ORDER OF THE COURT (Chamber determining whether appeals may proceed)
12 March 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 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‑893/19 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 3 December 2019,
Roxtec AB, established in Karlskrona (Sweden), represented by T. Lampel and J. Olsson, avocats, and K. Wagner, avocate,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Wallmax Srl, established in Milan (Italy), represented by F. Ferrari and L. Goglia, avocats,
intervener 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 proposal from the Judge-Rapporteur and after hearing the Advocate General, M. Szpunar,
makes the following
Order
1        By its appeal, Roxtec AB asks the Court of Justice to set aside the judgment of the General Court of the European Union of 24 September 2019, Roxtec v EUIPO — Wallmax (Representation of a black square containing seven concentric blue circles) (T‑261/18, EU:T:2019:674, ‘the judgment under appeal’), whereby the General Court dismissed Roxtec AB’s action for annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 January 2018 (Case R 940/2017-2), relating to invalidity proceedings between Wallmax and Roxtec.
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        Pursuant to 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 Court’s Rules of Procedure, 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 of the Court of Justice of the European Union, 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(3) of those rules, the Court is to rule on the request that the appeal be allowed to proceed in the form of a reasoned order.
6        In support of its request that the appeal be allowed to proceed, the appellant submits that the appeal raises issues that are significant with respect to the unity, consistency and development of EU law.
7        In the first place, the appellant complains that the General Court failed correctly to apply the judgment of 12 December 2002, Sieckmann (C‑273/00, EU:C:2002:748, paragraph 52), in that it took into account elements which did not form part of the registration of the mark at issue, in particular an earlier patent of the product covered by that mark and a product catalogue. According to the appellant, pursuant to that case-law, users of the trade mark registry, like the competent authority, must be able to determine the precise nature of a mark by taking into account only information which forms part of the registration of the trade mark itself. Such an approach by the General Court is likely to undermine legal certainty and raises an issue that is significant with respect to the consistency and development of EU law.
8        In the second place, the appellant claims that its appeal raises an issue that is significant with respect to the consistency and development of EU law in that the General Court, first, misinterpreted Article 7(1)(e)(ii) of Regulation 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) and, second, departed from its own case-law, established in the judgment of 12 November 2008, Lego Juris v OHIM — Mega Brands (Red Lego Brick)
(T‑270/06, EU:T:2008:483, paragraph 39). More specifically, the appellant takes issue with the General Court for concluding, inter alia in paragraph 88 of the judgment under appeal, that the omission, in the mark at issue, of the dividing line showing that it is possible to divide the product into two parts is irrelevant and failing to have regard to the fact that that line represents an essential and indispensable characteristic for obtaining a technical result. According to the appellant, such an interpretation of Article 7(1)(e)(ii) of Regulation 2017/1001 and the inconsistency which results from the fact that the General Court departed from its own case-law undermines legal certainty.
9        In the third place, the appellant complains that the General Court failed to take into account, when applying Article 7(1)(e)(ii) of Regulation 2017/1001, other possible ways of using the mark at issue and claims that they could be taken into account, inter alia by applying by analogy the judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas ?) (C‑541/18, EU:C:2019:725). Accordingly, in the appellant’s view, pursuant to that case-law, a mark should be registered if at least one of its likely uses does not satisfy the conditions laid down in Article 7(1)(e)(ii) of Regulation 2017/1001 or any other absolute ground for refusal. The appellant maintains that such an application by analogy raises an issue that is significant for the development of EU law in that it is of general interest with respect to all the absolute grounds for refusal set out in Article 7 of that regulation.
10      In the fourth and final place, the appellant claims that the General Court, first, infringed Article 7(1)(e)(ii) of Regulation 2017/1001 by not taking into account the distinctive character of the black and blue colouring of the mark at issue for the purposes of the application of that provision and, second, erred by applying the judgment of 14 September 2010, Lego Juris v OHIM (C‑48/09 P, EU:C:2010:516, paragraph 48) to a non-functional element with its own distinctive character, such as that colouring. In the appellant’s view, the specific colouring of the mark at issue is another characteristic of the product in question which does not serve any technical purpose, so that the sign does not consist ‘exclusively’ of characteristics ‘necessary’ to obtain a technical result, within the meaning of that provision of Regulation 2017/1001. Those errors by the General Court raise an issue that is significant with respect to, first, the unity of EU law, in that the judgment under appeal is a source of legal uncertainty and, second, the development of EU law, in that the Court of Justice is required to specify whether the judgment of 14 September 2010, Lego Juris v OHIM (C‑48/09 P, EU:C:2010:516) is also applicable to a non-functional element with its own distinctive character.
11      As a preliminary point, it must 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 16 September 2019, Kiku v CPVO, C‑444/19 P, not published, EU:C:2019:746, paragraph 11).
