Order of 2 Dec 2025, C-432/25 (Dr. August Wolff v EUIPO)

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

2 December 2025 (*)

( 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-432/25 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 30 June 2025,

Dr. August Wolff GmbH & Co. KG Arzneimittel, established in Bielefeld (Germany), represented by M. Breuer and F. von der Decken, Rechtsanwälte,

appellant,

the other parties to the proceedings being:

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

Combe International LLC, established in New York (United States),

intervener at first instance,

THE COURT (Chamber determining whether appeals may proceed),

composed of T. von Danwitz, Vice-President of the Court, S. Rodin and N. Piçarra (Rapporteur), Judges,

Registrar: A. Calot Escobar,

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

makes the following

Order

1        By its appeal, Dr. August Wolff GmbH & Co. KG Arzneimittel seeks to have set aside the judgment of the General Court of the European Union of 30 April 2025, Dr. August Wolff v EUIPO – Combe International (Vagisan) (T-679/20, ‘the judgment under appeal’, EU:T:2025:421), 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 3 September 2020 (Case R 2459/2019-4) relating to invalidity proceedings brought by Combe International LLC against the word mark Vagisan registered by Dr. August Wolff.

 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 the 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        Article 170a(1) of the Rules of Procedure provides that, 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 the Rules of Procedure, the Court of Justice is to rule as soon as possible on the request that the appeal be allowed to proceed; that decision is to take the form of a reasoned order.

 Arguments of the appellant

6        In support of its request that the appeal be allowed to proceed, the appellant submits that the appeal raises an issue that is significant with respect to the unity, consistency and development of EU law, namely the treatment of descriptive elements for the purposes of the comparison of composite marks and the appropriate criterion for assessing the distinctive character of complex signs. A ruling by the Court of Justice is necessary to ensure consistency and legal certainty in that area of trade mark law.

7        By the single ground of appeal, the appellant submits, in essence, that the General Court erred in law in its assessment of the ‘likelihood of confusion’, within the meaning of Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), of marks at issue which contain descriptive or weakly distinctive elements.

8        It submits, first of all, that the General Court attached disproportionate significance to the common element ‘vagi’ of the word marks at issue, Vagisan and Vagisil, even though it recognised the descriptive character of that element. In paragraph 55 of the judgment under appeal, the General Court accepted that that element is descriptive of the goods concerned, namely goods for female intimate health care. However, in paragraph 50 of that judgment, it confirmed the Board of Appeal’s finding that the same element makes a significant contribution, despite its weak distinctive character, to the overall impression produced by the marks at issue. That assessment fails to have regard to the case-law of the Court of Justice and the General Court, from which it follows, first, that, in principle, only distinctive elements are decisive for the purposes of assessing similarity and the likelihood of confusion and, second, that the influence of a descriptive and weakly distinctive element on the likelihood of confusion is inherently limited, unless specific circumstances such as an unusual position, size or graphical emphasis justify a derogation from that principle. No such specific circumstances are material in the present case.

9        Next, the appellant submits that the judgment under appeal is vitiated by an internal contradiction, in so far as the General Court recalled, in paragraph 81 of that judgment, the principle that the elements common to the marks at issue and that are weakly distinctive have less weight in the global assessment of the ‘likelihood of confusion’, within the meaning of Article 8(1)(b) of Regulation No 207/2009, while finding, in paragraph 86 of that judgment, an average degree of visual and phonetic similarity based specifically on the presence of the common element ‘vagi’. That contradiction constitutes an error of law on the part of the General Court in the application of that provision and a failure to have regard to EUIPO’s consistent decision-making practice and to the case-law of the Courts of the European Union.

10      Lastly, the appellant submits that, by failing to apply the established principles governing the treatment of descriptive or weakly distinctive elements of composite marks, the General Court also ‘distorted the legal framework’ in its assessment of the ‘likelihood of confusion’ within the meaning of Article 8(1)(b). The General Court’s reasoning would undermine legal certainty and the uniform application of EU trade mark law, particularly in sectors where the use of descriptive elements is very common and often inevitable, such as healthcare. That approach would enable trade mark applicants and proprietors to obtain protection for descriptive elements, in breach of the principle that those elements must remain freely accessible, thereby creating an unjustified extension of exclusive rights contrary to the objectives of the EU trade mark system.

