May 12, 2020

A year has passed since Article 58a of the Statute of the CJEU came into force on 1 May 2019. In that time appeals to the CJEU against decisions of the General Court concerning a decision of the EUIPO appear to have become a critically endangered species, and only time will tell if they have actually become extinct. As a consequence, there is a significant risk that some important issues of European trade mark and design law will not be aired before the CJEU.

Article 58a introduced a triage process for appeals against decisions of the General Court concerning decisions of the Boards of Appeal of the EUIPO. Such appeals are no longer allowed to proceed unless the CJEU decides that they raise “an issue that is significant with respect to the unity, consistency or development of Union law”.

Articles 170a and 170b have been introduced into the Rules of Procedure of the CJEU to establish a procedure to enable the Court to make such a decision. They provide that an appellant shall annex to the appeal a request that the appeal be allowed to proceed and explaining what issue is raised that is significant with respect to the unity, consistency or development of Union law (Request). If this requirement is not complied with, the appeal will automatically be declared inadmissible. The decision whether to allow an appeal is to be made by a chamber especially established for that purpose and is required to rule on the request “as soon as possible”. Decisions are to be made by way of reasoned order.

The rationale given by the CJEU for this change is that such cases will already have been considered on appeal twice, by the Boards of Appeal of the EUIPO (which are themselves independent from the first instance decision making body) and then by the General Court, and that many of these appeals are dismissed by the CJEU on the basis of manifest inadmissibility and/or because they are manifestly unfounded.[1] In 2018, prior to the change of law, 849 cases were lodged at the CJEU, up from 739 in 2017 (an increase of 15%).[2] Of these cases, 193 were appeals, of which 67[3] were appeals relating to “intellectual and industrial property”.[4]

In the year since the change of law, 46 appeals against decisions of the General Court concerning a decision of the EUIPO have been lodged at the CJEU. Of these, the CJEU has issued 35 reasoned orders under Article 170a of the Rules of Procedure. In every case, the appeal has not been allowed to proceed. The average time taken by the CJEU to issue a reasoned order is 84 days.

The following general principles can be extracted from the reasoned orders made so far:

1. 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 (Case C-444/19 P, 16.09.2019, Kiku v CPVO, ECLI:EU:C:2019:749, 11);
2. A Request must contain all of the information necessary to enable the Court to determine whether the appeal should be allowed to proceed (Case C-461/19 P, 30.09.2019, All Star CV v EUIPO, ECLI:EU:C:2019:797, §4);
3. In order to enable the CJEU to declare an appeal allowed in part, a Request must specify why each individual ground of appeal raises issues that are significant with respect to the unity, consistency or development of EU law (Case C-461/19 P, 30.09.2019, All Star CV v EUIPO, ECLI:EU:C:2019:797, §12);
4. A Request must set out clearly and in detail the grounds on which the appeal is based, identify the issue of law raised by each ground of appeal, and specify why that issue is significant with respect to the unity, consistency or development of EU law (Case C-577/19 P, 10.10.2019, KID-Systeme v EUIPO, ECLI:EU:C:2019:854, §13);
5. Where the error of law relied on is an infringement of the case law, a Request must identify both the paragraphs of the judgment under appeal which are being challenged and those of the case law alleged to have been infringed, as well as the reasons why this infringement raises an issue that is significant with respect to the unity, consistency or development of EU law (Case C-316/19 P, 24.10.2019, Porsche v EUIPO, CLI:EU:C:2019:905, 15);
6. A Request that does not contain the information set out at paragraphs 4 and 5 above cannot 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 (Case C-316/19 P, 24.10.2019, Porsche v EUIPO, CLI:EU:C:2019:905, 16);
7. It is necessary to establish that the grounds of appeal raise issues that are significant with respect to the unity, consistency or development of EU law by means of concrete evidence specific to the particular case and not simply by presenting arguments of a general nature Case C-893/19 P. 12.03.2020, Roxtec AB v EUIPO, EU:C:2020:209, §19);
8. Alleging that the judgment under appeal is the source of legal uncertainty without showing how that error would raise an issue that is significant with respect to the unity, consistency or development of EU law is not sufficient (Case C-893/19 P. 12.03.2020, Roxtec AB v EUIPO, EU:C:2020:209, §22); and
9. An argument relating to a factual assessment cannot raise an issue that is significant with respect to the unity, consistency or development of EU law (Case C-577/19 P, 10.10.2019, KID-Systeme v EUIPO, ECLI:EU:C:2019:854, §20).

Comment

The reasoned orders made by the CJEU in the first year of operation of the new regime have set a very high bar for establishing that an appeal raises an issue that is significant with respect to the unity, consistency or development of EU law. The introduction of Article 58a does not yet appear to have slowed the rate at which appeals from decisions of the General Court concerning a decision of the EUIPO are being lodged at the CJEU, but that will surely change as practitioners become increasingly aware of the way in which the new requirement is being interpreted by the CJEU.

The likely ultimate effect of the introduction of Article 58a is that there will be a huge reduction in the number of CJEU decisions which address substantive matters of EU trade mark and designs law. There have been some significant judgments of the CJEU which have come about as appeals against decisions of the General Court, particularly concerning the registrability of trade marks, such as the Lego Brick, Lindt Bunny, and “Fack Ju Göhte” cases. Whilst the change in law is clearly intended to preserve the ability for such cases to reach the CJEU, the practice of the Court so far suggests that there is a significant risk that the baby may be thrown out with the bath water and important issues of European trade mark law may not be aired before the CJEU.

Footnotes

[1] CJEU Press Release No 53/19, Luxembourg, 30 April 2019 – (https://curia.europa.eu/jcms/upload/docs/application/pdf/2019-04/cp190053en.pdf).

[2] CJEU Annual Report 2018 – Judicial Activity (https://curia.europa.eu/jcms/upload/docs/application/pdf/2019-04/_ra_2018_en.pdf), page 122.

[3] Ibid., page 124.

[4] In addition to cases concerning trade marks and designs, this definition also includes cases relating to plant variety rights, patents, and copyright and related rights.