (Chamber determining whether appeals may proceed)
27 September 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‑250/23 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 17 April 2023,
LG Electronics Inc., established in Seoul (South Korea), represented by M.B. Bölling, Rechtsanwalt,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
ZTE Deutschland GmbH, established in Düsseldorf (Germany),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed),
composed of L. Bay Larsen, Vice-President of the Court, P.G. Xuereb and A. Kumin (Rapporteur), Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, G. Pitruzzella,
makes the following
Order
1        By its appeal, LG Electronics Inc. asks the Court of Justice to set aside the judgment of the General Court of the European Union of 15 February 2023, LG Electronics v EUIPO – ZTE Deutschland (V10) (T‑741/21, EU:T:2023:78; ‘the judgment under appeal’), by which the General Court dismissed its action for annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 September 2021 (Case R 2101/2020-5), concerning invalidity proceedings between ZTE Deutschland GmbH and LG Electronics.
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 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 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’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 single ground of its appeal, alleging infringement of Article 7(1)(c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), raises an issue that is significant with respect to the unity and consistency of EU law. In that regard, the appellant argues that the General Court incorrectly held that the EU word mark ‘V10’, contested in the application for a declaration of invalidity at issue (‘the contested mark’), was descriptive within the meaning of that provision in respect of ‘Smart phones; Mobile phones [and] Wearable smart phones’ (‘the goods concerned’).
7        More specifically, the appellant maintains that the General Court has misapplied some of the conditions for the application of that provision, as interpreted by the case-law resulting, inter alia, from the judgment of the Court of Justice of 6 September 2018, Bundesverband Souvenir – Geschenke – Ehrenpreise v EUIPO (C‑488/16 P, EU:C:2018:673), as well as the judgments of the General Court of 2 December 2008, Ford Motor v OHIM (FUN)
(T‑67/07, EU:T:2008:542), of 9 June 2021, Philip Morris Products v EUIPO (SIENNA SELECTION) (T‑130/20, EU:T:2021:341), and of 30 June 2021, MCM Products v EUIPO – The Nomad Company (NOMAD) (T‑285/20, EU:T:2021:397), inasmuch as the alleged meaning of the contested mark covers neither an intrinsic and inherent characteristic nor a specific, precise and objective characteristic of the goods concerned, but, at most, a vague and abstract notion.
8        The appellant states that the General Court found, in paragraphs 38 and 39 of the judgment under appeal, that the relevant public could easily understand the sign ‘V10’ as seeking to identify the tenth version of the goods concerned and, accordingly, that the contested mark indicated to that public a characteristic of the goods concerned relating to their technological evolution and sought to identify the different versions of those goods, as a variant of the earlier or later forms, which most likely incorporates certain modifications.
9        In that respect, the appellant submits that, even if the contested mark was understood by the relevant public as an abbreviation of ‘Version 10’ and thus of a certain version of the goods concerned, it is not a characteristic that is objective and inherent to the nature of those goods. According to the appellant, the manufacturer or distributor freely decides whether to launch a newly developed telephone as a new stand-alone model, as a new version in an already established product line or as the first model in a new product line. A meaning which results only from and indicates a purely subjective denomination decision of the trade mark proprietor or the manufacturer, and which does not relate to or follow from the objective characteristics of the goods concerned, cannot indicate an objective, inherent and intrinsic characteristic within the meaning of the case-law of the Court of Justice and the General Court.
10      Moreover, according to the appellant, the General Court made an error in stating, in paragraph 44 of the judgment under appeal, that the relevant public would perceive the sign ‘V10’ as one of the intrinsic, inherent and objective characteristics of the goods concerned, namely a tenth version, which is likely to incorporate new updates or new functionality as compared with the earlier versions of those goods.
11      The appellant takes the view that that meaning of the sign ‘V10’ would require the public targeted to make a comparison with other goods, namely earlier versions of the goods concerned. Without such a direct comparison, ‘V10’ would, even in the General Court’s interpretation, not convey any meaningful information. Accordingly, in the light of the case-law resulting from the judgment of 9 June 2021, Philip Morris Products v EUIPO (SIENNA SELECTION) (T‑130/20, EU:T:2021:341, paragraph 55), it cannot be considered, taking into account such a comparison, that the contested mark has a descriptive character, within the meaning of Article 7(1)(c) of Regulation No 207/2009.
