JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
25 June 2025 (*)
( EU trade mark – Opposition proceedings – Application for the EU figurative mark Premium Quality REGAL Bakery – Earlier EU word mark REGAL and earlier EU figurative mark Regal – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑431/24,
Certinvest SRL,
established in Păntăşeşti (Romania), represented by I. Speciac, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO),
represented by D. Gája, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Regal Ventures Ltd,
established in Bradford (United Kingdom), represented by W. Leppink, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira, President, P. Zilgalvis (Rapporteur) and E. Tichy-Fisslberger, 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 proceedings 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, Certinvest SRL, seeks the annulment of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 June 2024 (Joined Cases R 1804/2023‑2 and R 1832/2023‑2) (‘the contested decision’).
Background to the dispute
2        On 5 March 2021, the applicant filed an application with EUIPO, pursuant to 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) for registration of the EU trade mark for the following figurative sign:
3        The goods and services covered by the mark applied for 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, after the limitation made before the Opposition Division, in respect of certain goods and services in those classes, to the following description:
–        Class 30: ‘Waffles; Prepared desserts [confectionery]; Poppadums; Chocolate-coated sugar confectionery; Halvah; Frozen confections on a stick; Pancakes; Chocolate vermicelli; Fruit jellies [confectionery]; Croissants; Cocoa based creams in the form of spreads; Chocolate spreads; Confectionery items coated with chocolate; Confectionery in liquid form; Chocolate creams; Chocolate spreads for use on bread; Sweets (candy), candy bars and chewing gum; Dried cumin seeds; Truffle honey; Ice creams, frozen yogurts and sorbets; Marzipan substitutes; Water chestnut starch for food; Seitan [dried wheat gluten]; Lotus root starch for food; Crumble; Bread pudding; Biscotti dough; Boiled confectionery; Confectionery containing jam; Potato flour confectionery; Tapioca; Chocolate bark containing ground coffee beans; Starch syrup for culinary purposes; Chocolate coated fruits; Quinoa, processed; Pastries, cakes, tarts and biscuits (cookies); Confectionery containing jelly; Salted wafer biscuits; Preparations for making of sugar confectionery; Confectionery ices; Lentil flour; Salt crackers; Mint flavoured confectionery (Non-medicated); Malt for human consumption; Almond confectionery; Mixes of sweet adzuki-bean jelly [mizu-yokan-no-moto]; Modified starches for food [not medical]; Cakes of sugar-bounded millet or popped rice (okoshi); Potato flour; Syrups and treacles; Preparations for stiffening whipped cream; Marshmallow topping; Edible rice paper; Peanut brittle; Apple fritters; Candy; Lily bulb starch for food; Food preparations based on grains; Nougat; Bread; Chocolate with alcohol; Yorkshire puddings; Confectionery chips for baking; Cinnamon rolls; Starch derivatives for food human consumption; Edible paper wafers; Crème caramel; Malt-based food preparations; Crackers flavoured with fruit; Confectionery having wine fillings; Muesli desserts; Mousse confections; Almonds covered in chocolate; Chocolate bunnies; Cereal bars and energy bars; Cocoa-based ingredients for confectionery products; Chocolate coated macadamia nuts; Processed cereals for food for human consumption; Frozen yogurt pies; Savory biscuits; Chocolate confectionery having a praline flavour; Puddings; Crackers; Cotton candy; Preparations for making bakery products; Chocolate spreads containing nuts; Prepared desserts [chocolate based]; Chocolate confectionery containing pralines; Cheese-flavoured biscuits; Ginseng confectionery; Cereals; Chocolate flavoured confectionery; Viennoiserie; Pains au chocolat; Sandwich spread made from chocolate and nuts; Processed sorghum; Yeast and leavening agents; Chocolates; Flavoured sugar confectionery; Modified pregelatinized starches for food [not medical]; Doughs, batters, and mixes therefor; Coated nuts [confectionery]; Peanut butter confectionery chips; Honey; Foodstuffs made from dough; Synthetic thickeners for foodstuffs; Chocolate topping; Dried and fresh pastas, noodles and dumplings; Custard; Chocolate; Chocolate-based spreads; Butterscotch chips; Marzipan; Sago palm starch [for food]; Chocolate based products; Linseed for culinary purposes [seasoning]; Aromatic preparations for cakes; Preparations made from cereals; Confectionery having liquid spirit fillings; Grist; Organic thickening agents for cooking foodstuffs; Farinaceous foods; Fern root starch for food; Bakery goods; Processed seeds used as a flavouring for foods and beverages; Malt extract for food; Chocolate decorations for cakes; Pasta; Canapes; Foodstuffs containing cocoa [as the main constituent]; Sweet coatings and fillings; Non-medicated confectionery in jelly form; Chocolate waffles; Confectionery having liquid fruit fillings; Thickening agents for cooking foodstuffs; Almond flour; Confectionery for decorating Christmas trees; Creamed rice; Fruited scones; Confectionery in frozen form; Ice confectionery; Salts, seasonings, flavourings and condiments; Chocolate with Japanese horseradish; Chocolate coated nougat bars; Starch noodles; Graham crackers; Meringues; Salted biscuits; Sweet glazes and fillings; Confectionery; Wafered pralines; Tiramisu; Bars of sweet jellied bean paste (Yohkan); Waffles with a chocolate coating; Starch for food; Starch vermicelli; Fried dough twists; Chocolate desserts; Aerated chocolate; Truffles (rum -) [confectionery]; Chocolate-coated nuts; Natural starches for food’;
–        Class 35: ‘Mail order retail services related to foodstuffs; Retail services connected with the sale of subscription boxes containing food; Retail services in relation to ice creams; Retail services in relation to frozen yogurts; Retail services in relation to desserts; Retail services in relation to confectionery; Retail services in relation to dairy products; Retail services relating to food; Unmanned retail store services relating to food; Retail services via catalogues related to foodstuffs; Wholesale services in relation to dairy products; Wholesale services in relation to desserts; Wholesale services in relation to baked goods; Wholesale services in relation to confectionery; Wholesale services in relation to foodstuffs’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 59/2021 of 26 March 2021.
