JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
28 January 2026 (*)
( EU trade mark – Opposition proceedings – Application for EU word mark ELLA HOTELS AND RESORTS – Earlier EU figurative mark ELLE – Relative ground for refusal – Detriment to repute – Article 8(5) of Regulation (EU) 2017/1001 – Taking unfair advantage of the distinctive character or the repute of the earlier mark – Lack of due cause )
In Case T‑245/25,
Ella Hotels and Resorts monoprosopi AE, established in Maroussi (Greece), represented by M. Kosmopoulos, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Hachette Filipacchi Presse, established in Paris (France), represented by P. Lefort, lawyer,
THE GENERAL COURT (Eighth Chamber),
composed of I. Gâlea (Rapporteur), President, T. Tóth and L. Spangsberg Grønfeldt, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks of service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Ella Hotels and Resorts monoprosopi AE, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 February 2025 (Case R 2143/2023‑1) (‘the contested decision’).
Background to the dispute
2        On 3 February 2022, the applicant filed an application with EUIPO for registration of an EU trade mark for the word sign ELLA HOTELS AND RESORTS.
3        The mark applied for covered services in Classes 35, 43 and 44 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:
–        Class 35: ‘Advertising, marketing and promotional services; business assistance, management and administrative services’;
–        Class 43: ‘Services for providing food and drink; providing temporary accommodation; temporary accommodation information, advice and reservation services; information, advice and reservation services for the provision of food and drink’;
–        Class 44: ‘Human hygiene and beauty care; human healthcare services’.
4        On 13 May 2022, the intervener, Hachette Filipacchi Presse, filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
5        The opposition was based on the earlier EU figurative mark registered on 10 November 2021 and reproduced below:
6        The goods covered by the earlier mark were, inter alia, in Class
16 and corresponded, inter alia, to the following description: ‘Magazines [periodicals] in relation to the following fields: fashion, beauty, woven goods, decorating, gastronomy, culture, lifestyle, wellness, socio-professional integration of women, support and protection of women in society’.
7        The ground relied on in support of the opposition was that set out in Article 8(5) 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        On 29 September 2023, on the basis of Article 8(5) of Regulation 2017/1001, the Opposition Division partially upheld the opposition, namely in respect of all the services referred to in paragraph 3 above with the exception of the business assistance, management and administrative services in Class 35, in relation to which the opposition was rejected and the mark applied for was registered.
9        On 22 October 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, in so far as it had upheld the opposition.
10      By the contested decision, the Board of Appeal annulled the decision of the Opposition Division in part, with regard to some of the services, namely, first, the advertising, marketing and promotional services in Class
35 and, secondly, all of the services in Class
43 referred to in paragraph 3 above, thus rejecting the opposition in relation to those services. However, the Board of Appeal also partially dismissed the applicant’s appeal, confirming that the opposition should be upheld in so far as concerned the human hygiene and beauty care services and the human healthcare services in Class
44.
11      As regards the services in Class
44, the Board of Appeal found that all the conditions laid down in Article 8(5) of Regulation 2017/1001 were met. First, it found that the relevant public would establish a link between the signs at issue, given the reputation of the earlier mark for fashion magazines, the average visual and phonetic similarity of the signs, and the proximity between the goods covered by the earlier mark and the services in Class
44 covered by the mark applied for. Secondly, it concluded that there was a risk that the use of the mark applied for would take unfair advantage of the repute of the earlier mark and that the applicant had not established the existence of due cause for such use.
Forms of order sought
12      The applicant claims, in substance, that the Court should:
–        annul the contested decision to the extent that, by that decision, the Board of Appeal partially dismissed its appeal against the decision of the Opposition Division;
–        authorise registration of the mark applied for in its entirety;
–        order EUIPO and the intervener to pay the costs, including those incurred before the Board of Appeal.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
14      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The Court’s jurisdiction to adjudicate on the applicant’s second head of claim
15      As regards the applicant’s second head of claim, it must be observed that that head of claim requests that the Court authorise registration of the mark applied for and may be understood as asking the Court to alter the contested decision, in accordance with Article 72(3) of Regulation 2017/1001, by adopting the decision that the Board of Appeal should have taken, in accordance with the provisions of that regulation.
16      However, the competent bodies of EUIPO do not adopt formal decisions authorising the registration of an EU trade mark that could be the subject of an appeal.
Consequently, the Board of Appeal does not have power to take cognisance of an application that it should authorise the registration of an EU trade mark. Nor, in those circumstances, is it for the Court to take cognisance of an application for alteration requesting it to amend the decision of a Board of Appeal to that effect (see, to that effect, judgment of 12 April 2011, Euro-Information v OHIM (EURO AUTOMATIC PAYMENT), T‑28/10, EU:T:2011:158, paragraph 13 and the case-law cited).
17      It follows that the second head of claim must be dismissed on the ground that the Court lacks jurisdiction.
Substance
18      In support of its action, the applicant puts forward, in substance, a single plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001.
19      In support of its single plea in law, the applicant argues that the Board of Appeal infringed Article 8(5) of Regulation 2017/1001 in a number of respects, namely in so far as concerns, first, the determination of the relevant public and its level of attention, secondly, the finding of a link between the signs at issue, thirdly, the existence of an unfair advantage being taken of the repute of the earlier mark and, fourthly, the absence of due cause for the use of the mark applied for.
20      In accordance with Article 8(5) of Regulation 2017/1001, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to be registered where it is identical with, or similar to an earlier trade mark, irrespective of whether the goods or services in respect of which it is applied for are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU
trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member
State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trade mark.
21      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation 2017/1001, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, the earlier mark must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited).