12      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 determine, 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 (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 14 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 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 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 (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 15 and the case-law cited).
14      Therefore, a request that an appeal be allowed to proceed which does not contain the information mentioned in the preceding paragraph 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      First, as regards the argument set out in paragraph 7 above that the General Court departed from the relevant case-law of the Court of Justice, it must be noted that, in accordance with the burden of proof which lies with the appellant requesting that the appeal be allowed to proceed, such arguments are not, in themselves, sufficient to establish that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, the appellant having to comply, to that end, with all the requirements set out in paragraph 13 above (see order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 17 and the case-law cited). In the present case, although the appellant identifies the contested paragraphs of the judgment under appeal and those of the decision of the Court of Justice which it alleges the General Court failed correctly to apply, its argument  is not capable of establishing that the appeal raises an issue that is significant for the consistency or development of EU law.
16      It follows from the case-law of the Court of Justice that the technical function of the characteristics of a shape may be assessed, inter alia, by taking account of the documents relating to earlier patents describing the functional elements of the shape concerned (judgment of 14 September 2010, Lego Juris v OHIM, C‑48/09 P, EU:C:2010:516, paragraph 85). Thus, the appellant fails to demonstrate how the taking into account by the General Court of such an element which did not form part of the registration of the mark at issue  raises an issue that is significant for the consistency or development of EU law.
17      Second, as regards the argument set out in paragraph 8 above relating to the misinterpretation of Article 7(1)(e)(ii) of Regulation 2017/1001, the appellant is seeking in actual fact to call into question the factual assessment made by the General Court when identifying the essential characteristics of the sign concerned and the assessment of the function of those characteristics. Consequently, that argument cannot raise an issue that is significant with respect to the consistency or development of EU law (see, to that effect, order of 10 October 2019, KID-Systeme v EUIPO, C‑577/19 P, not published, EU:C:2019:854, paragraph 20).
18      As regards the argument set out in paragraph 8 above relating to the General Court’s failure correctly to apply the judgment of 12 November 2008, Lego Juris v OHIM — Mega Brands (Red Lego Brick)
(T‑270/06, EU:T:2008:483, paragraph 39), it should be noted that that argument does not comply with the requirements referred to in paragraph 13 above as the appellant merely states that the General Court infringed its own case-law, without setting out the concrete reasons why such an inconsistency, even if it were established, would raise an issue that is significant with respect to the consistency or development of EU law.
19      Third, as regards the argument put forward in paragraph 9 above, it must be noted that, 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 invoked 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 (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 18 and the case-law cited). Furthermore, 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 of arguments of a general nature (see, to that effect, order of 12 December 2019, Guiral Broto v EUIPO, C‑715/19 P, not published, EU:C:2019:1086, paragraph 11).
20      In the present case, the appellant merely states that the scope of the judgment under appeal is of general interest in respect of all the absolute grounds for refusal set out in Article 7 of Regulation 2017/1001, without, however, providing concrete arguments specific to the particular case in order to show how the General Court’s failure to apply by analogy the judgment of 12 September 2019, Deutsches Patent- und Markenamt (#darferdas ?) (C‑541/18, EU:C:2019:725), raises an issue that is significant for the development of EU law.
21      Fourth, as regards the appellant’s argument in paragraph 10 above that the General Court failed correctly to apply the judgment of 14 September 2010, Lego Juris v OHIM (C‑48/09 P, EU:C:2010:516) to a non-functional element, namely the black and blue colouring of its sign with its own distinctive character, it must be noted that, in accordance with the burden of proof which lies with the appellant requesting that the appeal be allowed to proceed, such an argument 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 appellant having to comply, to that end, with all the requirements set out in paragraph 13 above (order of 24 October 2019, Porsche v EUIPO,  C‑613/19 P, EU:C:2019:905, paragraph 17).
22      The appellant merely alleges that the judgment under appeal is a source of legal uncertainty without showing, in contravention of the requirements set out in paragraph 13 above, how the General Court’s error, consisting in the application of the judgment of 14 September 2010, Lego Juris v OHIM (C‑48/09 P, EU:C:2010:516) to its case, even if it were established, would raise an issue that is significant with respect to the unity or development of EU law.
23      In those circumstances, it must be held that the arguments put forward by the appellant in support of its request that the appeal be allowed to proceed are not capable of establishing that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.
24      In the light of all the foregoing considerations, the request that the appeal be allowed to proceed must be refused.
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.      Roxtec AB shall bear its own costs.
Luxembourg, 12 March 2020.
A. Calot Escobar
R. Silva de Lapuerta
Registrar
President of the Chamber determining
whether appeals may proceed
*      Language of the case: English.