Order of 4 Jun 2020, C-97/20 (Société des produits Nestlé v Amigüitos pets & life and EUIPO), ECLI:EU:C:2020:442.

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

4 June 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-97/20 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 24 February 2020,

Société des produits Nestlé SA, established in Vevey (Switzerland), represented by A. Jaeger-Lenz, C. Elkemann and A. Lambrecht, Rechtsanwälte,

appellant,

the other parties to the proceedings being:

Amigüitos pets & life SA, established in Lorca (Spain), represented by N.A. Fernández Fernández-Pacheco, abogado,

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, I. Jarukaitis and E. Juhász (Rapporteur), Judges,

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

Registrar: A. Calot Escobar,

makes the following

Order

1        By its appeal, Société des produits Nestlé SA asks the Court of Justice to set aside the judgment of the General Court of the European Union of 19 December 2019, Amigüitos pets & life v EUIPO — Société des produits Nestlé (THE ONLY ONE by alphaspirit wild and perfect) (T-40/19, not published, EU:T:2019:890; ‘the judgment under appeal’), by which the General Court annulled the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 19 November 2018 (Case R 272/2018-4), concerning opposition proceedings between Société des produits Nestlé  and Amigüitos pets & life.

 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 of Justice first decides that it should be allowed to do so.

3        In accordance with the third paragraph of Article 58a of the Statute of the Court of Justice, an appeal is to be allowed to proceed, wholly or in part, in accordance with the detailed rules set out in the Court’s Rules of Procedure, 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 the Statute of the Court of Justice of the European Union, 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 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 support of its request that the appeal be allowed to proceed, the appellant submits that the appeal raises issues that are significant with respect to the unity and consistency of EU law.

7        First, the appellant submits that its appeal raises an issue that is significant with respect to the unity and consistency of EU law owing to the fact that the General Court infringed 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) by disregarding the principles to be applied when assessing the dominant elements of a sign in the comparison of trade marks. In addition, the appellant criticises the General Court for having departed from its case-law by failing to determine the overall impression made on the target public by the sign for which registration was sought, by means of an analysis of the components of the sign and of their relative weight in the perception of the target public, in order to assess the likelihood of confusion. According to the appellant, if the General Court had properly carried out that analysis, it should have found that the elements ‘THE ONLY ONE’ are ‘visually the most outstanding’ and constitute the dominant element of the sign and, consequently, it should have reached the conclusion that there was at least an average degree of similarity between the signs at issue and, therefore, a likelihood of confusion. A decision of principle by the Court of Justice is therefore necessary in order to ensure legal certainty for future proceedings.

8        Second, the appellant criticises the General Court for having disregarded, in breach of Article 8(1)(b) of Regulation 2017/1001, the principles established by the case-law of the Court of Justice and the General Court relating to the assessment of a sign’s distinctiveness, in that the General Court did not take into account the distinctiveness of the individual components of the signs at issue when it assessed the similarity between them. According to the appellant, if the General Court had examined the distinctiveness of those components correctly, it should have reached the conclusion that both the figurative elements and word elements ‘by α alpha spirit (wild and perfect)’, as an umbrella brand, should be given less importance in the overall comparison of the signs due to, inter alia, their subsidiary position and low degree of distinctiveness. The appellant argues that such a failure to take account of the principles established by the case-law of the Court of Justice and the General Court makes a decision of principle by the Court of Justice necessary in order to ensure legal certainty for future proceedings.

9        Third, the appellant submits that the General Court, in paragraph 51 of the judgment under appeal, clearly misinterpreted the judgment of 8 May 2014, Bimbo v OHIM (C-591/12 P, EU:C:2014:305), in so far as it concluded that the element ‘ONE’ does not have an independent distinctive role in the mark applied for. In the appellant’s view, the General Court, in breach of Article 8(1)(b) of Regulation 2017/1001, clearly departed from the principle established by that judgment — that, in order to rule out the existence of an independent distinctive role, the meaning of the individual components must be analysed — which is capable of undermining the application of that principle in future cases. A decision of principle by the Court of Justice is therefore required in order to ensure legal certainty and the unity and consistency of EU law.

10      Fourth, the appellant takes issue with the General Court for having wrongly assumed that the findings of the Board of Appeal were either insufficient or unconvincing for the purpose of showing that enhanced distinctiveness could be established on the basis of a mark presented in a different form. The appellant takes the view, on the contrary, that the Board of Appeal’s findings are relevant and substantiated by the case-law of the Court of Justice. Thus, with respect to the unity and consistency of EU law, the appellant argues that a decision of principle by the Court of Justice is necessary in order to ensure legal certainty and to avoid any repetition of the error of law made by the General Court in the present case.

11      Fifth, the appellant submits that the General Court infringed Article 8(5) of Regulation 2017/1001 in so far as it found that the conditions for establishing that the mark has a reputation under a different form of the earlier mark were not satisfied in the present case. According to the appellant, the conditions under which the proprietor of a mark may rely on evidence of its reputation under a different form raise an issue that is significant with respect to the unity and consistency of EU law.

