ORDER OF THE COURT (Chamber determining whether appeals may proceed)
8 March 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‑605/22 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 16 September 2022,
Hijos de Moisés Rodríguez González SA, established in Las Palmas de Gran Canaria (Spain), represented by J. García Domínguez, abogado,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Ornua Co-operative Ltd, established in Dublin (Ireland),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed),
composed of L. Bay Larsen, Vice-President of the Court, A. Kumin (Rapporteur) and I. Ziemele, Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, J. Kokott,
makes the following
Order
1        By its appeal, Hijos de Moisés Rodríguez González SA asks the Court of Justice to set aside the judgment of the General Court of the European Union of 29 June 2022, Hijos de Moisés Rodríguez González v EUIPO – Ireland and Ornua (La Irlandesa 1943) (T‑306/20, EU:T:2022:404; ‘the judgment under appeal’) by which the General Court dismissed the appellant’s action for annulment of the decision of the Grand Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 March 2020 (Case R 1499/2016-G), concerning invalidity proceedings between, on the one hand, Ireland and Ornua Co-operative, formerly Irish Dairy Board Co-operative Ltd, and, on the other hand, Hijos de Moisés Rodríguez González.
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 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 claims that the single ground of its appeal raises issues that are significant with respect to the unity and consistency of EU law.
7        In that regard, in the first place, the appellant reiterates the content of its single ground of appeal alleging, as to the first three parts, infringement by the General Court of Article 52(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) and, as to the fourth part, breach of the obligation to state reasons.
8        First, the appellant claims that the General Court based paragraph 98 of the judgment under appeal on an incorrect analysis by wrongly inferring from paragraphs 91, 92, 101 and 105 of that judgment that the appellant acted in bad faith with regard to the time and circumstances of the application for registration of the contested mark, whereas the appellant’s conduct was in fact appropriate and lawful. More specifically, in paragraphs 91, 98 and 101 of that judgment, the General Court classified as malicious or dishonest acts which, according to the case-law, are considered normal in the commercial and business fields. As is apparent, inter alia, from the judgments of 7 June 2011, Psytech International v OHIM – Institute for Personality & Ability Testing (16PF) (T‑507/08, not published, EU:T:2011:253, paragraph 88), and of 14 February 2012, Peeters Landbouwmachines v OHIM – Fors MW (BIGAB) (T‑33/11, EU:T:2012:77, paragraph 23), the extension of the protection of a national trade mark through its registration as an EU trade mark forms part of an undertaking’s normal commercial strategy and the extension of the list of goods and services cannot be regarded as conduct constituting bad faith.
9        Second, the appellant claims that the General Court erred in law, in paragraphs 98 and 99 of the judgment under appeal, in that it failed to apply the principle that an applicant is presumed to act in good faith, as interpreted by its own case-law derived from the judgment of 8 March 2017, Biernacka-Hoba v EUIPO – Formata Bogusław Hoba (Formata) (T‑23/16, not published, EU:T:2017:149, paragraph 45 and the case-law cited), in a situation in which the contested mark has not been used in accordance with the previous use of an equivalent national trade mark.
10      Third, the General Court concluded, in paragraph 98 of the judgment under appeal, that the appellant acted in bad faith, distorting the appellant’s true intention at the time when it filed its application for registration of the contested mark. The General Court’s analysis is contrary to the case-law established in the judgment of the Court of Justice of 11 June 2009, Chocoladefabriken Lindt & Sprüngli (C‑529/07, EU:C:2009:361, paragraphs 41 and 42), according to which the appellant’s intention should have been determined by reference not only to the use of that mark, but also to the objective circumstances of the case. Thus, the General Court misapplied Article 52(1)(b) of Regulation No 207/2009 by focusing on the use of that mark and of an earlier national mark, rather than relying on an analysis based on the appellant’s intention when it filed that application.
11      Fourth, the appellant complains that the General Court failed to state sufficient reasons for paragraph 99 of the judgment under appeal, in breach of the obligation to state reasons laid down in Article 75 of Regulation No 207/2009, with regard to the question of the extent to which, in assessing bad faith, account must be taken of information specifically indicating the true geographical origin on the packaging and labels of the goods on which the contested mark was affixed. The General Court did not carry out any analysis of the evidence provided in that regard by the appellant.
12      In the second place, the appellant states that the issues raised by the appeal that are significant with respect to the unity and consistency of EU law focus on the analysis of the factual circumstances relevant to a proper examination of whether there was bad faith.
