JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
29 January 2025 (*)
( EU trade mark – Opposition proceedings – Application for EU figurative mark ELIOS – Earlier EU word mark HELIOS and earlier national figurative mark HELIOS – Relative grounds for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Damage to reputation – Article 8(5) of Regulation 2017/1001 – Cross-claim )
In Case T‑607/23,
Desimo, Lda, established in Lisbon (Portugal), represented by J. Mioludo, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Dulces y conservas Helios, SA, established in Arroyo de la Encomienda (Spain), represented by K. Guridi Sedlak, lawyer,
THE GENERAL COURT (Eighth Chamber),
composed of A. Kornezov, President, G. De Baere (Rapporteur) and K. Kecsmár, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure, in particular the cross-claim of the intervener lodged at the Court Registry on 28 December 2023,
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, Desimo, Lda, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 July 2023 (Joined Cases R 1826/2022‑5 and R 1833/2022‑5) (‘the contested decision’).
I.      Background to the dispute
2        On 21 February 2019, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3        The mark applied for covered goods and services in Classes 29 to 33 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, corresponding, for each of those classes, to the following description:
–        Class 29: ‘Vegetarian charcuterie; fish, seafood and shellfish (not live); crustaceans, not live; extracts for soups; fish extracts; vegetable extracts for cooking; seafood extracts; processed fruits, fungi and vegetables (including nuts and pulses); dried fruit; frozen fruits; cooked fruits; fruit desserts; fruit chips; fruit marmalade; fruit salads; potato-based snack foods; jellies, jams, compotes, fruit and vegetable spreads; marmalade; vegetable pastes; fish spread; seasoned nuts; dried fruit mixes; mixtures of fruit and nuts; eggs; milk; coconut milk [beverage]; rice milk; almond milk; oat milk; butter; butter made of nuts; drinks made from dairy products; milk products; margarine; soft-ripened cheeses; ripened cheeses; cheese spreads; soft white cheese; sheep cheese; cream [dairy products]; kephir [milk beverage]; yoghurt; yoghurt desserts; drinking yogurts; fruit flavoured yoghurts; oils for food; edible fats; coconut oil for food; olive oil; luncheon meats; preserves, pickles; soup powders; canned soups; prepared salads; vegetable salads; prepared meals consisting principally of vegetables; vegetarian sausages; processed vegetables; legume-based spreads; vegetable-based spreads; meat substitutes; butter substitutes; drinks based on yogurt; candied fruit snacks; fruit-based snack food; prepared vegetable dishes; hummus [chickpea paste]; soy-based snack foods; tofu-based snacks; tofu; soya patties; meat; cured sausages; meat spreads; stock; meat extracts; processed meat products; frozen meat products’;
–        Class 30: ‘Fruit sauces; fruit teas; sweet spreads [honey]; chocolate pastes; nut confectionery; food mixtures consisting of cereal flakes and dried fruits; dairy confectionery; ice, ice creams, frozen yogurts and sorbets; vegetable concentrates used for seasoning; pasta-based prepared meals; rice-based prepared meals; muesli desserts; prepared desserts [confectionery]; vegan cakes; vegetable pastes [sauces]; coffee; tea; cocoa; cocoa products; sugar; rice; farinaceous food pastes; tapioca; sago; tea substitutes; imitation chocolate; artificial coffee; coffee-based beverages; cocoa-based beverages; flour; breakfast cereals; cereal bars and energy bars; ready-to-eat cereals; maize flakes; crisps made of cereals; multigrain-based snacks; muesli snacks; cereal-based snack food; rice-based snack food; glass noodles; muesli; muesli bars; semolina; pizzas [prepared]; bread; sandwiches; confectionery; clear gums [confectionery]; confectionery ices; mousse confections; sweetmeats [candy]; fruit jellies [confectionery]; sugarless sweets; sweetmeats [candy] containing fruit; pastries; sweets, other than for medical purposes; chocolate; ice cream; custard; puddings; honey; golden syrup; yeast; baking powder; salt; mustard; mayonnaise; catsup; vinegar; sauces; mixes for preparing sauces; dressings for salad; condiments; sushi; prepared rice dishes; instant porridge; dry and liquid ready-to-serve meals, mainly consisting of rice; snack food products made from soya flour; seasoned bean paste; ready-made baking mixtures; prepared pie crust mixes; custard-based fillings for cakes and pies; bread biscuits’;
–        Class 31: ‘Nuts [fruits]; bran; fresh fruits; fresh vegetables; agricultural produce (unprocessed -); agricultural and aquacultural crops, horticulture and forestry products; sowing seeds; natural plants and flowers; dried plants; pet food; cat litter’;
–        Class 32: ‘Fruit-based beverages; beer-based beverages; beer; non-alcoholic beer; mineral water [beverages]; aerated water; aerated juices; aerated fruit juices; frozen carbonated beverages; non-alcoholic beverages; smoothies; squashes [non-alcoholic beverages]; fruit flavoured soft drinks; fruit drinks; fruit juice beverages; lemonades; vegetable juices [beverages]; syrups and other non-alcoholic preparations for making beverages; preparations for making beverages; non-alcoholic beverages containing vegetable juices’;
–        Class 33: ‘Wine-based drinks; preparations for making alcoholic beverages; alcoholic beverages (except beer); wine; spirits and liquors; liqueurs; alcoholic cocktail mixes; cocktails; beverages containing wine [spritzers]’;
–        Class 35: ‘Retail services relating to food; publicity and sales promotion services; advertising services relating to the sale of goods; mediation of trade business for third parties; sales promotion; loyalty scheme services; providing consumer information relating to goods and services; business administration and management; market study and analysis of market studies’.
4        On 17 July 2019, the intervener filed a notice of opposition to registration of the mark applied for in relation to all the goods and services referred to in paragraph 3 above.
5        The opposition was based on the following earlier marks:
–        the earlier Spanish figurative mark reproduced below, registered on 30 August 2018 under number M 3 702 131, covering goods in Classes 29 and 30 corresponding, for each of those classes, to the following description:
–        Class 29: ‘Meat, fish, birds and game; meat extracts; preserved, dried and cooked vegetables; jellies, jams, fruit sauces; egg, milk and dairy products; edible oils and fats, broth [soup]; jams; crystallised and candied fruits; frozen fruits; preserved fruit, fish, meat and vegetables; salads (vegetable -); fruit salads; fruit, stewed; fruit preserved in alcohol; fruit jellies; fruit pulp; sliced fruits; jellies for food; preserved vegetables; gazpacho; gherkins; pickles; tomato purée; tomato juice for cooking; vegetables juices for cooking; meat, fish and vegetable ready-to-serve meals; food preparations for cooking potato omelets’;
–        Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, ice cream; honey, golden syrup; yeast, baking-powder; salt, mustard; vinegar, sauces [condiments]; spices; ice for refreshment; capers; pasta; dressings for salad; coffee-based beverages; tea-based beverages; cocoa-based beverages; chocolate-based beverages; biscuits; sweetmeats [candy]; meat gravies; chocolate; condiments; natural sweeteners; confectionery; infusions, not medicinal; ketchup [sauce]; mayonnaise; marzipan; pizzas; tomato sauce; sandwiches; ready-to-serve meals, mainly consisting of flour’:
–        the earlier EU word mark HELIOS, registered on 14 December 2004 under number 2 933 372, covering goods in Classes 29, 30 and 32 corresponding, for each of those classes, to the following description:
–        Class 29: ‘Preserved fruits and vegetables; jellies, jams, preserves, crystallised fruits, preserved fruits, fruit jellies’;
–        Class 30: ‘Honey; sauces (condiments); ketchup (sauce), tomato sauce’;
–        Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages, non-alcoholic fruit extracts, isotonic beverages, essences for making beverages, non-alcoholic fruit drinks, fruit juices, orgeat, sherbets (beverages)’.
