ORDER OF THE COURT (Chamber determining whether appeals may proceed)
1 October 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‑44/25 P,
APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 23 January 2025,
Boehringer Ingelheim Pharma GmbH & Co. KG, established in Ingelheim (Germany), represented by I. Fowler, abogada, and C. Stöber, Rechtsanwältin,
appellant,
the other parties to the proceedings being:
European Union Intellectual Property Office (EUIPO),
defendant at first instance,
Glenmark Pharmaceuticals Europe Ltd, established in Harrow (United Kingdom),
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, J. Richard de la Tour,
makes the following
Order
1        By its appeal, Boehringer Ingelheim Pharma GmbH & Co. KG asks the Court of Justice to set aside the judgment of the General Court of the European Union of 13 November 2024, Boehringer Ingelheim Pharma v EUIPO – Glenmark Pharmaceuticals Europe (Shape of inhaler) (T‑524/23, EU:T:2024:809; ‘the judgment under appeal’), 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 13 June 2023 (Case R 1558/2021-4), concerning an application for a declaration of invalidity of a mark registered by the appellant.
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        The third paragraph of Article 58a of that statute provides that 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, within the meaning of the third paragraph of Article 58a of that statute.
7        The first ground of appeal, divided into four parts, alleges infringement of Article 7(1)(e)(ii) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). The second ground of appeal alleges distortion of the facts and evidence. The third ground of appeal alleges failure to comply with the obligation to state reasons laid down in Article 94 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).
8        By the first part of the first ground of appeal, the appellant submits that, in paragraph 31 of the judgment under appeal, the General Court erred in law by applying an overly strict legal standard to identify the essential characteristics of the mark at issue and by failing to recognise the overall convex shape of that mark as an essential characteristic. The appellant further criticises the General Court, for having, in paragraphs 32, 49 and 55 of the judgment under appeal, first, held that the awards that that mark had received were irrelevant for the purpose of identifying such essential characteristics and, second, failed to examine whether that shape was necessary to obtain a technical result or whether it could be regarded as a major non-arbitrary element of that mark.
9        According to the appellant, those issues are significant with respect to the unity and consistency of EU law, inasmuch as, in the appellant’s submission, first, the interpretation of Article 7(1)(e)(ii) of Regulation No 40/94 relates to both examination and invalidity proceedings concerning EU trade marks; second, that interpretation relates also to national trade marks, since an identical ground for invalidity is provided for in Article 4(1)(e)(ii) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1); third, that interpretation is necessary for users and national courts since the General Court failed to take into account, in particular, the judgment of 23 April 2020, Gömböc (C‑237/19, EU:C:2020:296, paragraph 29), establishing the non-exhaustive criteria for assessing the essential characteristics of a trade mark; and fourth, the Court of Justice should provide clarification on the interpretation of Article 7(1)(e)(ii), given that that provision cannot be overcome by relying on acquired distinctiveness under Article 7(3) of Regulation 2017/1001.
10      By the second part of the first ground of appeal, the appellant submits that, in breach of Article 7(1)(e)(ii) of Regulation No 40/94, the General Court failed to examine, in paragraphs 46 and 47 of the judgment under appeal, whether the shape of the essential characteristics of the mark at issue was necessary to obtain a technical result.
11      According to the appellant, that issue is significant with respect to the unity and consistency of EU law, inasmuch as, in its submission, first, the General Court’s approach contradicts its own case-law and that of the Court of Justice; second, that issue relates to both examination and invalidity proceedings concerning EU trade marks and those relating to national trade marks; and third, the correct application of Article 7(1)(e)(ii) of Regulation No 40/94 serves to establish healthy competition.
12      By the third part of the first ground of appeal, the appellant submits that, in paragraphs 46 and 47 of the judgment under appeal, the General Court undertook an incorrect examination of the patents placed in the administrative file of the case, by failing to assess whether it followed from those patents that the shape of the essential characteristics of the mark at issue was necessary to obtain a technical result, within the meaning of Article 7(1)(e)(ii) of Regulation No 40/94.
