ORDER OF THE COURT (Chamber determining whether appeals may proceed)
1 December 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‑373/21 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 18 June 2021,
Hasbro Inc., established in Pawtucket, Rhode Island (United States), represented by J. Moss, Barrister,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Kreativni Događaji d.o.o., established in Zagreb (Croatia),
intervener at first instance,
THE COURT (Chamber determining whether appeals may proceed),
composed of L. Bay Larsen, Vice-President of the Court, P.G. Xuereb (Rapporteur) and A. Kumin, 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, Hasbro Inc. asks the Court of Justice to set aside the judgment of the General Court of 21 April 2021, HASBRO v EUIPO – Kreativni Događaji (MONOPOLY) (T‑663/19, not published, EU:T:2021:211; ‘the judgment under appeal’), by which the General Court dismissed its action for annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 July 2019 (Case
R 1849/2017‑2), relating to invalidity proceedings between Kreativni Događaji and Hasbro.
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        Pursuant to 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        As set out in Article 170a(1) of the Rules of Procedure of the Court of Justice, 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 those rules, the Court of Justice is to rule as soon as possible on the request that
the appeal be allowed to proceed, in the form of a reasoned order.
6        In support of its request that the appeal be allowed to proceed, the appellant relies on three arguments, by which it submits that its appeal raises issues that are significant with respect to the unity, consistency or development of EU law, which, in its view, justify the appeal being allowed to proceed.
7        By its first argument, the appellant claims that the issue in dispute is whether the re-filing of an application for registration of an EU trade mark constitutes bad faith. Such an issue, it is argued, which has not previously been examined in the case-law of the Court of Justice, is highly significant for the development of EU trade mark law and should therefore be addressed by the Court.
Furthermore, that significance also results from the unusual treatment given to the present case before the Second Board of Appeal of EUIPO and before the General Court.
8        By its second argument, the appellant submits that the General Court departed from principles established by the case-law of the Court of Justice when it applied 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).
9        Thus,
according to the appellant, in the first place, the General Court was wrong to find that any re-filing of the mark at issue constitutes bad faith. First, by holding, in paragraph 82 of the judgment under appeal, that bad faith was established even where there was an intention to use that mark, the General Court infringed
paragraph 81 of the judgment of 29 January 2020, Sky and Others (C‑371/18, EU:C:2020:45), from which it is apparent that only a lack of intention to use the mark constitutes bad faith. Secondly, the judgment under appeal contradicts paragraphs 37 to 39 of the judgment of 11 June 2009, Chocoladefabriken Lindt &
Sprüngli (C‑529/07, EU:C:2009:361), in that the General Court failed to take into account all relevant factors in analysing whether there was bad faith and took into consideration matters subsequent to the relevant filing date.
10      In the second place, the appellant claims that in paragraph 44 of the judgment under appeal the General Court reversed the burden of proof for bad faith. However, according to the appellant, such a reversal of the burden of proof is, first, contrary to 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), according to which it is for the applicant for a declaration of invalidity who intends to rely on that ground to prove the circumstances which make it possible to conclude that the proprietor of an EU trade mark was acting in bad faith when it filed the application for registration of that mark, and that good faith is presumed until proven otherwise. Secondly, that reversal is contrary to Part D, Section 2, point 3.3.3 of EUIPO’s Guidelines for Examination of European Union Trade Marks, under which the burden of proof lies initially with the applicant for a declaration of invalidity.
11      In the third place, the appellant submits that the General Court, in finding, in paragraphs 79 to 81 of the judgment under appeal, that obtaining an advantage or causing harm was not relevant for the purposes of assessing whether there was bad faith, incorrectly applied the criteria laid down by the Court of Justice in its judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret v EUIPO (C‑104/18 P, EU:C:2019:724), in which it held, conversely, that bad faith presupposes some distortion of competition or other adverse effect on the function of indicating origin, which signifies the existence of harm.
12      By its third and final argument, the appellant submits that the judgment under appeal, in so far as it amounts to a retroactive amendment of the rules relating to the concept of bad faith, will significantly affect numerous other EU trade mark proprietors.
13      As a preliminary point, it should be borne in mind 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).
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 (see, inter alia, 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).
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 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 (see, to that effect, order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 15 and the case-law cited).
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 (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 16 and the case-law cited).
17      In the present case, as regards, in the first place, the argument referred to in paragraph 7 above that there is no case-law of the Court of Justice on the issue whether the re-filing of an application for registration of an EU trade mark constitutes bad faith, it should be borne in mind that, even if it were established, the fact that an issue of law has not been examined by the Court does not thereby mean that that issue is necessarily significant with respect to the unity, consistency or development of EU law, and the appellant remains bound to demonstrate that significance by providing detailed information not only on the novelty of that issue, but also on the reasons why that issue is significant with respect to such unity, consistency or development (see, to that effect, orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 19 and the case-law cited, and of 12 May 2021, BSH Hausgeräte v EUIPO, C‑67/21 P, not published, EU:C:2021:391, paragraph 14).
18      However, the appellant does not comply with that requirement and merely makes a general assertion that that issue is fundamental to the development of EU trade mark law, without, however, indicating the specific reasons why an answer from the Court is significant for such development.
19      In the second place, as regards the arguments referred to in paragraphs 8 to 12 above that the General Court departed from case-law, it should be noted that, in accordance with the burden of proof which lies with the appellant requesting that the appeal be allowed to proceed, such arguments are not, in themselves, sufficient to establish 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 15 above (see, to that effect, order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 17 and the case-law cited).
20      In the present case, while the appellant identifies the errors of law allegedly made by the General Court, it does not demonstrate how such errors, even if proved, 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. The appellant merely asserts that the General Court amended the rules relating to bad faith and that the judgment under appeal, in particular its retroactive effect, will significantly affect numerous other EU trade mark proprietors.
Thus, it merely pleads the existence of an issue of principle without, however, providing concrete arguments specific to the present case in order to demonstrate how the General Court’s allegedly incorrect assessment raises an issue that is significant with respect to the unity, consistency or development of EU law.
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 all of the foregoing, the appeal should not be allowed to proceed.
Costs
23      Under Article 137 of the Rules of Procedure, applicable to the procedure 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.      Hasbro Inc. shall bear its own costs.
Luxembourg, 1 December 2021.
A. Calot Escobar
L. Bay Larsen
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.