Order of 27 Jun 2023, C-77/23 (Haskovo Chamber of Commerce and Industry v EUIPO and Devin), ECLI:EU:C:2023:519.

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

27 June 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-77/23 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 13 February 2023,

Haskovo Chamber of Commerce and Industry, established in Haskovo (Bulgaria), represented by D. Dimitrova and I. Pakidanska, advokati,

appellant,

the other parties to the proceedings being:

Devin EAD, established in Devin (Bulgaria),

applicant at first instance,

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

THE COURT (Chamber determining whether appeals may proceed)

composed of L. Bay Larsen, Vice-President of the Court, D. Gratsias and Z. Csehi (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, Haskovo Chamber of Commerce and Industry asks the Court of Justice to set aside the judgment of the General Court of the European Union of 14 December 2022, Devin v EUIPO – Haskovo Chamber of Commerce and Industry (DEVIN), (T-526/20, not published, EU:T:2022:816) (‘the judgment under appeal’), by which the General Court annulled the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 May 2020 (Case R 2535/2019-1) concerning opposition proceedings between Haskovo Chamber of Commerce and Industry and Devin EAD.

 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        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(1) and (3) of those rules, the Court is to rule on the request that the appeal be allowed to proceed, 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 submits that the four grounds of appeal, the first alleging infringement of Article 52(1)(a), read in conjunction with Article 7(1)(c), of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), the second, infringement of Article 52(2), read in conjunction with Article 52(1)(a), of Regulation No 207/2009, the third, infringement of Article 52(1)(a), read in conjunction with Article 7(1)(f), of Regulation No 207/2009, and the fourth, infringement of Article 52(1)(a), read in conjunction with Article 7(1)(g), of Regulation No 207/2009, all raise an issue that is significant with respect to the unity, consistency or development of EU law.

7        By the first ground of appeal, the appellant claims that the General Court erred in law and disregarded the relevant case-law of the Court of Justice in holding that the Board of Appeal should have re-examined the link between the geographical name Devin constituting the contested mark and the goods referred to other than ‘mineral water complying with the specifications of the protected geographical indication (PGI)’, for which it had been registered.

8        In that regard, the appellant complains that the General Court infringed the principle res judicata of the judgment of 25 October 2018, Devin v EUIPO – Haskovo (DEVIN) (T-122/17, EU:T:2018:719, paragraph 95), which annulled the first decision of the Board of Appeal in the main proceedings (‘the annulment judgment’), namely the decision of the Second Board of Appeal of 2 December 2016 (Case R 579/2016-2). In that judgment, the General Court confirmed that, for the Bulgarian public, the contested mark is descriptive of the geographical origin of all the goods concerned in Class 32. The General Court also disregarded the fact that the proprietor of the contested mark and the applicant at first instance had not disputed in good time that the goods concerned in Class 32 constituted a homogeneous category comprising mineral waters and beverages which may include mineral water as an important or even essential ingredient. The appellant submits that res judicata is a fundamental principle of EU law and that, consequently, failure to observe it alone justifies the significance of the issue it raises.

9        By the second ground of appeal, the appellant claims that the General Court wrongly held that the Board of Appeal erred in law in its assessment of the distinctive character acquired through use of the contested mark.

10      In particular, the appellant submits that, in concluding that the Board of Appeal should not have taken into account the fact that the contested mark ‘should not have been used’ for goods other than ‘mineral water complying with the specification of [the PGI]’, the General Court infringed the fundamental principle that no person may improve his or her position as a result of his or her own fault. According to the appellant, the proprietor of the contested mark could not derive any rights from the unlawful use of the contested mark.

11      Furthermore, the General Court also erred in law in holding that the considerations of the Board of Appeal relating to the protection of geographical indications referred to the application of Article 7(1)(j) 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).

12      The appellant claims that to accept that a trade mark may, through unlawful use, acquire distinctive character through use is likely to give rise to legal uncertainty and inconsistency in EUIPO practice and EU case-law, while being contrary to the fundamental legal principle that no person may improve his or her position through his or her own fault. Those consequences justify the importance of the question raised for the unity, consistency and development of EU law.

13      By the third ground of appeal, divided into two parts, the appellant claims that the General Court erred in law, first, by holding that the Board of Appeal should not have based the finding of invalidity of the contested mark under Article 52(1)(a), read in conjunction with Article 7(1)(f), of Regulation No 207/2009, on a prohibition which does not exist in Bulgarian law and, second, by treating an erroneous reference to a provision as an error of law.

