JUDGMENT OF THE GENERAL COURT (First Chamber)
1 October 2025 (*)
( EU trade mark – Invalidity proceedings – EU figurative mark Poof!…and done – Earlier EU and national figurative marks ETI PUF – Relative grounds for invalidity – No likelihood of confusion – Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001 – No damage to reputation – Article 8(5) and Article 60(1)(a) of Regulation 2017/1001 )
In Case T‑651/24,
Eti Gıda Sanayi ve Ticaret AŞ, established in Eskişehir (Türkiye), represented by A. Căvescu, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Dr. Oetker RO SRL, established in Curtea de Argeș (Romania), represented by C.-M. Macovei, lawyer,
THE GENERAL COURT (First Chamber),
composed, at the time of the deliberations, of I. Gâlea (Rapporteur), acting as President, T. Tóth and S.L. Kalėda, 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 after 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, Eti Gıda Sanayi ve Ticaret AŞ, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 11 October 2024 (Case R 576/2024-1) (‘the contested decision’).
I.      Background to the dispute
2        On 3 February 2023, the applicant filed with EUIPO an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed on 7 February 2018 in respect of the following figurative sign:
3        The goods and services covered by the contested mark in respect of which a declaration of invalidity was sought were in Classes 30 and 35 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, and corresponded, for each of those classes, to the following description:
–        Class 30: ‘Chocolate-based ready-to-eat food bars; Panettone; Sponge cakes; Sweet bread; Pies [sweet or savoury]; Cheese pie; Cheesecake; Frozen cakes; Filled bread rolls; Savory pastries; Brioches; Rusks; Cake bars; Biscuits; Muffins; Cupcakes; Madeleines; Wafers; Pastries; Chocolate cakes; Cream cakes; Fruit cakes; Tarts; Gingerbread; Chocolate bars; Candy; Pralines made of chocolate; Cocoa products; Flavourings for cakes; Pastries, cakes, tarts and biscuits (cookies); Cereal cakes for human consumption; Chocolate-based fillings for cakes and pies’;
–        Class 35: ‘Retail services via catalogues related to foodstuffs; Wholesale services relating to desserts, cakes, sweets, pastry and confectionery; Retail services relating to desserts, cakes, sweets, pastry and confectionery; Retail services relating to food; Online retail services relating to desserts, cakes, sweets, pastry and confectionery; Market campaigns in relation to desserts, cakes, sweets, pastry and confectionery; Distribution of advertising, marketing and promotional material in relation to desserts, cakes, sweets, pastry and confectionery; Advertising, marketing and promotional services in relation to desserts, cakes, sweets, pastry and confectionery; Business administration; Business administration and management’.
4        The application for a declaration of invalidity was based on the following earlier marks:
–        EU figurative mark No 15 124 662, reproduced below, filed on 19 February 2016 and registered on 20 July 2016, covering goods in Class 30, corresponding to the following description: ‘Biscuits; chocolates; pastries; crackers; wafers; cakes; tarts; desserts, namely, bakery desserts, desserts based on flour, and chocolate, mousse desserts, ice desserts; ice creams; edible ices’;
–        Romanian national figurative mark No 143 412, reproduced below, filed on 19 February 2016 and registered on 18 July 2016, covering goods in Class 30, corresponding to the following description: ‘Biscuits; chocolate; pastry; crackers; wafers; cookies; tarts; desserts, namely bakery desserts, flour and chocolate-based desserts, dessert mousses (sweets), cold desserts; ice cream; edible ice’.
5        The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 60(1)(a) 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), read in conjunction with Article 8(1)(b) and (5) thereof.
6        On 18 January 2024, the Cancellation Division rejected the application for a declaration of invalidity.
7        On 18 March 2024, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.
8        By the contested decision, the First Board of Appeal of EUIPO dismissed the appeal.
9        It found that the relevant public was the general public in the European Union, including the general public in Romania, and that that public displayed an average level of attention. As regards the comparison of the signs at issue, the Board of Appeal stated that the figurative elements of the marks occupied a position equivalent to that of the word elements and that the word elements ‘poof’ and ‘puf’, which had a lesser distinctive character, were visually more eye-catching than the other word elements. Furthermore, the Board of Appeal found that the signs at issue displayed a low degree of visual similarity, a degree of phonetic similarity varying from low to high, and a low degree of conceptual similarity. As regards the global assessment of the likelihood of confusion, having regard to the normal distinctive character of the earlier marks and the particular importance of the visual aspect, the Board of Appeal found that, even assuming that the goods and services in question were identical, there was neither a likelihood of confusion nor a likelihood of association on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.
