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

11 July 2023 (*1)

(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 demonstrating that an issue is significant with respect to the unity, consistency or development of EU law – Appeal allowed to proceed)

In Case C‑93/23 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 17 February 2023,

European Union Intellectual Property Office (EUIPO), represented by D. Hanf, T. Klee and E. Markakis, acting as Agents,

appellant,

the other party to the proceedings being:

Neoperl AG, established in Reinach (Switzerland), represented by U. Kaufmann, Rechtsanwältin,

applicant at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of L. Bay Larsen, Vice-President of the Court, M. Ilešič (Rapporteur) and I. Jarukaitis, Judges,

Registrar: A. Calot Escobar,

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

makes the following

1.By its appeal, the European Union Intellectual Property Office (EUIPO) asks the Court of Justice to set aside the judgment of the General Court of the European Union of 7 December 2022, Neoperl v EUIPO(Representation of a cylindrical sanitary insert) (T‑487/21, EU:T:2022:780; ‘the judgment under appeal’), by which the General Court annulled the decision of the Fifth Board of Appeal of EUIPO of 3 June 2021 (Case R 2327/2019-5), concerning the registration of a tactile position mark representing a cylindrical sanitary insert as an EU trade mark (‘the decision at issue’).

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 to rule on that request.

5.In accordance with Article 170b(1) and (3) of the Rules of Procedure, 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.

Arguments of the appellant

6.In support of its request that the appeal be allowed to proceed, EUIPO submits that its single ground of appeal raises an issue that is significant with respect to the unity, consistency and development of EU law.

7.In the first place, by that single ground of appeal, EUIPO claims that the General Court, first, infringed Article 72(3) 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). More specifically, the General Court, in paragraphs 47, 48 and 50 to 61 of the judgment under appeal, erred in law in finding that the substantive assessment which it carried out in respect of the combined provisions of Article 7(1)(a) and Article 4 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), constituted a legal issue that had to be dealt with prior to examining the action for annulment brought by the applicant at first instance. In so doing, the General Court disregarded the fact that it did not have jurisdiction ratione materiae to carry out such an assessment and, moreover, that the assessment carried out was not required in order to review the legality of the decision at issue, since such review could already be fully ensured by examining whether, in failing to assess the combined provisions of Article 7(1)(a) and Article 4 of Regulation No 207/2009, the Board of Appeal had infringed the provisions relied on by the applicant at first instance, namely Article 7(1)(b) of Regulation No 207/2009 and Article 71(1) of Regulation 2017/1001.

8.According to EUIPO, the General Court raising, of its own motion, the plea alleging breach of the scope of Article 7(1)(b) of Regulation No 207/2009 therefore constitutes an unlawful circumvention of the rule on jurisdiction laid down by the EU legislature in Article 72 of Regulation 2017/1001.

9.Secondly, EUIPO claims that the infringement of Article 72(3) of Regulation 2017/1001 has the effect of definitively depriving the Board of Appeal of EUIPO of its inherent and specific powers to examine and decide matters, and of disregarding the independence of its members in the exercise of those powers.

10.Thirdly, EUIPO submits that that infringement undermines the comprehensive legal protection afforded at various levels against EUIPO decisions. More specifically, that protection is ensured by the Boards of Appeal of EUIPO in relation to decisions of the EUIPO examiner and by the General Court, which reviews the legality of the decisions of the Boards of Appeal.

11.In the second place, EUIPO submits that its appeal raises the issue of the scope and conditions for exercising the jurisdiction to alter decisions conferred on the General Court by Article 72(3) of Regulation 2017/1001, that issue being significant with respect to the unity, consistency and development of EU law, within the meaning of the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union.

12.In that regard, first, EUIPO claims that the appeal raises a cross-cutting procedural issue, namely whether the General Court, in examining a plea raised of its own motion, exceeded the limits of its jurisdiction as established by the EU legislature. Furthermore, that issue is significant for all cases in which decisions of the Boards of Appeal of EUIPO regarding trade marks and designs are subject to a review of legality by the General Court.