12      Sixth, the appellant contends that the General Court infringed the principle of equal treatment by departing from EU case-law, as demonstrated by the arguments raised in its request that the appeal be allowed to proceed. The appellant submits that comparable cases cannot be treated differently and that the issue of whether the General Court was entitled to treat the present case differently from the cases referred to in the above arguments, set out in its request that the appeal be allowed to proceed, is significant with respect to the unity and consistency of EU law.

13      As a preliminary point, it should be noted 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).

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(1) and Article 170c(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 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 11 February 2020, Rutzinger-Kurpas v EUIPO, C-887/19 P, not published, EU:C:2020:91, paragraph 10 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 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 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).

16      Therefore, 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 (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, first, the arguments mentioned in paragraphs 7 to 9 above, it should be noted that, while the appellant identifies the errors of law allegedly made by the General Court, those arguments neither sufficiently explain nor, in any event, demonstrate in what respect such infringements of Article 8(1)(b) of Regulation 2017/1001, even if established, raise issues that are significant with respect to the unity and consistency of EU law which justify the appeal being allowed to proceed.

18      In accordance with the burden of proof which lies with the appellant requesting that the 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 and development of EU law, the scope of that criterion going beyond the judgment under appeal and, ultimately, its appeal. In order to demonstrate that that is the case, it is necessary to establish both the existence and significance of such issues by means of concrete evidence specific to the particular case and not simply arguments of a general nature (see, to that effect, order of 12 March 2020, Roxtec v EUIPO, C-893/19 P, not published, EU:C:2020:209, paragraph 19).

19      However, the appellant’s arguments fail to demonstrate that that is the case. By its arguments, the appellant merely states that the scope of the judgment under appeal is of general interest without, however, providing clear and concrete arguments specific to the particular case in order to show in what respect issues that are significant with respect to the unity or consistency of EU law are raised by (i) the manner in which the dominant character of the individual components is assessed when comparing the signs; (ii) the failure to apply the case-law on the distinctiveness of a sign which is made up of individual components; and (iii) the failure to analyse the individual components of a sign in order to rule out the existence of an independent distinctive role, all of which the appellant alleges.

20      Furthermore, it should be noted, first, that the allegation that the General Court disregarded the case-law of the Court of Justice in a given judgment is not sufficient, in itself, to establish, in accordance with the burden of proof which lies with the appellant requesting that an appeal be allowed to proceed, that the 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 set out, succinctly but clearly and precisely, first, where the conflict which it alleges lies, identifying both the paragraphs of the judgment or order under appeal which it is calling into question and those of the decision of the Court of Justice which were disregarded, and, second, the specific reasons for which it takes the view that such a conflict raises an issue which is significant with respect to the unity, consistency or development of EU law (order of 7 October 2019, L’Oréal v EUIPO, C-586/19 P, not published, EU:C:2019:842, paragraph 16 and the case-law cited). None of those requirements are satisfied in the present case.

21      Second, an argument that the General Court departed from its earlier case-law 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, 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 and the case-law cited). The appellant merely states that the General Court failed to apply its earlier case-law when assessing both the dominant elements of the sign in the comparison of the marks and the distinctiveness of the individual components of the signs and that, in order to avoid any such failure in future proceedings and to ensure legal certainty in those proceedings, a decision of principle by the Court of Justice is necessary.

22      Next, as regards the argument referred to in paragraph 10 of the present order, regarding the alleged error of assessment by the General Court in finding that the Board of Appeal was wrong to consider that proof of the reputation of the earlier mark ONE had been furnished, that assessment is factual in nature. The General Cout found, in paragraph 109 of the judgment under appeal, that the Board of Appeal did not raise the question of whether or not the reputation of the earlier mark ONE could be established on the basis of a mark presented in a different form, and it is apparent from paragraph 103 of that judgment that the evidence produced by the appellant established the reputation of the mark PURINA ONE and not that of the earlier mark ONE. An argument criticising the General Court for having erred in its assessment of the facts cannot claim that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law (order of 11 February 2020, Rutzinger-Kurpas v EUIPO, C-887/19 P, not published, EU:C:2020:91, paragraph 14).

23      Lastly, as regards the arguments mentioned in paragraphs 11 and 12 of the present order, it is clear that such arguments are not sufficient to establish that the appeal raises issues that are 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 (order of 24 October 2019, Porsche v EUIPO, C-613/19 P, EU:C:2019:905, paragraph 17 and the case-law cited). The appellant fails to comply with those requirements since those arguments merely refer to the claims set out in the presentation of the various arguments in its request that the appeal be allowed to proceed, without providing any other indication as to why the errors of law made by the General Court — alleged by the appellant and set out in paragraphs 11 and 12 of the present order — even if established, raise issues that are significant with respect to the unity, consistency or development of EU law. In addition, in so far as the arguments referred to in paragraph 12 of the present order merely allege that the judgment under appeal failed to apply the settled case-law of the EU judicature, it is clear that those allegations do not satisfy the requirements referred to in paragraphs 20 and 21 of the present order.

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 the appeal raises issues that are significant with respect to the unity, consistency or development of EU law.

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

 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.      Société des produits Nestlé SA shall bear its own costs.

Luxembourg, 4 June 2020.

A. Calot Escobar

R. Silva de Lapuerta

Registrar

President of the Chamber determining

whether appeals may proceed

*      Language of the case: English.