10      Moreover, the Board of Appeal held that one of the preconditions for the application of Article 8(5) of Regulation 2017/1001 was not satisfied in the case at hand, as the applicant had not established that the earlier marks had a reputation.
II.    Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs of the proceedings before the General Court, as well as the costs of the invalidity and appeal proceedings before EUIPO.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened.
13      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs of the proceedings before the General Court, as well as the costs of the invalidity and appeal proceedings before EUIPO.
III. Law
A.      Admissibility
14      EUIPO argues that the action does not meet the requirements of Article 177(1)(d) of the Rules of Procedure of the General Court. It disputes the admissibility of all the pleas in law or arguments put forward by the applicant in its application to the extent that they are directed against the Cancellation Division’s decision. In that regard, EUIPO asserts that paragraphs 24 and 31 of the application, in which the applicant expressly quotes the Cancellation Division’s decision, and the complaint alleging that the relevant territory was incorrectly determined relate, in reality, to that decision. It also argues that the application, inasmuch as it reproduces almost verbatim, in paragraphs 23 to 62 thereof, the arguments put forward in the statement setting out the grounds of the appeal before the Board of Appeal, necessarily concerns the Cancellation Division’s decision.
15      In the first place, it must be borne in mind that, under the first paragraph of Article 21 of the Statute of the Court of Justice of the European Union, applicable to the procedure before the General Court pursuant to the first paragraph of Article 53 thereof, and Article 177(1)(d) of the Rules of Procedure of the General Court, an application must contain, inter alia, a summary of the pleas in law on which it is based. It must, accordingly, specify the grounds on which the action is based, with the result that a mere abstract statement of the grounds is not sufficient to satisfy the requirements of the Statute of the Court of Justice of the European Union and the Rules of Procedure. Moreover, that summary – albeit concise – must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any other supporting information. In order to ensure legal certainty and the sound administration of justice, it is necessary – if an action or, more specifically, a plea in law, is to be admissible – that the basic legal and factual particulars relied on be indicated coherently and intelligibly in the application itself (see judgment of 6 November 2024, Vintae Luxury Wine Specialists v EUIPO – Grande Vitae (vintae), T‑136/23, not published, EU:T:2024:779, paragraph 39 and the case-law cited).
16      It is clear from the case-law that requirements similar to those set out in the preceding paragraph apply where a claim or an argument is relied on in support of a plea in law (judgments of 9 July 2010, Grain Millers v OHIM – Grain Millers (GRAIN MILLERS), T‑430/08, not published, EU:T:2010:304, paragraph 38, and of 8 November 2017, Pempe v EUIPO – Marshall Amplification (THOMAS MARSHALL GARMENTS OF LEGENDS), T‑271/16, not published, EU:T:2017:787, paragraph 86).
17      In the present case, the pleas and the arguments on which the action is based, despite their concise presentation, are indicated sufficiently intelligibly in the application itself and make it possible to understand that the applicant intends to contest the Board of Appeal’s assessments as to the relevant territory and public, the degree of similarity of the signs at issue, the distinctive character of the earlier marks, and the conditions for the application of Article 8(5) of Regulation 2017/1001. The submissions made by EUIPO and the intervener in their responses confirm that the application has met and continues to meet, to that extent, the minimum requirements of Article 177(1)(d) of the Rules of Procedure.
18      However, in so far as the applicant relies on a complaint alleging breach of the principles of the protection of legitimate expectations and legal certainty, it must be stated, as has been observed by EUIPO, that the applicant did not set out, at least in summary form, the matters of fact and law which make it possible to understand the extent to which the contested decision is in breach of those principles. Consequently, that part of the application does not meet the minimum requirements of Article 177(1)(d) of the Rules of Procedure and that complaint must be rejected as inadmissible.
19      In the second place, as regards EUIPO’s arguments alleging that, in reality, the applicant criticises the Cancellation Division’s decision, it must be borne in mind that under Article 72(1) of Regulation 2017/1001, the Court has jurisdiction to rule on actions relating to decisions of the Boards of Appeal and not decisions of the Cancellation Division.
