Order of 5 May 2021, C-5/21 (Deutsche Post v EUIPO), ECLI:EU:C:2021:359.

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

5 May 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 a significant issue with respect to the unity, consistency or development of EU law – Appeal not allowed to proceed)

In Case C-5/21 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 6 January 2021,

Deutsche Post AG, established in Bonn (Germany), represented by M. Viefhues, Rechtsanwalt,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Pošta Slovenije d.o.o., established in Maribor (Slovenia), represented by M. Kavčič and R. Jerovšek, odvetniki,

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of R. Silva de Lapuerta, Vice-President of the Court, M. Ilešič and E. Juhász (Rapporteur), Judges,

Registrar: A. Calot Escobar,

having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, P. Pikamäe,

makes the following

Order

1        By its appeal, Deutsche Post AG asks the Court of Justice to set aside the judgment of the General Court of the European Union of 11 November 2020, Deutsche Post v EUIPO – Pošta Slovenije (Representation of a stylised horn) (T-25/20, not published, EU:T:2020:537; ‘the judgment under appeal’), by which the General Court dismissed its action for annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 November 2019 (Case R 994/2019-1), relating to opposition proceedings between Deutsche Post and Pošta Slovenije.

 Whether the appeal should 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 first decides that it should be allowed to do so.

3        In accordance with the third paragraph of Article 58a of the 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, 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 those 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 is to rule, as soon as possible, in the form of a reasoned order, on the request that the appeal be allowed to proceed.

6        In support of its request that the appeal be allowed to proceed, the appellant submits that the appeal raises two issues which are significant with respect to the unity, consistency or development of EU law.

7        In the first place, the appellant complains that the General Court ruled out, in paragraphs 45 to 47 of the judgment under appeal, the existence of a likelihood of confusion by holding that the figurative element representing a postal horn of the earlier mark had a weak distinctive character, while, in paragraph 54 of the judgment under appeal, it held, in essence, that the marks at issue lacked distinctive character, on account of the fact that the postal horn and the colour yellow refer to the services of several national postal operators.

8        First of all, according to the appellant, that solution is incompatible with the coexistence of opposition proceedings and registration or invalidity proceedings, since an absolute ground for refusal of registration, such as the lack of distinctive character of a mark, must be relied on in invalidity proceedings and since, by contrast, in opposition proceedings, only relative grounds for refusal may be put forward.

9        Next, the appellant submits that denying the distinctive character of the marks at issue would be inconsistent with the coexistence of EU trade marks and national trade marks, as the Court of Justice pointed out in the judgment of 24 May 2012, Formula One Licensing v OHIM (C-196/11 P, EU:C:2012:314).

10      Furthermore, the appellant submits that, in accordance with the judgment of 5 May 2015, Skype v OHIM – Sky and Sky IP International (SKYPE) (T-183/13, not published, EU:T:2015:259, paragraph 50), in order to assess the likelihood of confusion between two marks, it is necessary to take account of the knowledge on the part of the relevant public of the earlier mark and not that of the mark in respect of which registration is sought. According to the appellant, the distinctive character of the mark applied for must be taken into consideration in circumstances such as those of the present case, failing which the coexistence of opposition proceedings and invalidity proceedings subsequent to the opposition would be disregarded.

11      Lastly, the appellant submits that that issue is significant for the consistency of EU trade mark law in the light of the coexistence of proceedings and the case-law arising from the judgments of 24 May 2012, Formula One Licensing v OHIM (C-196/11 P, EU:C:2012:314), and of 5 May 2015, Skype v OHIM – Sky and Sky IP International (SKYPE) (T-183/13, not published, EU:T:2015:259).

12      In the second place, the appellant complains that the General Court erred in law in holding, in paragraph 54 of the judgment under appeal, that the two signs at issue form part of a tradition of the postal sector and that, therefore, the public will not associate them with the appellant, but more generally with the services of a number of national postal operators. The appellant submits that, in the absence of a finding of substantial use of those signs by competitors of the former monopoly holder concerned in the territory of the former monopoly holder, denying the distinctive character of the signs is not consistent with the judgment of 18 June 2002, Philips (C-299/99, EU:C:2002:377, paragraph 65). Furthermore, for the purposes of the consistency of EU law, the Court should hold that a sign which has been used by a former national monopoly holder and associated with it will continue to be associated with that former national monopoly, or with its successor, if the successor or its successor continues to use the sign after the expiry of the monopoly, unless and until a substantial proportion of competitors active in the territory of the former national monopoly holder or its successor use that sign or a similar sign capable of being confused and those signs coexist in that territory.