13      As regards the first three parts of the single ground of appeal, the appellant is of the view that the question of the extent to which actual use of the contested mark after its registration can influence the examination of bad faith is an issue that is significant with respect to the unity and consistency of EU law in so far as the concept of ‘bad faith’ is an autonomous concept of EU law which must be interpreted uniformly in the European Union. The appellant claims that having regard, first, to the principle of the unitary character of the EU trade mark and, second, to the different interpretations of that concept by the General Court, it is important for the Court of Justice to resolve that question. In that regard, the appellant submits that there are no grounds for concluding that an applicant acted in bad faith because the subsequent use of the contested mark would be inconsistent with his or her earlier use of another identical earlier mark, as, otherwise, the date of the application for registration of the contested mark would lose relevance and the legal sense of the absolute grounds for invalidity would be lost.
14      As regards the fourth part of the single ground of appeal, the appellant states that, in assessing bad faith, the General Court should have examined whether, in relation to the information on the packaging and labels of the goods on which the contested mark was affixed, actual use of that mark after its registration complied with Regulation (EC) No 1169/2011 of the European Parliament and of the Council of 25 October 2011 on the provision of food information to consumers, amending Regulations (EC) No 1924/2006 and (EC) No 1925/2006 of the European Parliament and of the Council, and repealing Commission Directive 87/250/EEC, Council Directive 90/496/EEC, Commission Directive 1999/10/EC, Directive 2000/13/EC of the European Parliament and of the Council, Commission Directives 2002/67/EC and 2008/5/EC and Commission Regulation (EC) No 608/2004 (OJ 2011 L 304, p. 18). Article 26(2) of Regulation No 1169/2011 lays down the obligation to indicate on products their true origin. If that use is not assessed in the light of that regulation, there is a risk that decisions taken on the basis of that regulation will conflict with those taken on the basis of Regulation No 207/2009, so that this is an issue that is significant with respect to the consistency of EU law.
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 (see 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).
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 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 (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).
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 (see 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).
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 7 December 2022, Compass Tex v EUIPO, C‑550/22 P, not published, EU:C:2022:1044, paragraph 14).
19      In the present case, as regards the arguments summarised in paragraphs 8 to 10, 12 and 13 above, it should be recalled, first, that, in so far as the appellant seeks to call into question the General Court’s assessment of certain facts, such arguments cannot demonstrate that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 22 June 2022, Legero Schuhfabrik v EUIPO, C‑152/22 P, not published, EU:C:2022:500, paragraph 21).
20      Second, in so far as, by that line of argument, the appellant criticises the General Court for failing to have regard to the case-law of the Court of Justice and its own case-law, it must be recalled that such an argument 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 or development of EU law, since that person must comply, to that end, with all the requirements set out in paragraph 17 above. Although the appellant specifies the paragraphs of the judgment under appeal that are contested and those of the rulings of the Court of Justice and the General Court alleged to have been infringed, it does not provide sufficient information regarding the similarity of the situations referred to in those rulings to make it possible to establish the existence of the alleged contradictions (see, by analogy, order of 6 April 2022, Sanford v EUIPO, C‑19/22 P, not published, EU:C:2022:262, paragraphs 18 and 19 and the case-law cited).
21      As regards the line of argument, summarised in paragraphs 11 and 14 above, alleging that the General Court failed to state reasons for paragraph 99 of the judgment under appeal with regard to the effects of the inclusion of the true geographical origin on the packaging and labels of the goods on which the contested mark was affixed, it should be borne in mind that, although it is true, as is apparent from the case-law of the Court of Justice, that a 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 17 above, that that appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law. 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 order of 8 November 2022, Mandelay v EUIPO, C‑405/22 P, not published, EU:C:2022:860, paragraph 19 and the case-law cited).
22      However, the appellant has not demonstrated how the alleged failure to state reasons in the judgment under appeal raises an issue that is significant with respect to the unity, consistency or development of EU law. In so far as the appellant claims, in that regard, that it is necessary to apply Regulation No 207/2009 in a manner consistent with Regulation No 1169/2011 in order to prevent conflicting decisions being taken with regard to the information on packaging and labels, it is sufficient to note that that argument is not related to its argument that the General Court failed to state reasons.
23      Moreover, as regards that alleged failure to state reasons, the appellant does not state specifically to what extent the error relied on, even if it were established, had an effect on the outcome of the judgment under appeal (order of 13 December 2021, Abitron Germany v EUIPO, C‑589/21 P, not published, EU:C:2021:1012, paragraph 18).
24      In the light of all 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.      Hijos de Moisés Rodríguez González SA shall bear its own costs.
Luxembourg, 8 March 2023.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.