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

23 March 2022 ( )

(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‑730/21 P,

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

Collibra, established in Brussels (Belgium), represented by A. Renck and A. Bothe, Rechtsanwälte, and by I. Junkar, abogada,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Hans Dietrich, residing in Starnberg (Germany),

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of L. Bay Larsen, Vice-President of the Court, N. Jääskinen and N. Piçarra (Rapporteur), Judges,

Registrar: A. Calot Escobar,

having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, T. Ćapeta,

makes the following

Order

1 By its appeal, Collibra asks the Court of Justice to set aside the judgment of the General Court of the European Union of 22 September 2021, Collibra v EUIPO – Dietrich (COLLIBRA and collibra) (T‑128/20 and T‑129/20, EU:T:2021:603) (‘the judgment under appeal’), by which the General Court dismissed its action for annulment of two decisions of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 December 2019 (Cases R 737/2019-1 and R 738/2019-1), relating to two sets of opposition proceedings between Mr Hans Dietrich and Collibra.

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 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’s decision on the request that the appeal be allowed to proceed is to be taken as soon as possible and is to take the form of a reasoned order.

Arguments of the appellant

6 In support of its request that the appeal be allowed to proceed, the appellant submits that both of the grounds of its appeal raise issues that are significant with respect to the unity, consistency or development of EU law.

7 By its first argument linked to its first ground of appeal, the appellant claims that the General Court, in paragraphs 82 to 101 of the judgment under appeal, infringed 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) (replaced by 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)), inasmuch as it relied on a misconstruction of the concept of ‘intended purpose’ as defined in paragraph 23 of the judgment of 29 September 1998, Canon (C‑39/97, EU:C:1998:442). The appellant thus submits that the General Court, for the purpose of assessing the similarity of the goods concerned – in this instance, software – did not take into account the end use of the two types of software concerned, namely the reason why they are purchased and used by consumers, but their incidental or abstract functions relating to the organisation, management and processing of data.

8 It also highlights the fact that the Court of Justice has already distinguished between the dominant or primary purpose of a product, on the one hand, and its incidental or occasional use, on the other, in its order of 14 April 2016, KS Sports v EUIPO (C‑480/15 P, not published, EU:C:2016:266), and observes that the definition of ‘intended purpose’ adopted by the General Court is contrary to that given by Advocate General Tanchev in point 77 of his Opinion in Sky and Others (C‑371/18, EU:C:2019:864), from which it follows that the characteristic of software which must be taken into account for the purpose of assessing the similarity of products of that type is its function, namely the actual use of the software, and not its nature.

9 A broad and abstract definition of the intended purpose of the goods concerned, as adopted by the General Court in the judgment under appeal, namely that all software has a similar purpose since all software provides the same functionalities of data processing, management and organisation, would lead, in the appellant’s view, to the grant of unjustified and overly wide monopolies to proprietors of trade marks designating software, would distort competition, and would hamper trade within the European Union.

10 In the appellant’s view, the General Court, by incorrectly assessing the degree of similarity of the goods and services, which is a decisive factor in the global assessment of the likelihood of confusion in opposition proceedings, vitiated the judgment under appeal by an error of law justifying the setting aside of that judgment.

11 By its second argument linked to its second ground of appeal, the appellant submits that the General Court, by regarding as inadmissible, in paragraphs 107, 111 and 113 of the judgment under appeal, its arguments relating to the dissimilarity of the goods at issue on the ground that those arguments had been raised for the first time before it, infringed Article 188 of its Rules of Procedure, read in conjunction with Article 95(1) 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). Contrary to what the General Court held in the judgment under appeal, it follows from the judgment of 18 June 2020, Primart v EUIPO (C‑702/18 P, EU:C:2020:489, paragraphs 41 to 44), that Article 188 of those rules must be interpreted as meaning that account can be taken of new arguments by applicants which seek to call into question the Board of Appeal’s findings, even if those arguments are submitted for the first time before the General Court.

12 The appellant submits that that error of law also contributes to the development of diverging case-law within the General Court as regards the submission and admissibility of new arguments in accordance with Article 188 of the Rules of Procedure of the General Court and thus undermines the consistency and unity of EU law. After mentioning that, according to Advocate General Bobek, that matter is of crucial importance for the EU legal order (Opinion in the case giving rise to the judgment of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2019:1030, point 73), it cites a number of decisions of the General Court in which that court held that arguments submitted for the first time before it were admissible, as well as judgments of the General Court in which such arguments were rejected as inadmissible, and concludes that it is necessary for the Court of Justice to provide clarification on that matter.

Findings of the Court

13 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 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).

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 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 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 21 and the case-law cited).

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 satisfies 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, to that effect, 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).

16 In accordance with the burden of proof which lies with an appellant requesting that an appeal be allowed to proceed, that appellant must demonstrate that, independently of the issues of law relied on, the appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law that go beyond the judgment or order under appeal. In order to demonstrate that this 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, to that effect, order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraphs 27 and 28).

17 In this instance, as regards the line of argument summarised in paragraphs 7 to 10 of this order, it is sufficient to note that the appellant asserts that a decision of the Court of Justice is necessary in order to clarify the meaning to be given to the concept of ‘intended purpose’ referred to in Article 8(1)(b) of Regulation No 207/2009, without however setting out the specific reasons why the alleged infringement of that provision, even assuming it were established, raises an issue that is significant with respect to the unity, consistency or development of EU law that would justify the appeal being allowed to proceed.

18 As regards the line of argument set out in paragraphs 11 and 12 of this order, it must be stated, first of all, that the appellant does not provide any information regarding the similarity of the situations referred to in the judgment under appeal, on the one hand, and in the decisions of the Court of Justice or of the General Court alleged to have been infringed, on the other, capable of establishing the existence of the contradiction relied on.

19 Next, as regards the possible existence of a divergence in case-law within the General Court, the appellant merely cites, without providing any further explanation, a number of decisions in which the General Court held that arguments submitted for the first time before it were admissible, as well as judgments of the General Court in which such arguments were held to be inadmissible, without providing any indication of the concrete reasons why such a divergence in case-law, even assuming it were established, raises an issue that is significant with respect to the unity, consistency or development of EU law that would justify the appeal being allowed to proceed.

20 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.

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

Costs

22 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.

23 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. Collibra shall bear its own costs.

Luxembourg, 23 March 2022.

A. Calot Escobar L. Bay Larsen