13      First, 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).

14      Further, 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, 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 (order of 26 November 2020, Scorify v EUIPO, C-418/20 P, not published, EU:C:2020:968, paragraph 18 and the case-law cited).

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

16      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).

17      In the present case, as regards, in the first place, the series of arguments referred to in paragraphs 7 to 11 above, it must be noted, first of all, that the complaint made against the General Court, set out in paragraph 8 above, cannot establish that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law which justifies the appeal being allowed to proceed. The appellant, which in fact seeks to demonstrate a certain inconsistency in the reasoning of the judgment under appeal, submits that, in paragraph 54 of that judgment, the General Court found that the earlier mark lacked distinctive character. However, that paragraph must not be read in isolation but together with other paragraphs of that judgment, in particular the following paragraph thereof, where express reference is made to ‘the weak distinctive character of the earlier mark’. In the light of paragraph 55 of the judgment under appeal, paragraph 54 thereof thus cannot support the interpretation of that paragraph advocated by the appellant, which forms the basis of its complaint.

18      Next, in so far as the appellant’s line of argument, referred to in paragraph 9 of the present order, is based on the non-conformity of the judgment under appeal with the case-law of the Court of Justice, it must be noted that such an argument is not, in itself, 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 15 of the present order (see, to that effect, order of 24 October 2019, Porsche v EUIPO, C-613/19 P, EU:C:2019:905, paragraph 17).

19      More specifically, although the appellant sets out the paragraphs of the judgment under appeal and those of the decision of the Court of Justice which have been disregarded, nonetheless it does not provide sufficient information as to the similarity of the situations referred to in those judgments such as to establish the reality of the contradiction alleged (see, to that effect, order of 13 February 2020, Confédération nationale du Crédit Mutuel v Crédit Mutuel Arkéa, C-867/19 P, not published, EU:C:2020:103, paragraph 18). Nor does the appellant provide any information as to the specific reasons for which such a contradiction raises an issue that is significant with respect to the unity, consistency or development of EU law. The appellant merely states that the issue is significant for the consistency of EU law, in the light of the coexistence of proceedings and the case-law arising from the judgments referred to in paragraph 11 of this order.

20      Lastly, as regards the reference to the judgment of 5 May 2015, Skype v OHIM – Sky and Sky IP International (SKYPE) (T-183/13, not published, EU:T:2015:259, paragraph 50), in paragraph 10 of the present order, suffice it to note that the appellant neither alleges nor, in any event, demonstrates any infringement of that decision by the judgment under appeal.

21      In the second place, as regards the argument summarised in paragraph 12 of the present order, that the General Court, by denying the distinctive character of the earlier mark, disregarded the judgment of 18 June 2002, Philips (C-299/99, EU:C:2002:377) and, in particular, paragraph 65 thereof, it must be recalled that, as is apparent from paragraph 17 of the present order, it cannot be held that, in paragraph 54 of the judgment under appeal, the General Court concluded that the earlier mark lacked distinctive character.

22      In any event, in that line of argument, the appellant does not provide any information as to the similarity of the situations referred to in those judgments such as to establish the reality of the contradiction alleged (see, to that effect, order of 13 February 2020, Confédération nationale du Crédit Mutuel v Crédit Mutuel Arkéa, C-867/19 P, not published, EU:C:2020:103, paragraph 18). The appellant has not shown how the issue of the judgment of 18 June 2002, Philips (C-299/99, EU:C:2002:377), concerning the cancellation of the registration of a national mark consisting exclusively of the shape of the product, is similar to that of the present case, concerning opposition proceedings between two EU trade marks in which the signs do not consist exclusively of the shape of the goods.

23      In those circumstances, it must be concluded 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.

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

 Costs

25      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.

26      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.      Deutsche Post AG shall bear its own costs.

Luxembourg, 5 May 2021.

A. Calot Escobar

R. Silva de Lapuerta

Registrar

President of the Chamber determining

whether appeals may proceed

*      Language of the case: English.