JUDGMENT OF THE GENERAL COURT (Second Chamber)
10 September 2025 (*) (1)
( EU trade mark – Opposition proceedings – Application for EU figurative mark pastaZARA Sublime – Earlier EU word mark ZARA – Relative ground for refusal – No injury to reputation – Article 8(5) of Regulation (EC) No 40/94 – No link between the signs – No risk of unfair advantage being taken of the mark with a reputation – Existence of due cause for the use of the mark applied for )
In Case T‑425/24,
Ffauf Italia SpA, established in Riese Pio X (Italy), represented by P. Creta, A. Lanzarini, B. Costa and V. Basilavecchia, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Chylińska and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Industria de Diseño Textil, SA, established in Arteixo (Spain), represented by G. Marín Raigal, E. Armero Lavie and J. Oria Sousa-Montes, lawyers,
THE GENERAL COURT (Second Chamber),
composed of A. Marcoulli, President, V. Tomljenović (Rapporteur) and L. Spangsberg Grønfeldt, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 8 May 2025,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Ffauf Italia SpA, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 June 2024 (Case R 1576/2023-5) (‘the contested decision’).
Background to the dispute
2        On 25 June 2008, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1).
3        Registration as a mark was sought for the following figurative sign:
4        The mark applied for covers goods in Class 30 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 to the following description: ‘Fresh, dried, frozen, deep-frozen and ready-to-use pasta’.
5        On 16 December 2008, the intervener, Industria de Diseño Textil, SA, filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 4 above.
6        The opposition was based, inter alia, on the EU word mark ZARA, registered on 3 January 2001 under No 112755 and covering goods in Class 25 corresponding to the following description: ‘Clothing, footwear, headgear; babies’ diapers of textile; babies’ napkins of textile; boot uppers; cap peaks; dress shields; fittings of metal for shoes and boots; footwear uppers; hat frames [skeletons]; heelpieces for boots and shoes; heelpieces for stockings; heels; inner soles; iron fittings for boots; iron fittings for shoes; iron fittings for shoes; non-slipping devices for boots and shoes; pockets for clothing; ready-made linings [parts of clothing]; shirt fronts; shirt yokes; soles for footwear; studs for football boots [shoes]; tips for footwear; visors [hatmaking]; welts for boots; welts for boots and shoes; welts for shoes’.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 40/94.
8        The proceedings before EUIPO were suspended as a result of disputes between the applicant and the intervener, inter alia concerning one of the intervener’s earlier marks, initially relied on in support of the opposition, which has since been revoked in respect of the goods in Class 30 on which the opposition was based.
9        On 30 May 2023, the Opposition Division upheld the opposition on the basis of Article 8(5) of Regulation No 40/94.
10      On 24 July 2023, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
11      By the contested decision, the Board of Appeal dismissed the appeal on the ground that the cumulative conditions justifying the application of Article 8(5) of Regulation No 40/94 were satisfied. The Board of Appeal concluded that the earlier mark had a reputation as at the filing date of the mark applied for, that the two marks had a high degree of similarity and that, when the relevant public encountered the mark applied for in the context of goods in Class 30, it would associate that mark with the earlier mark, which was reputed for goods in Class 25. Furthermore, the Board of Appeal considered that there was a risk that the use of the mark applied for, in respect of which due cause had not been established by the proprietor of the mark applied for, would take unfair advantage of the repute of the earlier mark.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
14      The intervener contends, in essence, that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
Preliminary observations
15      Given the date on which the application for registration at issue was filed, namely 25 June 2008, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions 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).
16      Consequently, in the present case, so far as concerns the substantive rules, the references to the provisions of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the parties in their arguments must be understood as referring to the provisions of Regulation No 40/94, the wording of which is substantively equivalent.
The single plea in law, alleging infringement of Article 8(5) of Regulation No 40/94
17      The applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(5) of Regulation No 40/94. That plea is divided into five parts, alleging incorrect assessments by the Board of Appeal as regards (i) the reputation of the earlier mark; (ii) the existence of a similarity between the signs at issue; (iii) the existence of a link between those signs; (iv) the existence of a risk of injury as a result of the registration applied for; and (v) the existence of due cause for registering and using the mark applied for.
18      It is apparent from Article 8(5) of Regulation No 40/94 that, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2 of that article, the trade mark applied for is not to be registered where it is identical with or similar to an earlier trade mark, even if the goods or services for which it is applied are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
19      As regards the risk referred to by Article 8(5) of Regulation No 40/94, it must be pointed out that, although it is true that the primary function of a mark is that of an indication of origin, the fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys. To that effect, each mark has an inherent economic value which is independent of and separate from that of the goods or services for which it has been registered. The messages which are conveyed, inter alia, by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, Article 8(5) of Regulation No 40/94 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are not similar to those for which the earlier mark has been registered (judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35).
20      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 40/94, a number of conditions must, therefore, be satisfied. First, the earlier trade mark must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 28 February 2024, Puma v EUIPO – Société d’équipements de boulangerie pâtisserie (BERTRAND PUMA La griffe boulangère), T‑184/23, not published, EU:T:2024:133, paragraph 18 and the case-law cited).
21      In the present case, the earlier mark was registered on 3 January 2001. Furthermore, in paragraph 50 of the contested decision, the Board of Appeal found that the relevant public corresponded to the public at large, given that the goods covered by the earlier mark, in respect of which reputation was claimed, were in Class 25 and were mass consumption goods. In addition, the Board of Appeal stated that the relevant territory was that of the European Union, the earlier mark being an EU trade mark. The applicant does not dispute those assessments made by the Board of Appeal. By contrast, it disputes the Board’s assessments concerning the cumulative conditions of Article 8(5) of Regulation No 40/94, which must be examined in the light of the foregoing considerations.