13.Secondly, EUIPO asserts that the issue raised by the appeal concerns the conferral of powers, which is a constitutional matter. The General Court, in exercising the powers allocated to it in accordance with Article 13(2) TEU, is legally bound to act within the limits of the powers conferred on it by Article 263 TFEU and Article 72 of Regulation 2017/1001.

14.Thirdly, EUIPO submits that the issue raised by the appeal concerns the system of comprehensive, appropriate, effective and multilevel legal protection against decisions of EUIPO put in place by the EU legislature. In particular, that issue relates to the specific role in that system attributed to the independent Boards of Appeal.

15.Fourthly, EUIPO claims that that issue is of special structural importance to the specific system of legal protection against decisions of EUIPO. First of all, the General Court’s exceedance of its jurisdiction to alter decisions fails to have regard to the original exclusive jurisdiction of the Boards of Appeal of EUIPO to review EUIPO decisions. Next, it reduces the legal protection of the individuals affected by EUIPO decisions, both ‘quantitatively’ and ‘qualitatively’. Lastly, such exceedance also leads to a reduction in judicial protection.

Fifthly, EUIPO submits that the General Court’s approach in the judgment under appeal entails a risk of legal uncertainty as to the conditions for applying Article 72(3) of Regulation 2017/1001, failing any explanation in that regard. Such an explanation is necessary, since the General Court did not follow the form of order sought by the applicant at first instance or the case-law of the Court of Justice applicable in the present case.

Sixthly, EUIPO asserts that the issue raised is significant in relation to legal protection against decisions of other EU agencies for which the EU legislature, for the purposes of the fifth paragraph of Article 263 TFEU, has made mandatory provision for specific, comprehensive and prior review by an independent board of appeal whose decisions must in turn be subject to the review of legality carried out by the EU judicature.

Findings of the Court

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 (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 20, and of 30 January 2023, bonnanwalt v EUIPO, C‑580/22 P, EU:C:2023:126, paragraph 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 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).

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 (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).

In the present case, it follows from paragraphs 47 and 48 of the judgment under appeal that the General Court identified, as a preliminary issue that had to be dealt with in order to examine the pleas of the action alleging infringement of Article 7(1)(b) and Article 95(1) of Regulation No 207/2009, the issue of whether the sign for which registration as an EU trade mark was sought fulfilled the conditions set out in Article 4 of Regulation No 207/2009 and whether it was a sign of which a trade mark may consist. The General Court held that it would have been neglecting its function as the arbiter of legality if, first, it had failed to make a finding, even in the absence of any challenge by the parties on that point, that the decision at issue had been adopted on the basis of a rule, namely Article 7(1)(b) of Regulation No 207/2009, that could have proven to be inapplicable in the case before it in the event that the sign in respect of which registration was sought was not a sign of which a trade mark may consist within the meaning of Article 4 of that regulation, an aspect which was not examined by the Board of Appeal, and, secondly, if it had been led to adjudicate on the dispute before it by applying that rule itself.

It should be noted, in the first place, that EUIPO describes precisely and clearly its single ground of appeal, alleging infringement of Article 72(3) of Regulation 2017/1001. In particular, by that ground of appeal, EUIPO criticises the General Court for examining of its own motion the substantive applicability of the combined provisions of Article 7(1)(a) and Article 4 of Regulation No 207/2009.

EUIPO also explains the nature of the error of law allegedly committed by the General Court.

It submits that the General Court exceeded the limits of its jurisdiction as provided for by the EU legislature by arrogating to itself the power to review the examiner’s decisions which is inherent to the Boards of Appeal of EUIPO.

Thus, in its request that the appeal be allowed to proceed, EUIPO identifies both the paragraphs of the judgment under appeal which it calls into question and the provision of EU law allegedly infringed.

In the second place, it is apparent from the request that the appeal be allowed to proceed that the error of law allegedly committed by the General Court, which led it to annul the decision at issue by which the Board of Appeal dismissed the appeal on the basis of the ground for refusal of registration set out in Article 7(1)(b) of Regulation No 207/2009, formed the basis of the judgment under appeal in its entirety.

