JUDGMENT OF THE GENERAL COURT (Second Chamber)
1 December 2021 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark ZARA – Earlier international word mark LE DELIZIE ZARA and earlier national figurative mark ZARA – Proof of genuine use of the earlier marks – Article 42(2) and (3) of Regulation (EC) No 207/2009 (now Article 47(2) and (3) of Regulation (EU) 2017/1001) – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001))
In Case T‑467/20,
Industria de Diseño Textil, SA (Inditex), established in Arteixo (Spain), represented by G. Marín Raigal and E. Armero Lavie, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by H. O’Neill and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ffauf Italia SpA, established in Riese Pio X (Italy), represented by P. Creta, A. Lanzarini, B. Costa and M. Lazzarotto, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 8 May 2020 (Case R 2040/2019-4), relating to opposition proceedings between Ffauf Italia and Inditex,
THE GENERAL COURT (Second Chamber),
composed of V. Tomljenović, President, F. Schalin (Rapporteur) and P. Škvařilová-Pelzl, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the application lodged at the Court Registry on 22 July 2020,
having regard to the response of EUIPO lodged at the Court Registry on 16 October 2020,
having regard to the response of the intervener lodged at the Court Registry on 16 October 2020,
further to the hearing on 29 June 2021,
gives the following
Judgment
Background to the dispute
1        On 5 March 2010, the applicant, Industria de Diseño Textil, SA (Inditex), filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2        Registration as a mark was sought for the word sign ZARA.
3        The goods and services in respect of which registration was sought are in, inter alia, Classes 29 to 32, as well as Classes 35 and 43 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 correspond, for each of those classes, to the following description:
–        Class 29: ‘Preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; milk products; edible oils and fats’;
–        Class 30: ‘Rice, tapioca, sago; flour and preparations made from cereals, bread, pastry; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; rice-based snack food’;
–        Class 31: ‘Fresh vegetables’;
–        Class 32: ‘Fruit juices’;
–        Class 35: ‘Retailing and wholesaling in shops, selling via global computer networks, by catalogue, by mail order, by telephone, by radio and television and via other electronic means of preserved, frozen, dried and cooked fruits and vegetables, edible oils, rice, flour and preparations made from cereals, bread, vinegar, sauces (condiments)’;
–        Class 43: ‘Restaurant services (food), self-service restaurants, cafeterias’.
4        The
trade mark application was published in Community Trade Marks Bulletin
No 113/2010 of 22 June 2010.
5        On 22 September 2010, the intervener, Ffauf Italia SpA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for, in particular in respect of the goods and services referred to in paragraph 3 above.
6        The opposition was based on 11 earlier marks, including:
–        the international registration designating the European Union of the word mark LE DELIZIE ZARA, filed on 23 July 2003 and renewed until 2023 under No 834 140, having effect in, inter alia, the United Kingdom for the purpose of designating ‘olive oil’ in Class 29 and ‘rice, breadsticks, balsamic vinegar, sauces for pasta’ in Class 30;
–        the Italian figurative mark ZARA, registered on 7 May 2004 and renewed until 2020 under No 928 997
for the purpose of designating ‘fresh, dry, preserved, deep-frozen, ready
to
use pasta, all products of Italian origin’ in Class 30, reproduced below:
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). In addition, as regards the earlier Italian figurative mark ZARA, the opposition was also based on Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).
8        On 17 June 2013, the applicant requested proof of genuine use of the earlier marks on which the opposition was based and in particular of the marks referred to in paragraph 6 above, in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001). Following that request, the Opposition Division invited the intervener to furnish that proof.
9        The intervener submitted the proof within the prescribed period.
10      On 19 December 2014, the Opposition Division partially upheld the opposition in so far as it was based on the earlier Italian figurative mark ZARA and the earlier international word mark LE DELIZIE ZARA, with the result that registration of the mark applied for was refused to the extent that it designated the goods and services in Classes 29 to 32 and 35 referred to in paragraph 3 above, holding that, in respect of those goods and services, it was appropriate to conclude that there was a likelihood of confusion.
