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

1 December 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 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‑462/21 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 28 July 2021,

Puma SE, established in Herzogenaurach (Germany), represented by P. González-Bueno Catalán de Ocón, abogado,

appellant,

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 L. Bay Larsen, Vice-President of the Court, P.G. Xuereb (Rapporteur) and A. Kumin, 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, Puma SE asks the Court of Justice to set aside the judgment of the General Court of the European Union of 19 May 2021, Puma v EUIPO – Gemma Group (Representation of a bounding feline) (T‑510/19, not published, EU:T:2021:281; ‘the judgment under appeal’), by which the General Court dismissed its action for annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 30 April 2019 (Case R 2057/2018-4) concerning opposition proceedings between Puma SE and Gemma Group.

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 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 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 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 – putting forward seven arguments alleging, in essence, infringement of Article 8(5) and Article 76(2) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) – submits that the appeal raises issues that are significant with respect to the unity, consistency and development of EU law.

7 By its first argument, the appellant submits that the General Court erred in law by accepting the manner in which EUIPO carried out the comparative examination of the marks at issue, diverging from the case-law concerning the overall analysis which must prevail in the comparison of the marks. More specifically, first, the General Court departed from its own case-law, stemming in particular from the judgment of 26 March 2015, Royal County of Berkshire Polo Club v OHIM – Lifestyle Equities (Royal County of Berkshire POLO CLUB) (T‑581/13, not published, EU:T:2015:192, paragraph 54), pursuant to which the different orientation of two similar figurative signs is a slight difference which is not sufficient to reduce significantly the similarity between the signs. Second, the analysis of the signs at issue carried out by EUIPO, and upheld by the General Court, contradicted the fundamental principles of the overall comparative analysis, stemming in particular from the judgment of 25 February 2016, Puma v EUIPO – Sinda Poland (Representation of an animal) (T‑692/14, not published, EU:T:2016:99, paragraphs 32 to 34). The appellant submits that by endorsing a comparative analysis which attaches more importance to the differences than to the similarities between the signs at issue and which differs from the reality of the market, the General Court departed from the case-law relating to the need to carry out an overall comparative analysis of the signs at issue, which would be such as to affect the unity, consistency and development of EU law.

8 By its second argument, the appellant submits that the General Court erred in law in paragraph 58 of the judgment under appeal by using the expression ‘a certain degree of similarity’ to indicate the degree of similarity between the marks at issue. In that regard, it argues that the word ‘certain’ is not a sufficiently clear qualifier to determine the degree of similarity between the signs at issue. If the General Court’s approach were not corrected, this could lead to a proliferation of such analyses concluding that there was a ‘certain degree of similarity’, which would be a clear divergence from the unity and consistency of EU law.

9 By its third argument, the appellant submits that the General Court erred in law, in paragraph 79 of the judgment under appeal, by finding that the ‘exceptional reputation’ of the earlier marks had been relied on by the appellant for the first time before the General Court. In that connection, the appellant submits that it had claimed, from the stage of the opposition proceedings before EUIPO, that those marks enjoyed an ‘excellent reputation’. According to the appellant, the terms ‘excellent’ and ‘exceptional’ are synonyms. In that context, the applicant asks that the Court of Justice determine whether an ‘excellent reputation’ amounts to an ‘exceptional reputation’; to establish detailed criteria necessary to achieve an ‘exceptional reputation’ as compared with a ‘very high reputation’; and to clarify (i) what evidence must be adduced to demonstrate the degree of reputation and (ii) the legal consequences resulting from the determination of the various degrees of reputation. Furthermore, it asks that the Court declare that once a mark has a reputation – which, in the appellant’s submission, is undeniably the case here – it may be assumed that that reputation for the general public also extends to professional circles.

10 By its fourth argument, the appellant submits that the General Court infringed, inter alia, Article 76(2) of Regulation No 207/2009, in that it disregarded the existence of irregularities which left the appellant defenceless and directly affected the assessment of the degree of reputation of the earlier marks on which the appellant had relied. No legal provision or case-law allows EUIPO or the General Court to leave aside or ignore either the principle of equal treatment or the principle of sound administration, in any acts taken within its competence.

11 More specifically, according to the appellant, by failing to examine the evidence which it had submitted in order to prove the reputation of the earlier marks, and by refusing to consider that that reputation was excellent, the Opposition Division deprived it of the opportunity to substantiate that evidence before the Board of Appeal. That irregularity, which the Board of Appeal failed to remedy, vitiated the judgment under appeal. The appellant submits that it should have had the opportunity to present its arguments against EUIPO’s claim that relying on several of its own previous decisions finding that the earlier marks had a reputation was insufficient to establish the reputation of those marks. Thus, in the interest of the unity, consistency and development of EU law, it is necessary that the Court clarify that evidence which merely supplements previous submissions may still be submitted and is not late within the meaning of Article 76(6) of Regulation No 207/2009, if the decision of the Board of Appeal has given rise to this submission for the first time.