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and 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).
7        On 20 July 2022, the Opposition Division upheld the opposition in part on the basis of Article 8(1)(b) of Regulation 2017/1001 on the ground that there was a likelihood of confusion in relation to, first, all the goods in Classes 29, 30, 32 and 33, second, ‘nuts [fruits]; bran; fresh fruits; fresh vegetables; agricultural produce (unprocessed -); agricultural and aquacultural crops, horticulture products; natural plants and flowers; dried plants’ in Class 31 and, third, ‘retail services relating to food’ in Class 35. It rejected the opposition based on Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 for the remaining goods and services in Classes 31 and 35 covered by the mark applied for.
8        The intervener and the applicant each filed an appeal with EUIPO against the decision of the Opposition Division on 19 and 20 September 2022, respectively. Those appeals were joined.
9        By the contested decision, on the one hand, the Board of Appeal dismissed the appeal filed by the applicant. On the other hand, it upheld in part the appeal filed by the intervener and annulled the decision of the Opposition Division in relation to ‘forestry products’ in Class 31.
10      In particular, the Board of Appeal confirmed that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 with respect to the goods covered by the mark applied for which were considered identical or similar to varying degrees to those covered by the earlier marks, namely, first, all the goods in Classes 29, 30, 32 and 33, second, ‘nuts [fruits]; bran; fresh fruits; fresh vegetables; agricultural produce (unprocessed -); agricultural and aquacultural crops, horticulture products; natural plants and flowers; dried plants’ in Class 31 and, third, ‘retail services relating to food’ in Class 35.
11      As regards the goods and services in Classes 31 and 35 which were considered to be dissimilar from those covered by the earlier marks and in relation to which the opposition based on Article 8(1)(b) of Regulation 2017/1001 was not therefore upheld, the Board of Appeal proceeded with the examination of the opposition in the light of Article 8(5) of Regulation 2017/1001.
12      It confirmed that the earlier marks enjoyed reputation, which it regarded as relatively high, in respect of, first, preserved fruits and vegetables, jams, jellies and fruit jellies in Class 29 and, second, ketchup and tomato sauce in Class 30. It found that the relevant public could establish a link between the marks at issue and that the use of the mark applied for would take unfair advantage of the reputation of the earlier marks in relation to ‘forestry products’ in Class 31. By contrast, it held that the relevant public would not establish a link between the marks at issue in respect of the other goods and services examined in Classes 31 and 35, with the result that the use of the mark applied for in relation to those goods and services was not likely to take unfair advantage of, or be detrimental to, the reputation of the earlier marks.
13      Accordingly, the Board of Appeal held that the opposition had to be upheld in relation to all the goods in Classes 29, 30, 32 and 33, the ‘nuts [fruits]; bran; fresh fruits; fresh vegetables; agricultural produce (unprocessed -); agricultural and aquacultural crops, horticulture products; forestry products; natural plants and flowers; dried plants’ in Class 31 and the ‘retail services relating to food’ in Class 35 covered by the mark applied for. It rejected the opposition as to the remainder.
II.    Forms of order sought
A.      The forms of order submitted in support of the main action
14      The applicant claims, in essence, that the Court should:
–        annul the contested decision in so far as the opposition should be rejected in its entirety;
–        allow the registration of the mark applied for in relation to all the goods and services claimed;
–        order EUIPO to bear the costs.
15      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in case an oral hearing is convened.
16      The intervener contends that the Court should:
–        uphold the contested decision;
–        order the applicant to bear the costs.
B.      The forms of order submitted in support of the cross-claim
17      The intervener claims, in essence, that the Court should:
–        annul the contested decision in so far as the trade mark application should be refused for the entirety of the goods and services claimed, including the goods and services in Class 35 in relation to which the opposition was rejected;
–        order EUIPO and the applicant to bear the costs.
18      EUIPO contends that the Court should:
–        dismiss the cross-claim;
–        order the intervener to bear the costs in case an oral hearing is convened.
19      The applicant claims, in essence, that the Court should uphold the contested decision in so far as the opposition was rejected in relation to the goods and services in Classes 31 and 35 and maintain the registration of the mark applied for in relation to those goods and services.
III. Law
A.      The Court’s jurisdiction to deal with certain heads of claim
20      In the first place, it should be stated that the applicant’s second head of claim, by which it requests the Court to allow the registration of the mark applied for in relation to all the goods and services covered, amounts to asking the Court to order EUIPO to register that mark (see judgment of 24 January 2024, Tiendanimal v EUIPO – Salvana Tiernahrung (SALVAJE), T‑55/23, not published, EU:T:2024:30, paragraph 24 and the case-law cited).
21      As EUIPO rightly submits, in the context of the review based on Article 263 TFEU and Article 72(3) of Regulation 2017/1001, the Court has no jurisdiction to issue directions to it (see judgment of 24 January 2024, SALVAJE, T‑55/23, not published, EU:T:2024:30, paragraph 25 and the case-law cited). It follows that the applicant’s second head of claim must be rejected as having been brought before a court that has no jurisdiction to deal with it.
22      In the second place, with regard to the intervener’s first head of claim in the main action and the first part of the applicant’s single head of claim in the cross-claim, requesting that the contested decision be upheld, given that upholding the contested decision is tantamount to dismissing the action, those heads of claim should be regarded as, in essence, seeking the dismissal of the main action and the dismissal of the cross-claim respectively (see, to that effect, judgment of 24 September 2019, Roxtec v EUIPO – Wallmax (Representation of a black square containing seven concentric blue circles), T‑261/18, EU:T:2019:674, paragraph 16 and the case-law cited).
B.      Substance
1.      The main action
23      The applicant raises six complaints in support of its action.
24      First, it submits that the signs at issue are not similar, with the result that Article 8(1)(b) of Regulation 2017/1001 should not apply. Second, it challenges the comparison of the goods and services made by the Board of Appeal with regard to the goods and services which were considered identical or similar to varying degrees and in relation to which the opposition was upheld on the basis of Article 8(1)(b) of Regulation 2017/1001. Third, it argues that the signs at issue are not identical or similar and, consequently, that one of the three necessary conditions for the application of Article 8(5) of Regulation 2017/1001 is not fulfilled. Fourth, it submits that the intervener has not demonstrated that the earlier marks enjoyed reputation in Spain. Fifth, it claims that there is no link between the signs at issue for all the goods covered by the mark applied for within the meaning of Article 8(5) of Regulation 2017/1001. Sixth, it maintains that there is no need to establish that there is unfair advantage taken of, or detriment to, the reputation of the earlier marks.
25      The first and second complaints should be understood as being raised in support of a first plea in law alleging the infringement of Article 8(1)(b) of Regulation 2017/1001 and the third to sixth complaints as being raised in support of a second plea in law alleging the infringement of Article 8(5) of that regulation.