22      As regards, more particularly, the fourth of the conditions for the application of Article 8(5) of Regulation 2017/1001, it refers to three separate and alternative types of risk, namely that the use without due cause of the mark applied for, first, is detrimental to the distinctive character of the earlier mark, secondly, is detrimental to the repute of the earlier mark, or thirdly, takes unfair advantage of the distinctive character or the repute of the earlier mark. The first type of risk referred to in that provision arises where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the mind of the public. The second type of risk occurs where the goods or services covered by the mark applied for may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. The third type of risk is that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. It should, however, be emphasised that in none of those cases is it necessary that there be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).
23      It is in the light of those considerations that the Court must consider whether the Board of Appeal infringed Article 8(5) of Regulation 2017/1001, as the applicant alleges.
The relevant public
–       The relevant territory
24      In the contested decision, first, the Board of Appeal concluded that, since the earlier mark was an EU trade mark, the relevant territory was that of the entire European Union. Secondly, it concluded that, since the Opposition Division had based its decision on the perception of the German public, as part of the public in the territory of the European Union, it would follow the same approach.
25      Those conclusions are not disputed by the applicant.
–       The relevant public for the purposes of the assessment of detriment to the repute of the earlier mark and that public’s level of attention
26      In the contested decision, the Board of Appeal stated that the relevant public for the purposes of assessing any unfair advantage consisted of average consumers of the services covered by the mark applied for. In that regard, in so far as concerned the services covered by that mark and at issue in the present action, namely those in Class
44, the Board of Appeal found that human hygiene and beauty care services, like human healthcare services, were aimed mainly at the public at large, which had an above-average level of attention. In so far as concerned human healthcare services, it found that they also targeted professionals, who had a high degree of attention.
27      In addition, the Board of Appeal also stated that, as regards any possible detriment to the repute or distinctive character of the earlier mark, the public to be taken into consideration consisted of consumers of the goods covered by the earlier mark, that is to say fashion magazines in Class
16, which it considered to be aimed at the public at large, which had an average level of attention.
28      The applicant disputes those findings and maintains that, in reaching them, the Board of Appeal infringed Article 8(5) of Regulation 2017/1001.
29      First, the applicant argues that human hygiene services are aimed not at the public at large but at professionals displaying a high level of attention, inasmuch as such services concern the sanitisation of public places in accordance with regulations concerning the prevention of disease and the maintenance of cleanliness. Secondly, according to the applicant, the Board of Appeal should have found that the average consumer of beauty care services displayed a high degree of attention, as it found in the case of average consumers of healthcare services. Thirdly, the applicant maintains that, since the Board of Appeal found that the reputation of the earlier mark was limited to fashion magazines for women in Germany, it should have considered whether the German female readership of the earlier trade mark was likely to associate the signs at issue with human hygiene services, beauty care services and healthcare services.
30      EUIPO and the intervener dispute the applicant’s line of argument.
31      According to the case-law, in so far as concerns the relevant public, for the purposes of the analysis in relation to Article 8(5) of Regulation 2017/1001, that public will vary according to the type of injury alleged by the proprietor of the earlier mark (judgment of 12 March 2009, Antartica v OHIM, C‑320/07 P, not published, EU:C:2009:146, paragraph 46).
32      Indeed, the existence of injury consisting in detriment to the distinctive character or the repute of the earlier mark must be assessed having regard to average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. By contrast, the existence of injury consisting in unfair advantage being taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark,
must be assessed having regard to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 35 and 36).
33      In the present case, since the Board of Appeal found that there was a risk that the mark applied for would take unfair advantage of the repute of the earlier mark, the relevant public consists of average consumers of the services covered by the mark applied for.
34      In that connection, first of all, in so far as concerns the human hygiene services covered by the mark applied for, there is nothing to suggest that those services should be limited to services sought by professionals. On the contrary, it is clear from the very name of those services, as included in the application for the trade mark, which is ‘human hygiene’, that the aim of those services is sanitisation, bodily cleanliness and the prevention of diseases, which may correspond to services that are provided to the public at large, such as hair washing, body and face cleansing or indeed the removal of hair from certain parts of the body. That interpretation is supported by the fact that human hygiene services are presented alongside human beauty care services, which the applicant does not dispute as being aimed at the general public.
35      Next, in so far as concerns the applicant’s arguments relating to the level of attention of the relevant public for human beauty care services, it must be recalled that the terms ‘high’ and ‘heightened’, as well as the expression ‘higher
than
average’, are used as synonyms. Both a ‘high level of attention’ and a ‘higher-than-average level of attention’ indicate a heightened level of attention on the part of the public (see judgment of 11 October 2023, Pascoe pharmazeutische Präparate v EUIPO – Novartis Pharma (PASCELMO), T‑435/22, not published, EU:T:2023:610, paragraph 18 and the case-law cited). Consequently, the applicant’s complaint
that the Board of Appeal found the level of attention of the average consumer of the human beauty care services to be ‘above
average’, rather than ‘high’, is to no purpose since those two expressions are synonymous.
36      Lastly, the applicant is mistaken to argue that any possible unfair advantage should have been assessed by reference to the female readership of the magazine Elle, sold under the earlier trade mark, with a view to establishing whether such a readership was likely to associate that earlier mark with the services in Class
44 covered by the mark applied for. Indeed, as observed in paragraph 32 above, the possibility of an unfair advantage being taken of the repute of the earlier mark must be assessed having regard to average consumers of the goods or services covered by the mark applied for. More specifically, the relevant public to which reference must be made should not be the public consisting of consumers likely to use both the goods or services covered by the earlier mark and the goods or services covered by the later mark, but the public which might call the earlier mark to mind when it is confronted with the goods or services covered by the later mark (see, to that effect, judgment of 14 April 2021, Berebene v EUIPO – Consorzio vino Chianti Classico (GHISU), T‑201/20, not published, EU:T:2021:192, paragraph 54 and the case-law cited).