14      In the first part of the third ground of appeal, the appellant claims that a national prohibition on the registration of trade marks composed exclusively of registered geographical indications and derivatives of geographical names, although contained in the section dealing with ‘relative grounds’ of the law, must not be disregarded in the assessment under Article 52(1)(a), read in conjunction with Article 7(1)(f), of Regulation No 207/2009, where, at the time of filing of the contested mark, the national registration procedure consisted of an ex officio examination of both the absolute grounds for refusal and the relative grounds for refusal.

15      In the second part of the third ground of appeal, the appellant submits that an erroneous reference to a provision of the law does not constitute an error of law, provided that the content of that provision is properly examined, that the correct numbering of the article was clarified in the course of the proceedings and that it is correctly indicated in the evidence provided.

16      It follows from the foregoing that the third ground of appeal raises two issues that are significant with respect to the unity, consistency or development of EU law.

17      By the fourth and final ground of appeal, the appellant claims that the General Court erred in law, first, by failing to hold that the fact that the Bulgarian public perceives the term ‘divin’ as a reference to mineral water with specific properties had acquired the force of res judicata, second, by concluding that the Board of Appeal should have limited its assessment under that ground to ‘spring water’ and ‘table water’, third, by failing to consider that it is not necessary to prove well-known facts, and, fourth, by failing to recognise that the Board of Appeal must examine legal issues irrespective of whether or not they have been invoked by the parties.

18      In particular, the appellant claims that, in a case referred by the General Court to the Board of Appeal, the principle of res judicata is applicable to findings concerning the elements relevant to the assessment of the misleading nature of a trade mark under Article 52(1)(a), read in conjunction with Article 7(1)(g), of Regulation No 207/2009.

19      Furthermore, according to the appellant, the assessment of the misleading nature of a trade mark in invalidity proceedings must relate to the whole of the homogeneous group comprising the goods under discussion, as well as the well-known facts and legal issues, irrespective of whether or not those facts and issues have been relied on by the parties.

20      Thus, the fourth ground of appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.

21      As a preliminary point, it should be noted that it is for the appellant to show 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).

22      Moreover, 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 the second sentence of 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 rule on that application and to determine, 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 (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C-382/21 P, EU:C:2021:1050, paragraph 21, and of 30 January 2023, bonnanwalt v EUIPO, C-580/22 P, EU:C:2023:126, paragraph 11).

23      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 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 influence 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 judgment or order 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 (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C-382/21 P, EU:C:2021:1050, paragraph 22, and of 30 January 2023, bonnanwalt v EUIPO, C-580/22 P, EU:C:2023:126, paragraph 12).

24      A request that an appeal be allowed to proceed which does not contain the elements set out in the preceding paragraph of this 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).

25      In the present case, as regards the first ground of appeal referred to in paragraphs 7 and 8 of the present order, it should be noted that, although the appellant, first, relies on an error of law allegedly committed by the General Court and, second, indicates the issue of law raised, it nevertheless does not identify any paragraph in the judgment under appeal which it intends to challenge, thereby depriving the first ground of appeal of its proper context and rendering it, consequently, insufficiently precise. Moreover, the application does not indicate to what extent the error relied on had an influence on the outcome of the judgment under appeal. Accordingly, that argument does not satisfy the requirements set out in paragraph 23 of the present order.

26      As regards the second ground of appeal referred to in paragraphs 9 to 12 of the present order, it should also be noted that the appellant does not indicate any paragraph in the judgment under appeal which it challenges. Furthermore, the appellant’s arguments are not sufficiently clear and precise to enable the Court of Justice to understand what the error of law allegedly committed by the General Court consists of, or to what extent that error had an influence on the outcome of the judgment under appeal.

27      As regards the third ground of appeal, set out in paragraphs 13 to 16 of the present order, and the fourth ground of appeal, set out in paragraphs 17 to 20 of this order, it must be observed that the appellant merely sets out the errors allegedly committed by the General Court, without identifying the paragraphs of the judgment under appeal which it challenges or setting out the specific reasons why those errors, assuming they were established, raise issues that are significant with respect to the unity, consistency or development of EU law. It must therefore be held that the appellant has failed to comply with all of the requirements set out in paragraph 23 of the present order.

28      In those circumstances, it must be held that the appellant’s request is not such as to establish that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.

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

 Costs

30      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.

31      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.      Haskovo Chamber of Commerce and Industry shall bear its own costs.

Luxembourg, 27 June 2023.

A. Calot Escobar

L. Bay Larsen

Registrar

President of the Chamber determining whether appeals may proceed

*      Language of the case: English.