Order of 3 Dec 2020, C-400/20 (Dermavita v EUIPO), ECLI:EU:C:2020:997.

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

3 December 2020 (*)

(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-400/20 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 21 August 2020,

Dermavita Co. Ltd, established in Beirut (Lebanon), represented by D. Todorov, advokat,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Allergan Holdings France, established in Courbevoie (France), represented by J. Day, Solicitor, and T. de Haan, avocat,

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of R. Silva de Lapuerta, Vice-President of the Court, N. Wahl (Rapporteur) and L.S. Rossi, 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, Dermavita Co. Ltd asks the Court of Justice to set aside the judgment of the General Court of the European Union of 25 June 2020, Dermavita v EUIPO – Allergan Holdings France (JUVÉDERM) (T-104/19, not published, EU:T:2020:283; ‘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 19 December 2018 (Case R 2630/2017-4) concerning revocation proceedings between Dermavita and Allergan Holdings France.

 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 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 of Justice 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 and is to take the form of a reasoned order.

6        In support of its request that the appeal be allowed to proceed, the appellant claims that Article 18 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) was incorrectly applied, which raises issues that are significant with respect to the unity, consistency and development of EU law.

7        In the first place, the appellant submits that the General Court erred by failing to apply, in its assessment of the question whether the EU trade mark at issue has been put to genuine use for the goods in respect of which it was registered, the legal definitions set out in the secondary legislation of the European Union, in particular Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to medicinal products for human use (OJ 2001 L 311, p. 67) and Regulation (EU) 2017/745 of the European Parliament and of the Council of 5 April 2017 on medical devices, amending Directive 2001/83/EC, Regulation (EC) No 178/2002 and Regulation (EC) No 1223/2009 and repealing Council Directives 90/385/EEC and 93/42/EEC (OJ 2017 L 117, p. 1). More specifically, the appellant submits that, if the relevant secondary legislation were applied, it would be established that the goods in respect of which that mark was registered, namely, ‘pharmaceutical products administered by injection for use in moisturising skin and reducing wrinkles’, differ from the non-pharmaceutical products, for the purposes of the secondary legislation, in respect of which it has actually been used. The appellant submits that that issue is significant as it concerns the criteria to be applied when assessing whether the goods in respect of which the mark was registered are the same as the goods in respect of which it is used, and that those criteria may be relevant for every EU trade mark. It adds that those criteria are not defined in Regulation 2017/1001 and that, in the present case, the General Court failed to lay down any such criteria in its assessment of the nature of the goods in respect of which the mark at issue has been used and merely denied any connection with the secondary legislation.

8        In the second place, the appellant raises the issue of whether the proprietor of the EU mark is able to prove genuine use within the meaning of Article 18 of Regulation 2017/1001, since the mark is registered for pharmaceutical products which are not defined as such by the secondary legislation of the European Union. The appellant submits that all arguments summarised in paragraph 7 of the present order must apply mutatis mutandis.

9        In the third and final place, the appellant submits that, by ruling, in paragraph 30 of the judgment under appeal, that the goods at issue have pharmacological effects on the skin, as stated by EUIPO, the General Court infringed the settled case-law of the Court of Justice. More specifically, the appellant refers to paragraphs 18 to 27 of the judgment of the Court of Justice of 30 April 2009, BIOS Naturprodukte (C-27/08, EU:C:2009:278), from which, according to the appellant, it is clear that, under Directive 2001/83, the only authorities competent to establish that a product which is not authorised as a medicinal product is a medicinal product by function are the national authorities. While the General Court classified the product as a medicinal product by its pharmacological function for the purposes of accepting genuine use within the meaning of Regulation 2017/1001, the appellant is of the view that the product is at the same time a non-medicinal product, commercialised on the EU market as a medicinal product without a marketing authorisation to that end, within the meaning of Directive 2001/83.

10      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 16 September 2019, Kiku v CPVO, C-444/19 P, not published, EU:C:2019:746, paragraph 11, and of 24 October 2019, Porsche v EUIPO, C-613/19 P, EU:C:2019:905, paragraph 13).

11      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 Court’s 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 the 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 (order of 3 September 2020, Gamma-A v EUIPO, C-199/20 P, not published, EU:C:2020:662, paragraph 10 and the case-law cited).

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

13      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).

14      As a preliminary point, it must be noted that the appellant refers, in its request, to Article 18 of Regulation 2017/1001. However, in the light of the date on which the application for revocation at issue was filed, in this case 1 April 2016, which is decisive for the purposes of identifying the applicable substantive law, the present dispute is governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February on the [European Union] trade mark (OJ 2009 L 78, p. 1). Thus, in so far as Article 18 of Regulation 2017/1001 corresponds to Article 15 of Regulation No 207/2009, the appellant’s references to the former article must be understood as pertaining to the latter article.