(a)    The first plea in law alleging the infringement of Article 8(1)(b) of Regulation 2017/1001
26      Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, 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.
27      According to settled case-law, the risk that the public might 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).
28      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).
29      It is in the light of those considerations that it must be examined whether, as the applicant claims in essence, the Board of Appeal wrongly held that there was a likelihood of confusion in accordance with Article 8(1)(b) of Regulation 2017/1001 in relation to all the goods in Classes 29, 30, 32 and 33, ‘nuts [fruits]; bran; fresh fruits; fresh vegetables; agricultural produce (unprocessed -); agricultural and aquacultural crops, horticulture products; natural plants and flowers; dried plants’ in Class 31 and ‘retail services relating to food’ in Class 35.
30      It should be stated as a preliminary point that the applicant does not dispute the definition of the relevant public adopted by the Board of Appeal. The Board of Appeal considered, first, that the goods in Class 29 were directed at the public at large whose degree of attention was lower than average; second, that the goods in Class 30 were directed at the average consumer with an average level of attention; third, that the goods in Class 31 were directed at the public at large whose degree of attention was average and at professionals whose level of attention was higher than average, but that the public with the lower level of attention had to be taken into account; fourth, that the goods in Classes 32 and 33 targeted the public at large with an average level of attention; and, fifth, that ‘retail services relating to food’ in Class 35 were mainly aimed at the public at large whose level of attention was average, whereas the remaining services in that class addressed a professional public which was likely to display a higher degree of attention.
31      Furthermore, the applicant does not call into question the Board of Appeal’s finding that the relevant territory for the purposes of the assessment of the likelihood of confusion is the European Union for the earlier word mark and Spain for the earlier figurative mark.
32      By contrast, the applicant challenges the comparison of the signs at issue and the comparison of the goods and services at issue.
(1)    The comparison of the signs at issue
33      The applicant submits that the signs at issue are visually different since the colours, the stylisation and the number of letters of the word elements and the figurative elements making up the signs are not the same. The fact that the signs at issue share the sequence of letters ‘e’, ‘l’, ‘i’, ‘o’, ‘s’ is not enough to create a likelihood of confusion. Furthermore, the consumer pays more attention to the visual aspect of marks. The lack of similarity between the signs is sufficient for Article 8(1)(b) of Regulation 2017/1001 not to apply.
34      EUIPO and the intervener dispute the applicant’s arguments.
35      It should be borne in mind that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the marks at issue, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse 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).
36      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).
37      In the present case, first, the Board of Appeal held that the most distinctive and dominant elements of the signs at issue were the word elements ‘helios’ and ‘elios’ because of their size and their position within the signs and because of their average inherent distinctiveness. Second, it noted that the distinctive and dominant elements had in common the sequence of letters ‘e’, ‘l’, ‘i’, ‘o’, ‘s’. The signs at issue were therefore visually similar to an average degree. Third, it held that the signs were phonetically identical for a substantial part of the relevant public, since they would be pronounced identically in many languages of the European Union, including Spanish. Fourth, the Board of Appeal held that the signs at issue were highly similar, if not identical, for a non-negligible part of the relevant public which would associate the words ‘helios’ and ‘elios’ with a character from Greek mythology, whereas they were conceptually different for the part of the public that would not attribute any meaning to those words, on account of the concept conveyed by the figurative elements of the mark applied for.
38      The applicant simply notes that there are visual differences between the signs at issue, without challenging the Board of Appeal’s assessments from a phonetic and a conceptual point of view.
39      In that regard, contrary to the suggestion made by the applicant, the Board of Appeal did not fail to take into account the visual differences between the signs at issue in its assessment. It stated that the signs at issue differed in the presence of the letter ‘h’ at the beginning of the word elements of the earlier marks as well as in the figurative elements within the mark applied for and the earlier figurative mark. It held, however, that those differences were not such as to cancel out the visual similarity stemming from the fact that the signs at issue had in common the sequence of letters ‘e’, ‘l’, ‘i’, ‘o’, ‘s’ which was present in their distinctive and dominant elements.
40      In addition, the applicant cannot claim that, visually, those differences between the signs at issue are particularly striking for the relevant public.
41      On the one hand, while it is true that the word elements of the signs at issue do not have the same number of letters, it is nevertheless clear that they differ only in a single letter, as the Board of Appeal correctly held.
42      On the other hand, as regards the figurative elements of the mark applied for, in particular the stylisation of the group of letters ‘elios’ and the human head represented inside the letter ‘o’, the Board of Appeal rightly held that they played a merely decorative role and did not therefore dominate the overall impression of that sign. In particular, the Board of Appeal correctly held that the representation of the human head had a relatively small size within the mark applied for and that it was not therefore likely to call into question the dominant nature of the word element ‘elios’.
43      The applicant has not demonstrated that the additional elements were original or that they occupied a special position within the sign such as to make them more distinctive or dominant than the term ‘elios’. It should be added in that regard that, according to case-law, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by citing the name rather than by describing the figurative element of the mark (see judgment of 29 June 2022, Hijos de Moisés Rodríguez González v EUIPO – Ireland and Ornua (La Irlandesa 1943), T‑306/20, EU:T:2022:404, paragraph 28 and the case-law cited).
44      The Board of Appeal was therefore correct to consider that the figurative elements present in the mark applied for, while not negligible, were nevertheless incapable of cancelling out the similarity of the distinctive and dominant elements of the signs at issue, namely ‘elios’ and ‘helios’, or, consequently, the existence of an average degree of visual similarity between the signs at issue.
45      Since the applicant has not been able to demonstrate that there are significant visual differences between the signs at issue, its argument that the consumer pays more attention to the visual aspect of the marks on the market, which seeks to rule out any likelihood of confusion, is unfounded.
46      The Board of Appeal was therefore entitled to find that the signs were visually similar to an average degree, phonetically identical and conceptually highly similar, if not identical, for a non-negligible part of the relevant public.
(2)    The comparison of the goods and services at issue
47      The applicant challenges the comparison of the goods and services made by the Board of Appeal with regard to the goods and services which were considered identical or similar to varying degrees and in relation to which the opposition was upheld on the basis of Article 8(1)(b) of Regulation 2017/1001.
48      EUIPO and the intervener dispute the applicant’s arguments.
49      According to case-law, in assessing the similarity of the goods and services at issue, all the relevant factors relating to those goods and services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
50      Goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited).
51      It should be stated at the outset that, in its arguments concerning the comparison of the goods, the applicant refers to a number of earlier decisions given by the Opposition Division of EUIPO. However, it is sufficient to note that, as is maintained by EUIPO and acknowledged by the applicant, the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the EU Courts, and not on the basis of any previous decision-making practice (see, to that effect, judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 13 December 2018, Knauf v EUIPO (upgrade your personality), T‑102/18, EU:T:2018:932, paragraph 33). Furthermore, the Board of Appeal is not bound by the decisions of a lower adjudicating body (judgments of 21 December 2022, Trend Glass v EUIPO (ECO STORAGE), T‑777/21, not published, EU:T:2022:846, paragraph 77, and of 24 January 2024, Noah Clothing v EUIPO – Noah (NOAH), T‑562/22, not published, EU:T:2024:23, paragraph 66).
52      Moreover, the applicant simply reproduces certain passages of decisions given by the Opposition Division without explaining how the reasoning followed in those decisions should be applied in the present case. In addition, either it is not clear from those passages what goods are under comparison or, as the intervener rightly claims, they concern different goods from those in the present case.