 Findings of the Court

11      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 14 March 2025, Eurosemillas v CPVO, C-774/24 P, EU:C:2025:190, paragraph 12).

12      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 14 March 2025, Eurosemillas v CPVO, C-774/24 P, EU:C:2025:190, paragraph 13).

13      Accordingly, a request that an appeal be allowed to proceed must 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 14 March 2025, Eurosemillas v CPVO, C-774/24 P, EU:C:2025:190, paragraph 14).

14      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 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 14 March 2025, Eurosemillas v CPVO, C-774/24 P, EU:C:2025:190, paragraph 15 and the case-law cited).

15      In the present case, as regards, in the first place, the appellant’s line of argument set out in paragraphs 7 and 8 of the present order, alleging that the General Court failed to have regard to the case-law of the Court of Justice and its own case-law relating to the assessment of the similarity of marks, the common element of which has a descriptive or weak distinctive character, it should be stated that such a line of argument is not, in itself, sufficient to establish, in accordance with the burden of proof which lies with the party requesting that an appeal be allowed to proceed, that it raises an issue that is significant with respect to the unity, consistency or development of EU law. To that end, the appellant must comply with all the requirements set out in paragraph 13 of the present order (order of 12 June 2025, Puma v EUIPO, C-21/25 P, EU:C:2025:445, paragraph 15 and the case-law cited).

16      It is true that the appellant refers to paragraphs in a number of judgments of the Court of Justice and the General Court. However, it does not provide sufficient information on the similarity between the situations referred to in those judgments and the situation referred to in the judgment under appeal, which would make it possible to establish such a failure, especially since it expressly acknowledges that the ‘settled principles’ governing the treatment of descriptive or weakly distinctive elements of composite marks are subject to derogations justified by the specific circumstances of the case concerned. Nor does the appellant set out the specific reasons why the alleged failure, assuming it to be established, raises an issue that is significant with respect to the unity, consistency or development of EU law.

17      In the second place, as regards the line of argument set out in paragraphs 9 and 10 of the present order, relating to an internal contradiction in the judgment under appeal, and to the risk of undermining legal certainty and the uniform application of EU law, the appellant merely alleges errors of law committed by the General Court and puts forward arguments of a general nature, without setting out the specific reasons why those errors, assuming they are established, raise an issue that is significant with respect to the unity, consistency or development of EU law that justifies the appeal being allowed to proceed. Furthermore, the appellant does not in any way indicate, in its request that the appeal be allowed to proceed, the decisions of EUIPO and the Courts of the European Union forming an ‘established decisional practice’ from which the judgment under appeal deviated, contrary to the requirements of precision set out in paragraph 13 of the present order.

18      In addition, by its appeal, the appellant also seeks to challenge the assessment of the similarity of the marks at issue carried out by the General Court in the context of the global assessment of the ‘likelihood of confusion’ within the meaning of Article 8(1)(b) of Regulation No 207/2009. Since that assessment is of a factual nature, such arguments cannot, in any event, raise an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 5 July 2023, Suicha v EUIPO, C-120/23 P, EU:C:2023:539, paragraph 17 and the case-law cited).

19      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, within the meaning of the third paragraph of Article 58a of the Statute of the Court of Justice of the European Union and Article 170a(1) of the Rules of Procedure.

20      In the light of the reasons set out above, the appeal should not be allowed to proceed.

 Costs

21      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.

22      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.      Dr. August Wolff GmbH & Co. KG Arzneimittel shall bear its own costs.

Luxembourg, 2 December 2025.

A. Calot Escobar

T. von Danwitz

Registrar

President of the Chamber determining whether appeals may proceed

*      Language of the case: English.