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

8 November 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‑405/22 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 17 June 2022,

Mandelay Magyarország Kereskedelmi Kft. (Mandelay Kft.), established in Szigetszentmiklós (Hungary), represented by V. Luszcz, C. Sár and É. Ulviczki, ügyvédek,

appellant

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Qx World Kft., established in Budapest (Hungary),

intervener at first instance,

LA COUR (Chamber determining whether appeals may proceed)

composed of L. Bay Larsen, Vice-President of the Court, N. Wahl (Rapporteur) and J. Passer, 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, Mandelay Magyarország Kereskedelmi Kft. asks the Court of Justice to set aside the judgment of the General Court of the European Union of 6 April 2022, Mandelay v EUIPO – Qx World (QUEST 9) (T‑516/20, not published, EU:T:2022:227; ‘the judgment under appeal’), 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 3 June 2020 (Case R 1900/2019-2), relating to opposition proceedings between QX WORLD and Mandelay.

The request that the appeal 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 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 of the Court of Justice, 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 to rule on that request.

5 In accordance with Article 170b(1) and (3) of those rules, 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.

Arguments of the appellant

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

7 By its first ground of appeal, the appellant submits that, by failing to examine separately the categories of goods ‘bioresonance-based instruments and diagnostic apparatus’ and ‘medical biofeedback apparatus and instruments’, the General Court erred in the determination of the relevant public and in the assessment of the likelihood of confusion. Consequently, by examining those two categories of goods together, the Court infringed Article 47(5) 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), the Nice Agreement of 1957 and the Madrid Agreement of 1891, as well as the World Intellectual Property Organization guidelines. In doing so, it also altered the subject matter of the dispute and substituted its own assessment for that of the Board of Appeal, in breach of Article 72 of Regulation 2017/1001, Article 188 of its Rules of Procedure and the judgment of 5 July 2011, Edwin v OHIM (C‑263/09 P, EU:C:2011:452).

8 By its fourth ground of appeal, the appellant claims that the Court infringed Article 8(1) of Regulation 2017/1001 when comparing the signs at issue. By holding in paragraphs 45, 47, 105 and 106 of the judgment under appeal that it was impossible to make a conceptual comparison on the ground that the element ‘quest’ of the mark applied for had no specific meaning for the relevant public with regard to the goods at issue, the Court added an additional condition according to which, in order for a conceptual comparison to be made, the sign must have a meaning with regard to the goods at issue, and thus failed to have regard to the case-law of the Court of Justice and the General Court arising from the judgment of 4 March 2020, EUIPO v Equivalenza Manufactory (C‑328/18 P, EU:C:2020:156, paragraph 74). Moreover, in paragraph 77 of the judgment under appeal, the General Court erred in stating that the mark applied for is not ‘50% longer’ than the earlier mark.

9 By its fifth ground of appeal, the appellant claims that, by failing to take into account the fact that it had limited its list of goods during the proceedings before the Board of Appeal, the Court infringed Article 8(1)(b), Article 47(5), Article 49(1) and Article 71 of Regulation 2017/1001. Moreover, the Court did not base its assessment of the likelihood of confusion exclusively on the new observations subsequently submitted by the appellant.

10 The appellant submits, in the sixth ground of appeal, that the Court unlawfully shifted the burden of proof by relying, in paragraph 36 of the judgment under appeal, on a presumption that the general public constitutes the relevant public. Consequently, it infringed Article 95 of Regulation 2017/1001. Furthermore, by accepting, in inter partes proceedings, research carried out by EUIPO of its own motion, the results of which were not communicated to the appellant, the Court infringed paragraph 1 of that provision, the appellant’s rights of defence and the obligation to state reasons laid down in Article 94(1) of Regulation 2017/1001.

11 According to the appellant, the grounds of appeal mentioned in paragraphs 7, 9 and 10 of the present order raise issues that are significant with respect to the unity, consistency and development of EU law, in that they pertain to the core of the system of judicial review as to intellectual property rights and the observance of international agreements. As regards the ground of appeal mentioned in paragraph 8 of the present order, the appellant submits, first, that it raises the issue of the assessment of the likelihood of confusion where one of the signs at issue contains a number, which is an issue that is significant with regard to the unity and consistency of EU law and, second, that the list of errors committed by the Court raises issues that are significant with respect to the unity, consistency or development of EU law.

Findings of the Court

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 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 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 (see, inter alia, orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 21, and of 7 June 2022, Magic Box Int. Toys v EUIPO, C‑194/22 P, not published, EU:C:2022:463, paragraph 14).

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 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 6 July 2022, Calrose Rice v EUIPO, C‑253/22 P, not published, EU:C:2022:546, paragraph 14).

16 In the present case, as regards, in the first place, the arguments summarised in paragraphs 7 to 10 of the present order, by which the appellant seeks to demonstrate that the issues of law raised by certain grounds on which the appeal is based are significant with respect to the unity, consistency and development of EU law, it must be pointed out that, although the appellant identifies errors of law and of assessment allegedly committed by the General Court, it does not explain to the requisite standard or, in any event, does not demonstrate how such issues, assuming they are established, raise questions which are significant with respect to the unity, consistency or development of EU law which would justify allowing the appeal to proceed.

17 In that regard, it should be borne in mind that 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 or development of EU law, the scope of that criterion going beyond the scope of the judgment or order under appeal and, ultimately, that of its appeal. 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 28 September 2022, the airscreen company v EUIPO, C‑320/22 P, not published, EU:C:2022:731, paragraph 16 and the case-law cited). However, such a demonstration is not apparent from the present request, since the appellant merely relies on arguments of a general nature in support of the significance with respect to the unity, consistency or development of EU law of the response to the questions raised by the appeal.

18 Furthermore, as regards the line of argument based on the General Court’s failure to have regard to its own case-law and that of the Court of Justice, it should be borne in mind that that is not, in itself, sufficient to establish, in accordance with the burden of proof which lies with the appellant requesting that an appeal be allowed to proceed, that that appeal raises an issue that is significant with respect to the unity, consistency or development of EU law. To that end, the appellant must comply with all the requirements set out in paragraph 14 of the present order. In the present case, the appellant provides no information on the similarity of the situations referred to in the case-law that has been disregarded capable of establishing the existence of the contradiction relied on (see, to that effect, order of 7 June 2022, Magic Box Int. Toys v EUIPO, C‑194/22 P, not published, EU:C:2022:463, paragraph 17 and the case-law cited).

19 As regards, in the second place, the appellant’s line of argument, referred to in paragraph 10 of the present order, relating to the obligation to state reasons, it should be borne in mind that, while it is true, as is apparent from the case-law of the Court of Justice, that failure to state reasons or an inadequate statement of reasons constitutes an error of law which may be relied on in the context of an appeal, the determination as to whether the appeal is allowed to proceed nevertheless remains subject to specific conditions consisting, for the appellant, in demonstrating, as referred to in paragraph 14 above, that that appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law (order of 4 May 2021, Dermavita v EUIPO, C‑26/21 P, not published, EU:C:2021:355, paragraph 20 and the case-law cited). 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. However, the appellant has not demonstrated to the requisite legal standard how the alleged failure to state reasons in the judgment under appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.

20 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.

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

Costs

22 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.

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. Mandelay Magyarország Kereskedelmi Kft. shall bear its own costs.





Luxembourg, 8 November 2022.

A. Calot Escobar L. Bay Larsen