ORDER OF THE COURT (Chamber determining whether appeals may proceed)
30 November 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‑483/21 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 5 August 2021,
Health Product Group sp. z o.o., established in Warsaw (Poland), represented by M. Kondrat, adwokat,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Bioline Pharmaceutical AG, established in Baar (Switzerland), represented by H. Gajek, adwokat, and M. Furmańska, radca prawny,
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed),
composed of L. Bay Larsen, Vice-President, J. Passer (Rapporteur) and N. Wahl, Judges,
Registrar: A. Calot Escobar,
having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, A. Rantos,
makes the following
Order
1        By its appeal, Health Product Group sp. z o.o. seeks to have set aside the judgment of 16 June 2021, Health Product Group v EUIPO – Bioline Pharmaceutical (Enterosgel) (T‑678/19, not published, EU:T:2021:364; ‘the judgment under appeal’), by which the General Court dismissed its action seeking annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 August 2019 (Case
R 482/2018‑4), in relation to invalidity proceedings between Health Product Group and Bioline Pharmaceutical AG.
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 the statute referred to, 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 submits that the appeal raises four issues of law that are significant with respect to the unity, consistency and development of EU law.
7        By its first argument, the appellant criticises the General Court for having infringed Article 59(1)(b) 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), in that it did not recognise that TNK Silma, the predecessor in title of the intervener before the General Court, Bioline Pharmaceutical, was acting in bad faith when it filed the application for the contested mark.
8        More specifically, the appellant claims, in essence, that the General Court erred in declaring, first, that it had not been proved that the Ukrainian company, Kreoma-Pharm, the licensor of the appellant, was the owner of an exclusive earlier right to the contested sign and, second, that the appellant had not sufficiently substantiated the unlawful nature of the transfer of the rights to that sign to TNK Silma.
9        According to the appellant, such a finding would run counter to the settled case-law of the General Court and the Court of Justice, according to which the identity or similarity of the signs is considered as one of the factors to determine the bad faith of the applicant, and would be contrary to the principles of unity, consistency and development of EU law.
10      Moreover, the appellant submits, in essence, that it is apparent from settled case-law and from EUIPO’s settled decision-making practice that knowledge of the use of identical or similar signs is to be considered as one of the key factors when assessing the bad faith of an application for a registration of a trade
mark, even more
so when the parties were in certain business relations. Because of the emergence, at the beginning of the 1990s, of the sign Enterosgel as a trade mark and the name of a medicinal product placed on the market, TNK Silma knew or should have known that an identical or similar sign was being used for identical or similar goods or services. Furthermore, the appellant recalls the settled case-law established in similar cases, according to which the dishonest intention of the proprietor of an EU trade mark should be assessed systematically in the light of the particular
circumstances of the case.
11      By its second argument, alleging infringement of Article 76(d) of the Rules of Procedure of the General Court, read in conjunction with Article 72(2) of Regulation 2017/1001, the appellant submits that the General Court erred in law in failing to recognise that the appellant had put forward a separate plea in law alleging infringement of the principles of the protection of legitimate expectations and legal certainty.
12      In that regard, the appellant submits that those provisions refer only to the need for clarity in the pleas raised. Thus, in essence, the General Court’s assertion is not consistent with its own case-law, under which the pleas of the action are not subject to any other condition than to appear in the application and to be set out clearly. According to the appellant, the fact that that plea was not raised in the same manner as the other pleas put forward in the application should not negate its relevance or render it inadmissible.
13      By its third argument, alleging infringement of Article 85(3) of the Rules of Procedure of the General Court, the appellant complains that the General Court disregarded evidence submitted for the first time before it, even though that evidence, the late submission of which was justified by the circumstances of the case, linked the reputation of the mark Enterosgel in Ukraine to the appellant and proved bad faith on the part of the applicant for the contested mark.
14      In that regard, the appellant submits, in essence, that the filing of one of the items of evidence at issue did not alter the facts, such that it was not an entirely new situation which had not been taken into account and that, had it been considered admissible, the General Court would have delivered a different judgment. By applying the settled case-law on the admissibility of evidence submitted out of time, the General Court ruled out any possibility of applying Article 85(1) to (3) of its Rules of Procedure.
15      By its fourth argument, alleging infringement of the principles of the protection of legitimate expectations and legal certainty, the appellant criticises the General Court for having delivered a judgment allowing the registration of the contested mark, whereas the previous practice of EUIPO does not allow the registration of marks applied for in bad faith.
16      The appellant adds that the General Court, like EUIPO, failed to have regard to the provisions of international law contained in the Paris Convention for the Protection of Industrial Property, signed in Paris on 20 March 1883, last revised in Stockholm on 14 July 1967 and amended on 28 September 1979 (United Nations Treaty Series, vol. 828, No 11851, p. 305), and the Universal Copyright Convention as revised in Paris on 24 July 1971. In addition, the General Court and EUIPO did not carry out an assessment of all the evidence and circumstances of the case and failed to have regard to the burden of proof borne by the parties to the proceedings by not rebutting the presumption of good faith.
17      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 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 13 and the case-law cited).
18      Moreover, 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 grounds 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 (see, in particular, orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 14, and of 6 October 2021, FCA Italy v EUIPO, C‑360/21 P, not published, EU:C:2021:841, paragraph 13 and the case-law cited).
19      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, secondly, 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 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 15 and the case-law cited).
20      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).
21      In the present case, with regard to the arguments summarised in paragraphs 7 to 16 of the present order, which may be examined together, it should be pointed out that, although the appellant identifies errors of law allegedly committed by the General Court, the fact remains that it merely states them without, however, setting out the specific reasons why such errors, assuming them established, raise issues that are significant with respect to the unity, consistency or development of EU law that would justify the appeal being allowed to proceed. Therefore, none of the requirements referred to in paragraph 19 of this order has been met.
22      To the extent that the appellant criticises the General Court for having failed to have regard to the case-law of the General Court and the Court of Justice, it should be recalled that a general allegation that the General Court has failed to have regard to its own case-law or to that of the Court of Justice is not, in itself, sufficient to establish, in accordance with the burden of proof which lies with the appellant requesting that the 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, the appellant having to comply to that end with all the requirements set out in paragraph 19 of the present order (see, by analogy, orders of 4 June 2020, Société des produits Nestlé v EUIPO, C‑97/20 P, not published, EU:C:2020:442, paragraph 21, and of 13 October 2020, Abarca v EUIPO, C‑313/20 P, not published, EU:C:2020:821, paragraph 17 and the case-law cited). It must be observed that, in the present case, the appellant does not explain precisely and clearly the reasons for which the alleged conflict between the assessments of the General Court and the case-law of the General Court and the Court of Justice relied on
raises an issue that is significant with respect to the unity, consistency and development of EU law.
23      In those circumstances, it must be held that the request submitted by the appellant is not such as to determine that the appeal raises issues that are significant with respect to the unity, consistency or development of EU law.
24      In the light of all of the foregoing, 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.      Health Product Group sp. z o.o. shall bear its own costs.
Luxembourg, 30 November 2021.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining
whether appeals may proceed
*      Language of the case: English.