Order of 24 Mar 2023, C-735/22 (Primagran v EUIPO), ECLI:EU:C:2023:261.

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

24 March 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-735/22 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 29 November 2022,

Primagran sp. z o.o., established in Stegna (Poland), represented by E. Jaroszyńska-Kozłowska, radca prawny,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Compagnie des gaz de pétrole Primagaz, established in Paris (France),

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of L. Bay Larsen, Vice-President of the Court, G. Xuereb and I. Ziemele (Rapporteur), Judges,

Registrar: A. Calot Escobar,

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

makes the following

Order

1        By its appeal, Primagran sp. z o.o. asks the Court of Justice to set aside the order of the General Court of the European Union of 22 September 2022, Primagran v EUIPO – Primagaz (prımagran) (T-624/21, not published, EU:T:2022:620; ‘the order under appeal’) by which the General Court dismissed its action for annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 July 2021 (Case R 2486/2020-4), concerning opposition proceedings between Primagran sp. z o.o. and Compagnie des gaz de pétrole Primagaz.

 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        Pursuant to 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 to rule on that request.

5        In accordance with Article 170b(1) and (3) of the Rules of Procedure, 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 that both grounds relied on in support of its appeal raise issues that are significant with respect to the unity, consistency and development of EU law as regards the unitary character of trade mark law and disputes based on EU trade marks.

7        By its first ground of appeal, the appellant argues that the General Court erred in finding, in paragraphs 91 and 108 of the order under appeal, that the graphic element of the earlier EU trade mark ‘PRIMA’ was merely decorative and played a secondary role. Furthermore, in the appellant’s view, that order contradicts the decision of the Cancellation Division of EUIPO of 28 November 2022, taken in other proceedings between the same parties, by which the Cancellation Division held that, due to its position, size and design, the graphic element of that mark could not be negligible or perceived as a secondary element. According to the appellant, that contradiction leads to an inconsistency in EU case-law as regards composite marks, the relationship between the graphic and word elements and their importance in the visual comparison, as well as the global assessment of the likelihood of confusion.

8        By its second ground of appeal, the appellant submits that the order under appeal gives rise to further confusion in respect of the development of EU law as regards the issue of ‘overprotection’ of the earlier weak marks in the assessment of the likelihood of confusion and the automatic granting of a dominant position to word elements in relation to the figurative elements in composite marks, which is surprising in the light of the judgment of the Court of Justice of 5 March 2020, Foundation for the Protection of the Traditional Cheese of Cyprus named Halloumi v EUIPO (C-766/18 P, EU:C:2020:170) and of the judgment of 12 May 2021, Metamorfoza v EUIPO – Tiesios kreivės (MUSEUM OF ILLUSIONS) (T-70/20, not published, EU:T:2021:253). In the appellant’s view, it is necessary for the Court, in that regard, to determine the relationship between the word and graphic elements in composite marks where, first, the graphic element of the earlier mark was wrongly found to be merely decorative and to have a secondary role, whereas the graphic elements of the marks under comparison are different and, second, the common word element has at least a weak distinctive character.

9        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 (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C-382/21 P, EU:C:2021:1050, paragraph 20 and the case-law cited).

10      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, 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 (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C-382/21 P, EU:C:2021:1050, paragraph 21, and of 16 November 2022, EUIPO v Nowhere, C-337/22 P, EU:C:2022:908, paragraph 24).

11      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 (order of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C-382/21 P, EU:C:2021:1050, paragraph 22 and the case-law cited).

12      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 (orders of 24 October 2019, Porsche v EUIPO, C-613/19 P, EU:C:2019:905, paragraph 16, and of 20 October 2022, Fidelity National Information Services v EUIPO, C-446/22 P, not published, EU:C:2022:827, paragraph 14).

13      In the present case, as regards the arguments summarised in paragraph 7 of the present order, it should be noted, first, that, in so far as it disputes the General Court’s assessment relating to the similarity of the signs at issue, the appellant is seeking in actual fact to call into question the factual assessment made by the General Court in that regard. Such a line of argument is not, in principle, likely to raise an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 17 October 2022, SFD v EUIPO, C-383/22 P, not published, EU:C:2022:799, paragraph 15 and the case-law cited).

14      Second, as regards the alleged contradiction between the order under appeal and the decision of the Cancellation Division of EUIPO of 28 November 2022, it must be stated, in any event, that, since that decision postdates the order under appeal, it is not capable of calling into question the legality of that order. Therefore, the contradiction relied on cannot, in any event, raise an issue that is significant with respect to the unity, consistency and development of EU law.

15      Furthermore, as regards the argument set out in paragraph 8 of the present order, in so far as the appellant criticises the General Court for having failed to have regard to its case-law and that of the Court of Justice, it should be borne in mind that that claim is not, in itself, sufficient to establish, in accordance with the burden of proof which lies with the appellant requesting that an appeal be allowed to proceed, 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 11 of the present order (order of 7 June 2022, Magic Box Int. Toys v EUIPO, C-194/22 P, not published, EU:C:2022:463, paragraph 17 and the case-law cited). None of those requirements is satisfied in the present case. In particular, the request that the appeal be allowed to proceed does not set out either where the alleged contradiction lies, by identifying the paragraphs of the order under appeal which the appellant is calling into question and those of the judgments of the Court of Justice and of the General Court which, according to the appellant, have been infringed, or the concrete reasons why such a contradiction raises an issue that is significant with respect to the unity, consistency or development of EU law.

16      In those circumstances, it must be held that the request submitted by the appellant 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 the foregoing considerations, the appeal should not be allowed to proceed.

 Costs

18      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.

19      Since the present order was adopted before the appeal was served on the other parties to the proceedings and, therefore, before those other parties 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.      Primagran sp. z o.o. shall bear its own costs.

Luxembourg, 24 March 2023.

A. Calot Escobar

L. Bay Larsen

Registrar

President of the Chamber determining whether appeals may proceed

*      Language of the case: English.