53      It is necessary to examine the other arguments put forward by the applicant for each class of goods and services covered by the mark applied for.
(i)    The goods in Class 29 covered by the mark applied for
54      In the contested decision, the Board of Appeal held that the goods in Class 29 were identical or similar to varying degrees to the goods covered by the earlier figurative mark.
55      The applicant submits that the fact that the goods covered by the marks at issue are foodstuffs for the public at large is not sufficient for finding them to be similar. In addition, the fact that certain goods covered by the mark applied for in Class 29 are potential ingredients of the goods protected by the earlier marks for which they enjoy reputation is not relevant for finding them to be similar.
56      However, the Board of Appeal did not consider that the goods at issue were identical or similar because they were foodstuffs for the public at large. Nor did it rely solely on the consideration that the goods at issue had an ingredient in common or on the fact that one of the goods was an ingredient needed for the preparation of other goods. The Board of Appeal carried out an examination of the relevant factors relating to the goods in accordance with the case-law cited in paragraph 49 above.
57      Furthermore, contrary to the suggestion made by the applicant, the Board of Appeal did not compare the goods in Class 29 covered by the mark applied for only with the goods for which the intervener had claimed a reputation.
58      The applicant also raises arguments specific to certain goods.
59      First, the applicant claims that ‘vegetarian charcuterie’, ‘vegetable pastes’, ‘vegetarian sausages’, ‘soy-based snack foods’, ‘tofu-based snacks’, ‘tofu’ and ‘soya patties’ are not identical to the ‘meat’ in the same class protected by the earlier figurative mark. According to the applicant, those goods are not in competition, are intended for different consumers and are not marketed in the same sections of the supermarket. In addition, their nature, intended purpose and method of use are different.
60      It is sufficient to note, however, that the Board of Appeal did not compare the goods mentioned in paragraph 59 above with ‘meat’, but with the ‘preserved fruit, meat and vegetables’ or with the ‘preserved vegetables’ protected by the earlier figurative mark. The applicant’s arguments relating to those goods are therefore ineffective.
61      Second, the applicant claims, in essence, that ‘hummus [chickpea paste]’ is different from ‘preserved fruit, meat and vegetables’. In its view, those goods are not substitutable, are intended for distinct consumers and are displayed in different sections of the supermarket.
62      It cannot be denied, however, that there is a similarity between those goods. ‘Hummus’ is a preparation the main ingredient of which is chickpeas, which are considered a legume. Consequently, chickpeas, preserved in some circumstances, are necessary for the preparation of hummus in accordance with the case-law cited in paragraph 50 above. Furthermore, contrary to the applicant’s claim, hummus and preserved vegetables target the same consumers. The argument that those goods are dissimilar must therefore be rejected.
63      Third, the applicant submits that ‘fruit chips’, ‘seasoned nuts’ and ‘fruit-based snack food’ do not originate from the same producers and do not target the same public as the ‘preserved fruits’ in Class 29 covered by the earlier figurative mark. ‘Fruit chips’ and ‘fruit-based snack food’ have low calories. ‘Preserved fruits’, on the other hand, contain added sugar and have a high number of calories.
64      It is sufficient to note that, as EUIPO submits, not only ‘fruit chips’, ‘seasoned nuts’ and ‘fruit-based snack food’, but also ‘preserved fruit’ may contain added sugar. It cannot therefore be asserted that the former goods are reserved for those following a diet and thus do not target the same public as the latter goods. Furthermore, the applicant does not substantiate its argument that those goods do not originate from the same producers.
65      Consequently, there is no reason to call into question the Board of Appeal’s conclusion that the ‘fruit chips’, ‘seasoned nuts’ and ‘fruit-based snack food’ covered by the mark applied for are similar, in particular, to the ‘preserved fruit’ covered by the earlier figurative mark, in so far as those goods, other than containing fruits, have in common, at least, their producers, their relevant public and their channels of distribution, and may be in competition.
66      It follows from the foregoing that the Board of Appeal did not err in finding that the goods in Class 29 covered by the mark applied for were either identical or similar to varying degrees to the goods in the same class covered by the earlier figurative mark.
(ii) The goods in Class 30 covered by the mark applied for
67      In the contested decision, the Board of Appeal confirmed the Opposition Division’s assessment that the goods in Class 30 covered by the mark applied for were identical or similar to varying degrees to the goods covered by the earlier figurative mark.
68      The applicant argues that the fact that the goods under comparison belong to the same class does not mean that they are identical or similar. The same holds for the fact that all the goods are for human consumption. In addition, the applicant complains that the Board of Appeal considered that the ‘sushi’ in Class 30 covered by the mark applied for was at least similar to the ‘meat, fish and vegetable ready-to-serve meals’ in the same class covered by the earlier figurative mark. Those goods do not come from the same producers and target a different public.
69      It is true that goods and services may not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification, and may not be regarded as being dissimilar from each other on the ground that they appear in different classes under that classification (see judgment of 11 February 2020, Dalasa v EUIPO – Charité – Universitätsmedizin Berlin (charantea), T‑733/18, not published, EU:T:2020:42, paragraph 28 and the case-law cited; judgment of 15 May 2024, Pfriem v EUIPO – U-Control (UC), T‑316/23, not published, EU:T:2024:317, paragraph 53). However, it is sufficient to note that the Board of Appeal did not rely on the goods at issue belonging to the same class under the Nice Classification in holding that they were identical or similar. The applicant’s argument is therefore ineffective.
70      Furthermore, the Board of Appeal also did not consider that the goods at issue were identical or similar on the ground that they were foodstuffs for human consumption. The Board of Appeal carried out an examination of the relevant factors relating to the goods in accordance with the case-law cited in paragraph 49 above.
71      As regards ‘sushi’, which the Board of Appeal considered could have the same producers, target the same public and be in competition with ‘meat, fish and vegetable ready-to-serve meals’ in Class 29, it is sufficient to note that the applicant does not substantiate its claims. Moreover, the Board of Appeal correctly held that ‘sushi’ was at least similar to ‘meat, fish and vegetable ready-to-serve meals’ in so far as it can be considered to be a ready-to-serve meal with a number of ingredients, cooked by chefs and ready to be consumed.
72      The Board of Appeal was therefore entitled to hold that the goods in Class 30 covered by the mark applied for were identical or similar to varying degrees to the goods covered by the earlier figurative mark.
(iii) The goods in Class 31 covered by the mark applied for
73      In the contested decision, the Board of Appeal held that the ‘nuts [fruits]; bran; fresh fruits; fresh vegetables; agricultural produce (unprocessed -); agricultural and aquacultural crops, horticulture products’ and the ‘natural plants and flowers; dried plants’ in Class 31 covered by the mark applied for were similar, at least to a low degree, to the ‘preserved fruit, fish and vegetables’ in Class 29 covered by the earlier figurative mark.
74      According to the applicant, the goods protected by the mark applied for are raw products from farms or gardens, while the goods covered by the earlier mark are processed. Those goods require different know-how for their production and do not come from the same producers. They do not target the same public and are neither in competition nor complementary.
75      Whilst it is true that preserves are foodstuffs which have been treated so that they can be kept for a long time without going bad, such that they are processed goods, that finding cannot call into question the existence of a low degree of similarity between the goods covered by the marks at issue.
