ORDER OF THE COURT (Chamber determining whether appeals may proceed)
6 May 2022 (*)
(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‑65/22 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 1 February 2022,
Industria de Diseño Textil SA (Inditex), established in Arteixo (Spain), represented by C. Duch Fonoll and S. Sáenz de Ormijana Rico, abogadas,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Ffauf Italia SpA, established in Riese Pio X (Italy),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed),
composed of L. Bay Larsen, Vice-President of the Court, N. Jääskinen and M. Gavalec (Rapporteur), Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, L. Medina,
makes the following
Order
1        By its appeal, Industria de Diseño Textil SA (Inditex) asks the Court of Justice to set aside the judgment of the General Court of the European Union of 1 December 2021, Inditex v EUIPO – Ffauf Italia (ZARA) (T‑467/20, not published, EU:T:2021:842; ‘the judgment under appeal’), by which the General Court dismissed its action for partial annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 May 2020 (Case R 2040/2019-4), relating to opposition proceedings between Ffauf Italia SpA and Inditex.
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 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 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 and is to take the form of a reasoned order.
6        In support of its request that the appeal be allowed to proceed, the appellant argues that the single ground of its appeal alleging infringement of Article 8(1)(b) 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, consistency or development of EU law.
7        In the first place, the appellant claims, in essence, that the General Court, in its assessment of the conceptual comparison of the signs in question, failed to have regard to the significance of the exceptional reputation of the mark applied for and to the clear and specific semantic content of the sign ZARA, namely the very well-known retail company, inter alia when it found, in paragraph 143 of the judgment under appeal, that the word element ‘ZARA’ in the signs at issue could be perceived as a female first name.
8        In the second place, the appellant submits that the General Court failed to have regard to the case-law of the Court of Justice and of the General Court resulting, in particular, from the judgments of 12 January 2006, Ruiz-Picasso and Others v OHIM (C‑361/04 P, EU:C:2006:25), of 17 September 2020, EUIPO v Messi Cuccittini (C‑449/18 P and C‑474/18 P, not published, EU:C:2020:722), and of 16 June 2021, Smiley Miley v EUIPO – Cyrus Trademarks (MILEY CYRUS) (T‑368/20, not published, EU:T:2021:372), from which it is, according to the appellant, clear that the reputation of one of the marks concerned can give rise to conceptual differences between the marks in question such as to counteract their visual and phonetic similarities and thereby rule out any likelihood of confusion. More specifically, in paragraph 145 of the judgment under appeal, by considering that the highly distinctive character of a sign is relevant only in respect of the earlier mark and not the later mark, the General Court incorrectly acted in breach of that case-law.
9        In the third place, the appellant alleges that when the General Court failed to take into account the reputation of the sign ZARA, it failed to fulfil its obligation to give reasons and distorted the clear sense of the evidence relating to that reputation, including a decision of the Tribunale di Genova (District Court, Genoa, Italy) of 19 June 2019; according to the appellant, that evidence shows that the relevant public attributes a particular meaning to the sign ZARA as the name used to identify one of the most well-known retail companies in the world. Therefore, according to the appellant, the General Court did not correctly analyse how the conceptual meaning attributed by the relevant public to the sign ZARA influences the perception of the public concerned and the effect of that perception on the global assessment of the likelihood of confusion.
10      In the fourth and last place, the appellant submits that the errors of law committed by the General Court resulted in an incorrect assessment of the conceptual comparison between the marks in question, which led to infringement of the principle of counteraction and, ultimately, infringement of Article 8(1)(b) of Regulation No 207/2009 as interpreted by the Court of Justice and the General Court.
11      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).
12      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 (see, inter alia, order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 21 and the case-law cited).
13      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).
14      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).
15      In the present case, regarding the line of argument summarised in paragraphs 7 to 10 of the present order, it must be stated that, although the appellant identifies the errors of law allegedly committed by the General Court, it has not explained to the requisite legal standard and, in any event, has not shown by that line of argument how the alleged infringement of Article 8(1)(b) of Regulation No 207/2009 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.
16      In accordance with the burden of proof which 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 (see, to that effect, order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 27 and the case-law cited).
17      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 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 28 and the case-law cited).
18      By contrast, in support of its arguments, the appellant merely states, in general terms, that the Court should shed light on the contradictions set out in the judgment under appeal without, however, providing concrete and precise evidence specific to the particular case such as to show how those contradictions, assuming they are established, raise an issue that is significant with respect to the unity, consistency or development of EU law.
19      In those circumstances, it must be held that the appellant’s request does not establish that the appeal raises an issue that is significant with respect to the unity, consistency and development of EU law.
20      In the light of all the foregoing considerations, the request that the appeal be allowed to proceed must be refused.
Costs
21      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.
22      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.      Industria de Diseño Textil SA (Inditex) shall bear its own costs.
Luxembourg, 6 May 2022.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.