5        On 28 June 2021, the intervener, Regal Ventures Ltd, filed a notice of opposition to the registration of the mark applied for, for the goods and services referred to in paragraph 3 above.
6        The opposition was based on the following earlier trade marks:
–        the EU word mark REGAL, filed on 19 March 2014 and registered on 8 September 2014 under No 12 707 915, designating, in particular, goods and services in Classes 29, 30 and 35;
–        the EU figurative mark filed on 19 March 2014 and registered on 4 September 2014 under No 12 708 707 designating, in particular, goods and services in Classes 29, 30 and 35, reproduced below:
7        The ground relied on in support of the opposition was, in particular, that set out in Article 8(1)(b) of Regulation 2017/1001.
8        Following the request formulated by the applicant in accordance with Article 47(2) of Regulation 2017/1001, EUIPO invited the intervener to furnish proof of genuine use of the earlier marks relied on in support of the opposition. The intervener complied with that request within the prescribed period.
9        On 29 June 2023, the Opposition Division upheld the opposition in respect of the goods and services referred to in paragraph 3 above, with the exception of the following goods: ‘Cocoa based creams in the form of spreads; Chocolate spreads; Chocolate spreads for use on bread; Chocolate spreads containing nuts; Sandwich spread made from chocolate and nuts; Chocolate-based spreads; Water chestnut starch for food; Lotus root starch for food; Lentil flour; Modified starches for food [not medical]; Tapioca; Lily bulb starch for food; Starch derivatives for food human consumption; Modified pregelatinised starches for food [not medical]; Sago palm starch [for food]; Fern root starch for food; Starch for food; Natural starches for food as well as malt for human consumption; Malt extract for [food] human consumption and synthetic thickeners for foodstuffs; Organic thickening agents for cooking foodstuffs; Thickening agents for cooking foodstuffs; Potato flour; Almond flour; Preparations for stiffening whipped cream; Yeast and leavening agents; truffle honey; honey; starch syrup for culinary purposes; syrups and treacles’, in Class 30.
10      On 24 and 28 August 2023, the intervener and the applicant each lodged an appeal with EUIPO, on the basis of Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
11      By the contested decision, the Board of Appeal dismissed the applicant’s appeal and partially upheld the intervener’s appeal, considering, in essence, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 for all the goods and services referred to in paragraph 3 above for the non-English-speaking public of the European Union.
12      In particular, as regards, first, the genuine use of the earlier marks, the Board of Appeal found that such use was proven, at least with respect to cakes, salty snacks, biscuits, cake rusks, popcorn, cookies, crisps, crackers, wafers and sauces.
13      As regards, second, the comparison of the goods and services, the Board of Appeal considered that the goods and services referred to in paragraph 3 above were identical with or similar to the goods in respect of which genuine use of the earlier marks was proven.
14      Third, according to the Board of Appeal, the goods in question are everyday consumer goods, directed at the public at large, which will display, at most, an average level of attention. As for the services covered by the mark applied for, they are aimed in part at the public at large and at professionals and, in part, solely at the professional public.
15      Fourth, as regards the dominant and distinctive elements of the mark applied for, the Board of Appeal considered that more weight had to be attributed to the word element ‘regal’.
16      Fifth, as regards the similarity of the signs, the Board of Appeal considered that they were at least visually and phonetically similar to an average degree and that, conceptually, the impact of the differences, owing to the presence of weakly distinctive or non-distinctive elements in the mark applied for, was minor.
17      Sixth, as to the inherent distinctiveness of the earlier marks, it was considered to be average for the significant part of the relevant non-English-speaking part of the public.
Forms of order sought
18      The applicant claims that the Court should annul the contested decision in the sense of allowing its appeal against the decision of the Opposition Division and, consequently, order EUIPO to continue in full the procedure for the registration of the mark applied for.
19      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that an oral hearing is convened.
20      The intervener contends that the Court should:
–        declare the form of order sought inadmissible or reject it in its entirety;
–        order the applicant to pay the costs.
Law
The admissibility of the action
21      The intervener submits that the applicant has failed to comply with Article 177(1)(d) of the Rules of Procedure of the General Court, as it has not presented the arguments on which it relies, but has merely repeated its earlier written submissions before EUIPO without amending them and has not included a summary of its pleas in law. The action is therefore inadmissible.