20      The purpose of those actions is to review the legality of decisions of the Boards of Appeal, a review which must, pursuant to Article 95 of Regulation 2017/1001, be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see, to that effect, judgment of 13 February 2019, Etnia Dreams v EUIPO – Poisson (Etnik), T‑823/17, not published, EU:T:2019:85, paragraph 129 and the case-law cited).
21      According to the case-law, it is only pleas directed against the decision of the Board of Appeal itself which are admissible in such actions (judgment of 7 June 2005, Lidl Stiftung v OHIM – REWE-Zentral (Salvita), T‑303/03, EU:T:2005:200, paragraph 59; see also judgment of 22 April 2015, Rezon v OHIM – mobile.international (mobile.de proMotor), T‑337/14, not published, EU:T:2015:220, paragraph 23 and the case-law cited). The same is true of the arguments made in support of the pleas raised (see, to that effect, judgment of 6 September 2023, Consultora de Telecomunicaciones Optiva Media v EUIPO – Optiva Canada (OPTIVA MEDIA), T‑601/22, not published, EU:T:2023:510, paragraph 16).
22      In the present case, in paragraph 31 of the application, in order to plead a failure to state reasons in the contested decision, the applicant expressly and exclusively cites the assessments made by the Cancellation Division. That argument must therefore be rejected as inadmissible in so far as it concerns the statement of reasons for the Cancellation Division’s decision.
23      As regards the remainder of the application, it should be borne in mind that the Court must interpret the pleas in law on which an applicant relies in terms of their substance, rather than of their classification (see judgment of 5 September 2014, Éditions Odile Jacob v Commission, T‑471/11, EU:T:2014:739, paragraph 51 and the case-law cited). Such an interpretation is possible only provided that that substance is sufficiently clear from the application, in accordance with the case-law referred to in paragraph 15 above (judgment of 12 May 2021, Metamorfoza v EUIPO – Tiesios kreivės (MUSEUM OF ILLUSIONS), T‑70/20, not published, EU:T:2021:253, paragraph 27).
24      In the present case, it is true that the applicant relies on the Cancellation Division’s decision or refers to it as the contested decision in paragraphs 12, 24 and 25 of the application. However, it must be noted that the arguments put forward by the applicant in support of the pleas referred to in paragraph 27 of the present judgment are, in essence, directed against the contested decision, in so far as that decision, which confirmed the Cancellation Division’s decision, found that there was no likelihood of confusion and that there had been a failure to satisfy the conditions laid down in Article 8(5) of Regulation 2017/1001.
25      In the third place, as regards the fact that the applicant is repeating in its application the arguments put forward during the proceedings before EUIPO, it must be borne in mind that it is settled case-law that the action cannot be declared inadmissible for that fact alone. The fact of repeating, wholly or in part, the arguments already relied on before EUIPO and not simply referring to them does not amount to an infringement of Article 21 of the Statute of the Court of Justice of the European Union or Article 177 of the Rules of Procedure. Provided an applicant contests the interpretation or application of EU law made by EUIPO, the points of law examined by EUIPO can be debated again in an action before the Court. This forms part of the review by the courts to which the decisions of EUIPO are subject under Article 72 of Regulation 2017/1001 (judgments of 27 September 2005, Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, EU:T:2005:340, paragraph 29, and of 16 June 2015, Best-Lock (Europe) v OHIM – Lego Juris (Shape of a toy figure with protrusion), T‑396/14, not published, EU:T:2015:379, paragraph 19).
26      Consequently, with the exception of the complaint and the argument referred to in paragraphs 18 and 22 above, the present action is admissible and must be examined as to its substance.
B.      Substance
27      The applicant relies, in essence, on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, second, infringement of Article 8(5) of that regulation.
1.      First plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
28      The applicant submits that the Board of Appeal made errors of assessment concerning the relevant territory and the distinctive and dominant elements of the two signs at issue, which resulted in the Board of Appeal incorrectly assessing the visual, phonetic and conceptual similarity of those signs. In addition, the applicant criticises the Board of Appeal for not finding that the earlier marks displayed a very high degree of distinctiveness.
29      EUIPO and the intervener dispute the applicant’s arguments.
30      Under the combined provisions of Article 60(1)(a) and Article 8(1)(b) of Regulation 2017/1001, an EU trade mark is to be declared invalid where, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
31      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
32      For the purpose of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
33      In the light of those considerations, it must be examined whether the Board of Appeal was right in finding that there was no likelihood of confusion on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation 2017/1001.