37      The public referred to in paragraph 36 extends beyond just the women who are included within the readership of Elle magazine.
38      Consequently, the Board of Appeal cannot be criticised for having essentially considered that it was necessary to have regard to the perspective of the average consumer of the services covered by the mark applied for in order to assess whether that mark was liable to take unfair advantage of the repute of the earlier mark, rather than confining the relevant public solely to the female readers of Elle magazine.
39      Moreover, even if the applicant were seeking to call into question the Board of Appeal’s findings regarding the average consumer of the goods in Class
16 covered by the earlier mark, summarised in paragraph 27 above, it is clear that those findings do not contain any error of assessment. Indeed, as the Board of Appeal essentially found, the goods in question are magazines that cover subjects that are of interest to the entire population and that are widely available, such that they are therefore aimed at the public at large which has an average level of attention.
40      It follows from the foregoing that the applicant has not established that the Board of Appeal made an error of assessment in its determination of the relevant public or in so far as concerns the level of attention of that public.
The existence of a link between the signs at issue
41      The applicant disputes the Board of Appeal’s conclusion regarding the existence of a link between the signs at issue, for the purposes of Article 8(5) of Regulation 2017/1001. In that regard, it argues that the Board of Appeal was wrong to find, first, that the earlier mark enjoyed a reputation in Germany, secondly, that that mark had an average degree of inherent distinctiveness, thirdly, that the signs at issue were similar, fourthly, that there was a proximity between the goods and services at issue and, fifthly, that it was unnecessary to consider whether there was a likelihood of confusion between the signs.
42      According to the case-law, Article 8(5) of Regulation 2017/1001 implies that the types of injury referred to in that provision, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the later mark, on account of which the relevant public makes a connection between those marks, meaning that it establishes a link between them even though it does not confuse them. The existence of such a link on the part of the relevant public between the mark applied for and the earlier mark is therefore an implied essential precondition for the application of Article 8(5) of Regulation 2017/1001 (see judgment of 7 December 2022, Puma v EUIPO – Vaillant (Puma), T‑623/21, not published, EU:T:2022:776, paragraphs 21 and 22 and the case-law cited).
43      In that connection, it must be borne in mind that the existence of a link between the marks at issue must be assessed globally, taking into account all factors relevant to the circumstances of the case, such as the degree of similarity between those marks; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (see judgment of 4 December 2024, Puma v EUIPO – Li Puma (Li Puma Design), T‑30/24, not published, EU:T:2024:874, paragraph 49 and the case-law cited).
44      It is in the light of those considerations that the Court must examine the complaints made by the applicant by which it takes issue with the various factors considered by the Board of Appeal in establishing the existence of a link between the signs at issue.
–       The reputation of the earlier mark in Germany
45      In the contested decision, the Board of Appeal concluded that, having regard to the evidence which the intervener had adduced before the Opposition Division, the reputation of the earlier mark had been established in the European Union, including Germany, although it limited it to fashion magazines for women in Class
16.
46      The applicant argues that the evidence taken into account by the Board of Appeal mainly establishes
the reputation of the earlier mark in France, but not in Germany. In that regard, it submits that the Opposition Division solely recognised knowledge of the earlier mark in Germany, not reputation, and that the contested decision itself acknowledged that the readership of Elle magazine in that country represented only 0.46% of its population.
47      EUIPO and the intervener dispute the applicant’s line of argument.
48      According to the case-law, in order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public which is relevant with regard to the goods or services covered by that trade mark. In examining that condition, all the relevant facts of the case must be taken into consideration, in particular the market share held by the earlier mark, how intensive, geographically widespread and long-standing use of the mark has been, and the amount invested by the undertaking in promoting the mark, but there is no requirement for that mark to be known by a specific percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (see judgment of 31 May 2017, SOTTO IL SOLE ITALIANO SOTTO il SOLE, T‑637/15, EU:T:2017:371, paragraph 44 and the case-law cited).
49      In the present case, in the first place, it is necessary to reject the applicant’s argument criticising the Board of Appeal for endorsing the assessment by which the Opposition Division had found that there was evidence to prove ‘knowledge’ of the earlier mark in countries other than France, on the ground that that suggests that proof of reputation had not been furnished. In fact, first, as is apparent from the case-law cited in paragraph 48 above and as EUIPO has emphasised, a trade mark’s having a reputation implies that it is known by a significant part of the relevant public, and so there is no conflict between the concepts of ‘reputation’ and ‘knowledge’. Secondly, the applicant’s argument referred to above is based on an incomplete reading of the contested decision, inasmuch as it is apparent from paragraphs 46 to 49 thereof that the Board of Appeal unequivocally concluded that the earlier mark did indeed have a reputation in Germany, as the Opposition Division had also concluded.
50      In the second place, it must be observed that the Board of Appeal found that the earlier mark enjoyed a reputation in Germany on the basis of the efforts expended to promote Elle
magazine, sold under that mark, not only in France but also in other countries of the European Union, and on the basis of the wide circulation of that magazine in Germany. More specifically, it pointed out that the German edition of the magazine had been sold, with sales it described as high, since 1988, such that it had become the foremost fashion magazine in Germany, ahead of other internationally recognised periodicals such as Vogue and Harper’s Bazaar.
51      Those items of evidence, which the applicant merely dismisses generally without adducing any evidence to the contrary, constitute a set of factors that attest to the reputation of the earlier mark in Germany, in accordance with the case-law cited in paragraph 48 above.
52      That conclusion is not called into question by the applicant’s argument that the Board of Appeal accepted that the readership of Elle magazine in Germany stood at only 0.46% of the country’s population.