22      In that regard, it should 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, in accordance with the first paragraph of Article 53 of that Statute, and Article 177(1)(d) of the Rules of Procedure, every application initiating proceedings must contain, inter alia, a summary of the pleas in law. That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to adjudicate on the action. The same applies to every form of order sought, which must be accompanied by pleas in law and arguments allowing both the defendant and the Court to determine its merits. Thus, the essential elements of fact and of law on which an action is based must be clear, at least in summary form, but coherently and comprehensibly, from the wording of the application itself. Similar requirements apply where a complaint or an argument is relied on in support of a plea (see judgment of 25 January 2018, SilverTours v EUIPO (billiger-mietwagen.de), T‑866/16, not published, EU:T:2018:32, paragraph 47 and the case-law cited).
23      Furthermore, according to settled case-law, general references to the documents produced during the administrative procedure are inadmissible (see judgment of 9 March 2018, Recordati Orphan Drugs v EUIPO – Laboratorios Normon (NORMOSANG), T‑103/17, not published, EU:T:2018:126, paragraph 24 and the case-law cited).
24      In the present case, it is true that the applicant, in its application, repeated the arguments which it had already put forward before the Board of Appeal. However, it must be pointed out that the applicant adjusted the headings of its complaints to refer to the contested decision and no longer to the decision of the Opposition Division. Likewise, the application makes it possible to identify the legal provisions which, according to the applicant, the Board of Appeal infringed and contains a sufficiently clear and precise statement of the arguments, which, inter alia, put EUIPO and the intervener in a position to prepare their defence, as is apparent, moreover, from their respective responses, and allows the Court to adjudicate on the action.
25      It follows that the way in which the applicant challenged, in the application, the legality of the contested decision is consistent with the requirements of Article 177(1)(d) of the Rules of Procedure. The fact that the application consisted exclusively of arguments already put forward before the Board of Appeal cannot in itself render the application automatically inadmissible in breach of that provision.
Substance
26      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. This plea is divided into five complaints, whereby the applicant disputes the findings of the Board of Appeal relating to the inherent distinctiveness of the earlier marks, the comparison of the signs, the comparison of the goods and services, the relevant public and the global assessment of the likelihood of confusion.
27      EUIPO and the intervener dispute the applicant’s assertions.
28      In the words of Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an 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.
29      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 perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarities of the signs and that of the designated goods or services (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).
30      For the purposes of the application of Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the two marks 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).
31      Where the protection of the earlier trade mark extends to the whole of the European Union, it is necessary to take into account the perception of the trade marks at issue by the consumer of the goods or services in question on that territory. However, it should be borne in mind that, in order for registration of an EU trade mark to be refused, it is sufficient that a relative ground for refusal within the meaning of Article 8(1)(b) of Regulation 2017/1001 exists in only 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).
32      It is in the light of the principles referred to above that the present plea must be examined.
33      As a preliminary point, it must be observed that the applicant does not dispute the findings of the Board of Appeal relating to the goods in respect of which genuine use of the earlier marks was, at least, proven. The Board of Appeal, in that respect, endorsed the decision of the Opposition Division, which, in reliance on exhibit B in the evidence submitted by the intervener, considered that genuine use of the two earlier marks had been demonstrated in relation to, inter alia, cakes, salty snacks, biscuits, cake rusks, popcorn, cookies, crisps, crackers, wafers and sauces (contested decision, paragraph 32).
34      Likewise, it should be observed that the Board of Appeal assessed the existence of a likelihood of confusion by reference to the two earlier trade marks without distinguishing them. However, in so far as the existence of a likelihood of confusion with respect to one of the two marks would be sufficient for the present action to be dismissed, it is appropriate, for reasons of procedural economy, to examine first the Board of Appeal’s findings in relation to only the earlier word mark.
The relevant public and its level of attention
35      In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
36      The applicant submits that the fact that the goods are used on a day-to-day basis does not automatically imply a lower level of attention. Referring to the EUIPO guidelines and to the case-law, the applicant maintains that the ‘average consumer’ will pay a reasonable degree of attention, in particular when buying foodstuffs, as he or she will base his or her decision on a multitude of factors, such as the taste, texture and nutritional values of the good.
37      EUIPO and the intervener dispute the applicant’s arguments.
38      As regards the relevant territory, the Board of Appeal considered that, since the earlier word mark was an EU trade mark, the relevant territory was that of the European Union. It nonetheless observed that the opposition had to be upheld if the likelihood of confusion existed in only a part of the European Union and, consequently, concentrated on the non-English-speaking part of the European Union.
39      As regards the relevant public, the Board of Appeal observed that the Class 30 goods were everyday consumer goods purchased frequently and at low prices, directed at the public at large, which would display, at most, an average level of attention. It extended the same considerations to the retail services in Class 35, which were aimed both at the public at large and at professionals. As regards the wholesale services in Class 35, the Board of Appeal considered that they were aimed at a professional public with an average level of attention.
