ORDER OF THE COURT (Chamber determining whether appeals may proceed)
2 June 2021 (*)
(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‑109/21 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 22 February 2021,
H.R. Participations SA, established in Luxembourg (Luxembourg), represented by P. Wilhelm and J. Rossi, avocats,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Hottinger Investment Management Ltd, established in London (United Kingdom), represented by W. Sander, Solicitor, and M. Beebe, Barrister,
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed),
composed of R. Silva de Lapuerta, Vice-President of the Court, M. Ilešič and C. Lycourgos (Rapporteur), Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, H. Saugmandsgaard Øe,
makes the following
Order
1        By its appeal, H.R. Participations SA asks the Court of Justice to set aside the judgment of the General Court of 16 December 2020, H.R. Participations v EUIPO – Hottinger Investment Management (JCE HOTTINGUER) (T‑535/19, not published, EU:T:2020:614; ‘the judgment under appeal’), by which the General Court dismissed its action for annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 May 2019 (Case R 2078/2018‑2), relating to invalidity proceedings between Hottinger Investment Management and H.R. Participations.
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 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, 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 is to rule on the request that the appeal be allowed to proceed, 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 puts forward three arguments.
7        By its first argument, which relates to the first ground of its appeal, the appellant submits that the earlier unregistered trade mark ‘HOTTINGER’ protected under the law of the United Kingdom, relied on in support of the application for a declaration of invalidity of the EU trade mark ‘JCE HOTTINGUER’ of which it was the proprietor, no longer constitutes an earlier right protected in the European Union since the entry into force, on 1 January 2021, of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7; ‘the withdrawal agreement’).
8        According to the appellant, the annulment of an EU trade mark on account of the existence of an earlier right protected in the United Kingdom constitutes, therefore, an infringement of EU law and raises an issue that is significant with respect to the unity, consistency and development of that law, since such an annulment would render the withdrawal agreement devoid of its substance and significantly affect EU law.
9        In that regard, the appellant relies on Communication No 2/20 of the Executive Director of EUIPO of 10 September 2020 on the impact of the United Kingdom’s withdrawal from the European Union on certain aspects of the practice of the Office (‘the Communication of 10 September 2020’), according to which ‘actions in inter partes proceedings based solely on UK rights that are still pending on 1 January 2021 will be dismissed for lack of valid basis’. It also refers to the decision of the Fourth Board of Appeal of EUIPO of 11 January 2021 (Case R 204/2020‑4) relating to opposition proceedings based, inter alia, on an earlier UK trade mark. According to paragraph 43 of that decision, ‘an earlier right must enjoy protection within the European Union on the day the decision is rendered’.
10      By its second argument, which relates to the second ground of its appeal, the appellant criticises the General Court for having misapplied the Trade Marks Act 1994 (United Kingdom law on trade marks). It observes that that law was inapplicable to the present case, since it was based on the law of the United Kingdom on passing off. The application of that law is therefore contrary to Article 60(1)(c), read in conjunction with Article 8(4) 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), which is a significant issue concerning the consistency of EU law.
11      In any event, it has no longer been possible, since the entry into force of the withdrawal agreement on 1 January 2021, to rely on the law of the United Kingdom on passing off to prohibit the use of an EU trade mark.
12      By its third argument, which relates to the third ground of its appeal, the appellant submits that, by misapplying the three criteria of the law of the United Kingdom on passing off, the General Court infringed Article 60(1)(c), read in conjunction with Article 8(4) of Regulation 2017/1001. It has, in any event, no longer been possible, since 1 January 2021, to rely on those rules of the law of the United Kingdom.
13      At the outset, 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 3 September 2020, Gamma-A v EUIPO, C‑199/20 P, not published, EU:C:2020:662, paragraph 9 and the case-law cited).
14      Furthermore, as is clear from the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union, read in conjunction 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 the 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 3 September 2020, Gamma-A v EUIPO, C‑199/20 P, not published, EU:C:2020:662, paragraph 10 and the case-law cited).
15      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 (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 15 and the case-law cited).
16      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).
17      In the present case, as regards the first argument put forward in support of the request that the appeal be allowed to proceed, it must be stated that that argument is based on the entry into force, on 1 January 2021, of the withdrawal agreement and on the practice announced by EUIPO in that regard, which consists in dismissing actions in inter partes proceedings, such as applications for a declaration of invalidity, which are still pending on 1 January 2021 and based solely on earlier rights protected under the law of the United Kingdom. The appellant infers from those factors that, from 1 January 2021, any annulment of an EU trade mark on account of the existence of an earlier right protected in the United Kingdom would render the withdrawal agreement devoid of its substance and significantly affect EU law.
18      Although it cannot be ruled out that the issue of the effect of the withdrawal agreement on those inter partes proceedings may be significant with respect to the unity, consistency or development of EU law, the fact remains that the appellant fails to indicate the nature of the error of law allegedly committed by the General Court in that regard. Nor does it state how the possible application of the approach adopted by EUIPO could have had any influence on the outcome of the judgment under appeal.
19      In particular, the appellant fails to specify how EUIPO’s approach in relation to the proceedings still pending before that agency on 1 January 2021 could have been taken into account in the present case, which concerns proceedings which led to the annulment of the appellant’s EU trade mark by decision of the Second Board of Appeal of EUIPO of 3 May 2019, confirmed by the judgment under appeal, delivered on 16 December 2020.
20      As regards the second and third arguments put forward in support of the request that the appeal be allowed to proceed, it must be held that they are based, similarly to the first argument rejected above, on the entry into force of the withdrawal agreement on 1 January 2021. Here again, the appellant fails to state how the General Court could have taken account of that entry into force and reached an outcome other than that which it reached in the judgment under appeal.
21      In so far as the appellant also claims, in its second and third arguments, that the General Court misapplied the law of the United Kingdom on trade marks and the criteria on passing off contained therein, it must be held that it does not specify, to the requisite legal standard, which errors of law the General Court allegedly made in that regard.
22      Therefore, since the request that the appeal be allowed to proceed does not comply with the requirements set out, inter alia, in paragraph 15 of the present order, it is incapable of establishing that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.
23      In the light of all of the foregoing, the request that the appeal be allowed to proceed must be rejected.
Costs
24      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.
25      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.      H.R. Participations SA shall bear its own costs.
Luxembourg, 2 June 2021.
A. Calot Escobar
R. Silva de Lapuerta
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.