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

11 July 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‑187/22 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 10 March 2022,

Laboratorios Ern, SA, established in Barcelona (Spain), represented by T. González Martínez and R. Guerras Mazón, abogados,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Ingrid Malpricht, residing in Ludwigshafen am Rhein (Germany),

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of L. Bay Larsen, Vice-President, J. Passer and N. Wahl (Rapporteur), Judges,

Registrar: A. Calot Escobar,

having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, A.M. Collins,

makes the following

Order

1 By its appeal, Laboratorios Ern, SA, asks the Court of Justice to set aside the judgment of the General Court of the European Union of 12 January 2022, Laboratorios Ern v EUIPO – Malpricht (APIRETAL) (T‑160/21, not published, EU:T:2022:2) (‘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 20 January 2021 (Case R 1004/2020‑4), relating to revocation proceedings between Ms Malpricht and Laboratorios Ern.

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 The third paragraph of Article 58a of that statute provides that 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 Article 170a(1) of the Rules of Procedure provides that, 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’s decision on the request that the appeal be allowed to proceed is to be taken 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 claims that the two grounds of its appeal, alleging misapplication of Article 58(1)(a) 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), 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 the General Court erred in finding that it had not proved genuine use of the contested word mark ‘APIRETAL’ for any of the goods covered by the application for revocation. In particular, the appellant challenges the method and criteria applied by the General Court to define the concepts of ‘genuine use’ and ‘sufficiently autonomous category’. In paragraph 24 of the judgment under appeal, first, the General Court wrongly found, on the basis of vague and ambiguous concepts, that the pharmaceutical preparations and the goods at issue belonged to different categories. Second, it applied criteria other than the criterion of the purpose or intended use of the goods to determine whether there was an autonomous subcategory of goods, in breach of the case-law of the Court of Justice resulting from, inter alia, the judgment of 11 December 2014, OHIM v Kessel medintim (C‑31/14 P, not published, EU:C:2014:2436, paragraph 39). The General Court also failed to assess the influence of the reputation of the word mark ‘APIRETAL’ for pharmaceutical products and applied Article 58(1)(a) of Regulation 2017/1001 restrictively in order to ensure the free movement of goods, without taking into account the legitimate interests and legitimate right of the trade mark proprietor to alter the product or expand the range of goods offered.

8 According to the appellant, the questions as to whether, in order to determine whether a product belongs to an autonomous category, criteria other than the intended use may be applied, whether the recognised reputation of a mark for certain goods has an influence on the determination of the existence of an autonomous category of goods in the case of goods with a similar intended purpose, and whether the free movement of goods and services must be counterbalanced and limited by the interests and legitimate right of the trade mark proprietor to alter the product or to expand the range of goods offered, are significant with respect to the unity, consistency or development of EU law.

9 By its second ground of appeal, the appellant claims that the General Court erred in finding that there were no proper reasons for non-use of the mark at issue for the goods at issue. In particular, the General Court, departing from its earlier case-law, stated that two conditions must be examined in order to determine whether there were proper reasons for non-use. It failed to examine, in breach of the case-law of the Court of Justice resulting from, inter alia, the judgment of 17 March 2016, Naazneen Investments v OHIM (C‑252/15 P, not published, EU:C:2016:178, paragraph 96), and its own case-law, whether the reasons put forward by the appellant constitute an obstacle capable of making the use of the mark at issue impossible or unreasonable and whether the appellant could have changed its business strategy in such a way as to circumvent that obstacle. In addition, the General Court, in paragraph 32 of the judgment under appeal, failed to have regard to its own case-law in finding that the obligation to comply with national legislation was not sufficient to justify non-use of the mark. Last, the appellant submits that, in paragraph 33 of the judgment under appeal, the General Court wrongly required that proper reasons for non-use must exist in all the Member States.

10 According to the appellant, the questions as to whether proper reasons for non-use must necessarily exist in each of the Member States of the European Union and whether the existence of a legal prohibition on use constitutes a proper reason for non-use, where it makes the use of the goods to which it applies, at least, unreasonable, which the proprietor of the trade mark cannot circumvent by a reasonable change of its business strategy, are significant with respect to the unity, consistency or development of EU law.

11 As a preliminary point, it should be noted 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).

12 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, in particular, 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).

13 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).

14 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).

15 In the present case, it must be held that the arguments as summarised in paragraphs 7 to 10 of the present order, by which the appellant seeks to demonstrate that the points of law raised by the grounds of appeal are significant with respect to the unity, consistency and development of EU law, do not satisfy the requirements set out in paragraph 13 of the present order.

16 The appellant does not set out with sufficient precision and clarity the reasons for which the errors of law alleged in relation to the General Court’s findings relating to the genuine use of the contested mark for the goods at issue and the existence of proper reasons for non-use of that mark would raise, on the assumption that they are established, issues that are significant with respect to the unity, consistency or development of EU law. On the contrary, the appellant merely puts forward, in that regard, arguments of a general nature without relying on concrete factors specific to the present case.

17 Furthermore, as regards the line of arguments based on the General Court’s failure to have regard to its own case-law and to that of the Court of Justice, it must be borne in mind that it 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. The appellant must comply, to that end, with all the requirements set out in paragraph 13 of the present order. In this case, however, the appellant provides no information on the similarity of the situations referred to in the case-law that has allegedly been disregarded that is 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).

18 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.

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

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 parties to the proceedings and, therefore, before those parties 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. Laboratorios Ern, SA, shall bear its own costs.





Luxembourg, 11 July 2022.





A. Calot Escobar L. Bay Larsen