11      On 9 and 16 February 2015, the applicant and the intervener, respectively, filed notices of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. The first of those appeals was registered under reference
R 359/2015-5 and the second under reference
R 409/2015-5.
12      By decision of 2 February 2018, first, the Fifth Board of Appeal of EUIPO dismissed Appeal
R 359/2015-5 brought by the applicant, and confirmed the decision of the Opposition Division in so far as the opposition had been upheld in respect of the goods in Classes 29 to 32 and the services in Class 35 referred to in paragraph 3 above. Secondly, the Board of Appeal partially upheld Appeal
R 409/2015-5 brought by the intervener, and annulled the decision of the Opposition Division in so far as it had rejected the opposition for the ‘restaurant services (food), self-service restaurants [and] cafeterias’ in Class 43 referred to in paragraph 3 above.
13      Following an appeal brought by the applicant, the Court, by judgment of 8 May 2019, Inditex v EUIPO – Ffauf Italia (ZARA) (T‑269/18, not published, EU:T:2019:306), annulled the decision of 2 February 2018 of the Fifth Board of Appeal of EUIPO on the basis of a plea involving a matter of public policy, raised of its own motion, namely the inadequacy of the statement of reasons.
14      In particular, in paragraph 55 of the judgment of 8 May 2019, ZARA (T‑269/18, not published, EU:T:2019:306), the Court noted that the analysis carried out by the Fifth Board of Appeal of EUIPO and the conclusion reached by the latter, with regard to a possible alteration of the distinctive character of the earlier marks, were equivocal and imprecise and did not enable it to review the legality of the decision referred to it regarding that aspect, which was essential to the scheme of the decision.
15      Similarly, in paragraph 83 of the judgment of 8 May 2019, ZARA (T‑269/18, not published, EU:T:2019:306), the Court found that the decision of 2 February 2018 of the Fifth Board of Appeal of EUIPO did not make it possible to understand the grounds on which that Board had found that the evidence provided by the intervener demonstrated, first, that proof of genuine use of the earlier Italian figurative mark ZARA had been adduced in respect of the goods in Class 30 referred to in paragraph 6 above, and, second, that proof of genuine use of the earlier international word mark LE DELIZIE ZARA had been adduced in respect of ‘tomato puree, tomato juice for cooking [and] olive oil’ in Class 29, as well as in respect of ‘rice, flour and preparations made from cereals, vinegar [and] sauces (except salad dressings)’ in Class 30. The Court therefore found that it was not in a position to review the legality of the Board of Appeal’s assessments regarding that key aspect.
16      Following delivery of the judgment of 8 May 2019, ZARA (T‑269/18, not published, EU:T:2019:306), the case was referred back to the Fourth Board of Appeal of EUIPO under reference
R 2040/2019-4.
17      By decision of 8 May 2020 (‘the contested decision’), the Fourth Board of Appeal of EUIPO partially upheld the appeal against the decision of the Opposition Division, after assessing whether there was a likelihood of confusion between, on the one hand, the mark applied for and, on the other, the earlier rights represented by the earlier international word mark LE DELIZIE ZARA, in so far as it had effects in, inter alia, the United Kingdom, and the earlier Italian figurative mark ZARA.
18      First of all, with regard to the request for proof of genuine use of the earlier rights relied on in support of the opposition, the Board of Appeal found that, as regards the earlier international word mark LE DELIZIE ZARA, having effect in, inter alia, the United Kingdom, such a request was inadmissible in so far as the designation of the United Kingdom for that registration had been accepted for less than five years at the date of publication of the application for registration of the mark applied for. In respect of the request for proof of genuine use of the earlier Italian figurative mark ZARA, the Board of Appeal found that the applicant had provided sufficient indications as to
the place, period, nature and extent of its use in order to confirm that it had been put to genuine use in respect of ‘dry pasta of Italian origin’.
19      Next, the Board of Appeal acknowledged that there was a likelihood of confusion between the
marks at issue
concerning the goods and services in Classes 29, 30, 35 and 43 covered by the mark applied for.
20      First, as regards the definition of the relevant public, the Board of Appeal stated, in essence, that it was relying on the perception of the general public in Italy and in the United Kingdom and that, with regard to the goods in question, that public had neither a low nor a particularly high level of attention.
