ORDER OF THE COURT (Chamber determining whether appeals may proceed)

28 May 2020 ( )

(Appeal — EU trade mark — Whether appeals may be allowed to proceed — Article 170b of the Rules of Procedure of the Court — Request failing to demonstrate a significant issue with respect to the unity, consistency or development of EU law — Appeal not allowed to proceed)

In Case C‑74/20 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 12 February 2020,

Hästens Sängar AB, established in Köping (Sweden), represented by M. Johansson and R. Wessman, advokater,

appellant,

the other party to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of R. Silva de Lapuerta, Vice-President of the Court, I. Jarukaitis and C. Lycourgos (Rapporteur), Judges,

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, Hästens Sängar AB asks the Court to set aside the judgment of the General Court of the European Union of 3 December 2019, Hästens Sängar v EUIPO (Representation of a chequered gingham pattern) (T‑658/18, not published, EU:T:2019:830; ‘the judgment under appeal’), whereby the General Court dismissed the appellant’s action for annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 8 August 2018 (Case R 442/2018-2), concerning the international registration designating the European Union of a figurative mark representing a chequered gingham pattern.

Whether the appeal should be allowed to proceed

2 Pursuant to 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 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, 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 of the Court, 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(3) of those rules, the Court’s decision on the request that the appeal be allowed to proceed is to take 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 that the appeal raises issues that are significant with respect to the consistency and development of EU law.

7 By the first argument of its request that the appeal be allowed to proceed, the appellant submits that the issue raised in its first ground of appeal is significant with respect to the consistency of EU law. By disregarding the case-law which it identifies in that first ground, the General Court found that a mark could be sought in respect of a protection that covers something more than that which is set out in its representation, which makes it impossible for proprietors of a large number of figurative marks to know what is required in terms of representation in the application for registration. Furthermore, the statement in paragraph 36 of the judgment under appeal undermines the very system of different types of marks and different registration procedures.

8 In that regard, the appellant, by its first ground of appeal, complains, in essence, that the General Court, held, in paragraph 36 of the judgment under appeal, to which paragraphs 49, 69 and 70 of that judgment also refer, that the mark was sought in respect of a scope of protection that covers all possible uses as a figurative mark, including as a pattern applied to the surface of the goods in question.

9 The appellant claims that such a finding is contrary to the rule that ‘what you see is what you get’, which follows from the case-law of the General Court, in particular from paragraphs 69 and 71 of the judgment of 30 November 2017, Red Bull v EUIPO — Optimum Mark (Combination of the colours blue and silver) (T‑101/15 and T‑102/15, EU:T:2017:852). Nor is it in accordance with the case-law of the Court of Justice, in particular in paragraph 57 of the judgment of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry (C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129), and in paragraph 37 of the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361). It is clear from those paragraphs that the function of the requirement of graphic representation is in particular to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor. In that regard, the appellant submits that where, as in the present case, the representation of the mark is precisely circumscribed and limited, corresponding exactly to the mark, the subject matter of the registration and the protection sought, does not contain a single element of repetition and is filed as a figurative mark, that mark may not be ‘sought in respect of a scope of protection that covers all possible uses as a figurative mark, including as a pattern applied to the surface of the goods in question’, since such a scope of protection is broader than that afforded by the representation of the mark.

10 According to the appellant, that finding is also contrary to the case-law of the General Court according to which ‘ordinary’ figurative marks, unlike ‘pattern marks’, exhibit a clearly defined contour (judgment of 28 January 2015, Enercon v OHIM (Gradation of five shades of the colour green), T‑655/13, not published, EU:T:2015:49, paragraph 16).

11 By the second argument of its request that the appeal be allowed to proceed, the appellant submits that the second and third grounds of the appeal raise issues of law that are significant, in particular, with respect to the consistency of EU law. By infringing the ‘what you see is what you get’ rule, the General Court, in addition to the representation of the mark, required the application to be accompanied by further elements or descriptions in order to restrict the scope of protection of a figurative mark to its graphic representation. Thus, it is impossible for proprietors of figurative marks to know what is required in order to file an application for registration with EUIPO. Furthermore, in the light of the fact that descriptions accompanying representations of figurative marks are no longer permissible under Article 3 of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37), and the EUIPO Guidelines, the judgment under appeal makes it impossible for the proprietors of figurative marks comparable to that of the appellant to register their marks and thus to protect their intellectual property rights, contrary to Article 17(2) of the Charter of Fundamental Rights of the European Union (‘the Charter’).

12 More specifically, by the second ground of its appeal, the appellant alleges that the General Court misapplied the ‘what you see is what you get’ rule by holding, in paragraph 36 of the judgment under appeal, that the appellant could have filed the mark applied for with a frame. In so doing, the General Court required that the representation of the mark be different from the subject matter of the registration.

13 By the third ground of its appeal, the appellant claims that by holding that it should have filed that mark accompanied by a description, the General Court misapplied the ‘what you see is what you get’ rule, of the case-law of the Court of Justice, in particular paragraph 57 of the judgment of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry (C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129), and its own case-law, in particular paragraphs 27 and 30 of the judgment of 19 June 2019, adidas v EUIPO — Shoe Branding Europe (Representation of three parallel stripes) (T‑307/17, EU:T:2019:427). Furthermore, by infringing Article 3 of Regulation 2018/626 and the EUIPO Guidelines, the General Court prevents the appellant from registering its figurative mark, which also entails an infringement of Article 17(2) of the Charter.