The reputation of the earlier trade mark
22      In essence, the applicant submits that the Board of Appeal erred in finding that the earlier mark had a reputation as at the filing date of the mark applied for, since the intervener did not sufficiently prove such a reputation.
23      In that regard, it should be noted that the reputation of an earlier mark must be established as at the filing date of the application for the contested mark (see judgment of 16 October 2018, VF International v EUIPO – Virmani (ANOKHI), T‑548/17, not published, EU:T:2018:686, paragraph 103 and the case-law cited). However, documents bearing a date after that date cannot be denied evidential value if they enable conclusions to be drawn with regard to the situation as it was on that date. It cannot automatically be ruled out that a document drawn up some time before or after that date may contain useful information in view of the fact that the reputation of a trade mark 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, Kneipp v EUIPO – Patou (Joyful by nature), T‑157/23, EU:T:2024:267, paragraph 22 and the case-law cited).
24      Moreover, the existence of repute must be assessed by taking into consideration all the relevant factors of the case, that is to say, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 56; see also, by analogy, judgment of 14 September 1999, General Motors, C‑375/97, EU:C:1999:408, paragraph 27). However, the above list being merely illustrative, it cannot be required that proof of the reputation of a mark pertains to all those elements (judgments of 8 November 2017, Oakley v EUIPO – Xuebo Ye (Representation of a discontinuous ellipse), T‑754/16, not published, EU:T:2017:786, paragraph 101, and of 16 October 2018, ANOKHI, T‑548/17, not published, EU:T:2018:686, paragraph 95).
25      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 whether that condition is satisfied, consideration must be given to all the relevant facts of the case, and there is 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, to that effect, judgment of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM – Staccata (QUARTODIMIGLIO QM), T‑76/13, not published, EU:T:2015:94, paragraph 87 and the case-law cited).
26      In paragraph 45 of the contested decision, the Board of Appeal listed the evidence which had been submitted before the Opposition Division and before the Board of Appeal, and which was taken into account as demonstrating that the earlier mark had been subject to long-standing and intensive use attesting to its reputation on the relevant market, where it held a strong position.
27      In that regard, it must be observed that that list includes evidence which predates, or is contemporaneous with, the filing date of the mark applied for, namely 25 June 2008.
28      In paragraph 45 of the contested decision, the Board of Appeal referred to annual rankings of the best brands, published by reputable consulting firms that are specialised in brands and dating from 2005, 2006, 2007 and 2008. In those rankings, the mark ZARA featured among the world’s top 100 brands.
29      Furthermore, the Board of Appeal took into account a number of press articles published in 2000, 2001, 2005, 2006 and 2008 which mentioned the commercial success of the mark ZARA around the world. It also referred to monographic articles drawn up by academics and published in 2005, 2006, 2007 and 2008, which showed that the mark ZARA was present around the world, through the setting up of stores bearing that mark in renowned locations in the cities in which it had established itself, and surpassed competing brands through the use of innovative manufacturing, distribution and marketing methods.
30      In addition, the Board of Appeal took into account the intervener’s annual reports for the years 2003 to 2008, which set out the turnover and profits relating to the mark ZARA during the financial years in question, as well as the total number of stores bearing the mark ZARA and new openings made during those financial years.
31      Therefore, contrary to what the applicant claims, the items of evidence bearing a date before the filing date of the mark applied for were neither limited nor weak for the purpose of examining the reputation of the earlier mark. They demonstrate the clear commercial success of the mark ZARA in the fashion sector, inter alia within the European Union, and its intensive use, in particular through its prominent presence in stores bearing that mark, the opening of which in exceptional locations throughout the world requires considerable investment.
32      In addition, the Board of Appeal took into account several other items of evidence which, although bearing a date after the filing date of the mark applied for, were capable of demonstrating that the reputation of the mark ZARA for goods in Class 25 was not recent, but rather was based on its long-standing commercial success, inter alia as a result of the internationalisation of the mark from the 1990s.
33      In that regard, the Board of Appeal took into account, inter alia, a market survey, dated October 2013, indicating a high awareness of the mark ZARA on the part of more than 75% of the public in Belgium, Spain, France, Luxembourg, the Netherlands and Portugal. It also took into account, inter alia, a press article, published in August 2010, reporting on the ranking of the mark ZARA as one of the best-known brands globally and with 4.4 million subscribers to its Facebook account as at that date.
34      Furthermore, the Board of Appeal took into account numerous press articles from 2009 to 2013, produced before the Opposition Division, which described the extraordinary commercial success of the mark ZARA and the opening of new stores bearing the mark ZARA throughout the world.
35      Moreover, the Board of Appeal relied on internal documents, such as annual reports of the group to which the mark ZARA belonged, attesting to the development of that group’s activities in the sector of household goods and other decoration items, following the launch of the ZARA HOME line in 2003 and, more recently, in the restaurant sector with the opening of ZARA cafés in Rotterdam (Netherlands) and Dubai (United Arab Emirates) in 2023.
36      It must be observed, as EUIPO and the intervener contend, that the documents bearing a date after the filing date of the mark applied for which were taken into account by the Board of Appeal indicate a very significant presence of the mark ZARA throughout the world, which was built up mainly through the gradual opening of stores in renowned locations in cities, beginning with Spain in the 1980s, and continuing in Europe and North America from the 1990s, which led to its being ranked as one of the best-known trade marks in the world. Accordingly, the Board of Appeal was entitled to find that such a presence of the mark ZARA in the main commercial areas of cities throughout the world, the commercial success of that mark and the recognition by a significant part of the public in several Member States of the European Union, evidenced by documents dating from less than five years after the date of filing of the mark applied for, were capable of reflecting the situation as it was on that date, within the meaning of the case-law cited in paragraph 23 above.
