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

24 June 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 a significant issue with respect to the unity, consistency or development of EU law – Appeal not allowed to proceed)

In Case C‑219/21 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 1 April 2021,

Olimp Laboratories sp. z o.o., established in Dębica (Poland), represented by M. Kondrat, adwokat,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

OmniVision GmbH, established in Puchheim (Germany), represented by B. Sorg, M. Ringer and D. Wiedemann, Rechtsanwälte,

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of R. Silva de Lapuerta, Vice-President of the Court, L. Bay Larsen and C. Toader (Rapporteur), 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, Olimp Laboratories sp. z o.o. asks the Court of Justice to set aside the judgment of the General Court of the European Union of 27 January 2021, Olimp Laboratories v EUIPO – OmniVision (Hydrovision) (T‑817/19, not published, ‘the judgment under appeal’, EU:T:2021:41), 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 13 September 2019 (Case R 2371/2018-2) concerning opposition proceedings between OmniVision and Olimp Laboratories.

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 first decides that it should be allowed to do so.

3 In accordance with the third paragraph of Article 58a of the 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, 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 European Union 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 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 claims, setting out three arguments, that the appeal raises issues that are significant with respect to the unity, consistency and development of EU law.

7 By its first argument, which relates to the first ground of its appeal, alleging infringement of Article 8(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), the appellant claims that the General Court erred in law in its assessment of whether there was a likelihood of confusion between the marks at issue.

8 First, the appellant submits, referring to paragraphs 71 to 73 of the judgment under appeal, that the General Court erred in law in finding that there is a similarity between the marks at issue, in particular in so far as it held that coincidence in a non-distinctive element, namely the element ‘vision’, would lead to a finding of likelihood of confusion. Such an interpretation of Article 8(1)(b) of Regulation No 207/2009 goes against the Court’s case-law on the assessment of the likelihood of confusion, in particular the judgments of 12 June 2019, Hansson (C‑705/17, EU:C:2019:481, paragraph 55), and of 18 June 2020, Primart v EUIPO (C‑702/18 P, EU:C:2020:489, paragraph 53), according to which, where the earlier mark and the sign whose registration is sought coincide in an element that is weakly distinctive with regard to the goods at issue, the global assessment of the likelihood of confusion often leads to the finding that there is no likelihood of confusion. The appellant, taking the view that the General Court and the Court of Justice have come to different conclusions, claims that that situation is contrary to the principles of unity, consistency and development of EU law and that the Court should guide the lower courts in that regard.

9 Second, the appellant criticises the General Court for having wrongly held, in paragraph 43 of the judgment under appeal, that there is a likelihood of confusion with regard to the German-speaking part of the relevant public, without taking into account its findings that the two word elements of the mark applied for, ‘hydro’ and ‘vision’, are weakly distinctive and the word element ‘hylo’ of the earlier mark is distinctive. According to the appellant, the relevant public will not confuse the marks on account of their similarity.

10 Third, the appellant claims that the General Court made an error of assessment in holding, in paragraph 69 of the judgment under appeal, that the figurative element of the mark applied for is weakly distinctive, or even non-distinctive, for the goods covered by it, in particular preparations for the eyes which moisten the eye, on account of its purely decorative character. In that regard, the appellant criticises the General Court for having failed to explain the concept of ‘decorative character’ and why having such a character makes the graphic element non-distinctive, and for having failed to refer to other goods covered by the mark. The appellant submits that the case-law relating to the assessment of the visual similarity of marks, each of which must be considered as a whole, should lead the Court to conclude that that figurative element of the mark applied for is capable of constituting an element which is sufficiently distinctive to exclude visual similarity between the signs at issue.

11 By its second argument, which relates to the second ground of its appeal, alleging infringement of Article 76(1) of Regulation No 207/2009, read in conjunction with Article 65 of that regulation, the appellant criticises the General Court for having, in paragraphs 24 to 26 and 59 of the judgment under appeal, rejected the documents which it had submitted relating to the weak distinctive character of the element ‘hylo’ of the earlier mark, on the ground that that argument was put forward for the first time before the Court. In that regard, the appellant refers to the judgment of 18 June 2020, Primart v EUIPO (C‑702/18 P, EU:C:2020:489, paragraphs 43, 51 and 52), in which the Court of Justice held, in essence, first, that since the adjudicating bodies of EUIPO were required to examine the inherent distinctive character of the earlier mark, if necessary of their own motion, that issue formed part of the subject matter of the proceedings before the Board of Appeal of EUIPO and, second, that it could not be ruled out that the General Court would have reached a different conclusion in the case in question if it had regarded the arguments put forward before it as admissible. The appellant submits that, in the judgment under appeal, the General Court erred in law by failing to take account of the evidence produced by the appellant, undermining the principles of unity and consistency of the case-law of the EU Courts.