21      Secondly, as regards the comparison of the goods and services in question, the Board of Appeal observed that, contrary to the finding of the Opposition Division, the goods in Classes 31 and 32
covered by the
mark applied for were different from all the goods covered by the earlier marks. With regard to the goods and services in Classes 29, 30 and 35 covered by the mark applied for, the Board of Appeal noted, in essence, that they were, as the case may be, identical or similar to various degrees to the goods covered by the earlier marks. It also held that, as regards the services in Class 43 covered by the mark applied for, contrary to the finding of the Opposition Division, there was some similarity between those services and the goods covered by the earlier marks.
22      Thirdly, with regard to the comparison between the mark applied for and the earlier Italian figurative mark ZARA, the Board of Appeal took the view that they displayed a below-average degree of visual similarity and that they were phonetically identical. It also found that the conceptual comparison either was not possible or remained neutral. As regards the comparison between the mark applied for and the earlier international word mark LE DELIZIE ZARA, the Board of Appeal took the view that they were visually and phonetically similar to a below-average degree and that the conceptual comparison either was not possible or remained neutral.
23      Fourthly, the Board of Appeal found that there was a likelihood of confusion between the mark applied for and the earlier marks, within the meaning of Article 8(1)(b) of Regulation 2017/1001, in respect of the goods and services covered by those marks that had been found to be identical or similar to various degrees.
24      Fifthly, the Board of Appeal stated that the conclusion it had reached as regards the existence of a likelihood of confusion would not be different in respect of the other earlier rights relied on by the intervener in support of the opposition.
25      Lastly, the Board of Appeal rejected the opposition in so far as it was based on Article 8(5) of Regulation 2017/1001, on the ground that the intervener had not sufficiently proved the reputation of the earlier Italian figurative mark ZARA.
26      Consequently, the Board of Appeal partially annulled the decision of the Opposition Division and allowed the application for registration of the mark applied for in respect of the ‘fresh vegetables’ and ‘fruit juices’ in Classes 31 and 32, each party being ordered to bear its own costs as incurred in the opposition and appeal proceedings.
Forms of order sought
27      The applicant claims that the Court should:
–        partially annul the contested decision in so far as it upheld the opposition for the goods and services in Classes 29, 30, 35 and 43;
–        order EUIPO and, as the case may be, the intervener, to pay the costs.
28      EUIPO and the intervener contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
29      Given the date on which the application for registration of the mark applied for was filed, namely 5 March 2010, 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 207/2009 (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 present dispute is governed by the procedural provisions of Regulation 2017/1001. Lastly, the provisions governing proof of use derive from Rule 22(2) and (3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (now Article 10(2) and (3) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)).
30      Accordingly, in the present case, as regards the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to the proceedings in their written pleadings to either Article 8(1)(b) or Article 47(2) and (3) of Regulation 2017/1001 must be understood as referring to either Article 8(1)(b) or Article 42(2) and (3) of Regulation No 207/2009.
Admissibility of the action
31      Without formally raising an objection of inadmissibility under Article 130(1) of the Rules of Procedure of the General Court, the intervener pleads, in its response, that the action is inadmissible on the ground that it was not brought within the prescribed period. More specifically, it argues that, first, the applicant did not bring the action within the time limits laid down in Article 72(5) of Regulation 2017/1001 and, second, the grant of a single extension on account of distance
of 10 days,
provided for by
Article 60 of the Rules of Procedure, is inapplicable to a transmission made via the e-Curia application.
32      It must be stated that, in accordance with Article 72(5) of Regulation 2017/1001, an action against a decision of a Board of Appeal of EUIPO must be brought before the General Court within two months of the date of notification of that decision. Furthermore, it is apparent from Article 60 of the Rules of Procedure that the procedural time limits for bringing actions before the Court are to be extended on account of distance by a single period of 10 days. According to the case-law, the time limit on account of distance, laid down in that article, applies to the bringing of an action against a
decision of EUIPO (judgment of 17 March 2015, Spa Monopole v OHIM – South Pacific Management (Manea Spa), T‑611/11, not published, EU:T:2015:152, paragraph 23).
