ORDER OF THE COURT (Chamber determining whether appeals may proceed)
5 December 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‑612/22 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 23 September 2022,
Tigercat International Inc., established in Cambridge, Ontario (Canada), represented by B. Führmeyer and E.B. Matthes, Rechtsanwälte,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Caterpillar Inc., established in Peoria, Illinois (United States),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed),
composed of L. Bay Larsen, Vice-President of the Court, M. Safjan and N. Jääskinen, 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, Tigercat International Inc. asks the Court of Justice to set aside the judgment of the General Court of the European Union of 13 July 2022, Tigercat International v EUIPO – Caterpillar (Tigercat), (T‑251/21, not published, EU:T:2022:437, ‘the judgment under appeal’), by which the General Court dismissed its action for annulment and modification of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 February 2021 (Case R 16/2020-2) relating to opposition proceedings between Caterpillar Inc. and Tigercat International.
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        As provided in 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 of Justice 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.
6        In support of its request that the appeal be allowed to proceed, the appellant submits that the appeal raises an issue that is significant with respect to the unity, consistency and development of EU law. In that regard, it puts forward a single plea in law, 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).
7        By its plea, the appellant submits that the General Court erred in its assessment of the similarity of the marks at issue. By holding, in paragraphs 44 and 45 of the judgment under appeal, that the relevant public will break down the word sign ‘Tigercat’ into its verbal elements ‘tiger’ and ‘cat’, the General Court failed to have regard, first, to the case-law arising from the judgments of 12 December 2002, Vedial v OHIM – France Distribution (HUBERT) (T‑110/01, EU:T:2002:318, paragraphs 57 to 59), and of 22 June 2005, Plus v OHIM – Bälz and Hiller (Turkish Power) (T‑34/04, EU:T:2005:248, paragraphs 50 to 72), in which it held that the word sign examined, formed by the combination of two connected terms forming a concept and a logical unit that is distinct from those of its components, constituted an inseparable whole, and, second, to the case-law of the Court of Justice according to which the global assessment of the likelihood of confusion should be based on the overall impression (judgment of 24 June 2010, Becker v Harman International Industries, C‑51/09 P, EU:C:2010:368, paragraphs 34 to 40).
8        The appellant also complains that the General Court misapplied the case-law arising from the judgment of 6 September 2013, Eurocool Logistik v OHIM – Lenger (EUROCOOL) (T‑599/10, not published, EU:T:2013:399, paragraph 104). That case-law concerns invented or imaginary words which have no lexical meaning for the respective wholes.
9        Lastly, the appellant indicates that, in view of the considerable amount of litigation concerning this matter, it is important for the unity, consistency and development of EU law to determine whether the case-law cited in paragraph 7 of the present order is still valid or whether, on the contrary, it has been tacitly set aside by the General Court.
10      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 20 October 2022, Fidelity National Information Services v EUIPO, C‑446/22 P, not published, EU:C:2022:827, paragraph 11).
11      In addition, 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 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 (order of 20 October 2022, Fidelity National Information Services v EUIPO, C‑446/22 P, not published, EU:C:2022:827, paragraph 12 and the case-law cited).
12      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 20 October 2022, Fidelity National Information Services v EUIPO, C‑446/22 P, not published, EU:C:2022:827, paragraph 13).
13      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 20 October 2022, Fidelity National Information Services v EUIPO, C‑446/22 P, not published, EU:C:2022:827, paragraph 14 and the case-law cited).
14      In the present case, as regards the appellant’s arguments summarised in paragraphs 7 to 9 of the present order, relating to the General Court’s failure to have regard for its own case-law and that of the Court of Justice when assessing the similarity of the signs at issue, it must be recalled that the claim that the General Court disregarded its own case-law or that of the Court of Justice is not, in itself, sufficient to establish, in accordance with the burden of proof which lies with the person requesting that an appeal be allowed to proceed, that that appeal raises an issue that is significant with respect to the unity, consistency and development of EU law; to that end, the appellant must comply with all the requirements set out in paragraph 12 of the present order (see, by analogy, order of 6 April 2022, Sanford v EUIPO, C‑19/22 P, not published, EU:C:2022:262, paragraph 18 and the case-law cited).
15      It must be noted that, in the present case, the appellant merely puts forward arguments of a general nature, without, however, setting out clearly and precisely the reasons why the alleged contradiction between the General Court’s findings and the case-law of the General Court and of the Court of Justice raises an issue that is significant with respect to the unity, consistency and development of EU law that would justify the appeal being allowed to proceed.
16      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.
17      In the light of the foregoing considerations, the appeal should not be allowed to proceed.
Costs
18      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.
19      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.      Tigercat International Inc. shall bear its own costs.
Luxembourg, 5 December 2022.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.