Furthermore, it should be noted that EUIPO states that the review of the legality of the decision at issue did not require a substantive assessment of the combined provisions of Article 7(1)(a) and Article 4 of Regulation No 207/2009, but could already be fully ensured by examining whether, in failing to assess those combined provisions, the Board of Appeal had infringed the provisions relied on by the applicant at first instance, namely Article 7(1)(b) of Regulation No 207/2009 and Article 71(1) of Regulation 2017/1001. However, EUIPO does not submit that such a review of legality would not have led to the annulment of the decision at issue.

Even assuming that that review of legality would have led to the annulment of the decision at issue, it is apparent from EUIPO’s argument that such annulment would not definitively have deprived the Board of Appeal of EUIPO of its power to review the examiner’s decision.

In the light of the foregoing considerations, it is thus apparent that the alleged error committed by the General Court had an effect on the outcome of the judgment under appeal.

In the third place, in accordance with the burden of proof which lies with an appellant requesting that an 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 or development of EU law, the scope of that criterion going beyond the judgment under appeal and, ultimately, its appeal (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 27, and of 30 January 2023, bonnanwalt v EUIPO, C‑580/22 P, EU:C:2023:126, paragraph 15).

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 by means of arguments of a general nature (orders of 10 December 2021, EUIPO v The KaiKai Company Jaeger Wichmann, C‑382/21 P, EU:C:2021:1050, paragraph 28, and of 30 January 2023, bonnanwalt v EUIPO, C‑580/22 P, EU:C:2023:126, paragraph 16).

In the present case, EUIPO identifies the issue raised by its single ground of appeal, which consists, in essence, of determining the scope of and the conditions for exercising the jurisdiction to alter decisions conferred on the General Court by Article 72(3) of Regulation 2017/1001. More generally, that question concerns, according to EUIPO, the power of review carried out by the EU judicature and the intensity of that review.

Furthermore, EUIPO sets out specific reasons why it considers that the issue of law raised by its appeal is significant with respect to the unity, consistency and development of EU law.

In particular, first of all, EUIPO emphasises the cross-cutting nature of the issue of whether the General Court exceeded the established limits of its jurisdiction by de facto altering the decision of the Board of Appeal after examining a plea raised of its own motion.

Next, it notes that the question of the conferral of powers is a significant constitutional issue, the General Court being legally bound to act within the limits of the powers conferred on it.

In addition, it states that the issue of the conditions and scope of the jurisdiction to alter decisions conferred on the General Court is of particular significance, since the exceedance of that jurisdiction has an impact on the exclusive jurisdiction of the Boards of Appeal, on the legal protection of the individuals affected by EUIPO decisions and, generally, on effective judicial protection.

Lastly, EUIPO emphasises that the issue of the conditions and scope of the jurisdiction to alter decisions conferred on the General Court is a significant issue in so far as it is not limited to intellectual property law but may also concern the decisions of other EU agencies that are subject to a review of legality by the EU judicature.

Thus, it is apparent from the request that the appeal be allowed to proceed that the issue goes beyond the scope of the judgment under appeal and, ultimately, that of the appeal.

In the light of the matters set out by EUIPO, it must be held that this request that the appeal be allowed to proceed demonstrates to the requisite legal standard that the appeal raises an issue that is significant with respect to the unity, consistency and development of EU law.

In the light of the foregoing considerations, the appeal should be allowed to proceed.

Costs

Under Article 170b(4) of the Rules of Procedure, where an appeal is allowed to proceed, wholly or in part, having regard to the criteria set out in the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union, the proceedings are to continue in accordance with Articles 171 to 190a of those rules.

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 judgment or order which closes the proceedings.

Accordingly, since the request that the appeal be allowed to proceed must be allowed, the costs must be reserved.

On those grounds, the Court (Chamber determining whether appeals may proceed) hereby orders:

1.The appeal is allowed to proceed.

2.The costs are reserved.

[Signatures]

(*1) Language of the case: German.