12      The appellant argues that the single ground of its appeal raises an issue that is significant with respect to the unity and consistency of EU law, in so far as Article 7(1)(c) of Regulation No 207/2009 is interpreted and applied in a substantially divergent manner by the various Chambers of the General Court as regards the question whether an aspect that is purely random, incidental and arbitrary in relation to the goods concerned, and which does not have any direct and immediate link with the nature of those goods, constitutes a ‘characteristic’ which justifies the application of that provision. That divergent interpretation gives rise to real legal uncertainty and leads to disadvantages for some trade mark proprietors.
13      According to the appellant, in the judgments of 7 May 2019, Fissler
v EUIPO (vita) (T‑423/18, EU:T:2019:291, paragraph 45), and of 25 June 2020, Off-White v EUIPO (OFF-WHITE) (T‑133/19, EU:T:2020:293, paragraph 45), the Eighth and Ninth Chambers of the General Court held that the choice of colour did not constitute an intrinsic and inherent characteristic of the goods at issue. By contrast, in the judgment of 12 June 2018, Fenyves v EUIPO (Blue)
(T‑375/17, EU:T:2018:340, paragraph 33), the First Chamber of the General Court held that the colour designation was descriptive of the goods at issue, within the meaning of Article 7(1)(c) of Regulation No 207/2009. Therefore, it is necessary that the Court of Justice provide clarification concerning the interpretation and application of that provision; that clarification would also apply to Article 7(1)(c) 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).
Findings of the Court
14      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).
15      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 the second sentence of Article 170b(4) of the Rules of Procedure of the Court, 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 11 July 2023, EUIPO v Neoperl, C‑93/23 P, EU:C:2023:601, paragraph 19).
16      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).
17      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).
18      In the present case, as regards the appellant’s arguments, summarised in paragraphs 6 to 13 of the present order, relating to the infringement of Article 7(1)(c) of Regulation No 207/2009 and, in particular, to errors allegedly made by the General Court in the classification of the contested mark as descriptive, within the meaning of that provision, as interpreted by the case-law, it should be noted that the appellant does not set out with sufficient precision and clarity how its single ground of appeal raises issues that are significant with respect to the unity, consistency and development of EU law.
19      First, in so far as, by those arguments, the appellant criticises, in essence, the General Court for failing to have regard to the case-law of the Court of Justice and its own case-law, it must be recalled that 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, since the appellant must comply, to that end, with all the requirements set out in paragraph 16 above. Although the appellant specifies the paragraphs of the judgment under appeal that are contested and those paragraphs of the rulings of the Court of Justice and 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 alleged contradictions (see, by analogy, order of 8 March 2023, Hijos de Moisés Rodríguez González v EUIPO, C‑605/22 P, EU:C:2023:199, paragraph 20 and the case-law cited).
20      Second, in so far as, by those arguments, the appellant claims that the General Court has interpreted and applied Article 7(1)(c) of Regulation No 207/2009 incorrectly, it should be borne in mind that, in accordance with the principle that the burden of proof lies with an 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 or development of EU law, the scope of that criterion going beyond the judgment under appeal and, ultimately, its appeal. Thus, 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 by means of arguments of a general nature (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraphs 27 and 28, and of 8 May 2023, Studio Legale Ughi e Nunziante v EUIPO, C‑776/22 P, EU:C:2023:441, paragraphs 19 and 20).
21      In that regard, it suffices to note that, while it is true that the appellant identifies errors allegedly made by the General Court as regards the interpretation and application of Article 7(1)(c) of Regulation No 207/2009, the fact remains that it confines itself to listing those errors and submitting arguments of a general nature, without setting out specific reasons why such errors, assuming that they are established, raise an issue that is significant with respect to the unity, consistency or development of EU law which would justify allowing the appeal to proceed.
22      It must therefore be held that the appellant has not complied with all of the requirements set out in paragraph 16 of the present order.
23      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 and development of EU law.
24      In the light of all the foregoing considerations, the appeal should not be allowed to proceed.
Costs
25      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.
26      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.      LG Electronics Inc. shall bear its own costs.
Luxembourg, 27 September 2023.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.