53      First of all, as EUIPO states, the Board of Appeal referred to that percentage of the German population solely to answer a complaint raised by the applicant against the decision of the Opposition Division. Next, as is apparent from the case-law referred to in paragraph 48 above, the reputation of a trade mark is not to be assessed by having regard to knowledge of it among the entire population of a given territory, but by reference to the public concerned by the goods or services covered by that trade mark. In the present case, women’s fashion magazines, among which the Board of Appeal found the earlier trade mark to enjoy a reputation, are aimed at the general public and are a leisure item that is purchased only by a minority of the general population. Therefore, the fact that Elle magazine is actually read by less than 1% of the German population is not incompatible with the reputation of the earlier mark established by the evidence listed in paragraph 50 above.
54      That is all the more true given that the reputation of a mark depends not only on those persons who buy and use the goods or request the services in respect of which the mark in question is protected and used, but also on the knowledge that the public at large and potential customers have of that mark (see, to that effect, judgment of 6 July 2012, Jackson International v OHIM – Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 34). The public at large is likely to know of the earlier mark without having read Elle magazine, sold under that trade mark, because it comes into contact with people who do read that magazine or because it sees covers of the magazine that may, for example, be displayed in public places for promotional purposes.
55      Consequently, the applicant has not established that the Board of Appeal made an error of assessment in finding that the earlier mark enjoyed a reputation in Germany in so far as fashion magazines are concerned.
–       The inherent distinctive character of the earlier mark
56      In the contested decision, the Board of Appeal found that the earlier mark was distinctive in relation to women’s fashion magazines, in so far as the word ‘elle’, which made up the mark, did not suggest any characteristic of women’s fashion magazines, even if some members of the German public might perceive that term as a translation of the unit of measure called the ‘cubit’.
57      The applicant maintains that the Board of Appeal should have found that the earlier mark had a low rather than an average degree of distinctiveness, given that it consists of a basic French word understood by a significant proportion of the German population and, in particular, by the readership of women’s fashion magazines.
58      EUIPO and the intervener dispute the applicant’s arguments.
59      For the purposes of assessing the distinctive character of a mark or of a constituent element of a mark, an assessment must be made of the greater or lesser ability of that mark or that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark or element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgment of 11 October 2023, Deutsche Glasfaser Wholesale v EUIPO – O2 Worldwide (brightblue), T‑516/22, not published, EU:T:2023:619, paragraph 31 and the case-law cited).
60      In the present case, in the first place, it is necessary to reject from the outset the argument by which the applicant maintains that it ‘filed before … EUIPO sufficient evidence to prove’ that a significant proportion of the German public would understand the word ‘elle’, which constitutes the earlier mark, as being a basic French word.
61      According to the case-law,
references to EUIPO’s administrative file may be taken into consideration only to the extent that it is possible to determine precisely which elements in that file support or complement pleas or arguments expressly set out by the applicant in the body of its pleadings (see judgment of 19 May 2021, Müller v EUIPO (TIER SHOP), T‑535/20, not published, EU:T:2021:283, paragraph 29 and the case-law cited), which is not the case here for the argument described in paragraph 60 above.
62      Similarly, although the applicant refers to a decision of the Bundespatentgericht (Federal Patent Court, Germany), it must be observed, as EUIPO has submitted, that the applicant did not produce such a decision in any annex to the application, nor does it appear in the file relating to the proceedings before EUIPO that has been submitted to the Court, and so it cannot be taken into account.
63      In the second place, in so far as concerns the argument that the German public knows French and perceives the earlier mark as referring to the third person singular feminine personal pronoun in that language, it must observed, as the intervener has submitted, that an understanding of a foreign language may not, in general, be presumed (see judgment of 15 November 2023, International Foodstuffs v EUIPO – Société des produits Nestlé (TIFFANY CRUNCH N CREAM), T‑321/22, not published, EU:T:2023:715, paragraph 45 and the case-law cited). Therefore, since the applicant has not produced evidence to prove such understanding, it must be held that, as the Board of Appeal found, a significant proportion of the German public is completely ignorant of the meaning in German of the French pronoun ‘elle’.
64      Consequently, the applicant has not succeeded in establishing that the Board of Appeal made an error of assessment in finding that the earlier mark had average inherent distinctive character.
–       The similarity between the signs at issue
65      In the contested decision, the Board of Appeal found, essentially, that the signs at issue were similar, at least to an average degree, visually and phonetically, and that they were not similar conceptually. It therefore concluded that the signs were similar to a certain degree.
66      The applicant takes issue with the Board of Appeal for failing to find that there was a significant conceptual difference between the signs at issue. While the mark applied for refers to the female given name Ella, the earlier mark has a clear meaning in German, inasmuch as it refers either to a bone in the forearm or to a cubit. The conceptual difference between the two signs means that they are different.
67      EUIPO and the intervener dispute the applicant’s arguments.
68      According to the case-law, the existence of a similarity between an earlier mark and the mark applied for is a precondition for the application both of Article 8(1)(b) of Regulation 2017/1001, concerning the existence of a likelihood of confusion, and of Article 8(5) of that regulation. That condition requires, in the context both of Article 8(1)(b)
of Regulation 2017/1001 and of Article 8(5) thereof, the existence, in particular, of elements of visual, phonetic or conceptual similarity. It is true that those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation 2017/1001 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of a likelihood of confusion is not necessary for the protection conferred by Article 8(5) of that regulation. Thus, the types of injury referred to in Article 8(5) may be the consequence of a lesser degree of similarity between the earlier and later marks, provided that it is sufficient for the public concerned to make a connection between those marks, that is to say, to establish a link between them, in accordance with the case-law referred to in paragraph 42 above. That said, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether it is carried out in the light of one or other of those provisions (see, to that effect, judgment of 28 April 2021, Asolo v EUIPO – Red Bull (FLÜGEL), T‑509/19, not published, EU:T:2021:225, paragraph 87 and the case-law cited).