40      It must be stated that the findings of the Board of Appeal contain no error of assessment. For the reasons stated by the Board of Appeal (see paragraph 38 above), the relevant territory for the purpose of assessing the likelihood of confusion is the territory of the European Union. As regards the relevant public, the goods in question in Class 30 are aimed at the public at large, while the Class 35 services covered by the trade mark applied for are aimed either at the public at large and professionals or, in the case of the various wholesale services, at professionals. The level of attention of that public as a whole is, at most, average.
41      As for the Board of Appeal’s approach of concentrating on the non-English-speaking part of the relevant public, it must be stated that it is consistent with the case-law cited in paragraph 31 above.
42      As regards the applicant’s assertions, it must be observed that the wording employed by the Board of Appeal, namely that the relevant public will display ‘at most[,] an average degree of attention’ encompasses a reasonable or average degree, and the applicant’s arguments cannot therefore succeed.
The comparison of the goods and services
43      In the assessment of 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).
44      The applicant maintains that the opposition should have been dismissed in relation to all the goods covered by the trade mark applied for, or at least in relation to the goods ‘that are not expressly designated by the [intervener’s] trade marks’.
45      First of all, it submits that no similarity can be found between cereal goods – namely processed cereals for food for human consumption; cereals; quinoa, processed; processed sorghum; grist – and cakes, on account of their intended use, which is different. In that regard, it claims that cereals are generally used as a breakfast or snack option, whereas cakes are primarily desserts served at events. It observes, referring to the EUIPO guidelines, that the fact that goods can be categorised as foodstuffs is insufficient, in itself, to render them similar. The same reasoning applies to the comparison of bread pudding, Yorkshire puddings, crème caramel, custard, puddings and creamed rice with the cakes covered by the earlier word mark.
46      Next, the applicant claims that no similarity ‘[can] be assessed’ between, on the one hand, dried and fresh pastas; noodles and dumplings; pasta; starch noodles and starch vermicelli, and, on the other, the goods covered by the earlier word mark.
47      Last, as regards the Class 35 services covered by the trade mark applied for, the applicant submits that no similarity can be found between those services and the cakes covered by the earlier word mark.
48      EUIPO and the intervener dispute the applicant’s arguments.
49      In the present case, the Board of Appeal considered that the goods and services referred to by the trade mark applied for that are listed in paragraph 3 above were identical with or similar to the goods in respect of which genuine use of the earlier word mark had been proven, namely cakes, salty snacks, biscuits, cake rusks, popcorn, cookies, crisps, crackers, wafers and sauces.
50      In particular, as regards the goods and services expressly mentioned by the applicant, first, the Board of Appeal observed that cereal goods, namely processed cereals for food for human consumption; cereals; quinoa, processed; processed sorghum; grist, just like the various goods covered by the earlier word mark, like cakes, were eaten as snacks. They therefore served similar purposes, they might be in competition and might be offered to the same public through the same distribution channels in close proximity.
51      Second, the Board of Appeal considered that the bread pudding, Yorkshire puddings, crème caramel, custard, puddings and creamed rice covered by the trade mark applied for were sweet desserts, like the cakes covered by the earlier word mark. Those goods serve similar purposes and might be in competition and might be offered to the same public through the same distribution channels in close proximity.
52      Third, the Board of Appeal considered that ready-made sauces and spicy sauces, chilli sauce, curry sauces and sauces (condiments) could be made specifically to be combined with dried and fresh pastas; noodles and dumplings; pasta; starch noodles; starch vermicelli, might originate from the same company and might be offered to the same public in close proximity.
53      In short, as regards the various goods mentioned in paragraphs 50 to 52 above, the Board of Appeal considered that they had, at the very least, a low degree of similarity with the goods in respect of which genuine use of the earlier word mark had been proven.
54      As regards, fourth, the services in Class 35 covered by the trade mark applied for, the Board of Appeal considered that there was, at least, a low degree of similarity between, on the one hand, the retail services concerning specific goods and, on the other, the goods which were either highly similar or similar to those specific goods, owing to the close connection between those goods on the market from the consumers’ perspective.
55      As regards, first of all, the applicant’s allegations relating to the fresh and dried pasta; noodles and dumplings; pasta; starch noodles and starch vermicelli, in Class 30, and to the services in Class 35 (see paragraph 3 above), all covered by the trade mark applied for, it must be stated that those vague and unsubstantiated allegations do not suffice to put in question the findings of the Board of Appeal.
56      In any event, the Board of Appeal’s finding that fresh and dried pasta; noodles and ravioli; pasta; starch noodles and starch vermicelli, in Class 30 and covered by the trade mark applied for, and the various sauces, in Class 30, covered by the earlier word mark were similar, in that those goods might be manufactured in order to be combined, might originate from the same company and might be offered to the same public in close proximity, contains no error of assessment.
57      The same applies as regards the Board of Appeal’s finding relating to the services covered by the trade mark applied for, in Class 35, and to the goods in respect of which genuine use of the earlier word mark was proven, namely cakes, salty snacks, biscuits, cake rusks, popcorn, cookies, crisps, crackers, wafers and sauces. As the Board of Appeal considered, those goods are similar or highly similar to the goods covered by the services referred to by the trade mark applied for. In addition, the Board of Appeal correctly pointed out that consumers were used to a variety of highly similar or similar goods being offered for sale in the same specialised shops or in the same sections of department stores or supermarkets.