33      Contrary to the intervener’s assertions, the single extension on account of distance of 10 days provided for by Article 60 of the Rules of Procedure applies to all the procedural time limits laid down by the Treaties, the Statute of the Court of Justice of the European Union and the Rules of Procedure, irrespective of the method of lodging the procedural document (paper version or by means of the e-Curia application) (order of 30 May 2018, PJ v EUIPO – Erdmann & Rossi (Erdmann & Rossi), T‑664/16, under appeal, EU:T:2018:517, paragraph 40).
34      In the present case, the contested decision was notified to the applicant on 12 May 2020. The period for bringing an action, including the extension on account of distance, therefore expired at midnight on 22 July 2020, in accordance with the rules for the calculation of time limits laid down in Article 58 of the Rules of Procedure.
35      Since the action was brought by the applicant on 22 July 2020, the plea of inadmissibility raised by the intervener must be rejected.
Admissibility of the documents submitted for the first time before the Court
36      EUIPO argues in its response that Annexes A 5 to A 8, A 12, A 13 and A 16 to the application are inadmissible. It asserts that those annexes contain documents which are being submitted for the first time before the Court and which are not covered by the exceptions to the principle that documents submitted for the first time before the Court are inadmissible, inasmuch as they do not prove a clear distortion of the facts, do not support or dispute the accuracy of a matter of common knowledge relevant to the contested decision, and do not constitute judicial or EUIPO decisions that have a purely illustrative purpose.
37      In addition, since the intervener produced at the hearing a certificate of renewal of registration of the earlier Italian figurative mark ZARA No 928 997 for a period of 10 years from 7 January 2021, the applicant has disputed the admissibility of that certificate of renewal of registration on the ground that it was submitted out of time.
38      It must be held, as EUIPO contends, that Annexes A 5 to A 8, A 12, A 13 and A 16 to the application are being submitted for the first time before the Court. Some of those annexes consist of
printouts and extracts from websites and a witness statement illustrating the fact that the applicant specialises in the manufacture and marketing of white-label goods and explaining the dry pasta production process (Annexes A 5 and A 8 to the application). The other annexes in question contain a survey on daily pasta consumption in Italy (Annex A 6) and
extracts from articles regarding the marketing reasons for the placement of foodstuffs in supermarkets and grocery stores (Annex A 7), as well as market surveys regarding the reputation and degree of knowledge of the mark ZARA (Annexes A 12 and A 13) and a decision of the Tribunale di Genova (District Court, Genoa, Italy) of 17 June 2019 concerning that reputation being taken into account in respect of services in Class 43 (Annex A 16).
39      Similarly, it is apparent from the file in the present case that the intervener is submitting Annexes B 5, B 9 and B 10 for the first time before the Court. Those annexes consist of website screenshots illustrating the use of jams and jellies as sauces for pasta (Annex B 5 to the
intervener’s response) and referring to companies which are proprietors of marks registered for foodstuffs which offer restaurant services under that mark (Annexes B 9 and B 10). EUIPO is also submitting for the first time before the Court an extract from a website relating to a restaurant which markets its own goods.
40      Those documents, which were produced for the first time before the Court, cannot be taken into consideration, with the exception of Annex A 16, which corresponds to the decision of the Tribunale di Genova (District Court, Genoa) of 17 June 2019. The purpose of the action before the Court is, in the present case, to review the legality of the contested decision for the purposes of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001), so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded and there is no need to assess their probative value (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).
41      As regards Annex A 16, corresponding to the decision of the Tribunale di Genova (District Court, Genoa) of 17 June 2019, it should be observed that, although it was produced for the first time before the Court, it is not strictly evidence but relates to national case-law, to which a party has, in principle, the right to refer, even after the procedure before EUIPO is complete (see, to that effect, judgments of 24 November 2005, ARTHUR ET FELICIE, T‑346/04, EU:T:2005:420, paragraph 20, and of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 16).