(a)    The relevant public
34      The Board of Appeal found that the relevant public consisted of the general public, whose level of attention was average, and that the relevant territory was that of the European Union, including Romania.
35      The applicant submits that the Board of Appeal should have assessed the likelihood of confusion solely on the part of the Romanian-speaking public, which would have enabled it to conclude that the word elements ‘puf’ and ‘poof’ were phonetically and conceptually similar.
36      In that regard, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
37      In the present case, the earlier marks are, as is apparent from paragraph 4 above, an EU mark and a Romanian national mark. Therefore, irrespective of the issue of the admissibility of the applicant’s argument, which EUIPO disputes, that argument must be rejected as unfounded, given that (i) in paragraph 19 of the contested decision, the Board of Appeal took into account the perception of the average consumer in the European Union, including the average consumer in Romania, and (ii) the likelihood of confusion on the part of the public in part of the European Union would have been sufficient to declare the contested mark invalid.
38      As regards the applicant’s arguments, set out in paragraphs 45 and 46 of the application, regarding specific knowledge on the part of the professional public, it must be stated that those arguments are linked to the plea alleging infringement of Article 8(5) of Regulation 2017/1001. Assuming that those arguments relate, in general terms, to the composition of the relevant public, they must be rejected as ineffective, given that the Board of Appeal took into account the situation most favourable to the applicant, namely the perception of the general public whose level of attention is average (see, to that effect, judgment of 8 July 2020, FF Group Romania v EUIPO – KiK Textilien und Non-Food (‚kix), T‑659/19, not published, EU:T:2020:328, paragraph 54 and the case-law cited).
39      The applicant’s arguments relating to the relevant public must therefore be rejected.
(b)    The comparison of the goods and services in question
40      As regards the comparison of the goods and services in question, for reasons of procedural economy, the Board of Appeal examined the application for a declaration of invalidity on the basis that those goods and services were identical.
41      The applicant does not dispute those findings.
(c)    The comparison of the signs
42      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, 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 likelihood of confusion. 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 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
43      Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
44      In the present case, the marks at issue are figurative marks. The contested mark comprises the word element ‘poof’, written in stylised orange letters in bold font, and the smaller word element ‘…and done’, placed underneath and written in a simple typeface in white. Those elements are placed against a background composed of a large, dark-blue figurative element depicting a splash, with three white stars on it. The earlier marks comprise the same sign depicting the word element ‘puf’, written in white, slightly stylised, letters, and, placed above, the smaller word element ‘eti’ written in a simple typeface in red. Those elements are placed against a brown rectangular background, which contains a pastry product with a smiley face.
45      Before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the Board of Appeal’s assessment of the distinctive and dominant elements of the marks at issue.
(1)    The distinctive and dominant elements
46      The Board of Appeal found that, because of their size and position, the figurative elements of the signs at issue could not be distinguished from the word elements ‘puf’ and ‘poof’ with the result that they held a position equivalent to that of the word elements. It also took the view that the elements ‘puf’ and ‘poof’ were visually more eye-catching than the other word elements ‘eti’ and ‘…and done’ which, because of their size and position, had a secondary role. Next, the Board of Appeal found that the elements ‘puf’ and ‘poof’ had a lesser distinctive character, as they alluded to the fluffy texture of the goods in question. According to the Board of Appeal, the term ‘eti’, having no meaning, had a normal distinctive character, whereas the term ‘…and done’ had a weak distinctive character for the English-speaking public.
47      According to the applicant, the terms ‘puf’ and ‘poof’ are the main distinctive and dominant elements of the two signs at issue, whereas the representation of the splash of the contested mark plays a purely decorative role. It submits that the elements ‘eti’ and ‘…and done’ do not constitute dominant elements because of their size.
48      EUIPO and the intervener dispute the applicant’s arguments.
49      In the first place, in order to assess whether one or more given components of a composite trade mark is dominant, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark. It follows that the determination of the dominant character of an element within a composite trade mark depends on a fact-based assessment of the various elements that go to make up the sign and is therefore not dependent on whether the sign in question is a figurative sign or a word sign (see judgment of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraphs 35 and 36 and the case-law cited).