58      In that regard, it should be added that, according to settled 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). As the Board of Appeal rightly considered in the present case, the retail services covered by the trade mark applied for relate to goods that are highly similar or similar to those in respect of which genuine use of the earlier word mark was proven. In addition, it has been held that that case-law also applies to wholesale services (order of 22 September 2022, Primagran v EUIPO – Primagaz (prımagran), T‑624/21, not published, EU:T:2022:620, paragraph 73, and judgment of 26 July 2023, Schneider v EUIPO – Frutaria Innovation (frutania), T‑109/22, not published, EU:T:2023:423, paragraph 35).
59      As regards, next, the applicant’s allegations relating to the cereal goods referred to in paragraph 45 above, it must be considered that those goods were rightly considered to be similar to the cakes in respect of which genuine use of the earlier word mark had been proven. All of those goods may be consumed as snacks, as cakes are not limited to goods consumed at events. In addition, it should be pointed out that the Board of Appeal did not find a similarity in the present case on the ground that those goods were foodstuffs, and any argument to that effect put forward by the applicant cannot succeed.
60      Likewise, the Board of Appeal did not consider that bread pudding; Yorkshire puddings; crème caramel; custard; puddings and creamed rice were similar to the cakes in respect of which genuine use of the earlier word mark had been demonstrated on the ground that all of those goods were foodstuffs. In fact, the Board of Appeal correctly stated that those goods were sweet desserts and that they served similar purposes and might be in competition and be offered to the same public through the same distribution channels in close proximity.
61      As regards, last, the remaining goods in Class 30 covered by the trade mark applied for and cited in paragraph 3 above that were not expressly referred to by the applicant, it must be stated that the Board of Appeal was correct to consider that they were identical with or similar to the goods in respect of which genuine use of the earlier word mark had been proven.
62      It follows that, taken as a whole, the goods and services referred to in paragraph 3 above are identical with or similar to the goods in respect of which genuine use of the earlier word mark was proven.
The comparison of the signs
63      The global assessment of the likelihood of confusion must, in relation to the visual, aural or conceptual similarity of the signs in question, be based on the overall impression given by the signs, and their distinctive and dominant components, in particular, must be taken into account. 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 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).
64      In the present case, it is appropriate to compare, on the one hand, the earlier word mark REGAL and, on the other, the figurative mark applied for, as reproduced in paragraph 2 above. The latter mark contains the word elements ‘regal’, together with the symbol ‘®’; ‘bakery’; and ‘premium quality’; and also figurative elements consisting of numerous superimposed geometric forms, represented in gold, red and white, and a crown placed above the element ‘regal’, which is surrounded by an ellipse.
–       The dominant and distinctive components of the trade mark applied for
65      The assessment of the similarity between two marks involves more than taking just one component of a composite trade mark into account 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 might be the case, in particular, where that component is capable in itself of dominating the image of that mark which the relevant public retains in its memory, so that all the other components of the mark are negligible in the overall impression given by the mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
66      For the purpose of assessing the distinctive character of an element forming part of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In the context of that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).
67      As regards the assessment of the dominant character of one or more given components of a complex trade mark, 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 complex mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
68      Likewise, where a trade mark is composed of word elements and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods at issue by citing the name of the trade mark than by describing its figurative element (see judgment of 28 September 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPAL TREE), T‑572/21, not published, EU:T:2022:594, paragraph 31 and the case-law cited).
69      Without directly calling in question the findings of the Board of Appeal relating to the dominant and distinctive elements of the trade mark applied for, the applicant submits, in the part of the application relating to visual similarity, that the figurative element depicted in red is dominant. Likewise, it maintains that the element ‘regal’, which refers to royalty or to monarchy, is laudatory in respect of the goods designated by the earlier word mark.
70      EUIPO and the intervener dispute the applicant’s arguments.
71      In the present case, the Board of Appeal considered that, for a significant part of the non-English-speaking public of the European Union, found in particular in Germany, Greece, Spain, Hungary, Poland and the Baltic States, the word elements ‘regal’ and ‘bakery’, which are not part of the basic English vocabulary, had average distinctiveness. By contrast, the elements ‘premium quality’, which are part of the basic English vocabulary, and are thereby likely to be understood throughout the European Union, convey a purely laudatory message that the goods and services are of excellent quality. The element ‘®’ after the element ‘regal’ is merely informative and indicates that the sign is purportedly registered, and is therefore irrelevant.
72      As regards the figurative elements in the trade mark applied for, the Board of Appeal considered that they were essentially decorative and had at most weak distinctiveness. In particular, it considered that the element in the form of a crown would be perceived as essentially decorative, or even laudatory, and not as an indication of the commercial origin of the goods and services in question. As for the other figurative elements, consisting of numerous geometric forms depicted in gold, red and white, they give an impression of an ornamental label.
73      Last, the Board of Appeal considered that the word element ‘regal’ had a central position in the trade mark applied for. The oval shape surrounding that element emphasises its importance in the overall impression. Consequently, the Board of Appeal considered that more weight had to be attributed to the element ‘regal’.
