Order of 2 Oct 2024, C-362/24 (MHCS v Lidl Stiftung and EUIPO)

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

2 October 2024 (*)

( 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 and development of EU law – Refusal to allow the appeal to proceed )

In Case C-362/24 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 16 May 2024,

MHCS, established in Épernay (France), represented by O. Vrins, B. Raus and N. Clarembeaux, avocats,

appellant,

the other parties to the proceedings being:

Lidl Stiftung & Co. KG, established in Neckarsulm (Germany),

applicant at first instance,

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, N. Piçarra and N. Jääskinen (Rapporteur), Judges,

Registrar: A. Calot Escobar,

having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, J. Richard de la Tour,

makes the following

Order

1        By its appeal, MHCS asks the Court to set aside the judgment of the General Court of the European Union of 6 March 2024, Lidl Stiftung v EUIPO – MHCS (Shade of the colour orange) (T-652/22, ‘the judgment under appeal’, EU:T:2024:152), by which the General Court annulled the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 August 2022 (Case R 118/2022-4), in relation to invalidity proceedings between Lidl Stiftung & Co. KG and MHCS.

 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        Under 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 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 as soon as possible on the request that the appeal be allowed to proceed, 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 the single ground of its appeal, alleging infringement of Article 7(3) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), and of Article 41(1) and Article 47 of the Charter of Fundamental Rights of the European Union (‘the Charter’), raises issues that are significant with respect to the unity, consistency and development of EU law.

7        In the first place, the appellant submits, by the first part of its single ground of appeal, that the General Court disregarded the case-law of the Court of Justice relating to the overall assessment of the evidence aimed at proving that a trade mark has acquired distinctive character and, in particular, the case-law resulting from the judgments of 4 May 1999, Windsurfing Chiemsee (C-108/97 and C-109/97, EU:C:1999:230); of 6 May 2003, Libertel (C-104/01, EU:C:2003:244); and of 19 June 2014, Oberbank and Others (C-217/13 and C-219/13, EU:C:2014:2012). More specifically, the General Court, in paragraphs 80 and 81 of the judgment under appeal, recalled certain principles set out in that case-law of the Court of Justice without, however, applying them correctly.

8        In addition, the appellant submits that, in paragraphs 100 to 102 of the judgment under appeal, the General Court drew a distinction between direct evidence and secondary evidence, considering the former necessary to show that a mark has acquired distinctive character through use. In that regard, the appellant complains that the General Court did not carry out an overall assessment of the evidence and annulled the decision of the Board of Appeal that had carried out such an assessment. In addition, it held, in paragraph 134 of the judgment under appeal, that the secondary evidence, even assessed as a whole, was never capable of demonstrating that distinctive character had been acquired. In so doing, the General Court disregarded the abovementioned case-law of the Court of Justice.

9        By the second part of its single ground of appeal, the appellant complains that the General Court wrongly considered certain items of evidence to be secondary evidence, while also considering that they could be highly relevant to prove the reputation of the mark at issue, ignoring that a mark with a reputation is by nature distinctive.

10      In addition, it submits that, because of the distinction that it drew between direct and secondary evidence, the General Court did not review the Board of Appeal’s overall assessment of the evidence and, therefore, failed to take into account the criteria developed in the abovementioned case-law of the Court of Justice.

11      Lastly, by the third part of its single ground of appeal, the appellant maintains that, by requiring direct evidence for each Member State, the General Court does not give much other choice to trade mark proprietors than submitting market surveys or opinion polls for each Member State, although, according to the case-law of the Court of Justice, such surveys or polls cannot be required in all cases. That requirement is contrary to the right to sound administration, within the meaning of Article 41 of the Charter, and the principle of unfettered adduction of evidence and the right to an effective remedy, within the meaning of Article 47 of the Charter.

12      In the second place, the appeal raises significant issues, within the meaning of Article 170a of the Rules of Procedure of the Court of Justice, which are linked to the dichotomy between direct and secondary evidence and the overall assessment of the evidence, which go beyond the scope of the present case.

13      In that regard, first, the appellant states that the errors alleged against the General Court concern principles that constitute the pillars of intellectual property law such as the basic rules governing the evaluation of evidence and the criterion of overall assessment arising from the judgment of 4 May 1999, Windsurfing Chiemsee (C-108/97 and C-109/97, EU:C:1999:230).

14      Secondly, the issues in question potentially concern a significant number of invalidity and examination procedures throughout the European Union, whether judicial or administrative. Thus, guidance is needed as to the criterion of overall assessment in order to assess acquired distinctive character.

15      Thirdly, the appeal raises horizontal issues going beyond trade mark or intellectual property law, namely those relating to the criterion of overall assessment, the taking into account of ‘all circumstances of the case’ when assessing evidence within a specific context and the boundaries in terms of the burden of proof.