69      Moreover, it must be borne in mind that two marks are similar when, from the point of view of the relevant public, they are at least partially identical in one or more relevant aspects. The global assessment of the link between the marks at issue must, so far as concerns the visual, phonetic or conceptual similarity of the marks, be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that link. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 7 June 2023, Sanity Group v EUIPO – AC Marca Brands (Sanity Group), T‑541/22, not published, EU:T:2023:310, paragraph 25 and the case-law cited).
70      In the present case, the applicant does not dispute that the signs at issue are similar visually and phonetically, but it argues that the conceptual differences between them are such that they should have been considered to be different overall.
71      In that connection, the conceptual differences between two signs at issue may counteract their visual and phonetic similarities, provided that at least one of those signs has a clear and specific meaning for the relevant public, with the result that that public is capable of grasping it immediately. The neutralisation of the visual and phonetic similarities of the signs at issue by their conceptual differences is examined when making the overall assessment of the similarity of those signs, which is based on the overall impression given by those signs (see, to that effect, judgment of 5 October 2017, Wolf Oil v EUIPO, C‑437/16 P, not published, EU:C:2017:737, paragraphs 43 and 44 and the case-law cited).
72      The case-law cited in paragraph 71 above deals more specifically with the assessment of the degree of conceptual differences which may lead to the neutralisation of visual and phonetic similarities (see judgment of 30 April 2025, Mobility Trader v EUIPO – Cala and Ruiz (hey car select), T‑338/24, not published, EU:T:2025:420, paragraph 83 and the case-law cited). Accordingly, it has been held that the possibility of counteracting the visual and phonetic similarities of two signs at issue arises in the situation where there is a particularly pronounced and obvious conceptual difference between them (see, to that effect, judgment of 15 February 2023, Deutsche Bank v EUIPO – Operación y Auditoria (avanza Tu negocio), T‑341/22, not published, EU:T:2023:73, paragraph 98 and the case-law cited).
73      In the present case, first of all, the applicant’s argument that the public concerned by the magazines covered by the earlier mark will perceive in that mark a reference to a cubit cannot be accepted. The cubit is an ancient unit of measurement of length that ceased to be used more than a century ago in favour of the metric system commonly used by the general public in the European Union. Accordingly, the Board of Appeal was right to find that a significant proportion of that public would not see any obvious reference to a cubit when they encountered the word ‘elle’ in the context of women’s fashion magazines. Similarly, although the word ‘elle’ in German also refers to ‘ulna’, one of the bones in the forearm, that is an anatomical term that will not immediately be perceived by the general public when it calls to mind the earlier mark.
74      Therefore, it must be held that, as the Board of Appeal found, the earlier mark does not convey any particular concept to a significant proportion, at the very least, of the relevant public.
75      Secondly, as regards the mark applied for, it is true that, as the applicant maintains and as the Board of Appeal acknowledged, the relevant public is likely to perceive the element ‘ella’ of that mark as a female given name. That being so, and since that given name is common and relatively simple, it cannot be regarded as conveying a clear and specific concept capable of creating a particularly pronounced and obvious conceptual difference from the earlier mark, within the meaning of the case-law cited in paragraph 72 above, to the point of counteracting the average visual and phonetic similarity between the signs at issue, as found by the Board of Appeal and not disputed by the applicant.
76      Consequently, the Board of Appeal did not make any error of assessment in finding, after carrying out a global assessment of the similarity of the signs at issue, that they were similar.
–       The proximity between the goods and services in question
77      In the contested decision, the Board of Appeal found that, despite the differences in their nature, purpose and commercial channels, the services in Class
44 covered by the mark applied for were linked to the women’s fashion magazines in Class
16 for which the earlier mark had a reputation. More specifically, it found that the target audiences of the goods and services in question overlapped and that those goods and services shared a common thematic focus, inasmuch as human hygiene, beauty care and healthcare services were connected with the improvement of personal appearance, as were fashion magazines, the readers of which sought advice on skincare, trends in cosmetics and aesthetic enhancement.
78      The applicant disputes the Board of Appeal’s assessment that there is proximity between, on the one hand, the women’s fashion magazines covered by the earlier mark and, on the other, the human hygiene, beauty care and healthcare services covered by the mark applied for.
79      First, hygiene services are, the applicant maintains, directed at professionals rather than ordinary individuals. Secondly, healthcare services are provided by licensed professionals in the medical sector, and it would be difficult to imagine that a fashion magazine would venture into the provision of such services. Thirdly, beauty care services are not similar to a fashion magazine.
80      In addition, the applicant states that, in so far as concerns the assessment of whether there is a link between the signs at issue for services in Class
43 covered by the mark applied for, the Board of Appeal found that it had not been established that German consumers were aware of fashion magazines or fashion houses that had entered the hotel sector or the catering services sector. According to the applicant, that same reasoning should have been applied to the services in Class
44 covered by the mark applied for, but the Board of Appeal wrongly omitted to consider whether German consumers were aware of fashion magazines or fashion houses that had extended their activities to human hygiene, beauty care or healthcare services.
81      EUIPO and the intervener dispute the applicant’s arguments.
82      As is apparent from the case-law referred to in paragraph 43 above, the nature and the degree of proximity between the goods and services concerned constitute factors that are relevant in order to determine whether the use of a trade mark takes unfair advantage of the distinctive character or the repute of another mark. However, the existence of a similarity between the goods and services covered by the marks at issue does not constitute a condition for the application of the relative ground for refusal laid down in Article 8(5) of Regulation 2017/1001. Indeed, according to its wording, that provision applies ‘irrespective of whether the goods or services for which [the trade mark]
is applied [for] are identical with, similar to or not similar to those for which the earlier trade mark is registered’ (see judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 182 and the case-law cited).
