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

6 October 2020 ( )

(Appeal – Community design – Whether appeals may 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 – Appeal not allowed to proceed)

In Case C‑284/20 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 29 June 2020,

Bergslagernas Järnvaruaktiebolag, established in Saltsjö-Boo (Sweden), represented by S. Kirschstein-Freund and B. Breitinger, Rechtsanwälte,

applicant,

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, Bergslagernas Järnvaruaktiebolag asks the Court of Justice to set aside the judgment of the General Court of the European Union of 29 April 2020, Bergslagernas Järnvaru v EUIPO – Scheppach Fabrikation von Holzbearbeitungsmaschinen (Wood-splitting tool) (T‑73/19, not published, EU:T:2020:157; ‘the judgment under appeal’), whereby the General Court dismissed its action seeking annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 November 2018 (Case R 1455/2018‑3), in relation to invalidity proceedings between Scheppach Fabrikation von Holzbearbeitungsmaschinen and Bergslagernas Järnvaru.

Whether the appeal should 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 the European Union Intellectual Property Office 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 required 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 the Rules of Procedure, 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 puts forward a dual line of argument, by which it submits that its appeal, in which it raises two grounds of appeal, each alleging infringement of Article 6(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), raises issues that are significant with respect to the unity, consistency or development of EU law.

7 By its first line of argument, which relates to the second ground of appeal, alleging infringement of Article 6(1) of that regulation, on account of a misinterpretation of the condition relating to the ‘individual character’ of the registered Community design, the appellant claims that the criterion of the ‘production of an impression of déjà vu’ does not follow an approach consistent with the case-law. There is no judgment of the General Court or of the Court of Justice on the question of the legality, applicability or meaning of that criterion, which reduces the predictability of decisions and leads to a situation of legal uncertainty. In that context, the appellant submits, first, that the application of the criterion of an impression of ‘déjà vu’, in the usual meaning of that notion, could lead to an assessment of the individual character without any comparison of the design with a previously disclosed design. It would be sufficient for the informed user to have seen the registered Community design in the past to prevent recognition of its individual character. Second, even supposing the ordinary meaning of ‘déjà vu’ were not applied, the application of that criterion would still be contrary to Article 6(1) of Regulation No 6/2002 in so far as it promotes, in all cases, an indirect comparison of the designs at issue. The Court’s guidance as to the applicability of the criterion of an ‘impression of déjà vu’ enables answers to be given to key procedural issues, in the majority of cases, to resolve the assessment of the individual character of a design, which is an important step for the necessary development of EU law in the field of designs, by providing more legal certainty.

8 By its second line of argument, which relates to the first ground of appeal, alleging infringement of Article 6(1) of that regulation, on account of an incorrect assessment of the overall impression produced by the prior design, the appellant submits that there are no judgments of the General Court or the Court of Justice on whether and, if so, under what conditions, the operating status of a registered design which has not been disclosed is likely to be taken into account in the assessment of the overall impression, within the meaning of Article 6(1) of Regulation No 6/2002. Thus, if the position of the General Court that a fictive overall impression may constitute the basis for assessing the individual character of a registered Community design were correct, the predictability and review of decisions would be considerably weakened as a result. In consequence, the lack of decision of the Court of Justice in that regard reduces consistency within the European Union and should be avoided on legal grounds and in the public interest in order to strengthen the protection of intellectual property in the European Union.

9 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 (orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 13, and of 3 September 2020, Gamma v EUIPO, C‑199/20, EU:C:2020:662, paragraph 9).

10 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 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, by which 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, established by the appellant, are to be examined by the Court in an appeal (order of 3 September 2020, Gamma v EUIPO, C‑199/20 P, EU:C:2020:662, paragraph 10).

11 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, 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).

12 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 (orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 16, and of 3 September 2020, Gamma v EUIPO, C‑199/20 P, EU:C:2020:662, paragraph 12).

13 In the present case, as regards, in the first place, the argument summarised in paragraph 7 of this order, it should be noted, first, that, in so far as the appellant’s argument relates to the application of the criterion of an impression of ‘déjà vu’ which may mean that the individual character of a registered Community design is assessed without comparing that design with a previously disclosed design, that argument concerns an abstract issue which is in no way relevant to the judgment under appeal. It is clear neither from that judgment, read in the light of the decision of 23 November 2018 of the Board of Appeal of EUIPO, nor from the case-law cited by the appellant, that the General Court considers that the application of that criterion does not entail a comparison with a previously disclosed design. Second, there is nothing to indicate either that, to the General Court, the application of the criterion of an impression of ‘déjà vu’ means an indirect comparison of the designs at issue.

14 Having regard to the foregoing, it must be noted, third, that the appellant merely claims that the case-law of the General Court does not follow a consistent approach as regards the application of the criterion of an ‘impression of déjà vu’ without, however, demonstrating to the requisite standard how such an approach, if established, raises an issue that is significant with respect to the consistency of EU law.

15 Fourth, as regards the argument that there is no case-law, either on the question of the legality, applicability or meaning of the criterion of an ‘impression of déjà vu’ or on the various procedural issues connected with that criterion, it must be recalled that the fact that an issue of law has not been examined by the General Court or by the Court of Justice does not, however, mean that that issue is necessarily one of significance with respect to the development of EU law, the appellant remaining bound to demonstrate that significance by providing detailed information not only on the novelty of that issue, but also on the reasons for that issue’s significance in relation to the development of EU law (see, to that effect, order of 30 September 2019, All Star v EUIPO, C‑461/19 P, not published, EU:C:2019:797, paragraph 16).

16 However, the appellant does not comply with this requirement and merely states in a generic manner, on the one hand, that the lack of a defined position of the Court of Justice reduces the predictability of decisions and leads to a situation of legal uncertainty and, on the other, that a response to those procedural issues is an important step for the necessary development of EU design law by offering more legal certainty, without actually setting out the specific reasons for the importance of such a position or response to the development of EU law.

17 In the second place, with regard to the argument summarised in paragraph 8 of the present order, it must be held that, in essence, the appellant merely pleads the novelty of the question of the conditions under which the operating status of a registered design is likely to be taken into account in assessing the overall impression which it produces and to assert, in a generic manner, that the lack of decision of the Court of Justice in that regard reduces consistency within the European Union. Nevertheless, such an argument is not, in itself, sufficient to establish that the present appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, since the appellant must comply, for that purpose, with all the requirements set out in paragraphs 11 and 15 of this order.

18 In those circumstances, it must be held that, since the request that the appeal be allowed to proceed does not comply with the requirements set out in paragraphs 9 to 12 and 15 of this order, it 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.

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

Costs

20 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.

21 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. Bergslagernas Järnvaruaktiebolag shall bear its own costs.

Luxembourg, 6 October 2020.

A. Calot Escobar R. Silva de Lapuerta