76      As was noted by the Board of Appeal, the goods covered by the marks at issue may be substitutes for one another and have the same intended purpose. Thus, in order to cook their meals, consumers can purchase either the fresh products covered by the mark applied for or the preserved fruit, fish or vegetables covered by the earlier figurative mark.
77      Furthermore, producers of fresh products may also themselves preserve their products, with the result that the goods at issue could originate from the same producers.
78      It follows that the applicant has not been able to call into question the Board of Appeal’s conclusion that the goods in Class 31 were identical or similar to varying degrees to the goods covered by the earlier figurative mark.
(iv) The goods in Class 32 covered by the mark applied for
79      It is sufficient to state that the applicant does not challenge the Board of Appeal’s finding that the goods in Class 32 covered by the mark applied for are identical to the goods covered by the earlier word mark.
(v)    The goods in Class 33 covered by the mark applied for
80      In the contested decision, first, the Board of Appeal held that the ‘wine-based drinks; alcoholic beverages (except beer); wine; spirits and liquors; liqueurs; alcoholic cocktail mixes; cocktails; beverages containing wine [spritzers]’ in Class 33 covered by the mark applied for were similar, at least to a low degree, to ‘beers’. Second, it held that the ‘preparations for making alcoholic beverages’ in Class 33 covered by the mark applied for were similar to the ‘preparations for making beverages’ in Class 32 covered by the earlier word mark.
81      The applicant submits that, apart from cocktails, the goods in Class 33 covered by the mark applied for necessarily contain alcohol, with the result that they cannot be considered similar to the goods in Class 32 protected by the earlier marks such as mineral water. The goods at issue are not complementary or in competition, are not found in the same sales points and do not come from the same producers.
82      However, it is sufficient to note, as EUIPO submits, that the Board of Appeal did not compare the ‘wine-based drinks; alcoholic beverages (except beer); wine; spirits and liquors; liqueurs; alcoholic cocktail mixes; cocktails; beverages containing wine [spritzers]’ in Class 33 with ‘mineral water’, but with ‘beer’ in Class 32 protected by the earlier word mark. Consequently, the goods at issue all contain alcohol and cannot be distinguished on that basis.
83      In addition, the Court has previously ruled that certain liqueurs and beers were similar because their nature was similar, they contained a certain degree of alcohol, their method of use and method of consumption were similar, since they could, inter alia, be served at events, their intended purpose coincided in that they are aimed at the adult public, since alcohol is normally consumed by persons over 18 years old, and the distribution channels were the same, since those goods could be found in the same points of sale (judgments of 28 April 2021, West End Drinks v EUIPO – Pernod Ricard (The King of SOHO), T‑31/20, not published, EU:T:2021:217, paragraph 68, and of 12 July 2023, Tavitova v EUIPO – Cordier (AURUS), T‑662/22, not published, EU:T:2023:393, paragraph 63).
84      It should be added that that assessment holds a fortiori for cocktails, as they are commonly prepared with liqueurs.
85      As far as beer and wine are concerned, those goods constitute alcoholic beverages obtained by a fermentation process and consumed during a meal or drunk as an aperitif and are, to a certain extent, competing goods. They nevertheless differ widely as regards their composition and method of production. They are therefore similar to a low degree (see, to that effect, judgment of 15 September 2021, Celler Lagravera v EUIPO – Cyclic Beer Farm (Cíclic), T‑673/20, not published, EU:T:2021:591, paragraph 34 and the case-law cited).
86      Consequently, there is a similarity, at least to a low degree, between the beverages listed in paragraph 80 above covered by the mark applied for and the ‘beers’ covered by the earlier word mark.
87      Lastly, the applicant does not put forward any arguments to challenge the similarity between the ‘preparations for making alcoholic beverages’ covered by the mark applied for and the ‘preparations for making beverages’ in Class 32 covered by the earlier word mark.
88      It follows that the Board of Appeal was entitled to find that the goods in Class 33 covered by the mark applied for and the ‘beers’ and ‘preparations for making beverages’ in Class 32 covered by the earlier word mark were similar at least to a low degree.
(vi) The ‘retail services relating to food’ in Class 35 covered by the mark applied for
89      In the contested decision, the Board of Appeal held that the ‘retail services relating to food’ in Class 35 covered by the mark applied for were similar to an average degree to the foodstuffs in Classes 29 and 30 protected by the earlier marks.
90      The applicant claims that the mark applied for covers a wide variety of goods which are different from those covered by the earlier marks, with the result that there is no likelihood of confusion in respect of the sales services in question.
91      It is sufficient to recall in that regard that, according to case-law, there is a similarity between goods and retail services which relate to those goods (see judgment of 8 February 2023, UniSkin v EUIPO – Unicskin (UNISKIN by Dr. Søren Frankild), T‑787/21, not published, EU:T:2023:56, paragraph 32 and the case-law cited). Accordingly, the Board of Appeal correctly found that the retail services relating to food covered by the mark applied for and the foodstuffs in Classes 29 and 30 covered by the earlier marks were similar to an average degree.
92      Furthermore, in the context of opposition proceedings, EUIPO may only take into account the list of goods or services as it stands in the application for the mark concerned, subject only to any restrictions of that list, in accordance with Article 43(1) of Regulation 2017/1001 (see judgment of 15 September 2021, Laboratorios Ern v EUIPO – Le-Vel Brands (Le-Vel), T‑331/20, not published, EU:T:2021:571, paragraph 27 and the case-law cited). The mark applied for covers ‘retail services relating to food’ without the food to which those services relate being precisely identified. Account should not therefore be taken of the alleged variety of food protected by the mark applied for which has been claimed by the applicant.
93      It follows from all the foregoing that the Board of Appeal did not err in concluding that the goods and services in Classes 29 to 33 and 35 covered by the mark applied for and the goods covered by the earlier marks were identical or similar to varying degrees.
94      The Board of Appeal was therefore able to conclude that there was a likelihood of confusion in relation to the goods and services in Classes 29 to 33 and 35 covered by the mark applied for which were considered identical or similar to the goods protected by the earlier marks, taking into account the average degree of visual similarity, the phonetic identity and the high degree of conceptual similarity, if not identity, of the signs at issue for a non-negligible part of the relevant public, as well as the average inherent distinctiveness of the earlier marks, which has not been challenged by the applicant.
95      The first plea in law alleging the infringement of Article 8(1)(b) of Regulation 2017/1001 must therefore be rejected.
(b)    The second plea in law alleging the infringement of Article 8(5) of Regulation 2017/1001
(1)    Preliminary observations
96      As a preliminary point, it should be noted that the Board of Appeal examined the relative ground under Article 8(5) of Regulation 2017/1001 only with regard to the goods and services in Classes 31 and 35 covered by the mark applied for in relation to which the opposition based on Article 8(1)(b) of Regulation 2017/1001 had not been upheld.
97      In that regard, the Board of Appeal found that the relevant public would establish a link between the marks at issue and that the use of the mark applied for would take unfair advantage of the reputation of the earlier marks in relation to ‘forestry products’ in Class 31. By contrast, it held that the relevant public would not establish a link between the marks at issue in relation to the other goods and services in Classes 31 and 35. It therefore rejected the opposition in relation to the latter goods.
98      By its second plea in law, the applicant submits that the use of the mark applied for is not likely to take unfair advantage of the reputation of the earlier marks in relation to all the goods and services covered by it.