37      The same considerations apply with regard to the decisions of national courts on which the Board of Appeal relied and which are subsequent to the filing date of the mark applied for. Thus, the Board of Appeal was fully entitled to take into account, for the purposes of its assessment of the reputation of the earlier mark, the fact, noted by the applicant itself, that a national court had held that that mark had a reputation in April 2009, that is to say, less than one year after the filing date of the mark applied for.
38      As regards the Board of Appeal’s consideration of the intervener’s activities in sectors other than those relating to goods in Class 25, such as the household and decoration goods sector, under the mark ZARA HOME, from 2003, and the restaurant sector through the opening of the ZARA cafés in 2023, it must be observed that the Board of Appeal took those activities into account among numerous other factors which it regarded as attesting to the intensive and long-standing nature of the use of the mark ZARA, in the context of its examination of the reputation of the earlier mark.
39      In the light of the foregoing, the Board of Appeal did not make an error of assessment when, on the basis of all the evidence in the file, it found that the earlier mark had a reputation for goods in Class 25 in a substantial part of the relevant territory of the European Union as at the filing date of the mark applied for.
The existence of a similarity between the signs at issue
40      As a preliminary point, it should be noted that the existence of a similarity between an earlier mark and a mark applied for is a precondition for the application both of Article 8(1)(b) of Regulation No 40/94 and of Article 8(5) of that regulation. That requirement presupposes that there are, in particular, elements of visual, phonetic 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 4 October 2017, Gappol Marzena Porczyńska v EUIPO – Gap (ITM) (GAPPOL), T‑411/15, not published, EU:T:2017:689, paragraph 148).
41      However, those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 40/94 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) of Regulation No 40/94 may be the consequence of a lesser degree of similarity between the earlier mark and the mark applied for, provided that it is sufficient for the relevant public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under Article 8(1)(b) of Regulation No 40/94 or under Article 8(5) thereof (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 53 and 54).
42      It follows that, in relation to the visual, phonetic and conceptual similarities, the comparison of the signs at issue must be based on the overall impression produced by the signs, taking account, inter alia, of their distinctive and dominant elements (see judgment of 25 January 2012, Viaguara v OHIM – Pfizer (VIAGUARA), T‑332/10, not published, EU:T:2012:26, paragraph 32 and the case-law cited).
43      In the present case, the marks to be compared are as follows:
–        the contested mark is the following figurative sign:
–        the earlier mark in respect of which reputation is claimed is the EU word mark ZARA.
44      In essence, the applicant submits that the Board of Appeal erred in finding that the signs at issue had a high degree of similarity, in that, in practice, it based its analysis solely on the word element ‘zara’ of the mark applied for.
–       The distinctive and dominant elements of the signs at issue
45      First, there is no need to call into question the Board of Appeal’s finding, in paragraph 56 of the contested decision, that the term ‘zara’ may be understood, at least by a part of the relevant public, as a female name and, moreover and in any event, in the absence of any link with the goods at issue, that word is distinctive in relation to those goods, a finding which, besides, is not disputed by the applicant.
46      Second, it must be stated that the word element of the sign applied for, ‘sublime’, is capable of being understood in several languages of the European Union as an adjective alluding to excellence or to a very high position in a scale of values which may relate to various characteristics, and not only to artistic or aesthetic characteristics, as the applicant claims. Therefore, the Board of Appeal correctly considered, in paragraph 58 of the contested decision, that the term ‘sublime’ would be understood as a term which is purely laudatory of the properties of the goods covered by the sign applied for and, accordingly, as being non-distinctive.
47      Third, as regards the word element of the sign applied for, ‘pasta’, it must be stated that, although it is attached to the word element ‘zara’ with which it forms a single word, as the applicant correctly points out, it is presented in lower-case letters, whereas the element ‘zara’ is written in upper-case letters. In view of that difference in the typeface and of the fact, noted by the Board of Appeal, that the public will be able easily to identify the terms ‘pasta’ and ‘zara’ within the word ‘pastazara’, the Board of Appeal was entitled to conclude, in paragraph 57 of the contested decision, that, since the word ‘pasta’ was descriptive of the goods covered by the sign applied for, that term, within the word element ‘pastazara’, was non-distinctive.
48      Fourth, as regards the figurative elements which enhance the word elements of the sign applied for, namely ‘pastazara’ and ‘sublime’, it must be noted that the applicant does not dispute, as such, the Board of Appeal’s assessments, in paragraph 60 of the contested decision, relating to the standard nature of the typefaces used and the slight stylisation of those elements.
49      Fifth, with respect to the figurative element depicting a woman carrying wheat with a rural landscape in the background, placed on the upper central part of the sign applied for, the Board of Appeal considered, in paragraph 61 of the contested decision, that it was devoid of distinctive character, in so far as it alluded to the goods covered by the mark applied for. The applicant submits that, contrary to what follows from the Board of Appeal’s assessments, those figurative elements of the sign applied for cannot be disregarded for the purposes of the comparison of the signs at issue.
50      In that regard, it must be observed that, as is apparent from paragraphs 48 and 49 above and contrary to what the applicant claims, the Board of Appeal did not, in its examination of the distinctive and dominant elements of the sign applied for, disregard the figurative elements of that sign. Thus, while it concluded that those elements could not be regarded as distinctive, it nevertheless highlighted the major role played by the word element ‘sublime’ on account of its size and central position.
51      However, it is necessary to examine whether the Board of Appeal was correct in concluding that the word element ‘zara’ was the only dominant element within the sign applied for, a finding which the applicant disputes.
52      It must be noted that the sign applied for contains a number of word and figurative elements, arranged within a dark rectangular background, partly with shading. In the upper part of that rectangular background, there is a rectangle in the centre, incorporating the image of a woman carrying a sheaf of wheat with a rural landscape in the background. Directly below there is an oval medallion surrounding the word element ‘pastazara’, of which the word ‘pasta’ is presented in lower-case letters and the word ‘zara’ appears in upper-case letters. In the lower part of the sign, there are, first, the word ‘sublime’, surrounded by a banner which runs diagonally across that part and, second, three vertical strokes, placed in the lower right-hand corner, which allude to steam rising from a dish of hot food.