15      In the present case, as regards, in the first place, the arguments set out in paragraph 7 of the present order, it must be noted that, although the appellant invokes an error of law allegedly committed by the General Court, it does not show to the requisite legal standard that the issue is significant with respect to the unity, consistency or development of EU law.

16      In that regard, it is important to emphasise 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 (see, to that effect, order of 12 March 2020, Roxtec v EUIPO, C-893/19 P, not published, EU:C:2020:209, paragraph 19).

17      The fact that, in the present case, the General Court did not apply the rules of EU law invoked by the appellant in order to ascertain, for the purposes of Article 15 of Regulation No 207/2009, whether the goods in respect of which the mark at issue has been used come within the category of goods in respect of which that mark was registered does not, however, mean that that court generally excludes from its assessment of genuine use of a trade mark, within the meaning of Article 15 of Regulation No 207/2009, the taking into consideration of provisions of EU law concerning both the goods in respect of which that mark was registered and the goods in respect of which it is actually used, for the purposes of ascertaining whether these are the same. It follows from paragraph 28 of the judgment under appeal, and in particular from the phrase ‘in principle’ used by the General Court, that that court acknowledges that such provisions may, regard being had to the particular circumstances of the case at hand, be decisive for the classification of those goods.

18      In those circumstances, the appellant has failed to show that the error of law allegedly committed by the General Court raises an issue of law that goes beyond the judgment under appeal.

19      In addition, as regards the appellant’s argument seeking, in essence, to criticise the General Court on the ground that it failed to fulfil its obligation to state reasons inasmuch as it did not provide the criteria that led it to consider that the goods in respect of which the mark at issue has been used must be classified in Class 5, within the meaning of the Nice Classification, it is true that, as is apparent from the case-law of the Court of Justice, an absence of or an inadequate statement of reasons constitutes an error of law which may be invoked in the context of an appeal; however, the determination as to whether the appeal is allowed to proceed remains subject to specific conditions consisting, for the appellant, in demonstrating, as referred to in paragraph 16 of the present order, that that appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 7 October 2019, L'Oréal v EUIPO, C-590/19 P, not published, EU:C:2019:841, paragraphs 10 and 11 and the case-law cited). However, the appellant has not provided any explanation whatsoever as to why the alleged failure to state reasons in the judgment under appeal raises an issue that is significant with respect to the unity and consistency of EU law.

20      In the second place, as regards the arguments referred to in paragraph 8 of the present order, it is sufficient to state that they do not comply with the requirements set out in paragraphs 12 and 16 above. The appellant does not specify the reasons why the issue raised is significant with respect to the unity, consistency or development of EU law and merely refers in that regard to the arguments set out in paragraph 7 of the present order. In any event, those arguments are not such as to justify the appeal being allowed to proceed, as has been stated in paragraphs 17 and 19 of the present order.

21      In the third and final place, as regards the argument set out in paragraph 9 of the present order, in so far as the significance of the issue raised in that context follows from an alleged contradiction between, on the one hand, paragraph 30 of judgment under appeal and, on the other, paragraphs 18 to 27 of the judgment of the Court of Justice of 30 April 2009, BIOS Naturprodukte (C-27/08, EU:C:2009:278), regarding the interpretation of the provisions of Directive 2001/83, it must be noted that such an argument is not, in itself, sufficient to establish that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.

22      In that regard, it is important to note that, in accordance with the burden of proof which lies with an appellant requesting that an appeal be allowed to proceed, the appellant must comply, to that end, with all the requirements set out in paragraphs 12 (see, to that effect, order of 24 October 2019, Porsche v EUIPO, C-613/19 P, EU:C:2019:905, paragraph 17) and 16 of the present order.

23      In any event, while the appellant specifies the paragraphs of the judgment under appeal and those of the abovementioned judgment of the Court of Justice which the General Court allegedly infringed, it does not demonstrate the similarity of the situations referred to in those two judgments that would allow the contradiction invoked to be established; nor does the appellant supply a sufficiently clear indication of the concrete reasons why such a contradiction raises an issue that is significant with respect to the unity, consistency or development of EU law.

24      In those circumstances, it must be concluded 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.

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

 Costs

26      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.

27      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.      Dermavita Co. Ltd shall bear its own costs.

Luxembourg, 3 December 2020.

A. Calot Escobar

R. Silva de Lapuerta

Registrar

President of the Chamber determining whether appeals may proceed

*      Language of the case: English.