14 By the third argument of its request that the appeal be allowed to proceed, the appellant submits that those issues have not previously been examined by the Court and that they go beyond the judgment under appeal.

15 As a preliminary point, it should be observed 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 16 September 2019, Kiku v CPVO, C‑444/19 P, not published, EU:C:2019:746, paragraph 11, and of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 13).

16 Furthermore, as is clear from the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union, read in conjunction with Article 170b(1) and Article 170c(4) of the Court’s 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 (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 14 and the case-law cited).

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 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).

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 (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 16 and the case-law cited).

19 In the present case, by its arguments, the appellant claims that the significance of the issues raised in the context of its appeal results, first, from an alleged contradiction between, on the one hand, paragraph 36 of the judgment under appeal and, on the other, in particular, paragraph 57 of the judgment of 6 March 2014, Pi-Design and Others v Yoshida Metal Industry (C‑337/12 P to C‑340/12 P, not published, EU:C:2014:129) and paragraph 37 of the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361). It results, second, from an alleged contradiction between, on the one hand, paragraph 36 of the judgment under appeal, and, on the other, in particular, paragraphs 69 and 71 of the judgment of 30 November 2017, Red Bull v EUIPO — Optimum Mark (Combination of the colours blue and silver) (T‑101/15 and T‑102/15, EU:T:2017:852) and paragraphs 27 and 30 of the judgment of 19 June 2019, adidas v EUIPO — Shoe Branding Europe (Representation of three parallel stripes) (T‑307/17, EU:T:2019:427). The appellant further claims that, in so doing, the General Court infringed the ‘what you see is what you get’ rule. Furthermore, the General Court also infringed Article 3 of Regulation 2018/626 and Article 17(2) of the Charter. It results, third, from the novelty of the issues raised by its appeal.

20 In that regard, it must 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 17 of the present order (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 17).

21 Although the appellant identifies the paragraphs of the judgment under appeal and those of the decisions of the Court of Justice and the General Court which allegedly have been misapplied, it does not provide any information on the similarity of the situations referred to in the judgments cited in paragraph 19 of this order, capable of establishing the existence of the contradiction relied on (see, to that effect, order of 13 February 2020, Conféderation nationale du Crédit Mutuel v EUIPO, C‑867/19 P, not published, EU:C:2020:103, paragraph 18), nor, consequently, the alleged resulting infringement of Article 17(2) of the Charter.

22 It must therefore be found that the appellant, in formulating its first two arguments, does not comply with all the requirements set out in paragraph 17 of this order.

23 Furthermore, as regards the appellant’s first argument, the line of argument concerning the infringement of the ‘what you see is what you get’ rule is based on the premiss that, first, when applying for registration, the appellant had filed a representation of the mark in question which was clear, precise and complete, corresponding to the subject matter of the registration and the protection applied for. Second, in paragraph 36 of the judgment under appeal, the General Court erred in its assessment of those elements in concluding that the mark in question was sought in respect of a scope of protection that covers all possible uses of it as a figurative mark.

24 It should be noted that, in so doing, the appellant is seeking in actual fact to call into question the factual assessment made by the General Court when identifying the essential characteristics of the sign concerned. Consequently, that argument cannot raise an issue that is significant with respect to the consistency or development of EU law (see, to that effect, order of 10 October 2019, KID-Systeme v EUIPO, C‑577/19 P, not published, EU:C:2019:854, paragraph 20).

25 It follows that, for that reason, too, the appellant’s line of argument is not capable of establishing that the first argument raises an issue which is significant with respect to the consistency of EU law.

26 With regard to the second argument of the request that the appeal be allowed to proceed, it should be noted, first, that, in so far as it alleges infringement of the ‘what you see is what you get’ rule, that argument is not capable of demonstrating that the appeal raises an issue which is significant with respect to the consistency of EU law, as is apparent from paragraphs 21 to 25 of this order.

27 Second, as regards the line of argument concerning the infringement of Article 3 of Regulation 2018/626, which entails an infringement of Article 17(2) of the Charter, it suffices to note that, at the date of filing the application for registration, that is to say on 16 December 2016, which is the relevant time for determining which are the provisions governing the present dispute (see, to that effect, judgment of 12 December 2019, EUIPO v Wajos, C‑783/18 P, not published, EU:C:2019:1073, paragraph 2), that regulation was not yet in force. Therefore, that line of argument cannot demonstrate that the second argument raises an issue that is significant with respect to the consistency of EU law.

28 In the light of those considerations, it should be noted that the second argument is not capable of raising an issue that is significant with respect to the consistency of EU law.

29 As regards, finally, the appellant’s third argument, it must be noted that the fact that an issue of law has not been examined by the Court does not thereby mean that that issue is necessarily one of significance with respect to the 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 in relation to the development of EU law (order of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 19). In the present case, the appellant merely claims, in a generic manner, that its appeal raises new issues of law, without, however, providing any other information. Consequently, the third argument is not capable of establishing that the appeal raises issues that are significant with respect to the development of EU law.

30 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.

31 In the light of all the foregoing, the appeal should not be allowed to proceed.

Costs

32 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.

33 Since the present order was adopted before the appeal was served on the other party to the proceedings and, therefore, before it 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. Hästens Sängar AB shall bear its own costs.

Luxembourg, 28 May 2020.

A. Calot Escobar R. Silva de Lapuerta