99      It should be stated at the outset, first, that the second plea in law is ineffective in so far as it concerns the goods in relation to which the opposition was upheld on the basis of Article 8(1)(b) of Regulation 2017/1001.
100    Second, in so far as the second plea in law relates to the goods and services in Classes 31 and 35 covered by the mark applied for in relation to which the opposition was not upheld on the basis of Article 8(1)(b) of Regulation 2017/1001, it should be recalled that, under Article 72(4) of Regulation 2017/1001, ‘the action shall be open to any party to proceedings before the Board of Appeal adversely affected by its decision’. The Board of Appeal established injury to the reputation of the earlier marks on the basis of Article 8(5) of Regulation 2017/1001 only in relation to ‘forestry products’, thereby upholding the applicant’s claims for the remaining goods and services at issue in Classes 31 and 35. Consequently, the applicant does not have an interest in challenging the Board of Appeal’s conclusions regarding the latter goods and services.
101    The second plea in law alleging the infringement of Article 8(5) of Regulation 2017/1001 should therefore be examined only in so far as the Board of Appeal accepted the existence of injury to the reputation of the earlier marks in relation to the ‘forestry products’ in Class 31 covered by the mark applied for.
(2)    The cumulative conditions for the application of Article 8(5) of Regulation 2017/1001
102    Under 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 shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied 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 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’.
103    It is apparent from the wording of Article 8(5) of Regulation 2017/1001 that the application of that provision is subject to the cumulative conditions that: first, the marks at issue must be identical or similar; second, the earlier mark cited in opposition must have a reputation; and, third, there must be a risk that 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 mark (judgments of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 54, and of 24 April 2024, Kneipp v EUIPO – Patou (Joyful by nature), T‑157/23, EU:T:2024:267, paragraph 15 (not published)).
104    The applicant does not challenge the Board of Appeal’s assessments concerning the relevant public. In that regard, the Board of Appeal held, first, that the goods for which a reputation of the earlier marks had been claimed in Spain for preserved fruits and vegetables, jams, jellies and fruit jellies in Class 29 and ketchup and tomato sauce in Class 30 were directed at the public at large whose degree of attention was, at most, average and, second, that the goods in Class 31, including ‘forestry products’, targeted both the public at large and a professional public whose degree of attention varied from average to high.
105    Nor does the applicant dispute that Spain constitutes a significant part of the territory of the European Union relevant for examining the reputation of the earlier mark.
106    By contrast, the applicant challenges the Board of Appeal’s assessments concerning the three cumulative conditions under Article 8(5) of Regulation 2017/1001 mentioned in paragraph 103 above, which must be examined in turn.
(i)    The identity or similarity of the signs at issue
107    The applicant claims that the signs at issue are different, referring to the arguments put forward in the context of its first plea in law alleging an infringement of Article 8(1)(b) of Regulation 2017/1001.
108    EUIPO and the intervener dispute the applicant’s arguments.
109    According to case-law, the existence of a similarity between the earlier mark and the mark applied for is a precondition for the application of Article 8(1)(b) of Regulation 2017/1001 and of Article 8(5) of that regulation. That condition requires, in the context both of Article 8(1)(b) and of Article 8(5) of Regulation 2017/1001, the existence, in particular, of elements of visual, aural or conceptual similarity (see, to that effect, judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 51 and 52, and of 24 April 2024, Joyful by nature, T‑157/23, EU:T:2024:267, paragraph 46 (not published)).
110    In the present case, in the examination of the ground set out in Article 8(5) of Regulation 2017/1001, the Board of Appeal referred to its assessment of the similarity of the signs at issue conducted in the context of the examination of the ground set out in Article 8(1)(b) of Regulation 2017/1001, according to which the signs were visually similar to an average degree, phonetically identical and conceptually highly similar, if not identical, for a non-negligible part of the relevant public.
111    It is clear from paragraphs 33 to 45 above that the Board of Appeal was correct in reaching those conclusions. The applicant’s arguments must therefore be rejected.
(ii) Proof of the reputation of the earlier marks
112    According to the applicant, the intervener has not demonstrated that the earlier marks enjoyed reputation in Spain before 21 February 2019, the date on which the mark applied for was filed. It claims that most of the documents submitted by the intervener are outdated. In particular, the survey concerning the reputation of the mark HELIOS, carried out in 2010, is too old to reflect the current state of the market.
113    EUIPO and the intervener dispute the applicant’s arguments.
114    It must be borne in mind that, according to the case-law, in order to satisfy the requirement of reputation, a mark must be known to a significant part of the public concerned by the goods or services covered by that trade mark. In examining that condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. There is, however, no requirement for that mark to be known by a given 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 24 April 2024, Joyful by nature, T‑157/23, EU:T:2024:267, paragraph 19 (not published) and the case-law cited).
115    The reputation of an earlier mark must be established as at the filing date of the application for registration of the mark applied for (see judgment of 24 April 2024, Joyful by nature, T‑157/23, EU:T:2024:267, paragraph 22 and the case-law cited).
116    In the present case, the Board of Appeal stated that the reputation of the earlier marks had to be proved on 21 February 2019, the filing date of the application for registration of the mark applied for.
117    It held that the wide range of evidence submitted by the intervener demonstrated that, on the relevant date, constant, intensive and successful use had been made of the earlier marks on the Spanish market, showing that they had acquired a relatively high degree of reputation in Spain in relation to preserved fruits and vegetables, jams, jellies and fruit jellies in Class 29 and ketchup and tomato sauce in Class 30.
118    Contrary to the suggestion made by the applicant, the Board of Appeal was fully entitled to conduct an overall assessment of all the evidence.
119    As is noted by the intervener, according to case-law, an overall assessment of the evidence adduced by the proprietor of the earlier mark must be carried out in order to establish whether that mark has a reputation. An accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, may be insufficient to constitute proof of the accuracy of those facts (see judgment of 24 April 2024, Joyful by nature, T‑157/23, EU:T:2024:267, paragraph 21 (not published) and the case-law cited).
120    Furthermore, the Board of Appeal correctly held that the documents drawn up some time before 21 February 2019 could constitute useful information regarding the reputation of the earlier marks.
121    According to case-law, a document drawn up some time before or after the filing date of the application for registration of the mark applied for may contain useful information on the reputation of an earlier mark in view of the fact that such reputation is, in general, acquired progressively. The evidential value of such a document is likely to vary depending on whether the period covered is close to or distant from the filing date (see judgment of 24 April 2024, Joyful by nature, T‑157/23, EU:T:2024:267, paragraph 22 and the case-law cited).
122    In that regard, the Board of Appeal also held that the intervener had submitted evidence concerning a period close to 21 February 2019 demonstrating that the degree of reputation of the earlier marks had not decreased over time. The applicant does not dispute the relevance of that evidence.
123    With regard, in particular, to the survey conducted in 2010 concerning the reputation of the trade mark HELIOS, which the applicant considers to be outdated, it must be stated that, in accordance with the case-law cited in paragraphs 119 and 121 above, although that survey cannot in itself constitute sufficient probative evidence of the reputation of the earlier marks, it nevertheless constitutes information on the consistency of their reputation over time.
124    The Board of Appeal therefore rightly concluded that all the evidence showed that the earlier marks enjoyed a relatively high degree of reputation in Spain in connection with preserved fruits and vegetables, jams, jellies and fruit jellies in Class 29 and ketchup and tomato sauce in Class 30.
