ORDER OF THE COURT (Chamber determining whether appeals may proceed)
28 May 2020 (*)
(Appeal — EU trade mark — Whether appeals may be allowed to proceed — Article 170b of the Rules of Procedure of the Court — Request failing to demonstrate a significant issue with respect to the unity, consistency or development of EU law — Appeal not allowed to proceed)
In Case C‑61/20 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 4 February 2020,
Billa AG, established in Wiener Neudorf (Austria), represented by M. Kinkeldey and J. Rether, Rechtsanwälte,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Boardriders IP Holdings LLC, established in Huntington Beach, California (United States),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed),
composed of R. Silva de Lapuerta, Vice-President of the Court, I. Jarukaitis and C. Lycourgos (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, Billa AG asks the Court to set aside the judgment of the General Court of the European Union of 4 December 2019, Billa v EUIPO — Boardriders IP Holdings (Billa) (T‑524/18, not published, EU:T:2019:838; ‘the judgment under appeal’), whereby the General Court, on the one hand, annulled the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 June 2018 (Case R 2235/2017-4), relating to opposition proceedings between Boardriders IP Holdings LLC and Billa, as regards the goods ‘games’ in Class 28 within the meaning of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, covered by the mark applied for, and, on the other, dismissed the action as to the remainder.
Whether the appeal should be allowed to proceed
2        Pursuant to 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 of the Court, 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 of Justice to rule on that request.
5        In accordance with Article 170b(3) of those rules, the Court’s decision on the request that the appeal be allowed to proceed is to take the form of a reasoned order.
6        In support of its request that the appeal be allowed to proceed, the appellant submits that its appeal raises an issue that is significant with respect to the unity and consistency of EU law.
7        The appellant complains that the General Court infringed Article 8(1)(b) 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), in so far as it applied incorrect criteria in the assessment of the similarity between the earlier nine-letter word marks ‘BILLABONG’ and the five-letter word mark ‘Billa’ applied for, thus resulting in the incorrect finding of a likelihood of confusion between the marks at issue.
8        More specifically, the appellant claims that by breaking down the earlier marks into two groups of the letters ‘billa’ and ‘bong’ and by disregarding the letter group ‘bong’ in favour of the letter group ‘billa’, the General Court failed to comply with the principles set out in the settled case-law of the Court of Justice according to which the global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by them, bearing in mind, in particular, their distinctive and dominant elements.
9        The appellant states that the legal issue raised by its appeal relates to the principal criteria for assessing the similarity of the signs at issue and the essential role of the overall impression created by the marks at issue. The question is whether the General Court was correct in basing its assessment of the similarity of the signs at issue solely on some of the letters of the earlier marks, notwithstanding the fact that those earlier marks were composed of one single word and that they also contained another letter group which does not appear in the mark applied for. According to the appellant, the General Court failed to establish the circumstances which, in its view, justified the finding that the letter group ‘billa’ had a dominant or distinctive character in relation to the other letter group specific to the earlier marks.
10      In order to draw attention to the significance of the issue, the appellant refers to the decision of the Bundespatentgericht (Federal Patent Court, Germany) of 13 February 2019, which, after comparing the same signs at issue according to the overall impression given by each of them, found that they were not similar. The appellant infers from this that the legal issue raised by the present appeal is significant with respect to the unity and consistency of EU law, since the application of a provision of EU law and of a national provision, with the same wording concerning the likelihood of confusion, have led the General Court and the Bundespatentgericht (Federal Patent Court) to adopt opposing solutions, whereas the objective is to harmonise the application of trade mark law throughout the European Union.
11      As a preliminary point, it should 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 (orders of 16 September 2019, Kiku v CPVO, C‑444/19 P, not published, EU:C:2019:746, paragraph 11, and of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 13).
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 Court’s 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 (see, to that effect, 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 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      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, as regards, in the first place, the argument set out in paragraphs 7 to 9 of this order, it must be held that, although the appellant identifies the errors allegedly committed by the General Court, it does not sufficiently explain how the infringement of Article 8(1)(b) of Regulation 2017/1001, even if it were established, raises an issue that is significant with respect to the unity and consistency of EU law which justifies that the appeal be allowed to proceed.
16      It must also be recalled that, in accordance with the burden of proof which is borne by the party requesting that the appeal be allowed to proceed, the appellant must demonstrate that, independently of the issues of law invoked in its appeal, that appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law, the scope of this criterion going beyond the judgment under appeal and, ultimately, its appeal. 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 (see, to that effect, order of 12 March 2020, Roxtec v EUIPO, C‑893/19 P, not published, EU:C:2020:209, paragraph 19).
17      The generic statement that the legal issue in question relates to the principal criteria for assessing the similarity of the signs cannot be regarded as sufficient in the absence of any information as to the seriousness of the errors which have allegedly been committed by the General Court and their consequences with respect to the unity and consistency of EU law.
18      In any event, it should be noted that, contrary to what the appellant maintains, the General Court did not seek to depart from the principles set out by the Court of Justice and, in particular, from the case-law according to which the global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by them, bearing in mind, in particular, their distinctive and dominant elements. Since the General Court observed that settled case-law in paragraph 55 of the judgment under appeal and subsequently made clear its intention to carry out its analysis on that basis, it appears that the appellant’s ground alleging infringement of Article 8(1)(b) of Regulation 2017/1001 relates in fact not to the criterion used by the General Court in the assessment of the likelihood of confusion, but rather to the General Court’s assessment of such a likelihood in the present case.
19      It should be borne in mind in that regard that the General Court’s assessment of the similarity between the marks at issue is of a factual nature (judgment of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C‑254/09 P, EU:C:2010:488, paragraph 50), and that a claim alleging that the General Court erred in its assessment of the facts cannot state that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law (order of 11 February 2020, Rutzinger-Kurpas v EUIPO, C‑887/19 P, not published, EU:C:2020:91, paragraph 14).
20      As regards, in the second place, the argument set out in paragraph 10 of this order, it should be noted, as the General Court correctly pointed out in paragraph 84 of the judgment under appeal, that the EU trade mark system is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (order of 6 November 2019, Geske v EUIPO, C‑285/19 P, not published, EU:C:2019:949, paragraph 15). Therefore, the fact that a national court, by applying a provision of national law, reached a different conclusion to that reached by the General Court by applying a provision of EU law does not, per se, reveal the existence of an issue that is significant with respect to the unity and consistency of EU law.
21      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 or development of EU law.
22      In the light of all the foregoing, the appeal should not be allowed to proceed.
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.      Billa AG shall bear its own costs.
Luxembourg, 28 May 2020.
A. Calot Escobar
R. Silva de Lapuerta
Registrar
President of the Chamber determining
whether appeals may proceed
*      Language of the case: English.