Information;Order — ECLI:EU:C:2026:393
Date: 2026-04-14
Language of the case: English

ORDER OF THE COURT (Chamber determining whether appeals may proceed) 14 April 2026 (*) ( 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 that an appeal be allowed to proceed 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‑753/25 P, APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 21 November 2025, Industria de Diseño Textil, SA, established in Arteixo (Spain), represented by J. Oria Sousa-Montes, abogado, appellant, the other parties to the proceedings being: Ffauf Italia SpA, established in Riese Pio X (Italy), applicant at first instance, European Union Intellectual Property Office (EUIPO), defendant at first instance, THE COURT (Chamber determining whether appeals may proceed), composed of T. von Danwitz, Vice-President of the Court, I. Ziemele and A. Kumin (Rapporteur), Judges, Registrar: A. Calot Escobar, having regard to the proposal from the Judge-Rapporteur and after hearing the Advocate General, J. Richard de la Tour, makes the following Order 1 By its appeal, Industria de Diseño Textil, SA, asks the Court of Justice to set aside the judgment of the General Court of the European Union of 10 September 2025, Ffauf Italia v EUIPO – Industria de Diseño Textil (pastaZARA Sublime) (T‑425/24, ‘the contested judgment’, EU:T:2025:849), by which the General Court annulled the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 June 2024 (Case R 1576/2023-5), concerning opposition proceedings between Industria de Diseño Textil and Ffauf Italia SpA relating to an application for registration of a figurative sign containing the word elements ‘pastaZARA Sublime’ as an EU trade mark (‘the mark applied for’). 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 Under 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 the Rules of Procedure, the Court is to rule as soon as possible on the request that the appeal be allowed to proceed, in 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 three grounds of its appeal raise issues that are significant with respect to the unity, consistency or development of EU law, which have not yet been addressed by the Court. 7 By its first ground of appeal, the appellant complains that the General Court erred in law by failing to determine whether the word element ‘ZARA’, which is common to the earlier EU word mark ZARA (‘the earlier mark’) and the mark applied for, retained an independent distinctive role within the mark applied for, thereby applying an incorrect methodology with regard to the assessment of the similarity of the signs at issue under Article 8 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). 8 In that regard, the appellant submits that the General Court accepted that the earlier mark is distinctive, that it appears in full within the mark applied for and that the non-distinctive word elements ‘pasta’ and ‘sublime’ do not dominate the overall impression of the mark applied for. However, the General Court failed to examine whether the earlier mark retained an independent distinctive role, contrary to what is required by the case-law arising from the judgments of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), and of 8 May 2014, Bimbo v OHIM (C‑591/12 P, EU:C:2014:305). 9 According to the appellant, the question whether, in the context of the assessment of the similarity between a mark applied for and a distinctive earlier mark, it is necessary systematically to determine whether the earlier word mark retains an independent distinctive role whenever it is replicated in full within the mark applied for and constitutes the only distinctive word element of that mark without being dominant, is of importance with respect to the unity and consistency of EU law. The concept of an ‘independent distinctive role’ is central to ensuring the coherence of the EU trade mark system. 10 It maintains, first, that the case-law subsequent to the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), gave rise to difficulties in the interplay between distinctiveness, dominance and the perception of composite signs. Second, inconsistencies in the approaches of the General Court and EUIPO render uncertain the answer to be given to that question, the implications of which extend beyond the present case. 11 It further argues that that issue is important for the development of EU law since the Court of Justice has not yet set out a comprehensive methodological rule as to how the case-law arising from the judgments of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), and of 8 May 2014, Bimbo v OHIM (C‑591/12 P, EU:C:2014:305), should be applied in the context of the global assessment under Article 8(5) of Regulation No 40/94, the present appeal providing an opportunity to develop the case-law and to establish a uniform interpretative principle. 12 By its second ground of appeal, the appellant submits that, by treating the degree of closeness or dissimilarity between the goods and services at issue as decisive for the purpose of assessing whether there existed a link in the mind of the public between the earlier mark and the mark applied for, the General Court misinterpreted the case-law arising from the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655). 13 As regards the significance of that issue of law with respect to the unity and consistency of EU law, the appellant maintains that that case-law has established a general and interdependent framework in which no factor is decisive in itself. The contested judgment therefore risks reintroducing a requirement of closeness which the legislature consciously excluded. It would thus blur the distinction between the scope of Article 8(5) of Regulation No 40/94 and that of Article 8(1)(b) of that regulation, undermining the autonomous function of the former provision. Since divergent interpretations have already emerged across Boards of Appeal of EUIPO and national authorities, only the Court of Justice can restore the uniformity of EU law. 14 As regards the significance of that issue of law with respect to the development of EU law, the appellant submits that the present case provides an ‘excellent vehicle’ for specifying the fundamental scope of the rules laid down in the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655), and for clarifying the conditions under which the reputation of a mark may extend beyond the goods or services for which it is registered. 15 By its third ground of appeal, the appellant complains that the General Court erred in law in that, in order to establish the existence of ‘due cause’ within the meaning of Article 8(5) of Regulation No 40/94, it accepted evidence relating to prior use and good faith which was confined to a commercial trajectory in a number of Member States, whereas the case-law required, for those purposes, genuine and effective use throughout the entire territory of the European Union. 