50      In that regard, it must be stated that, where a sign consists of both figurative and verbal elements, it does not automatically follow that it is the verbal element which must always be considered to be dominant (judgment of 24 November 2005, Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA), T‑3/04, EU:T:2005:418, paragraph 45). In the case of a composite mark, the figurative element may hold a position equivalent to that of the word element (see, to that effect, judgment of 12 December 2002, Vedial v OHIM – France Distribution (HUBERT), T‑110/01, EU:T:2002:318, paragraph 53).
51      Further, as has been set out in paragraph 43 above, it is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element.
52      In the present case, contrary to the applicant’s assertions, it cannot be held that the word elements ‘puf’ and ‘poof’ represent the dominant elements of the signs at issue, with the other elements being negligible.
53      As the Board of Appeal correctly found, the size of the figurative elements comprising the two signs at issue is equivalent to that of the word elements. In addition, they are visually striking because of their positions, in both cases as a background to the word elements, and because of their respective bold colours. It follows that the figurative elements clearly contribute to the overall image of each of the marks at issue which members of the relevant public retain, so that they cannot be negligible.
54      As regards the word elements ‘eti’ and ‘…and done’, it must be stated, contrary to the applicant’s assertions, that those elements are not negligible in the overall impression created by those marks. First, the element ‘…and done’ is written in a different font from, and in a colour which contrasts with, the element ‘poof’ that it supplements. Second, the element ‘eti’ also contrasts with the word element ‘puf’ because of its red colour and the fact that it is written in capital letters. Moreover, it cannot be disregarded because of its position.
55      Consequently, in the light of the case-law referred to in paragraph 43 above, the comparison between the signs at issue must be carried out having regard to each of the marks at issue as a whole.
56      Lastly, the applicant’s argument alleging that the consumer normally attaches a greater degree of importance to the first part of words must be rejected as irrelevant, given the short length of the elements ‘puf’ and ‘poof’.
57      Although it has previously been held that the first part of a word element may be more likely to catch the consumer’s attention than the parts which follow, that cannot apply in all circumstances, in particular where the element in question is short, as in the present case (see, to that effect and by analogy, judgment of 23 October 2015, Vimeo v OHIM – PT Comunicações (VIMEO), T‑96/14, not published, EU:T:2015:799, paragraph 35).
58      In the second place, for the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods for which the mark has been registered (judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 47).
59      In that connection, where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, distinctive character. Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark (judgment of 3 September 2010, 61 A NOSSA ALEGRIA, T‑472/08, EU:T:2010:347, paragraph 49).
60      First, it must be borne in mind that a word element is descriptive of the goods covered where there is a sufficiently direct and specific relationship between that element and the goods covered to enable the public concerned immediately to perceive, without further thought, a description of one of the essential characteristics of the goods in question (see, to that effect, judgment of 17 October 2012, MIP Metro v OHIM – J. C. Ribeiro (MISS B), T‑485/10, not published, EU:T:2012:554, paragraph 29 and the case-law cited).
61      In the present case, it must be stated, as has been observed by the applicant, that the terms ‘puf’ and ‘poof’ convey, for the relevant English- and Romanian-speaking public, the concept of a foodstuff with a fluffy texture, thereby referring to a characteristic of the goods and services in question. Accordingly, those elements have, at least for that public, a lesser distinctive character.
62      Second, it must be noted that the applicant, which merely submits that the word elements ‘puf’ and ‘poof’ are distinctive, does not put forward specific arguments to dispute the Board of Appeal’s finding that those elements have a lesser distinctive character or to explain how the letters ‘p’ and ‘f’ of those word elements are distinctive, as the applicant maintains.
63      In the light of those considerations, the Board of Appeal did not make any error of assessment when it determined the dominant and distinctive elements of the two signs at issue.
(2)    Visual similarity
64      The Board of Appeal found that the two signs at issue displayed a low degree of visual similarity, given that the word elements ‘puf’ and ‘poof’ coincided only partially – through the common presence of the letters ‘p’ and ‘f’ – and differed in relation to all the other elements, such as the style, position and colour of the letters. In addition, the signs also differed in the other word elements ‘eti’ and ‘…and done’, as well as in their figurative elements.
65      The applicant maintains that the two signs at issue coincide in their dominant and distinctive word elements ‘puf’ and ‘poof’, which are similar because of the common letters written in lower case, their font, style and nearly identical, playful, diagonal positioning. In its view, the differences relating to the other word and figurative elements play an insignificant role. Therefore, the applicant claims that there is an above-average degree of visual similarity.