74      In the first place, it is appropriate to assess the distinctive character of the different elements of which the trade mark applied for is composed. First, as regards the distinctive character of the word element ‘regal’, it must be stated that, as the Board of Appeal found, that word element will not be understood by the non-English-speaking public of the European Union. It is not a basic English word.
75      In that regard, it must be borne in mind that it cannot be assumed that English terms are widely known by the non-English-speaking public of the European Union, with the exception of certain terms forming part of basic English vocabulary (see judgment of 19 June 2024, Naturgy Energy Group v EUIPO – Global Power Service (gps global power service), T‑312/23, not published, EU:T:2024:399, paragraph 36 and the case-law cited).
76      It follows that the distinctive character of the element ‘regal’ is average for the goods and services covered by the trade mark applied for.
77      Second, as regards the word element ‘bakery’, it must be stated that, as the Board of Appeal found, its distinctive character for the non-English-speaking public of the European Union, with the exception of the German-speaking public, namely at least the public in Germany and Austria, is also average. It has not been demonstrated, in the present case, that that term is part of the basic English vocabulary and likely to be understood by the entire public of the European Union. For the German public, on the other hand, the term ‘bakery’ is close to its German equivalent ‘Bäckerei’ and is therefore weakly distinctive for the goods covered by the earlier word mark.
78      Third, as regards the word elements ‘premium quality’, it should be stated that those terms are part of the basic English vocabulary and, consequently, will be understood by the entire public of the European Union as indicating that the goods and services are of excellent quality. Owing to their laudatory character, the distinctive character of those elements is weak.
79      Fourth, as regards the various figurative elements in the trade mark applied for, it must be observed that their combination gives the impression of an ornamental label. Owing to their decorative character, their distinctive character will be weak, as the Board of Appeal essentially found. As for the crown placed above the word element ‘regal’, it must be considered that, as the Board of Appeal found, it is an essentially decorative, even laudatory, element, and its distinctive character will therefore also be weak. In addition, according to the case-law cited in paragraph 68 above, it must be borne in mind that word elements are, in principle, more distinctive than figurative elements.
80      As regards the symbol ‘®’, the Board of Appeal correctly considered that it was an informative indication that the entire trade mark applied for or the element ‘regal’ was registered. That element is irrelevant for the purpose of the assessment of the marks at issue, since it is a sign commonly found in trade marks (see, to that effect, judgment of 6 September 2013, Eurocool Logistik v OHIM – Lenger (EUROCOOL), T‑599/10, not published, EU:T:2013:399, paragraph 108).
81      In the second place, it is appropriate to identify the dominant elements of the trade mark applied for. In that regard, it should be observed that the word elements that are most distinctive for the majority of the non-English-speaking public of the European Union, namely ‘regal’ and ‘bakery’, are written in characters of comparable size. However, the element ‘regal’ will attract attention more than the second element, since it is in capital letters, at the centre of the sign and surrounded by an ellipse that highlights it. For those reasons, the Board of Appeal did not make an error of assessment in considering that ‘[more] weight has to be attributed’ to the word ‘regal’ than to the figurative element depicted in red, as the applicant claims, and that the word element ‘regal’ was dominant.
–       The visual, phonetic and conceptual similarity
82      As regards the visual comparison, the applicant claims that no visual similarity can be established between the earlier word mark and the trade mark applied for. The latter mark contains a number of elements that distinguish it from the former, namely the dominant figurative element depicted in red, the stylised cross and crown depicted in yellow and red, the verbal element ‘bakery’ written in a specific red typeface on a white background and the elements ‘premium quality’.
83      EUIPO and the intervener dispute the applicant’s arguments.
84      The Board of Appeal observed that the verbal element ‘regal’ constituting the earlier word mark was included in the trade mark applied for and considered that that fact was liable to create a strong visual similarity between the marks at issue. The differences resulting from the other elements in the trade mark applied for would not be capable of outweighing the common element. Therefore, for a significant part of the non-English-speaking public, the signs at issue would be similar, at least, to an average degree.
85      First of all, it must be borne in mind that, according to the case-law, when the sole component of the mark on which an opposition is based is included in its entirety within the mark for which registration is sought, the signs at issue are partially identical in such a manner as to create a certain impression of similarity in the mind of the relevant public (see judgment of 20 June 2018, Anabi Blanga v EUIPO – Polo/Lauren (HPC POLO), T‑657/17, not published, EU:T:2018:358, paragraph 30 and the case-law cited).
86      In the present case, the element constituting the earlier word mark ‘regal’ is not only included in the trade mark applied for, but, in addition, constitutes the dominant element of that mark (see paragraph 81 above).
87      As regards the other elements constituting the trade mark applied for, which are also listed by the applicant, it must be borne in mind that, with the exception of the element ‘bakery’, the other elements, namely the figurative elements and the word elements ‘premium quality’, are weakly distinctive (see paragraphs 78 to 80 above). In addition, it must be stated that those elements were duly taken into consideration by the Board of Appeal (see paragraph 105 of the contested decision).
88      It follows that the Board of Appeal was correct to consider that, owing to the presence of the word element ‘regal’, constituting the earlier word mark, in the trade mark applied for, those marks displayed, at the very least, an average degree of visual similarity.