16 It submits that that issue of law is significant with respect to the unity and consistency of EU law as the General Court adopted a territorially diluted standard which is incompatible with the unitary nature of the EU trade mark system, in that it would allow partial use in some Member States to weaken rights conferred uniformly across all Member States. If that standard is not clarified, national courts and Boards of Appeal of EUIPO will inevitably adopt divergent territorial thresholds. 17 The appellant claims that, in so doing, the General Court infringed the case-law arising from the judgments of 6 February 2014, Leidseplein Beheer and de Vries (C‑65/12, EU:C:2014:49); of 16 April 2008, Citigroup and Citibank v OHIM – Citi (CITI) (T‑181/05, EU:T:2008:112); of 5 July 2016, Future Enterprises v EUIPO – McDonald’s International Property (MACCOFFEE) (T‑518/13, EU:T:2016:389), and of 1 March 2018, Shoe Branding Europe v EUIPO – adidas (Position of two parallel stripes on a shoe) (T‑629/16, EU:T:2018:108), according to which a correspondence between the territorial extent of the reputed mark and the territorial scope of the use relied on is required. 18 It submits that that issue of law is significant with respect to the development of EU law, since the concept of ‘due cause’, despite its practical importance, is underdeveloped in EU case-law. According to the appellant, the present case is a ‘timely opportunity’ for the Court of Justice to set out a clear and territorially coherent standard. Findings of the Court 19 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 19 January 2026, Hesse v Ferrari and EUIPO, C‑598/25 P, EU:C:2026:25, paragraph 11). 20 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 19 January 2026, Hesse v Ferrari and EUIPO, C‑598/25 P, EU:C:2026:25, paragraph 12). 21 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 contested judgment or order, 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 contested judgment or order. 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 contested judgment or order 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 19 January 2026, Hesse v Ferrari and EUIPO, C‑598/25 P, EU:C:2026:25, paragraph 13). 22 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 (orders of 24 October 2019, Porsche v EUIPO, C‑613/19 P, EU:C:2019:905, paragraph 16, and of 19 January 2026, Hesse v Ferrari and EUIPO, C‑598/25 P, EU:C:2026:25, paragraph 14). 23 In the present case, in the first place, as regards the appellant’s line of argument summarised in paragraphs 7 to 10, 12, 13 and 15 to 17 of the present order, it should be recalled that, 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. 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 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, paragraphs 27 and 28, and of 15 December 2025, Abacus Research v EUIPO, C‑610/25 P, EU:C:2025:974, paragraph 14). 24 In so far as that line of argument alleges that the General Court infringed its own case-law and that of the Court of Justice relating to the interpretation of Article 8 of Regulation No 40/94, it must 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 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. To that end, the appellant must comply with all the requirements set out in paragraph 21 of the present order (order of 15 December 2025, Abacus Research v EUIPO, C‑610/25 P, EU:C:2025:974, paragraph 15 and the case-law cited). 25 In that regard, it must be observed that the appellant does not explain, in a sufficiently clear and precise manner, where the alleged contradiction lies, failing to identify either the paragraphs of the contested judgment which it is calling into question or those of the rulings of the Court of Justice or the General Court alleged to have been infringed. Nor does the appellant explain the concrete reasons why such a contradiction – assuming it were established – raises an issue that is significant with respect to the unity, consistency or development of EU law. Thus, the appellant merely states, by means of arguments of a general nature, first, that the question of the methodology to be followed when assessing the similarity of the signs at issue goes beyond the scope of the present case, the concept of an ‘independent distinctive role’ being central to ensuring the coherence of the EU trade mark system; second, that the contested judgment risks reintroducing a requirement of closeness which the legislature consciously excluded; and, third, that the General Court adopted a territorially diluted standard which is incompatible with the unitary nature of the EU trade mark system and may result in national courts and Boards of Appeal of EUIPO adopting divergent thresholds. 26 As regards the line of argument alleging inconsistency in the approaches of the General Court and EUIPO, set out in paragraph 10 of the present order, it must be borne in mind that the legality of the decisions of the Boards of Appeal of EUIPO must be assessed on the basis of Regulation No 40/94, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice of EUIPO’s adjudicating bodies (see, to that effect, order of 17 June 2025, Butzkies-Schiemann v EUIPO, C‑46/25 P, EU:C:2025:453, paragraph 23 and the case-law cited). 27 As regards, in the second place, the line of argument referred to in paragraphs 11, 14 and 18 of the present order, according to which the issues raised have not yet been addressed by the Court of Justice, it should be recalled that the fact that an issue of law has not yet been examined by the Court is not, in itself, sufficient to consider it significant with respect to the unity, consistency or development of EU law. The party requesting that an appeal be allowed to proceed remains bound to demonstrate such significance by providing detailed information regarding not only the novelty of that issue, but also the reasons why that issue is particularly significant in that regard (order of 19 January 2026, Hesse v Ferrari and EUIPO, C‑598/25 P, EU:C:2026:25, paragraph 16 and the case-law cited). 28 However, that significance has not been demonstrated in the present request, since the appellant merely puts forward arguments of a general nature, such as those alleging the practical importance of the issues raised and claiming that the present case is a ‘timely opportunity’ to establish fundamental criteria and rules and to develop the case-law, without providing detailed and concrete information, specific to the present case, regarding the novelty of those issues and their particular significance with respect to the development of EU law. 29 The appellant has therefore failed to comply with all the requirements referred to in paragraphs 19 to 22 of the present order. 30 In those circumstances, the request submitted by the appellant 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. 31 In the light of the foregoing considerations, the appeal should not be allowed to proceed. Costs 32 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. 33 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. Industria de Diseño Textil, SA, shall bear its own costs. Luxembourg, 14 April 2026. A. Calot Escobar T. von Danwitz Registrar President of the Chamber determining whether appeals may proceed * Language of the case: English.