66      EUIPO and the intervener dispute the applicant’s arguments.
67      In the first place, it must be borne in mind that the elements ‘puf’ and ‘poof’ coincide in the letter ‘p’, in lower case for the earlier marks and in upper case for the contested mark, and in the lower-case letter ‘f’. By contrast, those elements differ in their stylisation, typeface and colour – white for the earlier marks and orange for the contested mark – and in the position of the letters. The letter ‘f’ is, as regards the earlier marks, in third position, preceded by the letter ‘u’, and, as regards the contested mark, in fourth position, preceded by the letters ‘oo’ and followed by an exclamation mark.
68      In that regard, it must be borne in mind that it is clear from the case-law that, the shorter a sign, the more easily the public will be able to perceive each of its various elements. Thus, in the case of short words, even slight differences can produce a different overall impression (see judgment of 23 February 2022, Ancor Group v EUIPO – Cody’s Drinks International (CODE-X), T‑198/21, EU:T:2022:83, paragraph 31 and the case-law cited).
69      Consequently, the relevant public will perceive the differences between the elements ‘puf’ and ‘poof’ in terms of the stylisation, font, colour and position of the letters, especially as those elements are of limited length.
70      In the second place, as has been recalled in paragraph 53 above, the figurative elements of the two signs at issue hold a position equivalent to that of the word elements. The visual comparison between the signs must therefore be carried out on the basis of the overall impression given by their figurative and word elements (see, by analogy, judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 46 and 47). In that regard, as was noted by the Board of Appeal, the signs at issue differ in their figurative elements, as the earlier marks comprise a brown rectangular background which contains a pastry product with a smiley face, whereas the contested mark is composed of a dark-blue background depicting a splash with white stars on it.
71      In the third place, the marks also differ in the colour, font and position of the other word elements ‘eti’ and ‘…and done’. Although those elements hold a secondary position, that fact in no way means that they are negligible and are excluded from the visual comparison, as has been noted in paragraphs 52 to 55 above (see, to that effect, judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 44).
72      In the fourth place, it is also necessary to reject the applicant’s claims, put forward in paragraphs 27, 30, 33 and 34 of the application, that the element ‘puf’ of the earlier marks, whose font has acquired a level of recognition, is entirely included in the contested mark. First, those assertions have no factual basis, because the elements ‘puf’ and ‘poof’ share only the two letters ‘p’ and ‘f’, which differ, in each of those elements, in their style, font, position and colour. In addition, unlike the element ‘puf’, the element ‘poof’ begins with a capital letter. Second, the applicant does not put forward any argument demonstrating that the font of the term ‘puf’ has acquired a level of recognition.
73      Consequently, the Board of Appeal was right to find that the two signs at issue displayed a low degree of visual similarity.
(3)    Phonetic similarity
74      The Board of Appeal found that the two signs at issue will be pronounced using the word elements ‘puf’ and ‘poof’, whereas the elements ‘eti’ and ‘…and done’ will not be pronounced. The two elements coincide in the sound of the letters ‘p’ and ‘f’. Depending on the language used, the pronunciation of the letters ‘u’ and ‘oo’ is either similar, where they are pronounced as two different vowels, or nearly identical, where the letters ‘oo’ are pronounced as a long ‘/u/’. The Board of Appeal therefore found that the signs at issue displayed a degree of phonetic similarity varying from low to high.
75      The applicant submits that the Board of Appeal should have found that the language of the relevant public was Romanian, which would have enabled it to conclude that the letters ‘oo’ will be pronounced as ‘/u/’. Therefore, it argues that the signs at issue display a degree of phonetic similarity which is higher than average.
76      EUIPO and the intervener dispute the applicant’s arguments.
77      It should be noted, first, that the applicant does not dispute the Board of Appeal’s assessment that the relevant public will pronounce only the elements ‘puf’ and ‘poof’.
78      Second, it is necessary to reject as ineffective the applicant’s argument alleging that there is a higher-than-average degree of phonetic similarity between the signs at issue, in so far as, in paragraphs 45 and 58 of the contested decision, the Board of Appeal, for the purposes of the global assessment of the likelihood of confusion, adopted the position that the marks were phonetically similar to a high degree.
