ORDER OF THE COURT (Chamber determining whether appeals may proceed)
11 February 2025 (*)
( 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‑607/24 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 17 September 2024,
W.B. Studio Sas di Wivian Bodini & C., established in Milan (Italy), represented by A. Mocchi and V. Piccarreta, avvocati,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
E.Land Italy Srl, established in Milan,
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed),
composed of T. von Danwitz, Vice-President of the Court, F. Biltgen, President of the First Chamber, and J. Passer (Rapporteur), Judge,
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, W.B. Studio Sas di Wivian Bodini & C. asks the Court of Justice to set aside the judgment of the General Court of the European Union of 17 July 2024, W.B. Studio v EUIPO – E.Land Italy (BELFE) (T‑50/23, EU:T:2024:480; ‘the judgment under appeal’), by which the General Court dismissed W.B. Studio Sas di Wivian Bodini & C.’s action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 November 2022 (Case R 869/2021-1), concerning revocation proceedings between W.B. Studio di Wivian Bodini & C. and E.Land Italy Srl.
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        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.
Arguments of the appellant
6        In support of its request that the appeal be allowed to proceed, the appellant submits that the ground of its appeal, alleging infringement of Article 58(1)(a) 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 an issues that are significant with respect to the unity, consistency or development of EU law.
7        In the first place, the appellant disputes the assessment of the evidence carried out by the General Court in paragraphs 27, 32, 34, 55, 57, 61 and 63 to 65 of the judgment under appeal. The appellant claims, in particular, that, by finding, on the basis of dated invoices and undated photographs, that genuine use of the mark concerned had been established, the General Court relied on the estimation of a probability or on a mere supposition which is not based on solid and objective evidence. According to the appellant, the General Court has thus failed to have regard to the principle that the existence of genuine use of a mark may not be assessed on the basis of mere probabilities or presumptions, as follows, in particular, from the order of 27 January 2004, La Mer Technology (C‑259/02, EU:C:2004:50), and from the judgment of 4 October 2017, Intesa Sanpaolo v EUIPO – Intesia Group Holding (INTESA) (T‑143/16, EU:T:2017:687).
8        In addition, therefore, according to the appellant, the General Court has also failed to have regard to the principle prohibiting, in order to prove genuine use of a mark, the combining of invoices which do not establish that genuine use with undated photographs, a principle which follows, in particular, from the judgment of 17 January 2013, Reber v OHIM – Wedl & Hofmann (Walzer Traum) (T‑355/09, EU:T:2013:22).
9        In the second place, as regards the place of use of the mark, the appellant criticises the General Court for failing, in paragraphs 35, 39, 43, 44 and 47 of the judgment under appeal, to ascertain whether the evidence of the place where the mark concerned was affixed in Italy for export purposes had been adduced. According to the appellant, the General Court erred in taking the view that that mark had been affixed in the same country as that where the goods at issue have been manufactured, in the present case in Italy, whereas that mark appeared only on labels which could be intended to be affixed in a country of destination located outside the European Union. Moreover, the General Court incorrectly held that it was not necessary to prove that the goods bearing the same mark had in fact been sold to end consumers in Italy, taking the view that marketing between undertakings of the same group or between business partners was sufficient. Accordingly, the General Court incorrectly found that use of the mark concerned solely for export purposes could constitute genuine use, and, accordingly, that the mere marketing between undertakings of the same group or between business partners was sufficient to establish genuine use. Such a finding would be contrary to the requirements arising from the judgments of 11 March 2003, Ansul (C‑40/01, EU:C:2003:145), and of 26 September 2013, Centrotherm Systemtechnik v centrotherm Clean Solutions (C‑609/11 P, EU:C:2013:592), that, in order for genuine use of a mark to be established, that use should be intended to maintain or create a share in the market and public, respectively.