13      The appellant asserts that that issue concerning the role and indicative effect of patents to establish whether the shape of a mark is necessary to obtain a technical result is significant with respect to the unity, consistency or development of EU law. According to the appellant, first, that issue concerns the relationship between trade marks and patents; second, the Court of Justice should provide guidance on how to assess patents, pursuant to Article 7(1)(e)(ii); third, there is no provision of EU law governing the relationship between trade mark law and patent law; and fourth, the judgment to be delivered will have repercussions for all trade mark owners who own or have owned a patent.
14      By the fourth part of the first ground of appeal, the appellant submits that, in paragraph 54 of the judgment under appeal, the General Court erred in law by interpreting too strictly the concept of ‘major arbitrary element’ for the purpose of applying Article 7(1)(e)(ii) of Regulation No 40/94.
15      The appellant claims that that issue is significant with respect to the unity, consistency or development of EU law inasmuch as, in its submission, first, the criterion introduced by the General Court, which referred to a sufficiently significant and surprising element, produces legal uncertainty; second, the General Court’s approach is contrary to Article 4 of Regulation 2017/1001 since it excludes the protection of the shape of a product on its own; and third, the guidance that the Court of Justice would be called upon to provide in that regard would help establish healthy competition.
16      By the second ground of appeal, the appellant claims that the General Court, by holding, in paragraphs 46 and 47 of the judgment under appeal, that the patents placed in the administrative file of the case attribute to the container, lid and button technical functions in the same shapes as in the mark at issue distorted the content of those patents.
17      The appellant submits that that issue is significant with respect to the unity, consistency or development of EU law inasmuch as, in its submission, first, it relates to the ‘intersection’ of patent law and trade mark law, and second, the General Court’s approach entails, inter alia, a risk of legal uncertainty for trade mark owners who own patents.
18      By the third ground of appeal, the appellant submits that the General Court’s reasoning is vitiated by internal inconsistencies, since, on the one hand, the General Court relied on patents in order to define the essential characteristics of the mark at issue, in paragraph 31 of the judgment under appeal, but, on the other, it did not examine the expert opinion relating to the content of the patents. According to the appellant, in so doing, the General Court failed to comply with the obligation to state reasons laid down in Article 94 of Regulation 2017/1001.
19      The appellant claims that that raises an issue that is significant with respect to the unity, consistency or development of EU law for the same reasons as those summarised in paragraph 13 above.
Findings of the Court
20      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 (order of 14 March 2025, Eurosemillas v CPVO, C‑774/24 P, EU:C:2025:190, paragraph 12 and the case-law cited).
21      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 (order of 14 March 2025, Eurosemillas v CPVO, C‑774/24 P, EU:C:2025:190, paragraph 13 and the case-law cited).
22      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 (order of 14 March 2025, Eurosemillas v CPVO, C‑774/24 P, EU:C:2025:190, paragraph 14 and the case-law cited).
23      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, 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 14 March 2025, Eurosemillas v CPVO, C‑774/24 P, EU:C:2025:190, paragraph 15 and the case-law cited).
24      In the present case, as regards, in the first place, the arguments put forward under the first and second parts of the first ground of appeal, summarised in paragraphs 8 to 11 above, it must be borne in mind that the fact that an issue might concern a large number of cases cannot be regarded as necessarily relevant or, in any event, sufficient to establish that that issue is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 17 June 2025, Butzkies-Schiemann v EUIPO, C‑46/25 P, EU:C:2025:453, paragraph 20 and the case-law cited). Similarly, mere reliance on the authority of the Court of Justice’s decision in the case concerned, in particular with regard to cases to be brought in the future, is not sufficient, in itself, to demonstrate the existence of an issue that is significant with respect to the unity, consistency or development of EU law (order of 14 March 2025, Eurosemillas v CPVO, C‑774/24 P, EU:C:2025:190, paragraph 19). The person requesting that an appeal be allowed to proceed remains bound to demonstrate that significance by providing detailed information not only on the novelty of that issue, but also on the reasons why that issue is significant in relation to the relevant criteria, which the appellant has failed to establish.
25      Furthermore, the claim that the General Court disregarded the relevant case-law of the Court of Justice and its own case-law is not, in itself, sufficient to establish that that appeal raises an issue that is significant with respect to the unity, consistency or development of EU law, since the appellant must comply to that end with all the requirements set out in paragraph 22 above (see, to that effect, order of 18 October 2023, Puma v EUIPO, C‑345/23 P, EU:C:2023:807, paragraph 16 and the case-law cited).  It must be stated, in the present case, that the appellant has not explained, with the requisite precision, the reasons why the alleged contradiction between, on the one hand, the General Court’s assessments and, on the other, the case-law of the Court of Justice and of the General Court relied on, even if it were established, would raise an issue that is significant with respect to the unity, consistency or development of EU law.