79      Consequently, the applicant has not established that the Board of Appeal made any error of assessment in the analysis of the phonetic similarity of the signs at issue.
(4)    Conceptual similarity
80      The Board of Appeal found that the signs at issue displayed a low degree of conceptual similarity in so far as the elements ‘puf’ and ‘poof’, inasmuch as they conveyed the concept of a ‘fluffy’ texture, had a limited distinctive character having regard to the goods in question and the services relating thereto.
81      The applicant claims that the two signs at issue are conceptually similar given that the word elements ‘puf’ and ‘poof’ convey, for the Romanian- and English-speaking public, the idea of a fluffy foodstuff.
82      EUIPO and the intervener dispute the applicant’s arguments.
83      In that regard, it must be observed that the greater or lesser degree of distinctiveness of the elements common to a mark applied for and an earlier mark is one of the relevant factors in assessing the similarity of those signs. The descriptive, non-distinctive or weakly distinctive elements of a mark generally have less weight in the analysis of the similarity of the signs than the elements of greater distinctiveness, which are also more able to dominate the overall impression created by the mark (see, by analogy, judgments of 12 June 2019, Hansson, C‑705/17, EU:C:2019:481, paragraph 53, and of 6 April 2022, Agora Invest v EUIPO – Transportes Maquinaria y Obras (TRAMOSA), T‑219/21, not published, EU:T:2022:219, paragraph 96).
84      That is so in the present case, given that the conceptual similarity of the signs at issue arises from the terms ‘puf’ and ‘poof’ which allude to the idea of a ‘fluffy’ texture and have therefore a lesser distinctive character. In that regard, as has been recalled in paragraph 62 above, the applicant, which merely submits that the conceptual similarity arising from the common concept of a ‘fluffy’ texture has a bearing on the assessment of the similarity of the signs at issue, has not put forward any argument capable of challenging the Board of Appeal’s finding as to the lesser distinctive character of those terms.
85      Consequently, the applicant has not established that the Board of Appeal made any error of assessment in finding that the signs at issue displayed a low degree of conceptual similarity.
(d)    The likelihood of confusion
86      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
87      The Board of Appeal began by stating that, given that the goods in question are fairly ordinary consumer products, commonly purchased in supermarkets where they are arranged on shelves, consumers will be guided by the visual impact. Next, it found that the earlier marks have a normal distinctive character. In the light of the interdependence principle and the average level of attention of the relevant public, and notwithstanding the high degree of phonetic similarity, the low degree of conceptual similarity and the identity of the goods in question, the low degree of similarity between the signs at issue is not sufficient to eliminate the numerous significant differences, in particular the visual differences, with the result that there is no likelihood of confusion between the signs at issue.
88      The applicant maintains, first, that the Board of Appeal’s decision is vitiated as regards the comparison of the signs, in so far as the Board of Appeal found that those signs displayed significant differences, and, second, that the earlier marks have a very high degree of distinctiveness, indeed a reputation.
89      EUIPO and the intervener dispute the applicant’s arguments.
90      First, it is necessary to reject the applicant’s argument concerning the very high degree of distinctiveness acquired through use of the earlier marks in so far as that argument is in no way substantiated. As the Board of Appeal stated in paragraph 50 of the contested decision, the applicant failed to put forward any argument capable of calling into question the assessment of the evidence carried out by the Cancellation Division to that effect. The Board of Appeal was therefore right in finding that the earlier marks displayed a normal distinctive character.
91      Second, it must be noted that the applicant does not dispute the Board of Appeal’s findings concerning the importance of the visual impact on the overall perception of the signs by the relevant public.
92      Third, the applicant merely disputes the Board of Appeal’s assessment that the signs at issue display significant differences, without putting forward any argument to challenge the global assessment of the likelihood of confusion carried out by the Board of Appeal. It is clear from paragraphs 73 and 85 above that the signs at issue display a low degree of visual and conceptual similarity. Furthermore, it is apparent from paragraph 78 above that, for the purposes of the global assessment of the likelihood of confusion, the Board of Appeal adopted the position, which was the most favourable to the applicant, that there was a high degree of phonetic similarity. It follows that the applicant’s arguments concerning the similarity between the signs at issue cannot succeed.
93      Therefore, in the light of the relevant public’s average level of attention, the identity of the goods and services in question, the low degree of visual and conceptual similarity, the high degree of phonetic similarity, and the normal distinctive character of the earlier marks, it must be held that there is no likelihood of confusion.