(iii) Existence of a risk that the use without due cause of the mark applied for would take unfair advantage of the reputation of the earlier mark
125    The applicant reiterates its claim that the signs at issue are different, in particular visually. There is therefore no link between the marks at issue. In the absence of such a link, the use of the mark applied for is not likely to take unfair advantage of, or be detrimental to, the reputation of the earlier marks, which, moreover, has not been proved by the intervener.
126    Furthermore, the reputation of the earlier marks is not established and there is therefore no need to establish that there is unfair advantage taken of, or detriment to, the reputation of the earlier marks.
127    EUIPO and the intervener dispute the applicant’s arguments.
128    In that regard, it should be recalled that the types of injury referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them even though it does not necessarily confuse them. The existence of a link between the mark applied for and the earlier mark with a reputation, which must be assessed globally, account being taken of all factors relevant to the circumstances of the case, is therefore an essential precondition for the application of that provision (see judgment of 30 March 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPALLI), T‑445/21, not published, EU:T:2022:198, paragraph 37 and the case-law cited).
129    Among the factors to be taken into account in the global assessment of such a link are the degree of similarity between the marks at issue; the nature of the goods or services for which the marks at issue were registered, 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; and the existence of a likelihood of confusion on the part of the relevant public (see judgment of 30 March 2022, COPALLI, T‑445/21, not published, EU:T:2022:198, paragraph 38 and the case-law cited).
130    While, in the absence of a link between the marks at issue in the minds of the public, the use of the trade mark applied for is not likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark, the existence of such a link is not, however, sufficient, in itself, for it to be concluded that one of the types of injury referred to in Article 8(5) of Regulation 2017/1001, which constitute the specific condition for the protection of trade marks with a reputation laid down by that provision, has materialised (see judgment of 24 April 2024, Joyful by nature, T‑157/23, EU:T:2024:267, paragraph 67 (not published) and the case-law cited).
131    In the present case, the Board of Appeal held that consumers could establish a link between the mark applied for and the earlier marks in relation to the ‘forestry products’ in Class 31 covered by the mark applied for, in so far as they were the source of many products for human consumption, such as fresh forest fruits, and could therefore be used for making the goods for which the earlier marks enjoy reputation, such as fruit jellies. Considering, in particular, that the signs at issue were similar overall to a high degree, the relatively high degree of reputation in relation to, inter alia, preserved fruits and vegetables, jams, jellies and fruit jellies in Class 29 and the proximity between the latter goods and the ‘forestry products’ in Class 31 covered by the mark applied for, the relevant public would be likely to establish a mental association between the marks at issue in relation to the latter goods. The use of the mark applied for in relation to ‘forestry products’ in Class 31 was likely to take unfair advantage of the image of quality of the earlier marks and therefore of their reputation.
132    In support of its argument relating to the third cumulative condition necessary for the application of Article 8(5) of Regulation 2017/1001, the applicant merely reiterates its argument concerning the lack of similarity between the signs at issue and the lack of reputation of the earlier marks. As was stated in paragraphs 111 and 124 above, the Board of Appeal rightly found, first, that the signs at issue were visually similar to an average degree, phonetically identical and conceptually highly similar, if not identical, for a non-negligible part of the relevant public and, second, that the earlier marks enjoyed a relatively high degree of reputation in Spain in relation to preserved fruits and vegetables, jams, jellies and fruit jellies in Class 29 and ketchup and tomato sauce in Class 30.
133    It should also be noted that the applicant does not raise any arguments to dispute the proximity between the goods for which the reputation of the earlier marks has been recognised and the ‘forestry products’ in Class 31 covered by the mark applied for.
134    The Board of Appeal could therefore legitimately hold, taking into account the relevant factors mentioned in paragraph 129 above, that the relevant public was likely to establish a link between the marks at issue in relation to ‘forestry products’ in Class 31.
135    Since, however, the existence of the link mentioned in paragraph 134 above was not sufficient, in itself, for it to be concluded that one of the types of injury referred to in Article 8(5) of Regulation 2017/1001 had materialised, the Board of Appeal was fully entitled to ascertain that one of the types of injury referred to in that provision was established in the present case (see paragraph 130 above). In that regard, it found that the use of the mark applied for in relation to ‘forestry products’ was likely to take unfair advantage of the image of quality of the earlier marks and therefore of their reputation. The applicant does not dispute that the earlier marks are associated with an image of quality of which it could have taken advantage.
136    It follows from the foregoing that the second plea in law alleging the infringement of Article 8(5) of Regulation 2017/1001 cannot be upheld.
137    Consequently, the main action must be dismissed in its entirety.
2.      The cross-claim
138    It should be stated as a preliminary point that, in accordance with Article 72(4) of Regulation 2017/1001 (see paragraph 100 above), the cross-claim concerns only the goods and services in Classes 31 and 35 covered by the mark applied for in relation to which the opposition was rejected both on the basis of Article 8(1)(b) of Regulation 2017/1001 and on the basis of Article 8(5) of that regulation.
139    Those are, on the one hand, ‘sowing seeds’, ‘pet food’ and ‘cat litter’ in Class 31 and, on the other hand, ‘publicity and sales promotion services; advertising services relating to the sale of goods; mediation of trade business for third parties; sales promotion; loyalty scheme services; providing consumer information relating to goods and services; business administration and management; market study and analysis of market studies’ in Class 35.
140    In support of the cross-claim, the intervener raises, in essence, a single plea in law alleging the infringement of Article 8(5) of Regulation 2017/1001.
141    More specifically, the intervener challenges the Board of Appeal’s findings concerning the third condition necessary for the application of Article 8(5) of Regulation 2017/1001, which relates to the risk that the use without due cause of the mark applied for would take unfair advantage of the reputation of the earlier mark.
142    According to the case-law cited in paragraphs 128 to 130 above, the types of injury referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant section of the public establishes a link between them even though it does not necessarily confuse them. The existence of a link between the mark applied for and the earlier mark with a reputation must be assessed globally, account being taken of all factors relevant to the circumstances of the case, among which are the degree of similarity between those marks, the nature of the goods or services for which the marks at issue were registered, 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; and the existence of a likelihood of confusion on the part of the relevant public. In the absence of such a link, the use of the trade mark applied for is not likely to take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark.
143    In the contested decision, the Board of Appeal found that the goods and services covered by the mark applied for, which are listed in paragraph 139 above, and the goods in respect of which the earlier marks enjoyed reputation, namely preserved fruits and vegetables, jams, jellies and fruit jellies in Class 29 and ketchup and tomato sauce in Class 30, were so dissimilar that the mark applied for was not likely to evoke the earlier marks in the mind of the relevant public, notwithstanding, inter alia, the strength of the earlier marks’ reputation and the high degree of overall similarity of the signs at issue. There was therefore no link between the marks at issue in relation to those goods. In the absence of such a link, the use of the mark applied for was not likely to take unfair advantage of, or be detrimental to, the reputation or the distinctive character of the earlier marks.
(a)    The link between the marks at issue in relation to the ‘sowing seeds’, ‘pet food’ and ‘cat litter’ in Class 31 covered by the mark applied for
144    The intervener claims that ‘sowing seeds’ are often edible. They can be found in the same sections of the supermarket as the goods for which the earlier marks enjoy reputation.