83      In so far as concerns the concept of ‘proximity’ between the goods or services, which is relevant for the purpose of applying Article 8(5) of Regulation 2017/1001, that must be understood as the existence of a simple connection between those goods or services (see, to that effect, judgment of 30 March 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPALLI), T‑445/21, not published, EU:T:2022:198, paragraph 48 and the case-law cited).
84      In the present case, in the first place, the applicant is mistaken in claiming that human hygiene services are aimed solely at professionals, as is clear from the examination of its arguments relating to the level of attention of the relevant public (see paragraph 34 above).
85      In the second place, as regards the applicant’s argument that human hygiene and healthcare services are not connected with fashion or beauty, it must be observed that women’s fashion magazines do not deal solely with fashion, in the strict sense, but with aesthetics in general, physical appearance and well-being. Accordingly, it is not uncommon to find in them, in addition to articles about style and clothing trends, advice and information concerning aesthetics, including topics relating to hygiene and health, such as skin care and face care, or also cosmetic surgery, as the Board of Appeal pointed out in paragraph 81 of the contested decision. Thus, those factors enabled the Board of Appeal to find, correctly, that there was a proximity between women’s fashion magazines, on the one hand, and human hygiene and beauty care services, on the other.
86      In the third place, it is necessary to reject the applicant’s argument that it would be unreasonable to imagine that a fashion magazine might venture into the medical industry or bear some resemblance to the beauty care industry. As is apparent from the case-law cited in paragraphs 42, 82 and 83 above, Article 8(5) of Regulation 2017/1001 does not require that the relevant public should imagine that the two signs at issue originate from one and the same undertaking, or that the goods and services in question are similar; it is merely necessary that the relevant public establish a simple link between the goods and services in question.
87      It is true that, in concluding that there was no proximity between, on the one hand, fashion magazines and, on the other, the hotel and catering services in Class
43 covered by the mark applied for, the Board of Appeal took into account the fact that the evidence provided by the intervener did not establish that the relevant public was aware of any trend among companies publishing women’s fashion magazines of opening restaurants and accommodation venues under the same trade mark. In the context of that examination, the Board of Appeal also stated that, in the mind of the relevant public, moreover, there would be no mental association, when choosing a restaurant or making a hotel reservation, with the image of the earlier mark, such as to indicate that that image would influence such a decision.
88      However, as regards the services in Class
44 covered by the mark applied for, at issue in the present action, the Board of Appeal found that the relevant public would naturally make such an association with the image of the earlier trade mark for women’s fashion magazines, which enabled it to find that there was a connection between the goods and services in question, for the reasons set out in paragraph 85 above. It was therefore unnecessary for it to consider whether such a link was also likely to be created by the existence of a trend among women’s fashion magazines of offering human healthcare or beauty care services.
89      Consequently, it must be concluded that the Board of Appeal was right to find that there was a proximity between the goods covered by the earlier mark and the services in Class
44 covered by the mark applied for.
–       The absence of any assessment of the likelihood of confusion
90      The applicant criticises the Board of Appeal for failing to consider whether there was a likelihood of confusion between the signs at issue, even though that is a relevant factor in assessing the existence of a link between the two marks for the purposes of Article 8(5) of Regulation 2017/1001.
91      According to the applicant, there was no likelihood of confusion in the present case, something which, moreover, the intervener had also acknowledged, since it had agreed that Elle
magazine would publish advertisements for establishments operated by the applicant in which the mark applied for was used.
92      EUIPO and the intervener dispute the applicant’s arguments.
93      As was observed in paragraph 43 above, the existence of a likelihood of confusion between an earlier mark with a reputation and a later mark is liable to constitute a relevant factor in establishing the existence of a link between those marks for the purpose of the application of Article 8(5) of Regulation 2017/1001.
94      Nevertheless, in none of the cases in which Article 8(5) of Regulation 2017/1001 may be applied is it necessary for there to be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see the case-law cited in paragraphs 22 and 42 above). In other words, it is only one factor among others and can be taken into account only where the goods or services concerned are identical or similar (see, to that effect, order of 29 January 2025, Fashion Box v EUIPO – Ghostthinker (RE:PLAY), T‑164/24, not published, EU:T:2025:123, paragraph 21).
95      Therefore, the Board of Appeal cannot be criticised for not examining, for the purpose of Article 8(5) of Regulation 2017/1001, whether there was a likelihood of confusion between the signs at issue, all the more so since it did not find that the goods and services in question were identical or similar, but merely that there was proximity between them. This complaint must therefore be rejected.
–       Conclusion regarding the existence of a link between the signs at issue
96      It follows from all the foregoing considerations that the Board of Appeal took account of all the relevant factors in finding that there existed a link between the signs at issue in the mind of the relevant public, in accordance with the case-law cited in paragraphs 42 and 43 above, and that the applicant has not succeeded in establishing that the Board of Appeal erred in its assessment of those various factors.
Whether unfair advantage of the repute of the earlier mark would be taken
97      In the contested decision, the Board of Appeal found, in substance, that, having regard to the reputation of the earlier mark, the similarity of the signs at issue and the link between the goods and services in question, there was a real risk that the use by the applicant of the mark applied for in relation to the services in Class
44 relating to human hygiene, beauty care and healthcare, would enable the applicant to take unfair advantage of the earlier mark. In that regard, it relied on the fact that the magazine Elle, sold under the earlier trade mark, conveyed a positive image of beauty, elegance and style with which the relevant public was very familiar, and that the relevant public might associate that image with the mark applied for and thus be encouraged to use the services in Class
44 covered by that mark.