94      In the light of all the foregoing considerations, the first plea must be rejected as, in part, ineffective and, in part, unfounded.
2.      Second plea in law alleging infringement of Article 8(5) of Regulation 2017/1001
95      The Board of Appeal took the view that the evidence put forward by the applicant was insufficient to establish that the earlier marks had an enhanced distinctive character acquired through use and, accordingly, to prove that they had acquired a reputation in relation to the goods in question. It therefore found that the application for a declaration of invalidity of the contested mark could not be upheld under Article 8(5) of Regulation 2017/1001.
96      The applicant claims that the earlier marks have acquired a very high degree of distinctiveness and therefore a reputation in the European Union for biscuits and cakes because of the duration, intensity and territorial reach of their use, as well as the significant efforts that it has made in terms of marketing and promotion. Further, the applicant maintains that the relevant public will establish a link between the signs at issue. First, the goods covered by the earlier marks and the goods and services covered by the contested mark display a degree of proximity, in so far as the goods have the same nature and purpose and coincide as regards the relevant public, manufacturers and distribution channels. Second, the relevant public will associate the contested mark with the earlier marks because of the strong visual link between the two signs.
97      EUIPO and the intervener dispute the applicant’s arguments.
98      It is apparent from the wording of Article 8(5) of Regulation 2017/1001 that its application is subject to the conditions that, first, the marks at issue are identical or similar; second, the earlier trade mark cited in support of the opposition has a reputation; and, third, there is a risk that the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (see, to that effect, judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 34).
99      As has been stated in paragraph 90 above, the applicant merely made general assertions without putting forward any argument capable of calling into question the Board of Appeal’s assessment, which confirmed the examination of the evidence relating to the distinctive character acquired through use of the earlier marks carried out by the Cancellation Division. It follows that the applicant has still not provided evidence sufficient to establish that the earlier marks have acquired a reputation.
100    Furthermore, it is necessary to reject as unfounded the assertion made by the applicant, in paragraph 40 of the application, that the contested decision confirmed that the earlier marks enjoyed a significant reputation in the European Union. Indeed, it is clear from paragraph 61 of the contested decision that the Board of Appeal found that there was no evidence of the reputation of those marks.
101    Given the cumulative nature of the conditions for the application of Article 8(5) of Regulation 2017/1001, the applicant’s arguments concerning the existence of a link between the marks at issue and an infringement of the earlier marks must be rejected as ineffective. It must be held, as was found by the Board of Appeal, that the applicant has not established that the condition concerning the reputation of the earlier marks was satisfied in the present case.
102    The second plea must therefore be rejected as, in part, ineffective and, in part, unfounded and, consequently, the action must be dismissed in its entirety.
IV.    Costs
103    As regards the costs incurred in the proceedings before the Court, under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
104    Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener before the Court, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, in the absence of such a hearing, bear its own costs.
105    Furthermore, the intervener has contended that the applicant should also be ordered to pay the costs relating to the proceedings before the Cancellation Division and the Board of Appeal. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to the costs incurred in the proceedings before the Cancellation Division. Accordingly, the intervener’s request that the applicant should be ordered to pay the costs relating to the proceedings before the Cancellation Division, which are not recoverable costs, is inadmissible. As regards the intervener’s request that the applicant should be ordered to pay the costs of the proceedings before the Board of Appeal, it is sufficient to note that, since the present judgment is dismissing the action brought against the contested decision, it is the operative part of the contested decision which continues to determine the costs in question (see, to that effect, judgment of 13 December 2023, Good Services v EUIPO – ITV Studios Global Distribution (EL ROSCO), T‑381/22, not published, EU:T:2023:799, paragraph 60 and the case-law cited).
On those grounds,
THE GENERAL COURT (First Chamber),
hereby:
1.      Dismisses the action;
2.      Orders Eti Gıda Sanayi ve Ticaret AŞ to bear its own costs and to pay those incurred by Dr. Oetker RO SRL;
3.      Declares that the European Union Intellectual Property Office (EUIPO) is to bear its own costs.
Tóth
Kalėda
Gâlea
Delivered in open court in Luxembourg on 1 October 2025.
V. Di Bucci
M. van der Woude
Registrar
President
*      Language of the case: English.