12 By its fifth argument, the appellant submits that the General Court erred in law by finding, on the basis of an incorrect assessment of all the relevant factors, that there was no link between the marks at issue for the relevant public. More specifically, the appellant submits that the General Court should, in accordance with its own case-law, which stems in particular from the judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA) (T‑62/16, EU:T:2018:604), have started from the premiss that there may be a link between marks in separate markets. The appellant also claims that since its earlier marks had been found to have, at the very least, a ‘very high reputation’ with the public at large, the Court of Justice should have applied the case-law according to which, in the case of an opposition based on a mark with an exceptionally high reputation, it is possible that the probability of a non-hypothetical future risk of detriment or of unfair advantage being taken by the mark applied for is so obvious that the opposing party does not need to put forward or adduce evidence of any other fact to that end (judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 63, and of 6 July 2012, Jackson International v OHIM – Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 60).

13 The Court should therefore, in the appellant’s submission, establish comprehensive criteria concerning the degree of reputation that should exist, and find that it may be assumed that a reputation with the public at large also extends to professional circles, unless there are special circumstances which could contradict such an assumption, which would need to be established. The mere statement that a reputation with the general public does not necessarily extend to professional circles cannot be sufficient in order to refuse to apply Article 8(5) of Regulation No 207/2009.

14 By its sixth argument, the appellant submits that, although the similarity between the goods and services concerned is not a precondition for the protection of a mark which has a reputation, under Article 8(5) of Regulation No 207/2009, the case-law appears to require a certain connection between the goods as a condition for the application of that provision. The Court should therefore clarify, in the interests of the unity, consistency and development of EU law, the criteria to be applied in order to determine the relationship between the goods and services concerned or the overlap between the publics in the case of a mark with a reputation with the public at large, as well as the impact that that analysis might have on the examination of a link between the signs and the existence of exploitation of or detriment to the distinctive character and repute of the mark with a reputation.

15 By its seventh and final argument, the appellant claims that the General Court, first, failed clearly to establish objective criteria allowing, in the case of a mark with a reputation, the determination of the way in which the dissimilarity between the goods can influence the existence of a link between the signs at issue, and, second, by departing from the case-law arising in particular from the judgments of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655, paragraph 74) and of 28 October 2010, Farmeco v OHIM – Allergan (BOTUMAX) (T‑131/09, not published, EU:T:2010:458), pursuant to which ‘the more “unique” the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character’, the General Court confined itself to criticising the appellant for failing to submit evidence, without explicitly and clearly stating what that evidence should consist in when, in fact, there has yet to be any harm to and/or exploitation of the mark with a reputation. More specifically, the appellant submits that the General Court failed to find, in the light of the evidence which the appellant had submitted, that there is a sufficiently concrete risk that the public targeted by the contested mark will establish a link between the signs at issue.

16 According to the appellant, the Court should therefore, in the interests of the unity, consistency and development of EU law, define specific criteria which in fact allow the proprietor of a mark with a reputation to prove a risk of exploitation of or detriment to the distinctive character of its mark, without placing insurmountable barriers solely due to the dissimilarity of the goods or services.

17 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 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 13 and the case-law cited).

18 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 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 (see, inter alia, orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 14, and of 6 October 2021, FCA Italy v EUIPO, C‑360/21 P, not published, EU:C:2021:841, paragraph 13).

19 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 the 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 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 15 and the case-law cited).

20 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).

21 In the present case, in so far as concerns, in the first place, the arguments set out in paragraph 7 of the present order that the General Court has departed from its own case-law, 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 19 of the present order (see, to that effect, order of 17 December 2020, Brands Up v EUIPO, C‑404/20 P, not published, EU:C:2020:1058, paragraph 19).

22 The appellant has failed clearly to state which paragraphs of the judgment under appeal it calls into question, or give any indication as to the actual reasons why such a contradiction, even if it were established, raises an issue that is significant with respect to the unity, consistency or development of EU law. The appellant merely states that, by applying a comparative analysis which attaches more importance to the differences than to the similarities between the signs at issue, the General Court departed from the case-law relating to the overall comparative analysis of the signs, which is such as to affect the unity, consistency and development of EU law, without, however, providing details establishing that its argument raises an issue that is significant in the light of those criteria.

23 In the second place, as regards the argument summarised in paragraph 8 of the present order, it must also be pointed out that, in accordance with the burden of proof which is borne by the party requesting that the appeal be allowed to proceed, the appellant must demonstrate that, independently of the issues of law invoked in its appeal, that appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law, the scope of this criterion going beyond the judgment under appeal and, ultimately, its appeal. Furthermore, 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 22 June 2021, Cinkciarz.pl v EUIPO, C‑114/21 P, not published, EU:C:2021:508, paragraph 16 and the case-law cited).