98      According to the applicant, even supposing that a link could be established between the signs at issue, no unfair advantage could be taken of the repute or distinctive character of the earlier mark.
99      First, the applicant criticises the Board of Appeal for having relied on evidence relating to the edition of Elle magazine sold in France, which was not capable of proving injury to the reputation of the earlier mark in Germany. Secondly, according to the applicant, the reputation of that mark, which pertains to fashion magazines, cannot be transferred to other services such as those covered by the mark applied for. In that connection, the applicant alleges that it has not been established that a magazine is capable of extending to services the aim of which is health and beauty and improving the appearance of the body and face. Thirdly, the Board of Appeal did not base its findings on any evidence to show that there was a real risk, and not merely a hypothetical one, of injury to the reputation of the earlier mark. In particular, it is not apparent from any item of evidence that the applicant sought to ride on the coat-tails of the earlier mark or the message of elegance which it conveys, or that a fashion magazine is capable of extending to the hygiene and healthcare services covered by the mark applied for, which do not convey notions of fashion, lifestyle or elegance.
100    EUIPO and the intervener dispute the applicant’s line of argument.
101    According to the case-law, the concept of an unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects will be transferred to the goods covered by the mark applied for, with the result that the marketing of those goods can be made easier by that association with the earlier mark with a reputation. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image (see judgment of 21 December 2022, International Masis Tabak v EUIPO – Philip Morris Brands (Representation of a pack of cigarettes), T‑44/22, not published, EU:T:2022:843, paragraphs 62 and 63 and the case-law cited).
102    In order to establish whether, in a particular case, the use, without due cause, of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark, it is appropriate to carry out a global assessment, taking into account all factors relevant to the circumstances of the case. Those factors include, inter alia, the strength of the reputation and the degree of distinctiveness of the earlier mark, the degree of similarity between the marks at issue, and the nature and degree of proximity of the goods or services concerned (see judgment of 28 April 2021, FLÜGEL, T‑509/19, not published, EU:T:2021:225, paragraph 131 and the case-law cited).
103    In the present case, in the first place, it must be observed that, by reproducing, in paragraph 121 of the contested decision, covers of the French edition of Elle magazine, the Board of Appeal sought to substantiate the positive image of that magazine in matters of ‘fashion trends, beauty, elegance and style for women’, before then stating, in the following paragraph, that that image was conveyed by the other language editions of the magazine. In that regard, the applicant confines itself to disputing the relevance of the covers in question to proving injury to the reputation of the earlier mark in Germany, but it does not adduce any evidence capable of invalidating the Board of Appeal’s finding, mentioned above, that the particular image conveyed by Elle
magazine is the same in its various language editions.
104    Consequently, the reproduction of covers of the French edition of Elle magazine does not vitiate the Board of Appeal’s reasoning with any error of assessment.
105    In the second place, the fact that the applicant may not have intended to ride on the coat-tails of the image conveyed by the earlier mark does not make it possible to rule out the existence of an unfair advantage being gained from the use of the mark applied for. Indeed, the absence of any intention on the part of the proprietor of the mark applied for to ride on the coat-tails of the reputation of the earlier mark, even if established, is not in itself sufficient to rule out the possibility of unfair advantage being gained from the use of that mark.
Factors which are, by nature, subjective, such as the commercial intentions, real or supposed, of the proprietor of the mark applied for do not have to be taken into account when assessing whether there is a risk that the use without due cause of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark, for the purposes of Article 8(5) of Regulation 2017/1001 (see judgment of 11 June 2025, Fattorie Garofalo – Società Cooperativa Agricola v EUIPO – Pastificio Lucio Garofalo (fattorie garofalo), T‑1036/23, not published, EU:T:2025:592, paragraph 120 and the case-law cited).
106    In the third place, as regards the applicant’s argument that the Board of Appeal based its findings on an insufficiently serious risk of injury to the reputation of the earlier mark, it must be observed that the proprietor of that earlier mark is not required to demonstrate actual and present injury to its mark. It must merely adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment. Such a conclusion may be established, inter alia, on the basis of logical deductions resulting from an analysis of the probabilities and by taking account of the normal practices in the relevant commercial sector and all the other circumstances of the case (see judgment of 28 April 2021, FLÜGEL, T‑509/19, not published, EU:T:2021:225, paragraph 151 and the case-law cited).
107    In the present case, first, it was found that the earlier mark had an average degree of inherent distinctiveness, that it enjoyed a reputation among the German public interested in women’s fashion magazines and that it conveyed a brand image in relation to beauty, aesthetics and well-being. Secondly, it has been held that the Board of Appeal did not make an error of assessment in finding that there was a certain degree of similarity between the signs at issue. Thirdly, it has been found that the Board of Appeal did not make an error of assessment in concluding that there was a proximity between the women’s fashion magazines covered by the earlier mark and the services of human hygiene, healthcare and beauty care in Class
44 covered by the mark applied for, inasmuch as those goods and services were aimed at the same target public and were all linked with aesthetics and improving the physical appearance.
108    The Board of Appeal could logically deduce from the factors mentioned above that there was, prima facie, an actual, future risk that the relevant public would be drawn to the services sold under the mark applied for by reason of the link it established with the qualities conveyed by the earlier mark.
109    Although it is not common for companies publishing women’s fashion magazines to extend their activities to services relating to human hygiene, health and beauty, such an extension might seem plausible in the eyes of the general public, having regard to the factors which make it possible to establish a proximity between the goods and services in question, that is to say, their link with aesthetics and improving physical appearance.
110    It follows that the Board of Appeal was entitled to conclude that there was a risk that the use of the mark applied for would take unfair advantage of the repute of the earlier mark.