42      Lastly, as regards the certificate of renewal of registration of the Italian figurative mark No 928 997, it must be declared inadmissible, since the intervener has not put forward reasons which, exceptionally, would have been capable of justifying the delay in submitting it, within the meaning of Article 85(3) of the Rules of Procedure.
Substance
43      In support of the action, the applicant relies on two pleas in law. The first plea alleges infringement of Article 42(2) and (3) of Regulation No 207/2009, as well as
of
Rule 22(2) and (3) of Regulation No 2868/95. The second plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009.
44      At the hearing, the applicant raised a new plea, relating, in essence, to the impact of the withdrawal of the United Kingdom from the European Union on the possibility of a party continuing to rely on the rights of that State as earlier rights.
The new plea raised by the applicant at the hearing
45      The applicant claimed that, following the entry into force of the agreement on the withdrawal of the United Kingdom from the European Union, as provided for in Article 50 TEU, the United Kingdom had become a non-Member country and the earlier rights of that State could no longer be relied on as from 1 January 2021, the end of the transition period, in order to serve as a basis for an opposition under Article 8(1)(b) of Regulation 2017/1001.
46      In those circumstances, the international registration designating the European Union of the word mark LE DELIZIE ZARA, filed on 23 July 2003 and renewed until 2023 under No 834 140, in so far as it has effects in, inter alia, the United Kingdom, has lapsed for the purpose of examining the legality of the contested decision and should no longer be regarded as an earlier right capable of being validly relied on.
47      However, among the 11 earlier rights relied on by the intervener in support of the opposition, the Board of Appeal examined whether there was a likelihood of confusion under Article 8(1)(b) of Regulation 2017/1001, taking into account, inter alia, the international registration in question.
48      At the hearing, the applicant submitted two additional items of evidence in support of that new plea for the first time before the Court.
49      The first of those items is Communication No 2/20 of the Executive Director of EUIPO of 10 September 2020 on the impact of
the United Kingdom’s withdrawal from the European Union on certain aspects of EUIPO’s practice, which states, in Article 11 thereof, that, ‘as from 1 January 2021, UK rights cease ex lege to be “earlier rights” for the purposes of inter partes proceedings (opposition, [invalidity of an EU trade mark],
[invalidity of a registered Community design]) [and that,] further, the territory and public of the [United Kingdom] will no longer be relevant for the purposes of assessing a conflict between an earlier EU right and a later EU [trade mark], EU [trade mark] application or [registered Community design]’ and, in Article 12 thereof, that, ‘regardless
of
their
procedural
status
at
first
instance,
actions
in
inter
partes proceedings based solely on UK rights that are still pending on 1 January 2021 will be dismissed for lack of valid basis[, with] each party [being] ordered to pay their own costs’.
50      The second of those items is the decision of the Fourth Board of Appeal of EUIPO of 14 June 2021 in Case
R 735/2021-4, in which it was held that an opposition filed on 26 February 2020 had become unfounded as a consequence of the withdrawal of the United Kingdom from the European Union, in so far as the earlier right relied on in support of the opposition was an earlier UK trade mark.
51      The applicant claimed that this was a new plea based on matters which had come to light in the course of the proceedings and that, before Communication No 2/20 of the Executive Director of EUIPO, the actual effects of the United Kingdom’s withdrawal from the European Union on opposition proceedings under Article 8(1)(b) of Regulation 2017/1001 were not known.
52      When questioned on the new plea raised by the applicant, EUIPO stated at the hearing that it was in any event unfounded, since the legality of the contested decision had to be examined by taking into consideration the date on which it had been adopted, namely, in the present case, a date falling before the end of the transition period linked to the withdrawal of the United Kingdom from the European Union, whereas the international registration designating the European Union of the word mark LE DELIZIE ZARA, having effects in, inter alia, the United Kingdom, could validly serve as a basis for an opposition under Article 8(1)(b) of Regulation 2017/1001.
53      According to EUIPO, the examination of whether the intervener has a continuing interest in bringing proceedings in the light of the earlier right in question should be examined only at the stage of the
judgment to be delivered in the present case.
54      EUIPO stated, however, that it did not oppose the production by the applicant of the two additional items of evidence in support of the new plea raised at the hearing.