89      As regards the phonetic comparison, the applicant merely maintains that the marks at issue are pronounced differently, since the trade mark applied for contains several verbal elements the pronunciation of which is different from that of the earlier word mark.
90      EUIPO and the intervener dispute the applicant’s arguments.
91      The Board of Appeal held that the signs coincided in the pronunciation of the word element ‘regal’ and differed in the other elements. In that regard, it considered that the relevant public would not pronounce the word elements ‘premium quality’, which are weakly distinctive in the present case. The figurative elements would not be pronounced either. As regards the element ‘bakery’, even if weight were attributed to it on account of its distinctiveness for the non-English-speaking public, apart from the German-speaking public, it is the identical pronunciation of the word element ‘regal’ that would have a significant impact on the phonetic comparison, since it would be the first to be pronounced in the trade mark applied for. Therefore, the signs at issue would display, at least, an average degree of phonetic similarity.
92      It must be stated that the signs coincide by the presence of the word element ‘regal’, which, owing to its size and position, is dominant in the trade mark applied for and could be the first to be pronounced.
93      As for the applicant’s assertion that the trade mark applied for contains additional elements by comparison with the earlier word mark and will for that reason be pronounced differently, it is sufficient to note that the presence of the element ‘bakery’ was duly taken into account by the Board of Appeal. As for the word elements ‘premium quality’, they will not be pronounced, not only because of their weakly distinctive character, but also because of their small size, significantly smaller than that of the word elements ‘regal’ and ‘bakery’. As regards the figurative elements, the Board of Appeal considered, correctly, that they would not be pronounced.
94      It follows that, owing to the coincidence of the word element ‘regal’, the Board of Appeal’s finding that the marks at issue display, at least, an average degree of phonetic similarity contains no error of assessment.
95      As regards the conceptual comparison, the applicant maintains that the marks at issue evoke different concepts in the mind of the relevant public. The public will understand the earlier word mark as referring to royalty and monarchy. As for the trade mark applied for, it will be understood as referring to bakery goods. Furthermore, the element ‘regal’ describes a quality of the bakery goods sold by the applicant, ‘referring to the other verbal elements of the [trade mark applied for]’.
96      EUIPO disputes the applicant’s arguments. As for the intervener, it has formulated no specific arguments in relation to the conceptual comparison of the signs.
97      The Board of Appeal considered that, for a significant part of the non-English-speaking public, the common word element ‘regal’ was meaningless. As for the other elements in the trade mark applied for, the concepts conveyed by them are not present in the earlier word mark. However, those concepts are ‘weak’ and the impact of the resulting conceptual differences is therefore minor. They are therefore not capable of counteracting the visual and phonetic similarities.
98      In the present case, it must be stated that the word element ‘regal’ common to the marks at issue will not be understood by the non-English-speaking public of the European Union (see paragraph 74 above) and, consequently, that public will not attribute to it the meaning claimed by the applicant. The same applies as regards the element ‘bakery’, included in the trade mark applied for, which will not be understood by that public, with the exception of the German-speaking public. As regards the word elements ‘premium quality’, present in the trade mark applied for, they will be understood by the non-English-speaking public of the European Union as indicating that the goods are of excellent quality (see paragraph 78 above).
99      According to the case-law, where one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, it must be held that the marks at issue are conceptually different (see, to that effect, judgment of 2 February 2022, Canisius v EUIPO – Beiersdorf (CCLABELLE VIENNA), T‑694/20, not published, EU:T:2022:45, paragraph 81 and the case-law cited).
100    It follows that, because of the presence of the word elements ‘premium quality’ in the trade mark applied for, which will be understood even by the non-English-speaking public, the marks at issue are conceptually different.
101    However, it should be borne in mind in that regard that the extent of the elements of similarity or difference between the signs at issue may depend, in particular, on the inherent characteristics of the signs (see, to that effect, judgment of 30 November 2017, FTI Touristik v EUIPO – Prantner and Giersch (Fl), T‑475/16, not published, EU:T:2017:856, paragraph 30 and the case-law cited).
102    However, in the present case, as stated in paragraph 78 above, the distinctive character of the word elements ‘premium quality’ is weak. By reason of their weak distinctive character, their impact on the conceptual comparison will be limited (see, to that effect, judgment of 10 May 2023, Vanhove v EUIPO – Aldi Einkauf (bistro Régent), T‑437/22, not published, EU:T:2023:246, paragraph 123).
103    The same applies to the figurative elements and, in particular, the image of the crown, in the trade mark applied for, in so far as the public attributes any meaning to them.
104    Furthermore, according to the case-law, the conceptual similarity arising solely from a weakly distinctive element attracts consumers’ attention only in a limited manner (see, to that effect, judgments of 16 December 2015, Perfetti Van Melle Benelux v OHIM – Intercontinental Great Brands (TRIDENT PURE), T‑491/13, not published, EU:T:2015:979, paragraph 108, and of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 51). It must be considered that, for the reasons stated in paragraphs 101 and 102 above, the same applies with regard to the conceptual differences attributable solely to elements that are weakly distinctive.
105    In those circumstances, the Board of Appeal’s finding that the conceptual differences existing in the present case between the marks at issue have only a weak impact on the comparison of the signs contains no error of assessment.
