Order of 20 Nov 2019, C-678/19 (Retail Royalty v Fashion Energy), ECLI:EU:C:2019:994.

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

20 November 2019 (*)

(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 the significance of an issue with respect to the unity, consistency or development of EU law — Appeal not allowed to proceed)

In Case C-678/19 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 12 September 2019,

Retail Royalty Co., established in Las Vegas, Nevada (United States), represented by M. Dick, Solicitor, and J. Bogatz, Rechtsanwältin,

appellant,

The other parties to the proceedings being:

Fashion Energy Srl, established in Milan (Italy),

applicant at first instance,

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of R. Silva de Lapuerta, Vice-President of the Court, M. Ilešič (Rapporteur) and C. Lycourgos, 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, Retail Royalty Co. asks the Court to set aside the judgment of the General Court of the European Union of 12 July 2019, Fashion Energy v EUIPO — Retail Royalty (1st AMERICAN) (T-54/18, not published, EU:T:2019:518), whereby the General Court annulled the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 November 2017 (Case R 693/2017-2), in relation to opposition proceedings between Retail Royalty and Fashion Energy.

 The request that the appeal 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 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, 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 European Union 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’s decision on the request that the appeal be allowed to proceed is to take the form of a reasoned order.

6        In the present case, by its appeal, the appellant relies on two grounds, alleging, respectively, infringement of Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now Article 8(1)(b) 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)), and infringement of the principle of proportionality laid down in Article 5(4) TEU and of Article 109 of Regulation 2017/1001.

7        The appellant states that the first ground of appeal is separated into four parts concerning (1) the misinterpretation of the judgment of 6 October 2005, Medion (C-120/04, EU:C:2005:594), (2) the unreasonable misapplication of the requirements for a proper reasoning with regard to the distinctive character of a composite sign, (3) the infringement of Article 94(1) of Regulation No 2017/1001, and (4) infringement of Article 296 TFEU as well as Article 36 of the Statute, which is applicable to the General Court by virtue of the first paragraph of Article 53 of the Statute, and Article 117 of the Rules of Procedure of the General Court.

8        In support of its request that its appeal be allowed, the appellant asserts that each of those grounds of appeal raises issues that are significant with respect to the unity, consistency and development of EU law.

9        In particular, the appellant argues, in the first place, that the first and third parts of the first ground of appeal raise an issue that is significant with respect to the unity, consistency or development of EU law in that the General Court clearly misinterpreted the judgment of 6 October 2005, Medion (C-120/04, EU:C:2005:594). In that regard, it claims that that judgment establishes a rule which only allows for a comparison between the independently distinctive parts of the marks at issue. The General Court departed from that case-law by reviewing the distinctive character of the word elements of the mark applied for by Fashion Energy (‘the mark applied for’).

10      In the second place, the appellant submits that the second part of the first ground of appeal raises an issue that is significant with respect to the unity, consistency and development of EU law in that the General Court infringed the appellant’s right to a fair trial as enshrined in Article 47 of the Charter of Fundamental Rights of the European Union. In that regard, it alleges that the General Court unduly delayed the proceedings by holding that the distinctive character of the mark applied for had not been sufficiently assessed as a whole.

11      In the third place, in the fourth part of the first ground of appeal, the appellant argues that the General Court infringed its obligation to state reasons. According to the appellant, any unclear reasoning not only threatens the right to a fair trial, but also the development and unity of EU law.

12      In the fourth place, by its second ground of appeal, the appellant alleges an infringement of the principle of proportionality as enshrined in Article 5(4) TEU. According to the appellant, any infringement of such a basic and essential principle is without question of significance with respect to the unity, consistency and development of EU law.

13      As a preliminary point, 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 24 October 2019, Porsche v EUIPO, C-613/19 P, EU:C:2019:905, paragraph 13 and the case-law cited).

14      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 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 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 24 October 2019, Porsche v EUIPO, C-613/19 P, EU:C:2019:905, paragraph 14 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 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 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).

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 first place, as regards the argument set out in paragraph 9 above that the General Court has departed from the case-law stemming from the judgment of 6 October 2005, Medion (C-120/04, EU:C:2005:594), 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, that 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, since the appellant must comply to that end with all the requirements set out in paragraph 15 above (see, to that effect, order of 7 October 2019, L’Oréal v EUIPO, C-586/19 P, not published, EU:C:2019:845, paragraph 16). In the present case, the appellant has not complied with those requirements.

18      Furthermore, it must be emphasised that it is apparent from the case-law of the Court that the assessment of the similarity between two marks means more than just taking one component of a composite mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (judgment of 6 October 2005, Medion, C-120/04, EU:C:2005:594, paragraph 29). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C-334/05 P, EU:C:2007:333, paragraph 42).

19      In the present case, since the word elements of the mark applied for were not considered negligible by the General Court, the appellant has not justified to the requisite legal standard how the assessment of the distinctive character of those elements raises an issue that is significant with respect to the unity, consistency or development of EU law.

20      As regards, in the second place, the argument set out in paragraph 10 above, which concerns the second part of the first ground of appeal, it must be held that the explanations provided by the appellant in connection with that argument are not sufficiently clear and precise to enable the Court of Justice to understand the nature of the error of law allegedly committed by the General Court and the specific legal issue raised by that part which is significant with respect to the unity, consistency and development of European Union law, with the result that that argument does not satisfy the requirements referred to in paragraph 15 above and is therefore not capable of establishing that the second part of the first ground of appeal raises an issue that is significant in the light of the criteria set out in the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union.

21      Furthermore, in the event that, by that argument, the appellant complains that the General Court annulled the decision of the Second Board of Appeal of EUIPO, after finding that the latter had erred in assessing the distinctive character of the word elements of the mark applied for, without exercising its power to alter decisions in order to rule on the existence of a likelihood of confusion, thus unduly delaying the duration of the proceedings, that argument is not, in any event, capable of establishing that the second part of the first ground of appeal raises an issue that is significant with respect to the unity, consistency and development of EU law.

22      The power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal of EUIPO or to carry out an assessment on which that Board of Appeal has not yet adopted a position (judgment of 5 July 2011, Edwin v OHIM, C-263/09 P, EU:C:2011:452, paragraph 72).

23      In the third place, as regards the arguments set out in paragraphs 11 and 12 above, it must be stated that the appellant merely relies on the infringement by the General Court of its obligation to state reasons and of the principle of proportionality without, however, complying with the requirements set out in paragraph 15 above.

24      In those circumstances, it must be concluded that the arguments put forward by the appellant in support of its request that its appeal be allowed to proceed are not capable of establishing that its appeal raises issues that are significant with respect to the unity, consistency or development of EU law.

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

 Costs

26      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.

27      Since this 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.      Retail Royalty Co. shall bear its own costs.

Luxembourg, 20 November 2019.

A. Calot Escobar

R. Silva de Lapuerta

Registrar

President of the Chamber determining

whether appeals may proceed

*      Language of the case: English.