12 By its third argument, which relates to the third ground of its appeal, alleging infringement of the principle of the protection of legitimate expectations and of the principle of legal certainty, the appellant criticises the General Court for having departed from EUIPO’s decision-making practice, impacting the unity, consistency or development of EU law. In particular, in the light of the numerous marks containing the element ‘vision’ registered by EUIPO, as well as numerous decisions in which EUIPO rejected an opposition on the ground that it was based on marks which coincided only in their descriptive elements, the appellant concludes that, according to EUIPO, there is no likelihood of confusion for such marks. In that regard, it submits that the case-law of the Court of Justice and of the General Court as well as EUIPO’s practice are crucial for trade mark applicants because they enable them to foresee EUIPO’s action and to evaluate their chances of success in an application for registration.

13 At the outset, it should be stated 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 30 September 2020, Giorgio Armani v EUIPO, C‑240/20 P, not published, EU:C:2020:761, paragraph 13 and the case-law cited).

14 Further, as is apparent from the third paragraph of Article 58a of the Statute of the Court of Justice, read together with Article 170a(1) and Article 170b(4) of the Rules of Procedure of the Court of Justice, 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 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 (order of 26 November 2020, Scorify v EUIPO, C‑418/20 P, not published, EU:C:2020:968, paragraph 18 and the case-law cited).

15 Thus, 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 how 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 with respect 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 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 (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 referred to 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, set out in paragraphs 7 to 10 above, according to which the General Court erred in law in its assessment of the likelihood of confusion between the marks at issue, it must be pointed out that such an argument is not, in itself, sufficient to establish that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, since the appellant must comply with all the requirements set out in paragraph 15 above. It must be stated that the appellant has failed to comply with all of those requirements.

18 In particular, as regards the argument set out in paragraph 8 above, alleging, in essence, a failure to have regard to the case-law of the Court of Justice on the assessment of the likelihood of confusion, it must be pointed out that, although the appellant specifies the paragraphs of the judgment under appeal and those of the judgments of the Court of Justice which have allegedly been disregarded, it does not provide clear and precise information enabling the alleged infringement to be established. Indeed, the appellant does not explain to the requisite legal standard how the judgment under appeal is contrary to the case-law arising from the judgment of 12 June 2019, Hansson (C‑705/17, EU:C:2019:481, paragraph 55), from which it follows that, as regards marks which coincide in an element of weak distinctive character or descriptive character, a finding that there is a likelihood of confusion cannot, because of the interdependence of the relevant factors, be ruled out in advance and in any event. Furthermore, nor does the appellant provide any indication of the actual reasons why the alleged contradiction, assuming it to be established, raises an issue that is significant with respect to the unity, consistency or development of EU law.

19 As regards the line of argument summarised in paragraphs 9 and 10 above, it must be stated that the appellant merely sets out the errors allegedly committed by the General Court, without explaining the specific reasons why its appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.

20 In any event, it appears that, by that line of argument, the appellant is in fact seeking to call into question the factual assessment made by the General Court in its examination of the likelihood of confusion between the marks at issue. It should be noted that such an argument cannot raise an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 18 March 2021, Laboratorios Ern v EUIPO, C‑667/20 P, not published, EU:C:2021:223, paragraphs 21 and 22).

21 In the second place, as regards the argument, set out in paragraph 11 above, that the General Court infringed the case-law of the Court of Justice by rejecting the documents produced before it for the first time, it is true that the appellant specifies the paragraphs of the judgment under appeal and those of the judgment in Primart v EUIPO (C‑702/18 P, EU:C:2020:489) which were allegedly disregarded, however, it does not provide sufficient information as to the similarity of the situations referred to in those two judgments such as to establish the reality of the alleged contradiction. First, that judgment related to the inadmissibility of the argument, whereas the judgment under appeal concerns the inadmissibility of documents. Second, the appellant does not clearly explain how the judgment in Primart v EUIPO (C‑702/18 P, EU:C:2020:489), in so far as it concerns the admissibility of the argument relating to the allegedly weak distinctive character of the earlier mark put forward for the first time before the General Court, is disregarded by the fact that, in the judgment under appeal, the General Court rejected certain evidence submitted before it for the first time. Third, the appellant also fails to specify, to the requisite legal standard, how the alleged contradiction raises an issue that is significant with respect to the unity, consistency or development of EU law. Accordingly, it is clear that the appellant has not complied with all of the requirements set out in paragraph 15 above.

22 In the third place, as regards the argument referred to in paragraph 12 above, by which the appellant complains, in essence, that the General Court departed from EUIPO’s decision-making practice, suffice it to state, as the General Court noted in paragraph 123 of the judgment under appeal, that the legality of the decisions of the Boards of Appeal of EUIPO must be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of EUIPO’s adjudicating bodies (see, to that effect, order of 11 February 2021, Klose v EUIPO, C‑600/20 P, not published, EU:C:2021:110, paragraph 21).

23 In those circumstances, it must be concluded that the appellant’s request 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.

24 In the light of all of the foregoing, the request that the appeal be allowed to proceed must be rejected.

Costs

25 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.

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. Olimp Laboratories sp. z o.o. shall bear its own costs.

Luxembourg, 24 June 2021.

A. Calot Escobar R. Silva de Lapuerta