10      In the third place, the appellant criticises the fact that the General Court failed to take into account, in paragraphs 17, 63, 65, 68, 71 and 74 of the judgment under appeal, the quality of the goods at issue and the type of reference market as essential elements for assessing whether the sales quantities of the goods bearing the mark concerned constituted genuine use. Consequently, according to the appellant, the General Court failed to have regard to the principle arising from the judgment of 11 March 2003, Ansul (C‑40/01, EU:C:2003:145), that the existence of genuine use of a mark must be examined on a case-by-case basis taking into account, in particular, the characteristics of the market concerned and the nature of the goods or services at issue, in order to determine whether the goods bearing that mark are sold in sufficient quantity.
11      In the fourth and last place, the appellant complains that the General Court did not examine, in paragraph 30 of the judgment under appeal, whether the proven sales of the goods bearing that mark were capable of maintaining or creating a share in the market, in accordance with the principle that only use intended to maintain or create a share in the market may be regarded as genuine, as established in the judgment of 11 March 2003, Ansul (C‑40/01, EU:C:2003:145).
12      The appellant observes that it is important to set aside the judgment under appeal in order to prevent that judgment from undermining the unity and consistency of EU law, thereby running counter to the principles established by the case-law of the Court of Justice and the General Court as regards genuine use of a mark. In that regard, it notes the importance of establishing uniform rules for assessing the level of genuine use of marks and claims that the existence of heterogeneous case-law of the General Court concerning the criteria on which that assessment must be based compromises the principle of legal certainty.
Findings of the Court
13      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).
14      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 11 July 2023, EUIPO v Neoperl, C‑93/23 P, EU:C:2023:601, paragraph 19).
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. 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).
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 (orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 16, and of 28 May 2024, Cruelty Free Europe v ECHA, C‑79/24 P, EU:C:2024:430, paragraph 19).
17      In the present case, as regards, in the first place, the arguments set out in paragraphs 7 and 8 of the present order, concerning the assessment of the evidence by the General Court, it must be held that the appellant seeks, in fact, to call into question the factual assessments made by the General Court in relation to the evidence presented before it. Such arguments, however, cannot demonstrate that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law (order of 17 January 2022, AM.VI. and Quinam v EUIPO, C‑599/21 P, EU:C:2022:32, paragraph 18 and the case-law cited).
18      In the second place, as regards the appellant’s arguments set out in paragraphs 9 to 12 of the present order, alleging that the General Court disregarded the case-law of the Court of Justice and its own case-law, it must be noted that such arguments are not, in themselves, 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 15 of the present order (order of 11 May 2023, Heinze v L’Oréal and EUIPO, C‑15/23 P, EU:C:2023:407, paragraph 19 and the case-law cited).
19      In that regard, it must be stated that the appellant does not identify sufficiently clearly and precisely the paragraphs of the decisions of the Court of Justice and the General Court relied on in respect of the relevant case-law which were allegedly disregarded. It also does not provide sufficient information as to the similarity of the situations referred to in that case-law, such as to establish the reality of the alleged contradictions (see, to that effect, order of 23 November 2021, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO, C‑345/21 P, EU:C:2021:951, paragraph 17 and the case-law cited). The appellant’s mere claim that the case-law referred to is relevant in so far as it relates to ‘almost identical’ situations to that at issue in the present case is insufficiently precise.
20      In addition, the appellant confines itself to submitting arguments of a general nature, maintaining the importance of standardising the case-law of the General Court and stating that the existence of heterogeneous case-law infringes the principle of legal certainty, without setting out specifically the concrete reasons why the alleged contradictions, assuming that they are established, raise 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 (order of 8 April 2024, Gürok Turizm ve Madencilik v EUIPO, C‑670/23 P, EU:C:2024:280, paragraph 18).
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 the foregoing considerations, the appeal should not be allowed to proceed.
Costs
23      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.
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.      W.B. Studio Sas di Wivian Bodini & C. shall bear its own costs.
Luxembourg, 11 February 2025.
A. Calot Escobar
T. von Danwitz
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.