Order of 19 Apr 2023, C-42/23 (Mendes v EUIPO), ECLI:EU:C:2023:325.

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

19 April 2023 (*)

(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-42/23 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 28 January 2023,

Mendes SA, established in Lugano (Switzerland), represented by M. Cavattoni, avvocato,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Actial Farmaceutica Srl, established in Rome (Italy),

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed)

composed of L. Bay Larsen, Vice-President of the Court, P.G. Xuereb and A. Kumin (Rapporteur), 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, Mendes SA asks the Court of Justice to set aside the judgment of the General Court of the European Union of 30 November 2022, Mendes v EUIPO – Actial Farmaceutica (VSL3TOTAL) (T-678/21, not published, EU:T:2022:738; ‘the judgment under appeal’), by which the General Court dismissed the appellant’s action for annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 August 2021 (Case R 1568/2020-2), concerning invalidity proceedings between Actial Farmaceutica Srl and Mendes SA.

 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 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 in the form of a reasoned order.

6        In support of its request that the appeal be allowed to proceed, the appellant claims, in the first place, that the General Court infringed Article 53(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), read in conjunction with Article 8(1)(b) of that regulation. In that regard, it submits that, although the goods covered by the mark applied for VSL3TOTAL belong to the same class as the goods covered by the earlier EU trade mark VSL#3, they are substantially different, with the result that the appeal should therefore be upheld.

7        In the second place, the appellant claims that the General Court infringed Article 5(2)(b) of Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and Regulation (EC) No 2006/2004 of the European Parliament and of the Council (‘Unfair Commercial Practices Directive’) (OJ 2005 L 149, p. 22). In that context, it submits that, by considering VSL3TOTAL to be identical to VSL#3, the General Court materially distorted the decision-making power and economic behaviour of the particular group of consumers. Persons with inflammatory bowel disease and pouchitis are ‘vulnerable consumers’ whose health will be improved by VSL3TOTAL, but would not be improved by VSL#3.

8        In the third place, the appellant claims that the General Court infringed Article 36 of the Statute of the Court of Justice of the European Union. In that regard, the appellant submits that, without giving reasons for its decision, the General Court endorsed the decision of the Board of Appeal of EUIPO by holding that the appellant had not succeeded in showing that end consumers and professionals in the medical and pharmaceutical sectors perceived the earlier mark as a common name for the goods concerned in Class 5 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

9        In the fourth place, the appellant complains that the General Court and the Board of Appeal of EUIPO infringed Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation. In that context, it submits that the General Court and the Board of Appeal of EUIPO attached disproportionate importance to the first part of the signs at issue and that it matters little that they share a different number of letters.

10      In the fifth and last place, the appellant submits that its right to property guaranteed by Article 1 of Protocol No 1 to the European Convention on Human Rights was violated by the General Court. On that basis, it claims, inter alia, that it has the agreement of and licence from Prof. De Simone, inventor and owner of the know-how and of the original product, for marketing the De Simone formulation, that is to say, the ‘original’ VSL#3, while Actial Farmaceutica and another company developed another formulation and used another strain producer, which resulted in a new product, which, however, continued to be marketed under the name of VSL#3 and benefited from the reputation of the original product. However, that created a situation which misled the public and consumers, who are convinced that they are purchasing the ‘original’ VSL#3 product.

11      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 29 November 2022, Munich v EUIPO, C-577/22 P, not published, EU:C:2022:940, paragraph 10).

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 of the Court of Justice, 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 (order of 30 January 2023, bonnanwalt v EUIPO, C-580/22 P, ECLI:EU:C:2023:126, not published, paragraph 11 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 (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C-382/21 P, EU:C:2021:1050, paragraph 22, and of 29 November 2022, Munich v EUIPO, C-577/22 P, not published, EU:C:2022:940, paragraph 12).

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, as regards the appellant’s arguments, summarised in paragraphs 6 to 10 of the present order, it should be noted that, although the appellant does indeed rely on errors of law allegedly made by the General Court, the fact remains that it merely sets them out and submits arguments of a general nature, without claiming or demonstrating that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law that would justify allowing the appeal to proceed. Therefore, it must be held that the appellant has not met all of the requirements set out in paragraph 13 of the present order.

16      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.

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

 Costs

18      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.

19      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.      Mendes SA shall bear its own costs.

Luxembourg, 19 April 2023.

A. Calot Escobar

L. Bay Larsen

Registrar

President of the Chamber determining whether appeals may proceed

*      Language of the case: English.