24 However, such a demonstration is lacking in the present case. By the arguments referred to in paragraph 8 of the present order, the appellant merely makes a generic assertion that the fact that the General Court concluded that the signs at issue had a ‘certain degree of similarity’ when analysing the similarity of the signs constitutes a clear divergence from the unity and consistency of EU law.

25 In the third place, as regards the arguments summarised in paragraph 9 of the present order, it should be observed that although the appellant identifies the error of law allegedly committed by the General Court, it has neither sufficiently explained nor, in any event, demonstrated by that line of argument how such an error, even if 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. Aside from the complaint that the General Court did not correctly interpret its arguments submitted before EUIPO, the appellant merely asks the Court of Justice to rule on several aspects relating to the assessment and evidence of the degree of reputation to be attributed to a mark. Assuming that, by such a line of argument, the appellant challenges the absence of case-law of the Court on those aspects, it should be recalled that 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 or 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 the unity, consistency or development of EU law (see, to that effect, orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 19, and of 12 May 2021, BSH Hausgeräte v EUIPO, C‑67/21 P, not published, EU:C:2021:391, paragraph 14).

26 In the fourth place, as regards the appellant’s line of argument summarised in paragraphs 10 and 11 of the present order, by which the appellant submits, in essence, that the General Court infringed the principles of equal treatment and sound administration by allowing the appellant to be deprived of the possibility of supplementing, at a later stage of the proceedings, the evidence that it had submitted in order to establish the reputation of the earlier marks and, therefore, of a ground of defence, it should be observed that, although the appellant has identified the error of law allegedly committed by the General Court, it has failed to explain how that error, even if it were established, raises an issue that is significant with respect to the unity, consistency or development of EU law which would justify the appeal being allowed to proceed. The appellant merely submits that the Court of Justice should specify, in the interests of the unity, consistency and development of EU law, that evidence which simply supplements earlier observations may still be submitted and is not out of time within the meaning of Article 76(2) of Regulation No 207/2009, if it is the decision of the Board of Appeal which gave rise to the submission of that supplementary evidence. However, such an argument does not satisfy the requirements set out in paragraph 19 of the present order.

27 In the fifth place, as regards the argument, summarised in paragraphs 12 and 13 of the present order, that the General Court erred in law in finding that there was no link between the marks at issue on the part of the relevant public, it should be noted that that assessment of the similarity between the marks at issue is of a factual nature (see, to that effect, order of 28 May 2020, Billa v EUIPO, C‑61/20 P, not published, EU:C:2020:408, paragraph 19). Such an argument cannot be found to raise an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 24 June 2021, Olimp Laboratories v EUIPO, C‑219/21 P, not published, EU:C:2021:522, paragraph 20 and the case-law cited).

28 In the sixth place, as regards the argument summarised in paragraph 14 of the present order, it should be noted that the explanations provided by the appellant are not sufficiently clear and precise as to enable the Court of Justice to understand the nature of the error of law allegedly committed by the General Court. The appellant merely claims that, in the interests of the unity, consistency and development of EU law, the Court of Justice should clarify certain criteria for the application of Article 8(5) of Regulation No 207/2009. Such an argument does not satisfy the requirements set out in paragraph 19 of the present order.

29 In the seventh and last place, as regards the line of argument, summarised in paragraphs 15 and 16 of the present order, that the General Court erred by (i) failing clearly to establish objective criteria making it possible to determine the way in which the dissimilarity of the goods may influence the existence of a link between the signs at issue in the case of a mark with a reputation, and (ii) merely criticising the appellant for failing to provide evidence, without explicitly and clearly stating what that evidence should have been when, in fact, there has not yet been any harm to and/or exploitation of the mark with a reputation, it should be observed that, although the appellant identifies the errors of law allegedly committed by the General Court, it has, however, failed to explain how those errors, even if they were established, raise a significant issue with respect to the unity, consistency or development of EU law. The appellant confines itself to submitting that the Court of Justice should, in the interests of the unity, consistency and development of EU law, define specific criteria which in fact allow the proprietor of a mark with a reputation to prove a risk of exploitation of or detriment to the distinctive character of its mark without placing insurmountable obstacles solely due to the dissimilarity of the goods or services. Such an argument does not, however, satisfy the requirements set out in paragraph 19 of the present order.

30 Furthermore, in so far as the appellant submits that the General Court departed from its own case-law relating to the conditions for the existence of a risk of exploitation of or detriment to the distinctive character of a mark with a reputation, it must be pointed out that that line of argument also does not comply with the requirements referred to in paragraph 19 of the present order, in so far as the appellant merely suggests that the General Court infringed its own case-law without, however, setting out the concrete reasons why such an inconsistency, even if it were established, would raise a significant issue with respect to the unity, consistency or development of EU law (see, to that effect, order of 12 March 2020, Roxtec v EUIPO, C‑893/19 P, not published, EU:C:2020:209, paragraph 18).

31 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.

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

Costs

33 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.

34 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. Puma SE shall bear its own costs.

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Luxembourg, 1 December 2021.

A. Calot Escobar L. Bay Larsen