53      It must therefore be stated that the various elements described above confer a certain degree of complexity on the sign applied for, within which the element ‘zara’, although identifiable, certainly does not appear in isolation or in a particularly noticeable manner.
54      It is true that the word element ‘pastazara’ is displayed within an oval decorative element, which emphasises it, and is located in the centre of the sign applied for. However, that word element is considerably smaller in size than the other elements present in the sign applied for. Consequently, the term ‘zara’ which forms part of it cannot, as such, be perceived as dominant in relation to the other elements of the sign applied for.
55      Furthermore, the large size and prominent positioning of both the rectangle with the image of the woman carrying a sheaf of wheat and the banner with the word ‘sublime’ readily stand out as figurative elements, having regard to the sign applied for as a whole.
56      It is true that the image of a woman carrying a sheaf of wheat with a rural landscape in the background was considered by the Court to be devoid of significant distinctive character for foodstuffs in relation to ‘pasta’ (judgment of 1 December 2021, Inditex v EUIPO – Ffauf Italia (ZARA), T‑467/20, not published, EU:T:2021:842, paragraph 139). However, in the present case, although it refers to foodstuffs, that image, which is of a considerable size and placed in the centre of the upper part of the sign applied for, will be clearly perceived by the relevant public.
57      Similarly, while the element ‘sublime’ is capable of being understood by the relevant public as being purely laudatory of the goods covered by the mark applied for, it must be stated that that element appears prominently, surrounded by a banner which runs diagonally across the lower half of the sign in question. That element will therefore be clearly perceived by the relevant public.
58      As regards the three strokes in the lower right-hand corner, to which the Board of Appeal did not refer and which have not been mentioned by the parties, it must be stated that they are merely banal decorative elements which do not attract particular attention within the sign applied for.
59      It follows from the foregoing considerations that, in the light of the sign applied for as a whole, taking into account the relative size and positioning of the various word and figurative elements of the sign, none of those elements can be perceived as being dominant. Consequently, the Board of Appeal made an error of assessment in finding that the term ‘zara’ was dominant within the sign applied for.
–       The visual, phonetic and conceptual comparison of the signs at issue
60      The applicant submits that the signs at issue have an extremely low degree of similarity from a visual, phonetic and conceptual standpoint, given that they share only 4 letters, while the sign applied for has 12 other letters and several other figurative elements with distinctive value within that sign.
61      It should be recalled that 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 (see judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43 and the case-law cited). 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).
62      First, as regards the visual comparison of the signs at issue, it must be observed that the conclusion, in paragraph 62 of the contested decision, according to which those signs are similar to at least an average degree, is based on the finding that the word element ‘zara’ is distinctive and common to both signs and that it is dominant in the sign applied for, whereas it constitutes the entirety of the earlier mark.
63      It is true that the word element ‘zara’ constitutes the entirety of the earlier mark. Furthermore, as has been found in paragraph 45 above, that element is distinctive in respect of both of the signs at issue.
64      However, as has been stated in paragraph 59 above, the term ‘zara’ cannot be regarded as being dominant within the sign applied for. Moreover, the other word elements of the sign applied for and the figurative elements thereof cannot be regarded as secondary in relation to the word element ‘zara’ in the overall impression created by that sign, for the reasons set out in paragraphs 52 to 59 above. The comparison made by the Board of Appeal in paragraph 62 of the contested decision is based, in essence, on the incorrect finding that the word element ‘zara’ of the sign applied for is dominant, whereas the other elements of that sign are secondary in the overall impression created by that sign.
65      In those circumstances, the Board of Appeal made an error of assessment when it concluded that the signs at issue were visually similar to at least an average degree on account of their common element ‘zara’.
66      In the light of the overall impression created by the sign applied for, taking into account all its components, including all the figurative elements, the word element ‘sublime’ and the term ‘zara’, which is attached to the term ‘pasta’, on the one hand, and by the earlier mark ZARA, on the other, it must be concluded that the signs at issue are visually similar to a low degree.
67      Second, as regards the phonetic comparison of the signs at issue, it must be pointed out, as the Board of Appeal did in paragraph 63 of the contested decision, that the relevant public is likely not to pronounce the word element ‘sublime’ of the sign applied for. With respect to the word element ‘pastazara’, although, as has been stated in paragraph 47 above, the relevant public is likely to identify the term ‘pasta’ within the element ‘pastazara’, which is not distinctive in relation to the goods covered by that sign, it is not clear that the word element as a whole will not be pronounced as such by the relevant public, as the separation of the word element into two parts entails an additional mental exercise for the relevant public which, moreover, has only an average level of attention, since everyday consumer goods are involved. In those circumstances, the Board of Appeal made an error of assessment when it concluded that the signs at issue were phonetically similar to a high degree. It must be held that they are phonetically similar to only an average degree on account of the pronunciation of their common element ‘zara’.
68      Third, as regards the conceptual comparison of the signs at issue, it must be observed, as the Board of Appeal did in paragraph 64 of the contested decision, that the two signs share the term ‘zara’, which may be recognised by a part of the relevant public, as has been stated in paragraph 45 above. By contrast, although the other components of the sign applied for allude to the goods covered by that sign, they cannot, however, be regarded as secondary and would therefore be capable of qualifying the conceptual similarity between the signs at issue on account of the common term ‘zara’. Thus, the Board of Appeal made an error of assessment by disregarding the fact that, for the part of the relevant public which does not understand the term ‘zara’, that public will, at the very least, be able to identify the term ‘pasta’ and the components of the sign applied for as alluding to traditional agriculture, and in particular to the production of wheat, whereas the earlier mark does not carry any meaning. It therefore erred in concluding that the signs were conceptually similar to an average degree, for a part of the relevant public which understands the term ‘zara’, or that their comparison was neutral, for the part of the relevant public which does not understand the term ‘zara’, in so far as the sign applied for contains other elements which are not present in the mark with a reputation and which are capable of conveying a meaning for the whole of the relevant public. Therefore, it must be concluded that the signs at issue are conceptually similar to a low degree.
