ORDER OF THE COURT (Chamber determining whether appeals may proceed)
17 July 2023 (*)
(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‑145/23 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 10 March 2023,
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,
DN Solutions Co. Ltd., formerly Doosan Machine Tools Co. Ltd., established in Seongsan-gu, Changwon-si (South Korea),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed)
composed of L. Bay Larsen, Vice-President of the Court, D. Gratsias and M. Ilešič (Rapporteur), 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, Puma SE asks the Court of Justice to set aside the judgment of the General Court of the European Union of 21 December 2022, Puma v EUIPO – DN Solutions (PUMA) (T‑4/22, EU:T:2022:850; ‘the judgment under appeal’), by which the General Court dismissed its action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 October 2021 (Case R 1677/2020‑1), relating to opposition proceedings between Puma SE and DN Solutions Co. Ltd., formerly Doosan Machine Tools Co. Ltd.
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        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        Article 170a(1) of the Rules of Procedure provides that, 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 the Rules of Procedure, 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.
Arguments of the appellant
6        In support of its request that the appeal be allowed to proceed, the appellant submits that the single ground of its appeal, alleging, in essence, an infringement of Article 8(5) 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), 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 disregarded the fact that the relevant public makes a connection in its mind between the marks at issue in any case where the earlier mark enjoys a very high degree of reputation for the general public and the signs are almost identical. The General Court did not comply with the objective of protection pursued by Article 8(5) of that regulation, which requires that very highly reputed trade marks be granted a higher degree of protection.
8        The appellant argues that, in the interest of the unity, consistency and development of EU law, it is necessary for the Court of Justice to clarify that the protection of trade marks which enjoy a very high degree of reputation for the general public cannot be refused against identical or highly similar registrations, on the basis of the degree of dissimilarity of the goods or services or a missing connection between the goods and services.
9        In the second place, the appellant submits that the General Court misapplied the case-law of the Court of Justice arising from the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655), in which the Court of Justice held that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the marks at issue, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.
10      More specifically, the appellant argues that the General Court found that, if the conditions set out by the Court of Justice in paragraphs 51 and 52 of that judgment are fulfilled, that conclusion cannot be reversed by the general finding made in paragraph 49 of that judgment. Thus, in the appellant’s view, if the approach followed by the General Court were correct, there would be no incentive for trade mark owners to invest in acquiring a very high reputation.
11      In the third place, the appellant claims that the General Court does not provide any evidence to support its view that a mental connection between the marks is ‘highly unlikely’. By contrast, the General Court criticises the appellant for failing to provide evidence for the existence of such a connection, although such a connection is quite obvious in the case of almost identical signs and a very highly reputed earlier mark. In such a case, a link between the goods or services at issue is not necessary for the application of Article 8(5) of Regulation 2017/1001. Therefore, according to the appellant, the proprietor of such a mark cannot be required to provide evidence of such a link between the goods.
12      In that regard, in the interest of the unity, consistency and development of EU law, the appellant asks the Court to clarify, first, that, in the case of a trade mark with a very high reputation for the general public and identical or highly similar signs, a mental connection has to be assumed between the marks even if there is no link between the goods or services at issue and, second, that in such cases no corresponding proof of such a link between the goods can or must be provided. In the alternative, the Court should specify clear criteria as to how such proof can be provided if no connection and a fortiori no similarity between the respective goods and services is required.
13      In addition, the appellant asks the Court to clarify that neither the dissimilarity of the goods or services nor the lack of connection between them can establish a lack of association in the mind of the public between marks which are very highly reputed for the general public and identical or highly similar marks, since such marks are recognised and thus remembered in any commercial context.
14      The appellant argues that, in the judgment under appeal, the General Court departed from its earlier case-law. The General Court came to the surprising and contradictory conclusion that, despite the very high reputation, the existence of a mental connection had to be denied. In the interest of the unity, consistency and development of EU law, a unified case-law is needed and thus this appeal needs to be accepted since not even the different chambers of the General Court follow a consistent interpretation of the law.
15      In the fourth and last place, the appellant submits that the General Court failed to recognise the market reality, consisting in cooperation between undertakings from different industries, and asserted, without any evidence, that a mental connection is ‘unlikely’. The General Court should have provided a more detailed explanation as to why such a connection is regarded as such. According to the appellant, merely referring to a lack of connection between the goods or services or the different publics cannot suffice, in that regard, if such a connection or even a similarity of the goods and services is not required where the reputation of the earlier mark extends beyond the public it addresses.
Findings of the Court
16      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 (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 20 and the case-law cited).
17      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 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 (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 21, and of 16 November 2022, EUIPO v Nowhere, C‑337/22 P, EU:C:2022:908, paragraph 24).
18      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 (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 22 and the case-law cited).
19      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 11 May 2023, Heinze v L’Oréal and EUIPO, C‑15/23 P, EU:C:2023:407, paragraph 17).
20      In the present case, as regards, in the first place, the arguments set out in paragraphs 7 to 14 of this order, it must be noted that, although the appellant invokes an error of law allegedly committed by the General Court, it does not show to the requisite legal standard or, a fortiori, demonstrate, in a manner that complies with all of the requirements set out in paragraph 18 of this order, how its appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, which would justify the appeal being allowed to proceed.
21      In that regard, 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 scope of the judgment or order under appeal and, ultimately, that of 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 8 November 2022, Mandelay v EUIPO, C‑405/22 P, EU:C:2022:860, paragraph 17 and the case-law cited).
22      In the present case, 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 scope of protection of marks with an exceptionally high reputation, contributing, moreover, to the unification of the relevant case-law, are manifestly too general to constitute such a demonstration.
23      In the second place, as regards the argument set out in paragraph 15 of this order, it must be held that, by that argument, the appellant seeks, in essence, to criticise the General Court for having failed to fulfil its obligation to state reasons in so far as the General Court did not state the reasons why it had to be held that a mental connection between marks that are very highly reputed for the general public and identical or highly similar marks was ‘highly unlikely’.
24      In that regard, while it is true, as is apparent from the case-law of the Court, that failure to state reasons or an inadequate statement of reasons constitutes an error of law which may be relied on in the context of an appeal, the determination as to whether the appeal is allowed to proceed nevertheless remains subject to specific conditions consisting, for the appellant, in demonstrating, as referred to in paragraph 18 of this order, that that appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law (see, by analogy, order of 3 December 2020, Dermavita v EUIPO, C‑400/20 P, EU:C:2020:997, paragraph 19 and the case-law cited). However, the appellant has not provided an explanation as to why the alleged failure to state reasons in the judgment under appeal raises such an issue.
25      In those circumstances, it must be held that the appellant’s request does not establish that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.
26      In the light of all the foregoing considerations, the appeal should not be allowed to proceed.
Costs
27      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.
28      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, 17 July 2023.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.