The existence of due cause for the use of the mark applied for
111    In the contested decision, the Board of Appeal concluded that there was no just cause for the use of the mark applied for, dismissing the evidence presented by the applicant in that regard, since, first, that evidence did not relate to the mark applied for and, secondly, it did not relate to the relevant period.
112    The applicant disputes that conclusion. In particular, it criticises the Board of Appeal for dismissing as irrelevant the advertisements for hotels which it had placed in the German edition of Elle magazine and on the magazine’s English-language website, even though those advertisements clearly mentioned the word ‘ella’, and it maintains that the intervener was aware that those advertisements related to Ella hotels. The applicant adds that the intervener undertook to assist it in marketing the ELLA brand through the advertising channels for the earlier trade mark.
113    Moreover, there is, according to the applicant, just cause for the use of the mark applied for, since the word ‘ella’ is recognised throughout the European Union as a common female given name frequently used in the hospitality and beauty sectors and since it has connotations, in Greek, of invitation and hospitality.
114    EUIPO and the intervener dispute the applicant’s arguments.
115    According to the case-law, where the proprietor of the earlier mark has shown that there is either actual and present injury to its mark or, failing that, a serious risk that such injury will occur in the future, it is for the proprietor of the later mark to establish that there is due cause for the use of that mark (see judgment of 21 December 2022, Representation of a pack of cigarettes, T‑44/22, not published, EU:T:2022:843, paragraph 73 and the case-law cited).
116    It must also be observed that whether there is a due cause which makes it possible to use a mark which adversely affects a mark with a reputation is a matter which must be interpreted restrictively (see judgment of 21 December 2022, Representation of a pack of cigarettes, T‑44/22, not published, EU:T:2022:843, paragraph 75 and the case-law cited).
117    In particular, the sign corresponding to the mark applied for must have been put to real, effective use and usage must, in principle, have commenced at a date prior to the filing of the earlier mark with a reputation or, at least, before that mark acquired its reputation (see, to that effect, judgment 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, paragraphs 60
and 61 and the case-law cited).
118    In the present case, the applicant maintains that it had due cause to use the mark applied for. It relies on the following three items of evidence:
–        an extract from the German edition of Elle magazine of May 2023, which has an advertisement for the hotel Elissa Lifestyle, in Rhodes (Greece);
–        an extract from the English-language website of Elle magazine dated 23 November 2023 relating to promotional offers for the commercial event known as ‘Black Friday’ and advertising rate reductions for several hotels, including the hotel Elissa Lifestyle Beach Resort, in Rhodes;
–        a form dated 26 February 2024, sent by a representative of the Belgian edition of the magazine Elle Décoration to the applicant and signed by the applicant on 26 March 2024, relating to the inclusion of the hotels Elissa Adults-Only Lifestyle Beach Resort and Helea Lifestyle Beach Resort in a guide prepared by that magazine, and also to a reference to those hotels on a social network of the same magazine.
119    In the first place, it must be held that the three items of evidence mentioned in paragraph 118 above are not, in principle, capable of establishing due cause for use of the mark applied for since they all post-date registration of the earlier mark, on 10 November 2021, and the acquisition of its reputation, which was consolidated in Germany owing to the continued presence of Elle magazine in that country from the late 1980s (see paragraph 50 above).
120    In the second place, it must be observed that the documents mentioned in paragraph 118 above do not show real, effective use, as a trade mark, of the word ‘ella’ by the applicant. While the first of those documents does contain, at the end and in a small font, the term ‘ellaresort.com’, it is,
more obviously, a recommendation for a hotel that bears the name Elissa, as is apparent from its title and content. Moreover, the applicant does not dispute that only the word ‘elissa’, and not the word ‘ella’, appears in the second of the documents mentioned in paragraph 118 above. As for the third document, first, it concerns hotels bearing the names Helea and Elissa, but not Ella. Secondly, it cannot be concluded that the term ‘ellaresorts.com’, included in the electronic address of an individual employed by the applicant, constitutes real and effective use of the earlier mark, as a trade mark, such as to establish due cause for use of that mark.
121    In the third place, as stated, in substance by EUIPO, the task of a magazine’s
advertising department is to sell advertising space in that magazine. Accordingly, such a department must, inter alia, assess whether the company and the product or service for which that company wishes to publish an advertisement is compatible with its editorial line, but it is not required to carry out legal assessments in the field of intellectual property law. It follows that the applicant cannot successfully claim that the agreement of the Belgian edition of the magazine Elle Décoration, given in 2024, to promote hotels belonging to it and bearing different names from the mark applied for, namely ‘Elissa’ and ‘Helea’, constitutes due cause for use of that mark.
122    Lastly, in so far as concerns the applicant’s argument regarding the common nature of the word ‘ella’, whether as a German female given name or as a Greek word referring to hospitality, the applicant merely makes a general assertion, without explaining the reasons for which the matters on which it relies constitute, in its particular situation, a due cause that should take precedence over the intervener’s interest in safeguarding the protection afforded by the earlier mark with a reputation.
123    It follows that the applicant has not succeeded in demonstrating that there is due cause for use of the mark applied for.
124    In the light of all the foregoing considerations, the
single plea in law must be dismissed and, consequently, the action must be dismissed in its entirety.
Costs
125    Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
126    Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener in the course of the proceedings before the General Court, in accordance with the form of order sought by the intervener. By contrast, since EUIPO applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as no hearing was held, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Ella Hotels and Resorts monoprosopi AE to bear its own costs and to pay those incurred by Hachette Filipacchi Presse in the course of the proceedings before the General Court;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Gâlea
Tóth
Spangsberg Grønfeldt
Delivered in open court in Luxembourg on 28 January 2026.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.