69      Accordingly, it must be held that the Board of Appeal’s conclusion, in paragraph 65 of the contested decision, as to the high degree of similarity of the signs, is vitiated by an error of assessment. That conclusion is based, in part, on the finding that the earlier mark has a reputation, which is not a relevant criterion for the purposes of the comparison of the signs. Furthermore, that conclusion is based on an assessment of the signs as a whole which underestimates the impact of the various elements present in the sign applied for, which led the Board of Appeal to assess incorrectly the degree of visual, phonetic and conceptual similarity of the signs at issue, as is apparent from paragraphs 66 to 68 above.
The existence of a link between those signs
70      In essence, the applicant submits that the Board of Appeal erred in considering that the relevant public could establish a link between the earlier mark and the mark applied for.
71      The Board of Appeal considered that the relevant public would make a connection between the signs at issue on the basis of a number of factors which it set out in paragraphs 68 to 79 of the contested decision. Thus, it concluded, in paragraph 82 of the contested decision, that the relevant public, when encountering the mark applied for, would be likely to associate that mark with the earlier mark ZARA, which is reputed for goods in Class 25, and to establish a link between those marks.
72      It must be recalled that, as regards the fourth condition defined in Article 8(5) of Regulation No 40/94, the types of injury referred to in that provision, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, on account of which the relevant public makes a connection between those two marks. In other words, the relevant public establishes a link between them even though it does not confuse them. The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the mark applied for would call the earlier mark to mind is tantamount to the existence of a link between those marks (see judgment of 28 February 2024, BERTRAND PUMA La griffe boulangère, T‑184/23, not published, EU:T:2024:133, paragraph 19 and the case-law cited).
73      Whether such a link exists must be assessed globally, taking into account all factors relevant to the circumstances of the case. Those factors include the degree of similarity between the marks at issue; the nature of the goods or services for which the marks at issue are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (see, to that effect, judgments of 16 December 2010, Rubinstein v OHIM – Allergan (BOTOLIST), T‑345/08 and T‑357/08, not published, EU:T:2010:529, paragraph 66, and of 22 January 2015, Tsujimoto v OHIM – Kenzo (KENZO), T‑322/13, not published, EU:T:2015:47, paragraph 34 and the case-law cited; see also, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 40 to 42).
74      It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the link between the marks at issue must be examined.
75      In the first place, as regards the similarity of the signs in question, it must be recalled that it has been held in paragraphs 62 to 69 above that those signs are visually similar to a low degree, phonetically similar to an average degree and conceptually similar to a low degree, the Board of Appeal’s assessment as to the high degree of similarity of the signs at issue as a whole, in paragraph 65 of the contested decision, being vitiated by an error.
76      Furthermore, it has been held in paragraph 59 above that none of the elements making up the sign applied for can be perceived as being dominant and that, consequently, the Board of Appeal’s assessment that the term ‘zara’ was dominant within the sign was also incorrect.
77      In those circumstances, it must be held that the Board of Appeal’s assessment in paragraph 69 of the contested decision as to the high degree of similarity between the signs at issue, as a relevant factor for the purposes of the examination of the link between those signs, is incorrect.
78      It is true that, as is apparent from the case-law cited in paragraph 41 above, the types of injury referred to in Article 8(5) of Regulation No 40/94 may be the consequence of a lesser degree of similarity between the earlier mark and the mark applied for, provided that it is sufficient for the relevant public to make a connection between those marks. However, the mere fact that the mark with a reputation is wholly included in one of the elements making up the mark applied for, as was noted by the Board of Appeal in paragraph 69 of the contested decision, is not, in itself, sufficient to conclude that the relevant public would make a connection between those marks.
79      In the second place, it has been held, in paragraph 39 above, that the earlier mark ZARA had a reputation for goods in Class 25 in a substantial part of the relevant territory of the European Union as at the filing date of the mark applied for. In those circumstances, it is necessary to reject the applicant’s arguments contesting the Board of Appeal’s assessment, in so far as they are limited to claiming that the intervener did not prove the existence of such a reputation as at that date. Furthermore, having regard to all the evidence set out in paragraphs 28 to 35 above, it must be held that the Board of Appeal was fully entitled to consider, in paragraphs 70 and 71 of the contested decision, that the earlier mark had a high degree of reputation in relation to goods in Class 25 as at the filing date of the mark applied for.
80      In the third place, and while the distinctive character of the earlier mark must be assessed in the light of the goods which it covers, it is sufficient to recall that the term ‘zara’ has no link with those goods. Moreover, having regard to the considerations set out in paragraphs 28 and 36 above, it must be held that the Board of Appeal did not make an error of assessment when it stated, in paragraph 73 of the contested decision, that the mark ZARA was among the most recognised brands worldwide, at least from 2007.
81      In the fourth place, as is apparent from paragraph 21 above, the Board of Appeal correctly found that the public at large within the European Union constituted the relevant public in the present case. Similarly, there is no need to call into question the Board of Appeal’s assessment, in paragraphs 74 and 75 of the contested decision, that the goods in Class 25 covered by the earlier mark and those in Class 30 covered by the mark applied for were aimed at the public at large with an average level of attention.
