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

15 June 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, coherence or development of EU law – Refusal to allow the appeal to proceed)

In Case C‑120/22 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 18 February 2022,

Republic of Cyprus, represented by V. Marsland, Solicitor, and C. Milbradt, Rechtsanwältin,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Fontana Food AB, established in Tyresö (Sweden),

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of L. Bay Larsen, Vice-President of the Court, I. Jarukaitis and M. Ilešič (Rapporteur), Judges,

Registrar: A. Calot Escobar,

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

makes the following

Order

1 By its appeal, the Republic of Cyprus, as the proprietor of two earlier Cypriot certification word marks XAΛΛOYMI HALLOUMI, seeks to have set aside the judgment of the General Court of the European Union of 8 December 2021, Cyprus v EUIPO – Fontana Food (GRILLOUMI BURGER) (T‑593/19, not published, EU:T:2021:865; ‘the judgment under appeal’), by way of which the General Court dismissed its action seeking annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 June 2019 (Case R 1297/2018-4) upholding the dismissal of the opposition which the Republic of Cyprus had lodged against the application made by Fontana Food AB for registration of the word sign GRILLOUMI BURGER as an EU trade mark.

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 Union 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 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 submits that all four of the grounds of its appeal raise issues that are significant with respect to the unity, consistency or development of EU law.

7 By the first ground of appeal, the appellant submits that the General Court failed to identify the essential function of certification marks, which is to distinguish certified goods from other goods and not to indicate their commercial origin, thereby infringing Article 8(1)(b) and Article 83 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). According to the appellant, no certification mark constitutes, in the light of its purpose, an indication of commercial origin. In that connection, it submits that, in paragraphs 58 and 98 to 113 of the judgment under appeal, the General Court incorrectly assessed the likelihood of confusion by analogy with ordinary marks. Had the General Court correctly identified the essential function of certification marks, it would, according to the appellant, have found that there was a likelihood of confusion between the marks at issue.

8 The appellant submits that the first ground of appeal therefore raises the question of what the essential function of a certification mark is and, consequently, how to define the likelihood of confusion for those types of mark. It submits that this question goes beyond its appeal, since there is no case-law of the Court of Justice on that point. The Court of Justice is, in the appellant’s submission, required to give a ruling in that regard, since the national courts and EUIPO are uncertain as to the interpretation of those elements. It is necessary that the Court of Justice also determine whether the General Court was right to extend the case-law of the Court of Justice on collective marks to certification marks by using criteria for the existence of a likelihood of confusion based on commercial origin. The appellant adds that that question concerns thousands of users of certification marks and that the number of applications for those trade marks is on the increase.

9 By its second and third grounds of appeal, the appellant submits that the General Court failed to confer on the earlier certification marks (i) a distinctive character, having regard to their capacity to distinguish the certified goods, and (ii) proof of validity, in that it required, in paragraph 68 of the judgment under appeal, that such validity be proved under national law. In that context, the General Court wrongly considered those marks to be a generic name or an indication of the type of goods, and wrongly held that distinctive character could have an impact on the comparison of the marks, contrary in particular to the judgment of 8 November 2016, BSH v EUIPO (C‑43/15 P, EU:C:2016:837, paragraphs 58 to 60). Furthermore, according to the appellant, the General Court departed from the judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, EU:C:2012:314, paragraphs 40 to 47), according to which an earlier national mark, relied on in support of an opposition to registration of an EU trade mark, must be recognised as having a certain degree of distinctiveness.

10 By its fourth ground of appeal, the appellant criticises the General Court for finding that the distinctive character of certification marks must be assessed by reference to the capacity to indicate commercial origin for the individual marks, and for having therefore held, in paragraph 69 of the judgment under appeal, that the fact that it had previously found, in cases concerning individual marks, that the word ‘halloumi’ was descriptive remained valid. The appellant adds that the fact that an incorrect criterion of distinctiveness was applied had an impact on the outcome of the proceedings.

11 According to the appellant, the second to fourth pleas raise questions as to how to address the concept and assessment of the ‘distinctive character’ of certification marks and whether that distinctive character can have an impact on the comparison of the marks. Furthermore, it states that all certification marks are in some sense ‘descriptive’ of an important characteristic, for example, of a method of manufacture, materials or, under some national laws, of geographical origin, and that they sometimes also have the additional function of indicating the actual name of the goods.

12 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).

13 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 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 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).

14 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 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).

15 Consequently, 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).

16 In the present case, in so far as concerns, in the first place, the arguments, set out in paragraphs 7 and 8 of the present order, that the General Court disregarded the essential function of the earlier certification marks when assessing the likelihood of confusion, it should be observed that the appellant has failed to demonstrate, in a manner that complies with all the requirements set out in paragraph 14 of the present order, how its appeal raises an issue that is significant in the light of those criteria which would justify allowing the appeal to proceed.

17 In accordance with the burden of proof which lies with the appellant requesting that an appeal be allowed to proceed, the appellant must demonstrate that, independently of the issues of law invoked in its appeal, the appeal raises one or more issues that are significant with respect to the unity, consistency and development of EU law, the scope of that criterion going beyond the judgment under appeal and, ultimately, its appeal. Accordingly, in order to demonstrate that that 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 (order of 21 December 2021, Cyprus v EUIPO, C‑538/21 P, not published, EU:C:2021:1053, paragraph 20 and the case-law cited).

18 The appellant’s claims that the General Court infringed Article 8(1)(b) and Article 83 of Regulation 2017/1001 by disregarding the essential function of a certification mark are too general to constitute such proof.

19 Further, 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 unity, consistency and 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 those criteria (order of 21 December 2021, Cyprus v EUIPO, C‑538/21 P, not published, EU:C:2021:1053, paragraph 22 and the case-law cited). However, such proof is not apparent from the present application, since the appellant merely sets out arguments of a general nature, such as the fact that the question at issue concerns a large number of users of certification marks without, however, putting forward concrete arguments specific to the present case in order to prove the importance of that issue with respect to the unity, consistency or development of EU law.

20 In the second place, in so far as concerns the arguments summarised in paragraphs 9 to 11 of the present order that the General Court incorrectly assessed the distinctive character of the earlier certification marks, 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 14 of the present order (order of 21 December 2021, Cyprus v EUIPO, C‑538/21 P, not published, EU:C:2021:1053, paragraph 23).

21 The appellant has failed to show, to the requisite legal standard, how the General Court’s analysis of the distinctive character of the earlier certification marks when assessing the likelihood of confusion raises an issue that is significant with respect to the unity, consistency or development of EU law.

22 In so far as concerns, more specifically, the argument referred to in paragraph 9 of the present order, alleging failure to have regard to the case-law of the Court of Justice, it must be found that although the appellant specifies the paragraphs of the judgments which, it submits, were disregarded, it has failed to provide sufficiently clear and precise explanations to enable the Court of Justice to understand the nature of the errors of law allegedly committed by the General Court in that regard.

23 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.

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

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. The Republic of Cyprus shall bear its own costs.





Luxembourg, 15 June 2022.





A. Calot Escobar L. Bay Larsen