ORDER OF THE COURT (Chamber determining whether appeals may proceed)
24 September 2024 (*)
( Appeal – Community design – 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‑355/24 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 16 May 2024,
Puma SE, established in Herzogenaurach (Germany), represented by M. Schunke and P. Trieb, Rechtsanwälte,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Handelsmaatschappij J. Van Hilst BV, established in Waalwijk (Netherlands),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed)
composed of L. Bay Larsen, Vice‑President of the Court, T. von Danwitz and P.G. Xuereb (Rapporteur), Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, A. Collins,
makes the following
Order
1        By its appeal, Puma SE asks the Court of Justice to set aside the judgment of the General Court of the European Union of 6 March 2024, Puma v EUIPO – Handelsmaatschappij J. Van Hilst (Shoe) (T‑647/22, EU:T:2024:147; ‘the judgment under appeal’), by which the General Court dismissed Puma’s action for annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 August 2022 (Case R 726/2021‑3), concerning invalidity proceedings between Puma and Handelsmaatschappij J. Van Hilst.
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        The third paragraph of Article 58a of that statute provides that 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 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 submits that the two grounds of its appeal, alleging infringement of Article 6 of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), and of Article 7(1) of that regulation, raise issues that are significant with respect to the unity, consistency and development of EU law.
7        In the context of the first ground of appeal, the appellant submits that the General Court incorrectly held that the photos taken from Instagram constitute a sufficient disclosure. In its view, the earlier design should be identified and reproduced precisely and in its entirety, and the relevant features of the earlier design should be clearly displayed. Thus, there can be no disclosure where the views of the earlier design do not enable it to be compared with the contested registered community design. The appellant maintains that the shoes visible in the photos referred to above are merely an accessory and not the focus of those same photos.
8        The question whether it is sufficient for the earlier design to be only incidentally visible in order for there to be a disclosure is of importance for the unity, consistency and development of EU law.
9        In that regard, the appellant maintains that, in so far as it stated that the shoes are manufactured in such a way as to constitute a pair of uniform shoes, the General Court, in paragraph 49 of the judgment under appeal, made its findings of fact on the basis of speculation that is erroneous. Therefore, its conclusion that that the left rear part of the left shoe shares the features of the visible portion of the left shoe, in particular as regards the thickness of the sole and the vertical ribbing, cannot be accepted.
10      Such an approach raises three questions that are important for the unity, consistency and development of EU law.
11      In the first place, the appellant refers to the importance of the question whether an application for a declaration of invalidity may be based on a design which is not reproduced in its entirety, provided that those non-visible features are contained in the contested design, or whether it should be concluded that there is no sufficient disclosure that enables a comparison to be made pursuant to Article 6 of Regulation No 6/2002.
12      In the second place, the appellant maintains that if such an earlier design may in principle be used as a basis for an application for a declaration of invalidity, the question arises as to whether it is to be assumed that the non-visible features are entirely different from the contested design and, if so, whether EUIPO is entitled to determine, on the basis of such assumptions, what those features look like. In the third place, the question whether the General Court is, in that regard, authorised to make such findings of fact is important.
13      As regards the second ground of appeal, the General Court incorrectly took the view, in paragraph 29 of the judgment under appeal, that, in order to rebut the presumption that a design has been disclosed, the party challenging the disclosure must establish to the requisite legal standard that the circumstances of the case could reasonably prevent those facts from becoming known in the normal course of business to the circles specialised in the sector concerned. In that regard, the applicant maintains that it appears inappropriate to differentiate between the burden of proof regarding the act of disclosure, which is borne by the invalidity applicant, and that regarding the effect of that act, which consists in the specialist circles becoming aware of the latter. Furthermore, it is practically impossible to substantiate a lack of knowledge.
14      The appellant adds that the question whether the General Court is entitled to infer a reversal of the burden of proof from the wording of Article 7(1) of Regulation No 6/2002, which would give rise to the obligation for the proprietor of the design to prove negative facts, is important for the unity, consistency and development of EU law. In its view, the question whether the burden of proof relating to disclosure and that relating to the possibility of it becoming known to the specialist circles consistently lies with the invalidity applicant also constitutes such a question. Furthermore, the appellant maintains that its appeal also raises the question whether, where the proprietor of the design presents facts that show that the specialist circles did not have actual knowledge of an alleged disclosure, it is the invalidity applicant’s task to demonstrate and prove that those circles have actually become aware of it.
15      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 11 July 2023, EUIPO v Neoperl, C‑93/23 P, EU:C:2023:601, paragraph 18).
16      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 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 (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 21, and of 11 July 2023, EUIPO v Neoperl, C‑93/23 P, EU:C:2023:601, paragraph 19).
17      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 11 July 2023, EUIPO v Neoperl, C‑93/23 P, EU:C:2023:601, paragraph 20).
18      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 (orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 16, and of 8 May 2024, Wyrębski v QC and Others, C‑689/23 P, EU:C:2024:397, paragraph 21).
19      In the present case, as regards, in the first place, the appellant’s arguments set out in paragraphs 7, 8 and 10 to 14 of the present order, alleging infringement of Articles 6 and 7(1) of Regulation No 6/2002, it must be noted that, although the appellant describes the errors of law allegedly made by the General Court, it does not explain, to the requisite legal standard, or, a fortiori, demonstrate, in a manner that complies with all of the requirements set out in paragraph 17 of this order, how its appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.
20      It should be recalled that, 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. 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 by means of arguments of a general nature (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraphs 27 and 28, and of 11 July 2023, EUIPO v Neoperl, C‑93/23 P, EU:C:2023:601, paragraphs 30 and 31).
21      The appellant’s mere assertions that, due to the alleged errors made by the General Court, it is necessary, in the interest of the unity, consistency and development of EU law, for the Court of Justice to provide, in essence, certain clarifications as to the concept of disclosure of the prior design and to the burden of proof in the context of invalidity proceedings, are manifestly too general to constitute such a demonstration.
22      As regards, in the second place, the argument set out in paragraph 9 of the present order, in so far as the appellant seeks to call into question factual assessments made by the General Court, it should be borne in mind that such arguments cannot demonstrate 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 (see, to that effect, order of 4 July 2024, Thomas Henry v EUIPO, C‑295/24 P, EU:C:2024:586, paragraph 16 and the case-law cited).
23      In those circumstances, it must be held that the appellant’s request 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.
24      In the light of the foregoing considerations, the appeal should not be allowed to proceed.
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.      Puma SE shall bear its own costs.
Luxembourg, 24 September 2024.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.