82      As regards the degree of closeness or dissimilarity between the relevant goods, it must be noted that the Board of Appeal acknowledged, in paragraph 76 of the contested decision, that the goods covered by the marks at issue were dissimilar and that they had nothing in common, as they were neither complementary nor in competition and were usually offered by different companies active in different sectors, namely the fashion industry and the food industry. There is no need to call into question that assessment, which concurs with the applicant’s arguments.
83      With regard to the Board of Appeal’s assessments, made in paragraphs 77 and 78 of the contested decision and referring to the current market trend whereby players in the fashion sector, in particular with respect to luxury brands, are increasingly active in other sectors, such as the restaurant, hotel, decoration or furniture sectors, it must be observed that the Board of Appeal specifically points out that this is a current trend whereby different sectors, such as the fashion sector and the food sector, converge in order to offer consumers immersive experiences and new commercial strategies based on collaborations or co-branding. However, the Board of Appeal does not rely on any evidence from which it could be concluded that such a trend was relevant in June 2008, when the application for registration was filed, which is the relevant date for the purpose of assessing whether a link between the marks exists.
84      Furthermore, the Board of Appeal did not, in the contested decision, explain the relevance of the example regarding a multinational furniture goods chain which, it is claimed, began providing restaurant services and offering food in its stores, in relation to the possible connection between the fashion and pasta sectors. Similarly, the Board of Appeal did not indicate why the fact that the intervener launched its household linen and decoration line in 2003 under the mark ZARA HOME would support its conclusion that it could not be ruled out that the mark applied for, which covered pasta, might call to mind the mark ZARA, which is reputed for fashion goods.
85      In that regard, it should be recalled that, although the existence of a similarity between the goods and services covered by the marks at issue does not constitute a precondition for the application of the relative ground for refusal laid down in Article 8(5) of Regulation No 40/94, the nature and the degree of closeness of the goods or services concerned constitute factors that are relevant in order to assess whether a link between those marks exists (see judgment of 7 December 2022, Puma v EUIPO – Vaillant (Puma), T‑623/21, not published, EU:T:2022:776, paragraph 68 and the case-law cited).
86      Even if the relevant public as regards the goods or services for which the marks at issue are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 49).
87      In the present case, the Board of Appeal correctly found, in paragraph 76 of the contested decision, that the goods at issue had nothing in common, as they were neither complementary nor in competition and were usually offered by different companies active in different sectors. By contrast, it considered, in paragraph 79 of that decision, that, due to current trends in the fashion sector, it could not be ruled out that the contested sign might bring the earlier mark to the mind of the relevant public, particularly since the goods covered by the marks at issue were intended, inter alia, for the general public. As is apparent from paragraphs 83 and 84 above, the Board of Appeal’s findings relating to trends in the fashion sector in June 2024 – the date of the contested decision – and concerning sectors other than the food sector, are not sufficient to establish, in the absence of other relevant evidence, that, in June 2008, the mark applied for in respect of pasta offered in establishments such as grocery shops or supermarkets, brought to mind, for the relevant public, a mark covering fashion goods generally on sale in specialist shops in that sector.
88      In that regard, it should be borne in mind that the mere fact that the earlier mark has a high degree of reputation for certain specific categories of goods or services does not necessarily imply that there is a link with a similar mark (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 64). There is no provision of Regulation No 40/94 which provides, in that regard, for any presumption with regard to trade marks that have an exceptional reputation, which the EU legislature has not made subject to special treatment (judgment of 28 February 2024, BERTRAND PUMA La griffe boulangère, T‑184/23, not published, EU:T:2024:133, paragraph 58).
89      Thus, while it is common ground that the mark ZARA had a high degree of reputation for goods in Class 25, acquired, in particular, through a prominent presence in stores bearing exclusively that mark in exceptional locations in many cities throughout the world, as has been stated in paragraph 31 above, that did not necessarily imply that the relevant public would establish a link with the mark applied for in respect of pasta in Class 30, which was on sale in establishments such as grocery shops and supermarkets offering a multitude of goods marketed under numerous marks.
90      In the light of the foregoing, it must be held that, in its assessment of all the factors that are relevant in order to establish whether a link exists, for the purposes of Article 8(5) of Regulation No 40/94, the Board of Appeal erred in considering that the signs at issue had a high degree of similarity, as has been stated in paragraph 77 above. Furthermore, even though the Board of Appeal correctly relied on the high degree of reputation of the mark ZARA for goods in Class 25 and on its distinctive character in relation to those goods, as has been observed in paragraphs 79 and 80 above, it did not correctly take into account, in the light of the circumstances of the present case, the low degree of closeness between fashion goods in Class 25 covered by the mark ZARA and pasta in Class 30 covered by the mark applied for.
91      In those circumstances, the Board of Appeal made an error of assessment in concluding that the relevant public would be likely to establish a link between the marks at issue, for the purposes of Article 8(5) of Regulation No 40/94.
92      Accordingly, the third part of the single plea in law relied on by the applicant, disputing the existence of a link between the marks at issue, must be upheld, without it being necessary to examine the fourth part of that plea, relating to the existence of a risk of unfair advantage being taken of the repute of the earlier mark, in so far as the existence of a link between the marks at issue is essential for a finding of such a risk, and therefore for satisfying the fourth condition for the application of Article 8(5) of Regulation No 40/94, for the purposes of the case-law cited in paragraph 72 above.
93      In view of the cumulative nature of the conditions laid down in Article 8(5) of Regulation No 40/94, the conclusion in paragraph 91 above is sufficient in order to uphold the single plea in law raised by the applicant and, consequently, to annul the contested decision.
94      However, the Court considers it appropriate to examine the fifth part of the single plea, relating to the existence of due cause for the use of the mark applied for.
The existence of due cause for using the mark applied for
95      In essence, the applicant claims that it has used signs containing the word element ‘pastazara’ for several years, which constitutes due cause for the use of the mark applied for.