16      Fourthly, the judgment of the General Court gives rise to legal uncertainty, which is a deterrent for trade and harms the interests of economic operators. Consequently, a judgment of the Court of Justice would foster legal certainty, which is paramount for economic operators doing business within the European Union and using its trade mark system.

17      Fifthly, a decision of the Court of Justice would provide clarity for any actual or potential divergence in interpretation within the General Court. In the judgment under appeal, the General Court excluded advertising a priori as secondary evidence, thereby departing from the contributions made in its case-law, like those relating to market shares and press articles or other publications.

18      In the third and last place, the appellant claims that the General Court erred in law in relation to the dichotomy between direct and secondary evidence and to the exclusion of secondary evidence, which prevented any form of overall assessment of the acquired distinctive character of the mark at issue and led it to annul the Board of Appeal’s decision, whereas a correct application of Article 7(3) of Regulation No 40/94 and of the case-law of the Court of Justice would have led the General Court to uphold the Board of Appeal’s decision.

 Findings of the Court

19      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 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C-382/21 P, EU:C:2021:1050, paragraph 20, and of 11 July 2023, EUIPO v Neoperl, C-93/23 P, EU:C:2023:601, paragraph 18).

20      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 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 (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C-382/21 P, EU:C:2021:1050, paragraph 21, and of 11 July 2023, EUIPO v Neoperl, C-93/23 P, EU:C:2023:601, paragraph 19).

21      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, secondly, the concrete reasons why such a contradiction raises an issue that is significant with respect to the unity, consistency or development of EU law (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C-382/21 P, EU:C:2021:1050, paragraph 22, and of 11 July 2023, EUIPO v Neoperl, C-93/23 P, EU:C:2023:601, paragraph 20).

22      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 11 July 2024, Puma v EUIPO, C-248/24 P, EU:C:2024:621, paragraph 16).

23      In the present case, in the first place, as regards the arguments summarised in paragraphs 6 to 10 of the present order, alleging that the General Court failed to have regard to the case-law of the Court of Justice, it should be noted that such a line of argument 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 21 above. In the present case, the appellant does not provide sufficient information on the similarity of the situations referred to in that allegedly disregarded case-law to make it possible to establish the existence of the contradictions relied on (see, by analogy, order of 2 February 2024, Apart v EUIPO, C-597/23 P, EU:C:2024:109, paragraph 18 and the case-law cited).

24      In the second place, as regards the line of argument summarised in paragraph 11 above, alleging that the General Court infringed the right to sound administration, guaranteed in Article 41 of the Charter, failed to observe the principle of unfettered adduction of evidence and infringed the right to an effective remedy, enshrined in Article 47 of the Charter, it must be pointed out that, without prejudice to the significant place occupied by those principles and fundamental rights within the EU legal order, although the appellant relies on an error allegedly committed by the General Court, the fact remains that it merely sets out that error and submits arguments of a general nature, without, however, explaining specifically the reasons why such an error, even if 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 (see, to that effect, order of 21 March 2023, Louis Vuitton Malletier v EUIPO, C-788/22 P, EU:C:2023:231, paragraph 16).

25      In the third place, as regards the line of argument summarised in paragraphs 12 to 17 above, it should be recalled that, in accordance with the burden of proof which lies with an 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 or development of EU law, the scope of that criterion going beyond the judgment under appeal and, ultimately, its appeal. In order to demonstrate that that is the case, it is necessary to establish both the existence and the significance of such issues by means of concrete evidence specific to the particular case, and not simply arguments of a general nature (see, to that effect, order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C-382/21 P, EU:C:2021:1050, paragraphs 27 and 28 and the case-law cited).

26      The appellant’s claims that, first, the alleged errors committed by the General Court concern principles that constitute the pillars of intellectual property law; secondly, the issues raised in the present appeal may concern a significant number of proceedings with a horizontal impact and a deterrent effect on trade; and, thirdly, a decision of the Court of Justice would foster legal certainty for economic operators while clarifying any divergence in interpretation by the General Court, are manifestly too general to constitute such a demonstration.

27      It follows from all the foregoing considerations that the appellant has not complied with all of the requirements set out in paragraph 21 above. Therefore, in the present case, the line of argument summarised in paragraph 18 above, to the effect that the General Court’s alleged error had an impact on the judgment under appeal, is, in any event, ineffective.

28      In those circumstances, it must be held 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.

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

 Costs

30      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.

31      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.      MHCS shall bear its own costs.

Luxembourg, 2 October 2024.

A. Calot Escobar

L. Bay Larsen

Registrar

President of the Chamber determining whether appeals may proceed

*      Language of the case: English.