145    With regard to ‘pet food’ and ‘cat litter’, the intervener submits that the mark applied for could take unfair advantage of the image of quality attached to the earlier marks or, on the contrary, that there is a real danger that the use of the mark applied for will be detrimental to the reputation of the earlier marks. The intervener further claims that ‘pet food’ and ‘cat litter’ and the goods for which the earlier marks enjoy reputation are found in the same homes and are bought at the same time by the same consumers.
146    EUIPO submits that sowing seeds are intended for planting trees and fruits and, consequently, cannot be found in the same supermarket section as the goods for which the earlier marks enjoy reputation. It is common knowledge that sowing seeds are not used for making jams, jellies or tomato sauce.
147    As regards ‘pet food’ and ‘cat litter’, according to EUIPO, the intervener mainly argues why there is injury to the reputation of the earlier marks, but does not explain how the Board of Appeal was incorrect in finding that there was no link between the marks at issue.
148    The applicant submits that ‘sowing seeds’, ‘pet food’ and ‘cat litter’ are not similar to the goods for which the earlier marks enjoy reputation. They are not in competition, do not have the same purpose or the same origin, are manufactured in different ways and are not directed at the same consumers.
149    In accordance with the case-law cited in paragraphs 128 and 129 above, the assessment of the existence of a link between the marks follows from a global assessment of all the relevant factors, which include, in particular, the degree of closeness or dissimilarity between the goods or services at issue. It cannot therefore be ruled out that, taken together, those criteria lead the relevant public to establish a link between the marks at issue, even though it does not necessarily confuse them.
150    With regard, in particular, to the criterion of the degree of proximity or dissimilarity between the goods at issue, it must be stated that the concepts of ‘similarity’ and ‘proximity’ between the goods in question should not be confused. The similarity between the goods covered by the marks at issue does not constitute a condition for the application of Article 8(5) of Regulation 2017/1001, whereas it does constitute one of the cumulative conditions for the application of Article 8(1) of that regulation. However, in the context of the application of Article 8(5) of Regulation 2017/1001, the proximity between the goods concerned is only one of the factors which must be taken into consideration in order to establish whether there is a risk that the use without due cause of the mark applied for would take advantage of the repute of the earlier mark. The concept of ‘proximity’ between the goods, for the purposes of the application of Article 8(5) of that regulation, must be understood as the existence of a simple connection between those goods (see judgment of 30 March 2022, COPALLI, T‑445/21, not published, EU:T:2022:198, paragraph 48 and the case-law cited).
151    In the present case, although the ‘sowing seeds’, ‘pet food’ and ‘cat litter’ covered by the mark applied for are not similar to the goods for which the earlier marks enjoy reputation, the association with those earlier marks nevertheless remains possible (see, to that effect and by analogy, judgment of 25 January 2012, Viaguara v OHIM – Pfizer (VIAGUARA), T‑332/10, not published, EU:T:2012:26, paragraph 52 and the case-law cited).
152    On the one hand, it must be stated that ‘sowing seeds’ are used to plant trees, fruits or vegetables, as is acknowledged by EUIPO. There is therefore a certain proximity between those goods and the preserved fruits and vegetables, jams, jellies and fruit jellies and ketchup and tomato sauce for which the earlier marks enjoy reputation. Furthermore, ‘sowing seeds’ and the goods for which the earlier marks enjoy reputation may be sold in supermarkets and thus share the same channels of distribution, just as they are aimed at the same relevant public.
153    On the other hand, ‘pet food’, ‘cat litter’ and the goods for which the earlier marks enjoy reputation are generally sold in supermarkets and, as the intervener claims, may be purchased concurrently by consumers as everyday products, with the result that a certain proximity may also be established.
154    In view of the relatively high degree of reputation of the earlier marks and the high degree of overall similarity of the signs at issue, the existence of a certain proximity between the goods at issue allows a link to be established between the mark applied for and the earlier marks.
155    The Board of Appeal therefore made an error of assessment when it concluded that there was no link between the marks at issue and inferred that the use of the mark applied for was not likely to take unfair advantage of, or be detrimental to, the reputation of the earlier marks.
(b)    The absence of a link between the marks at issue in relation to the services in Class 35 covered by the mark applied for
156    In the first place, with regard to ‘publicity and sales promotion services; advertising services relating to the sale of goods’, the intervener claims that it carries out extensive promotion of its products, in particular innovative campaigns advertising jams. The trade mark applied for could take unfair advantage of the advertising campaigns for the earlier marks.
157    In the second place, with regard to the services ‘mediation of trade business for third parties; providing consumer information relating to goods and services; business administration and management; market study and analysis of market studies’, the intervener submits that a consumer might think that it offers those services to other undertakings, given its long-standing history of carrying them out for its own account.
158    EUIPO and the applicant dispute the intervener’s arguments.
159    It is sufficient to state that, as EUIPO asserts, the services at issue in Class 35 do not necessarily relate to foodstuffs. Such services are offered by an undertaking for other undertakings with a view to supporting them in the promotion and sales of goods or services, irrespective of their nature.
160    The fact that the intervener undertakes promotion of foodstuffs which enjoy reputation and carries out business operations on its own account is not therefore relevant.
161    Consequently, there is no reason to call into question the Board of Appeal’s conclusion, following its global assessment of the relevant factors, that the goods for which the earlier marks enjoy reputation and the services in Class 35 covered by the mark applied for are so dissimilar that a link between the marks at issue is ruled out, notwithstanding, inter alia, the strength of the earlier marks’ reputation and the high degree of overall similarity of the signs at issue.
162    In the absence of a link between the marks at issue, the Board of Appeal rightly held that the third necessary condition for the application of Article 8(5) of Regulation 2017/1001, namely the existence of 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 reputation of the earlier marks, was not met in relation to those services.
163    It follows from all the foregoing that the single plea in law in the cross-claim, alleging the infringement of Article 8(5) of Regulation 2017/1001, must be upheld in relation to the ‘sowing seeds’, ‘pet food’ and ‘cat litter’ in Class 31 covered by the mark applied for and must be rejected as to the remainder.
IV.    Costs
164    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.
165    Under Article 134(2) of the Rules of Procedure, where there is more than one unsuccessful party, the Court is to decide how the costs are to be shared.
166    Since the applicant has been unsuccessful in the main action, it must be ordered to bear its own costs and to pay those incurred by the intervener in accordance with the form of order sought by the intervener. 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 be ordered to bear its own costs, given that no hearing was organised.
167    Since EUIPO, the applicant and the intervener have been unsuccessful in part in the cross-claim, they must be ordered to bear their own costs.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 17 July 2023 (Joined Cases R 1826/2022-5 and R 1833/2022-5) in so far as it dismissed the appeal filed by the intervener in relation to the ‘sowing seeds’, ‘pet food’ and ‘cat litter’ in Class 31 covered by the mark applied for;
2.      Dismisses the main action;
3.      Dismisses the cross-claim as to the remainder;
4.      Orders Desimo, Lda to bear its own costs and to pay those incurred by Dulces y conservas Helios, SA relating to the main action;
5.      Orders Dulces y conservas Helios and Desimo to bear their own costs relating to the cross-claim;
6.      Orders EUIPO to bear its own costs.
Kornezov
De Baere
Kecsmár
Delivered in open court in Luxembourg on 29 January 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.