96      In that regard, it must be noted that whether there is a due cause which makes it possible to use a mark which adversely affects a mark with a reputation is a matter which must be interpreted restrictively (judgment of 16 March 2016, The Body Shop International v OHIM – Spa Monopole (SPA WISDOM), T‑201/14, not published, EU:T:2016:148, paragraph 65).
97      Moreover, the concept of ‘due cause’ may not only include objectively overriding reasons but may also relate to the subjective interests of a third party using a sign which is identical or similar to the mark with a reputation (see, by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 45).
98      Thus, as is clear from Article 8(5) of Regulation No 40/94, the user of a sign similar to a mark with a reputation may rely on ‘due cause’ for the purpose of using that sign, that being an expression of the general objective of that regulation, which is to strike a balance between, on the one hand, the interests of the proprietor of a trade mark in safeguarding the essential function of that mark and, on the other, the interests of a third party in using, in the course of trade, such a sign for the purpose of denoting the goods and services that it markets (see judgment of 30 May 2018, Tsujimoto v EUIPO, C‑85/16 P and C‑86/16 P, EU:C:2018:349, paragraph 90 and the case-law cited).
99      Furthermore, it is apparent from the case-law that the use by a third party of a sign similar to a mark with a reputation may be classified as due cause, within the meaning of Article 8(5) of Regulation No 40/94, if it is demonstrated, first, that that sign was being used before the abovementioned mark with a reputation was filed and, second, that such use is in good faith, which is determined by taking into account, in particular, how that sign has been accepted by, and what its reputation is with, the relevant public, the degree of closeness between the goods and services at issue and the economic and commercial significance of the use of the sign for the goods in question (see, to that effect and by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 60).
100    It is in the light of the foregoing considerations that it must be examined whether, even if it were established that the relevant public would make a connection between the signs at issue and that the mark applied for would take unfair advantage of the repute of the earlier mark, the Board of Appeal was entitled to conclude that there was no due cause for using the mark applied for, which contains the word element ‘pastazara’.
101    In the first place, in so far as the applicant complains that the Board of Appeal failed to take into account the items of evidence relating to extracts from the commercial register and trade mark registrations which it submitted, it must be observed that it is apparent from paragraphs 99 to 106 of the contested decision that the Board of Appeal took into account the various company names of the applicant, such as PASTAZARA Sas di Dalla Costa Roberto & C., from 1978, and PASTAZARA SpA, from 1988. Furthermore, it took into account the registrations of the marks ZARA and pastaZARA filed by the applicant since the 1960s, noting the example of the Italian registration of the figurative mark pastaZARA, filed in 1968.
102    In addition, it must be pointed out that all the marks of which the applicant is the proprietor, examined by the Board of Appeal in paragraphs 101 to 103 of the contested decision, contain the word element ‘pastazara’, which is identical or very similar to the word element which appears in the mark applied for and on which the Board of Appeal based its conclusion relating to the similarity of the signs at issue. Moreover, a significant proportion of the figurative marks noted by the Board of Appeal contain the figurative element depicting a woman carrying wheat with a rural landscape in the background, which is present in the mark applied for.
103    Consequently, it must be held that signs displaying the word element ‘pastazara’ were being used by the applicant to market its goods before the earlier mark ZARA was filed, namely, on 3 July 2001, and even before the expansion of that mark in the 1980s and 1990s, which led to the acquisition of its reputation, as has been noted in paragraph 36 above.
104    Such circumstances differ significantly from those which were relevant in the case that gave rise to the judgment of 6 July 2012, Jackson International v OHIM – Royal Shakespeare (ROYAL SHAKESPEARE) (T‑60/10, not published, EU:T:2012:348), cited by the Board of Appeal in paragraph 104 of the contested decision. Contrary to what the Board of Appeal incorrectly found, in the present case, in order to claim that there was due cause for using the mark applied for, the applicant submitted evidence not of past use of the mark applied for, but, first, of the fact that such a mark was based on other marks of which the applicant was the proprietor, such as the figurative marks pastaZARA, and on the name ‘Zara’, in so far as it is linked to its identity and history, and, second, of the fact that its goods had been marketed under those figurative marks for decades.
105    In the second place, it is apparent from paragraph 106 of the contested decision that the Board of Appeal took into account the evidence submitted by the applicant in order to prove the use in good faith of signs containing the word element ‘pastazara’, relying in particular on its history, the various national and international registrations of trade marks containing that word element ‘pastazara’, and invoices, packaging, catalogues and leaflets of the applicant showing variants of the figurative mark pastaZARA. Thus, the Board of Appeal concluded that that evidence showed that the use of the name ‘Zara’ by the applicant related to the actual origin of its business in the Dalmatian city of Zara, now Zadar (Croatia), in the 1930s, continuing until 1943, and that the applicant had already used signs containing the name ‘Zara’ to denote pasta or similar goods, inter alia in Europe, before the filing date of the earlier mark in 2001 and even before the first use of the mark ZARA by the intervener in 1975. There is no need to call into question that assessment, which, moreover, is not disputed.
106    In the third place, it is apparent from the evidence referred to in paragraph 102 above that the applicant was the proprietor of international registrations of trade marks that contained the word element ‘pastazara’ covering a significant number of territories of States within the European Union, namely Austria, Germany, Benelux, Bulgaria, Croatia, the Czech Republic, France, Hungary, Portugal, Romania, Slovakia and Slovenia. Furthermore, the invoices, packaging, catalogues and leaflets submitted by the applicant, to which the Board of Appeal referred, in paragraph 103 of the contested decision, show the marketing of pasta under signs containing the word element ‘pastazara’ in the territory of several of those States as well as in Denmark, Estonia, Greece, Ireland, Italy, Lithuania, Latvia, Poland and Sweden. That evidence demonstrates a high degree of acceptance of signs containing the word element ‘pastazara’ in a significant part of the European Union, for the purposes of the case-law cited in paragraph 99 above.