The inherent distinctiveness of the earlier mark
106    The applicant maintains that the earlier word mark lacks any inherent distinctiveness or, at least, has a very low degree of inherent distinctiveness, in so far as the element ‘regal’ is laudatory by reference to the goods covered by that mark. It further maintains that the element ‘regal’ is very common, in so far as it appears in almost 400 trade marks. Likewise, the applicant observes that the earlier word mark contains no other elements that could raise its level of distinctiveness.
107    EUIPO and the intervener dispute the applicant’s arguments.
108    The Board of Appeal considered that, in so far as the term ‘regal’ was meaningless for a significant part of the non-English-speaking public in relation to the goods covered by the earlier word mark, that mark had an average degree of distinctiveness for that public and those goods.
109    In the present case, it has not been demonstrated that the non-English-speaking public of the European Union will perceive the word element ‘regal’, the sole component of the earlier word mark, as laudatory. In fact, it must be remembered that the word will not be understood by the non-English-speaking public of the European Union (see paragraph 74 above). It follows from the case-law that, where the earlier word mark does not have any particular meaning in relation to the goods or services concerned, it has an average degree of inherent distinctiveness (see, to that effect, judgments of 30 June 2021, Makk v EUIPO – Ubati Luxury Cosmetics (PANTA RHEI), T‑501/20, not published, EU:T:2021:402, paragraph 59, and of 23 February 2022, Ancor Group v EUIPO – Cody’s Drinks International (CODE-X), T‑198/21, EU:T:2022:83, paragraph 56). Consequently, the inherent distinctiveness of the earlier word mark cannot be considered to be weak for that public, as the applicant maintains.
110    As regards the fact that the word element ‘regal’ is included in almost 400 registered trade marks, it has been held that the mere presence in the Register of EU trade marks of marks containing a certain term, without any reference to their use on the market and to any challenge to those marks on account of the existence of a likelihood of confusion, did not permit the inference that the distinctive character of that term had been weakened in relation to the goods and services in respect of which those marks were registered (see, to that effect, judgment of 23 March 2022, Vetpharma Animal Health v EUIPO – Deltavit (DELTATIC), T‑146/21, not published, EU:T:2022:159, paragraph 116 and the case-law cited).
111    It follows that the Board of Appeal was correct to find that the inherent distinctiveness of the earlier word mark was average.
The existence of a likelihood of confusion
112    The 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 the similarity of the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater 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).
113    The applicant maintains that the Board of Appeal erred in law when it found that there was a likelihood of confusion in the present case. A likelihood of confusion cannot exist, on account of the lack of similarity of the signs at issue and the dissimilarity of the goods in question. No likelihood of confusion can be found, even if there was a certain degree of similarity of the signs and goods in question, in so far as the marks at issue share only a weakly distinctive element and the trade mark applied for contains other elements that must be taken into account. In that respect, the applicant observes that, according to the case-law, when the signs at issue share only a weakly distinctive element, the global assessment evaluation of the likelihood of confusion generally does not permit a finding of the existence of such a likelihood, and it submits that, in the present case, a likelihood of confusion would have required a very high degree of identity between the signs at issue.
114    EUIPO and the intervener dispute the applicant’s arguments.
115    In the present case, in application of the principle of interdependence, the Board of Appeal considered that, in the light of what was at least the average visual and phonetic similarity of the signs for a significant part of the non-English-speaking public and also of the minor impact of the conceptual differences, there was a likelihood of confusion for the identical or similar goods and services.
116    It must be stated that the applicant’s stance that there is no likelihood of confusion is based, in particular, on the argument that the distinctiveness of the element ‘regal’, common to the marks at issue, is weak. However, that premiss is incorrect in this case, as is apparent from, inter alia, paragraphs 76 and 111 above.
117    Furthermore, it must be borne in mind that the goods and services referred to in paragraph 3 above are identical with or similar to the goods in respect of which genuine use of the earlier word mark was proven (see paragraph 62 above), the signs at issue display, at least, an average degree of visual and phonetic similarity (see paragraphs 88 and 94 above) and their conceptual difference has only a limited impact (see paragraph 105 above). Furthermore, the inherent distinctiveness of the earlier word mark is average (see paragraph 111 above).
118    In those circumstances, the Board of Appeal was able to conclude, without making an error of assessment, that there was a likelihood of confusion by reference to the earlier word mark, and there is thus no need to examine the findings of the Board of Appeal relating to the opposition based on the earlier figurative mark Regal.
119    It follows that the present plea must be rejected and that the action must therefore be dismissed in its entirety, without there being any need to rule on the admissibility of the last part of the applicant’s single head of claim, whereby it asks the Court to order EUIPO to pursue in full the procedure for the registration of the mark applied for.
Costs
120    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.
121    Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter.
122    By contrast, since EUIPO has requested that the applicant be ordered to pay its costs only in the event that a hearing was convened, EUIPO must be ordered to bear its own costs, as a hearing has not been held.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Certinvest SRL, in addition to bearing its own costs, to pay the costs incurred by Regal Ventures Ltd;
3.      Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Costeira
Zilgalvis
Tichy-Fisslberger
Delivered in open court in Luxembourg on 25 June 2025.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.