Order of 28 May 2020, C-52/20 (K.A. Schmersal Holding v EUIPO), ECLI:EU:C:2020:416.

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

28 May 2020 (*)

(Appeal — EU trade mark — Whether appeals may 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-52/20 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 30 January 2020,

K.A. Schmersal Holding GmbH & Co. KG, established in Wuppertal (Germany), represented by A. Haudan, Rechtsanwalt,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Tecnium, SL, established in Manresa (Spain), represented by E. Sugrañes Coca, abogada,

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of R. Silva de Lapuerta, Vice-President of the Court, M. Safjan and L. Bay Larsen (Rapporteur), 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, K.A. Schmersal Holding GmbH & Co. KG asks the Court to set aside the judgment of the General Court of the European Union of 21 November 2019, K.A. Schmersal Holding v EUIPO — Tecnium (tec.nicum) (T-527/18, not published, EU:T:2019:798; ‘the judgment under appeal’), by which the General Court dismissed the appellant’s action for annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 21 June 2018 (Case R 2427/2017-5), relating to opposition proceedings between Tecnium and K.A. Schmersal Holding.

 Whether the appeal should be allowed to proceed

2        Pursuant to 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(3) of those rules, the Court is to rule on the request that the appeal be allowed to proceed in the form of a reasoned order.

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

7        In the first place, the appellant argues that the appeal raises issues that are significant with respect to the development of EU law because of their novelty. In particular, the appeal raises, in essence, the question whether, when assessing the distinctiveness of the elements of the earlier composite mark, the General Court erred in finding that that mark was composed of only one figurative element and that the capital letter ‘t’, which does not have its own distinctive function, was part of that figurative element.

8        In the second place, the appellant submits, claiming that the General Court incorrectly assessed the dominant element of the earlier mark, that the appeal raises two issue that are significant with respect to the consistency and development of EU law.

9        Specifically, according to the appellant, the appeal raises questions, first, as to whether the composition of the elements of the earlier composite mark, in particular the capital letter ‘t’, supports the finding that the word element ‘tecnium’ is the dominant element of that mark. Second, the appeal raises the question whether the word element of such a mark may be regarded as dominating the overall impression, even where the distinctiveness of the figurative element is equally low as that of the word element and the word element contains a descriptive part.

10      Furthermore, the appellant complains that the General Court disregarded the settled case-law of the Court of Justice according to which the overall impression conveyed by the composite mark must serve as a basis for the assessment of the likelihood of confusion, in particular the judgment of 12 June 2007, OHIM v Shaker (C-334/05 P, EU:C:2007:333, paragraph 41).

11      In the third, and last place, the appellant submits that the appeal raises a significant issue with respect to the consistency of EU law in so far as the General Court disregarded the rule that a composite mark must be assessed as a whole. More specifically, the appellant raises questions as to whether EU law allows for an assessment which breaks down the figurative element of such a mark and whether the white circle, of which the figurative element of the earlier composite mark at issue is composed, contributes to the distinctive character of the word element ‘tecnium’.

12      First, it must be observed 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 16 September 2019, Kiku v CPVO, C-444/19 P, not published, EU:C:2019:746, paragraph 11).

13      It must also be noted that, as is apparent 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 of the Court 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 order of 24 October 2019, Porsche v EUIPO, C-613/19 P, EU:C:2019:905, paragraph 14 and the case-law cited).

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

15      Consequently, a request that an appeal be allowed to proceed which does not contain the information mentioned in the preceding paragraph 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 (see order of 24 October 2019, Porsche v EUIPO, C-613/19 P, EU:C:2019:905, paragraph 16 and the case-law cited).

16      In the present case, concerning, in the first place, the appellant’s arguments as regards the significance of the issues it raises with respect to the development of EU law, because of their novelty, set out in paragraph 7 of this order, it must be stated that the fact that an issue of law has not been examined by the Court does not mean, however, that that issue is necessarily one of significance with respect to the development of EU law, and the appellant remains bound to demonstrate that significance by providing detailed information not only on the novelty of that issue, but also on the reasons why that issue is significant in relation to the development of EU law (order of 30 September 2019, All Star v EUIPO, C-461/19 P, not published, EU:C:2019:797, paragraph 16). It is not apparent from the present request that this has been demonstrated, as the appellant merely states in a generic manner that the issues in question have not previously been subject to review by the Court.

17      In the second place, as regards the arguments set out in paragraphs 8 and 9 of the present order that the General Court, in essence, erred in its assessment of the dominant element of the earlier composite mark, in particular, by failing to take into account the fact that the distinctiveness of the figurative element is equally low as that of the word element and that the word element contains a descriptive part, it must be noted that, in accordance with the burden of proof which lies with the appellant requesting that the appeal be allowed to proceed, such arguments are not, in themselves, sufficient to establish that that appeal raises issues that are significant with respect to the consistency and development of EU law, the appellant having to comply to that end with all the requirements set out in paragraph 14 of this order (see order of 24 October 2019, Porsche v EUIPO, C-613/19 P, EU:C:2019:905, paragraph 17 and the case-law cited). In the present case, the appellant has not complied with such requirements since its request that the appeal be allowed to proceed does not provide any information capable of establishing how the General Court’s incorrect assessment of the dominant element of the earlier mark, even if it were to be established, raises an issue that is significant with respect to the unity, consistency and development of EU law which would justify allowing the appeal to proceed.

18      In addition, in so far as the assessment carried out by the General Court of the dominant character of an element of a mark requires an analysis of a factual nature (see judgments of 6 September 2012, United States Polo Association v OHIM, C-327/11 P, not published, EU:C:2012:550, paragraphs 59 and 61, and of 21 February 2013, Seven for all mankind v Seven, C-655/11 P, not published, EU:C:2013:94, paragraph 85), it must be held that a claim that the General Court erred in its assessment of the facts cannot establish that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 11 February 2020, Rutzinger-Kurpas v EUIPO, C-887/19 P, EU:C:2020:91, paragraph 14).

19      In addition, the argument set out in paragraph 10 of this order that the General Court departed from the Court of Justice’s case-law in a given order or judgment is not, in itself, sufficient to establish, in accordance with the evidential burden which is borne by the party requesting that an appeal be allowed to proceed, that that appeal raises an issue which is significant with respect to the unity, consistency or development of EU law. For that purpose, the party requesting that its appeal be allowed to proceed must, in its request that the appeal be allowed to proceed, comply with the requirements in paragraph 14 of this order.

20      In the present case, the appellant has failed to comply with all those requirements.

21      In the third and last place, as regards the argument set out in paragraph 11 of the present order, it must be held that, contrary to the requirements in paragraph 14 of this order, the appellant has failed to explain how the alleged misunderstanding of the rule that a composite mark must be assessed as a whole, even if it were established, raises an issue that is significant with respect to the consistency of EU law.

22      In those circumstances, it must be held that the appellant’s request is not capable of establishing that the appeal raises issues that are significant with respect to the unity, consistency or development of EU law.

23      In the light of the foregoing considerations, the request that the appeal be allowed to proceed must be dismissed.

 Costs

24      Under Article 137 of the Rules of Procedure, applicable to the procedure on appeal by virtue of Article 184(1) of those rules, a decision as to costs is to be given in the judgment or order which closes the proceedings.

25      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.      K.A. Schmersal Holding GmbH & Co. KG shall bear its own costs.

Luxembourg, 28 May 2020.

A. Calot Escobar

R. Silva de Lapuerta

Registrar

President of the Chamber determining

whether appeals may proceed

*      Language of the case: English.