107    In the fourth place, the use of the name ‘Zara’ by the applicant, linked to its identity and history, and the various marks containing the word element ‘pastazara’ which it registered and used for the marketing of its goods, noted in paragraphs 103 and 106 of the contested decision, attest to the economic and commercial significance of the use of signs containing the word element ‘pastazara’ for the applicant, within the meaning of the case-law cited in paragraph 99 above.
108    In the fifth place, as regards the degree of closeness between the goods at issue, it must be recalled, as has been stated in paragraph 82 above, that the Board of Appeal acknowledged that the fashion goods covered by the mark with a reputation and the pasta covered by the mark applied for have nothing in common, as they are neither complementary nor in competition and are usually offered by different companies active in different sectors.
109    In the sixth place, the Board of Appeal considered, in paragraph 107 of the contested decision, that there was in the present case no due cause for the use of the mark applied for, since the applicant had not demonstrated that the use of the term ‘zara’ was necessary for the marketing of the goods covered by the mark applied for, there was no prior agreement with the intervener authorising the use of that mark, and there was no evidence concerning the value of the investments in the promotion and advertising of that mark or its acceptance by the relevant public.
110    In that regard, first of all, as the applicant in essence submits, it is not apparent from the case-law that the concept of ‘due cause’ is conditional on the use of the sign being necessary for the marketing of the goods in question. Indeed, in the case which gave rise to the judgment of 16 March 2016, SPA WISDOM (T‑201/14, not published, EU:T:2016:148, paragraph 66), in response to the argument that the term ‘spa’, within the sign in question, had become descriptive or generic for the purpose of identifying cosmetic goods, the Court held that it had not been established that the use of the term ‘spa’ had become necessary for the marketing of those goods. Such circumstances differ from those that are relevant in the present case, in that it is not a question of the use of a term that has allegedly become generic, but of the use of a name that is closely linked to the applicant’s history and to the marketing of its goods.
111    Next, it must be observed that it does not follow from the case-law referred to in paragraph 99 above that the concept of ‘due cause’ is conditional on a finding as to a specific level of recognition of the sign in question, on a given level of investment and promotional effort or on the enjoyment of a market share. It is apparent from that case-law that establishing whether there is due cause forms part of an overall examination of all the relevant factors which seeks to determine whether the sign in question was actually being used on the market before the mark with a reputation was filed and whether that use was in good faith (see, to that effect and by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 60).
112    That being so, the evidence examined by the Board of Appeal in paragraphs 99 to 106 of the contested decision, as has been pointed out in paragraph 106 above, demonstrates the applicant’s activities relating to marketing of pasta under various marks containing the word element ‘pastazara’ in a significant part of the European Union. Furthermore, the actions brought by the applicant before various national courts, relying on signs containing the word element ‘pastazara’, to which the Board of Appeal refers in paragraph 105 of the contested decision, attest to the applicant’s efforts to defend its use of those signs.
113    Lastly, the Board of Appeal erred in rejecting as ineffective the applicant’s claims relating to its good faith. The good faith of a person alleging due cause for the use of a sign similar to a mark with a reputation is one of the factors that are relevant in the context of the overall examination to be carried out for the purposes of that condition laid down in Article 8(5) of Regulation No 40/94 (see, to that effect and by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, C‑65/12, EU:C:2014:49, paragraph 56).
114    In the light of the foregoing, it must be held that, although the Board of Appeal did not completely disregard the evidence relating to the applicant’s use of signs containing the element ‘pastazara’, some of which had been registered for decades in respect of foodstuffs in Class 30, and correctly observed that the applicant’s use of the name ‘Zara’ related to the actual origin of its business, the Board of Appeal did not draw the appropriate conclusions from those findings in its assessment of the factors that are relevant in order to establish whether there is due cause, within the meaning of Article 8(5) of Regulation No 40/94.
115    Having regard, first, to the applicant’s use of signs containing the word element ‘pastazara’ before the mark with a reputation was filed, as has been found in paragraph 103 above, and, second, to the evidence capable of attesting to the good faith of that earlier use, for the purposes of the case-law cited in paragraph 99 above, such as the absence of closeness between the goods at issue, established in paragraph 76 of the contested decision, and the various items of evidence, referred to in paragraphs 99 to 106 of the contested decision, relating to the history of the applicant’s activities and their connection with the city formerly known as Zara, the extent of the marketing of the goods under signs containing the word element ‘pastazara’ in a significant part of the European Union, the applicant’s efforts to defend that use and the economic and commercial significance of the use of those signs for the applicant’s activities, the Board of Appeal erred in concluding that the applicant had not established the existence of due cause for the use of the word element ‘pastazara’ within the mark applied for, within the meaning of Article 8(5) of Regulation No 40/94.
116    Accordingly, in addition to the decision to uphold the third part of the single plea in law relied on by the applicant, as set out in paragraph 91 above, it is also appropriate, in any event, to uphold the fifth part of that plea and, consequently, to annul the contested decision.
Costs
117    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. Moreover, 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.
118    Since EUIPO and the intervener have been unsuccessful and a hearing has been held, they must be ordered to bear their own costs and to pay, in equal parts, the costs incurred by the applicant, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 June 2024 (Case R 1576/2023-5);
2.      Orders EUIPO to bear its own costs and to pay one half of those incurred by Ffauf Italia SpA;
3.      Orders Industria de Diseño Textil, SA to bear its own costs and to pay one half of those incurred by Ffauf Italia.
Marcoulli
Tomljenović
Spangsberg Grønfeldt
Delivered in open court in Luxembourg on 10 September 2025.
V. Di Bucci
R. Mastroianni
Registrar
President
*      Language of the case: English.
1      The present judgment is published in extract form.