26      In the second place, as regards the arguments relied on under the third part of the first ground of appeal, summarised in paragraphs 12 and 13 above, it must be stated that the appellant seeks to call into question the factual assessments made by the General Court in relation to the evidence presented before it. Such arguments, however, cannot demonstrate that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law (order of 8 May 2024, Wyrębski v QC and Others, C‑689/23 P, EU:C:2024:397, paragraph 24 and the case-law cited). In any event, the failure by the Court of Justice to examine an issue of law does not mean that that issue is necessarily one of significance with respect to the unity, consistency or development of EU law, since the appellant remains bound to demonstrate that significance by providing detailed information regarding not only the novelty of that issue, but also the reasons for that issue’s significance in relation to the development of EU law (order of 8 November 2024, VDS Czmyr Kowalik v EUIPO, C‑439/24 P, EU:C:2024:948, paragraph 19 and the case-law cited). Such a demonstration is not apparent from the request that the appeal be allowed to proceed in the present case, since the appellant has merely relied, in a general manner, on the existence of a lacuna in the case-law of the Court of Justice.
27      In the third place, as regards the line of argument relied on under the fourth part of the first ground of appeal, summarised in paragraphs 14 and 15 above, the appellant is in fact seeking to call into question the factual assessment made by the General Court as regards the absence of a ‘major arbitrary element’ in the present case. Such a line of argument cannot demonstrate, in itself, that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 4 October 2024, Converso v Verla-Pharm Arzneimittel and EUIPO, C‑444/24 P, EU:C:2024:873, paragraph 12 and the case-law cited).
28      In the fourth place, as regards the line of argument relied on under the second ground of appeal, summarised in paragraphs 16 and 17 above, according to which the General Court distorted the facts and evidence, it must be stated that such a line of argument is not, in principle, capable, as such and even if well founded, of raising an issue that is significant with respect to the unity, consistency or development of EU law (see, to that effect, order of 23 February 2024, Breville v EUIPO, C‑707/23 P, EU:C:2024:168, paragraph 22 and the case-law cited).
29      In the fifth place, as regards the line of argument relied on under the third ground of appeal, summarised in paragraphs 18 and 19 above, according to which the General Court failed to comply with the obligation to state reasons laid down in Article 94 of Regulation 2017/1001, it should be stated, first, that Article 94 of that regulation requires EUIPO to state reasons for its decisions and does not relate to an obligation to state reasons on the part of the General Court. Second, although the failure to state reasons or an inadequate statement of reasons constitutes an error of law which may be relied on in the context of an appeal, the determination as to whether the appeal should be allowed to proceed nevertheless remains subject to specific conditions consisting, for the appellant, in demonstrating that that appeal raises one or more issues that are significant with respect to the unity, consistency or development of EU law. 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 arguments of a general nature (see, to that effect, order of 4 October 2024, Converso v Verla-Pharm Arzneimittel and EUIPO, C‑444/24 P, EU:C:2024:873, paragraph 13). The appellant has not demonstrated to the requisite legal standard how the alleged failure to state reasons raises such an issue.
30      In any event, it should be stated that, by criticising the General Court for not having examined the expert opinion relating to the content of the patents in order to define the essential characteristics of the mark at issue, the appellant is seeking to call into question the factual assessments made by the General Court in relation to the evidence presented before it. In accordance with the case-law referred to in paragraph 27 above, such a line of argument is not sufficient to demonstrate that the appeal raises an issue that is significant with respect to the unity, consistency or development of EU law.
31      In those circumstances, the Court of Justice finds 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.
32      In the light of all the foregoing considerations, the appeal should not be allowed to proceed.
Costs
33      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.
34      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.      Boehringer Ingelheim Pharma GmbH & Co. KG shall bear its own costs.
Luxembourg, 1 October 2025.
A. Calot Escobar
T. von Danwitz
Registrar
President of the Chamber determining whether appeals may proceed
*      Language of the case: English.