55      The intervener, for its part, stated that the new plea raised by the applicant was out of time and had to be declared inadmissible.
56      In addition, it argued, as did EUIPO, that the legality of the contested decision had to be examined in the light of the circumstances prevailing when it was adopted.
57      Furthermore, while explaining that it was not formally raising a new argument, the intervener remarked that, even if the international registration designating the European Union of the word mark LE DELIZIE ZARA, having effects in, inter alia, the United Kingdom, had to be disregarded in the opposition proceedings, the opposition could also have been based on the earlier Italian marks which continued to have effects in the opposition proceedings, in particular the earlier Italian word mark LE DELIZIE ZARA, registered under No 926 811.
58      It should be noted that the existence of a relative ground for opposition must be assessed as at the time of filing of the application for registration of an EU trade mark against which a notice of opposition has been filed (see judgment of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE), T‑598/18, EU:T:2020:22, paragraph 19 and the case-law cited).
59      The fact that the earlier trade mark could lose the status of a trade mark registered in a Member State at a time after the filing of the application for registration of the EU trade mark, in particular following the possible withdrawal of the Member State concerned from the European Union, is in principle irrelevant to the outcome of the opposition (see judgment of 23 September 2020, Bauer Radio v EUIPO – Weinstein (MUSIKISS), T‑421/18, EU:T:2020:433, paragraph 35 and the case-law cited).
60      In the present case, the only relevant date for the purposes of the examination of the opposition filed by the intervener under Article 41 of Regulation No 207/2009 is therefore 5 March 2010, the date on which the application for registration of the mark applied for was filed and the date on which the United Kingdom was still a member of the European Union.
61      It follows that, in the present case, the withdrawal of the United Kingdom from the European Union has no bearing on the protection enjoyed by the international registration designating the European Union of the word mark LE DELIZIE ZARA, in so far as it had effects in, inter alia, the United Kingdom, with the result that it could validly form the basis of an opposition (judgment of 23 September 2020, MUSIKISS, T‑421/18, EU:T:2020:433, paragraph 36).
62      Consequently, without it being necessary to examine the admissibility of the plea raised by the applicant concerning the lapse of the international registration designating the European Union of the word mark LE DELIZIE ZARA, which has effects in, inter alia, the United Kingdom, inasmuch
as it is a new plea in law the admissibility of which is conditional on the fact that it is based on matters of law or of fact which have come to light in the course of the procedure, in accordance with Article 84(1) of the Rules of Procedure, it must be held that that plea is, in any event, unfounded and that it must be rejected.
63      In those circumstances, it does not appear necessary to examine the admissibility of the two additional items of evidence submitted by the applicant at the hearing, since they are put forward solely in support of that plea and appear to be of no use in resolving the dispute.
The first plea in law, alleging infringement of Article 42(2) and (3) of Regulation No 207/2009, as well as of Rule 22(2) and (3) of Regulation No 2868/95
64      The applicant submits that the Board of Appeal erred in finding, on the basis of the evidence submitted by the intervener, that there was genuine use of the earlier Italian figurative mark ZARA in respect of ‘dry pasta of Italian origin’.
65      First, the witness statement of the chairman of the board of directors of Pasta Zara SpA is not
valid evidence, since the general findings of that document could not be supported by any other evidence demonstrating genuine use of the mark in question.
66      Secondly, as regards the two catalogues which have been produced, they are not dated and the contested decision refers only indirectly to presumed dates. According to the applicant, those documents are not evidence of genuine use, since no dissemination or external use has been accredited.
67      Thirdly, the promotional catalogues are internal documents with limited probative value. Moreover, no evidence has been submitted indicating that the earlier Italian figurative mark ZARA, relied on in support of the opposition, refers to the leading Italian exporter of pasta.
68      Fourthly, the applicant states that the invoices submitted are not significant in view of the low sales value which they show, in
so
far as they concern general consumer goods in respect of which the case-law has set a higher threshold for establishing the existence of genuine use.
69      Fifthly, the five invoices relating to participation in a trade fair are not genuine evidence of sales and should therefore be disregarded.
70      In conclusion, the evidence submitted by the intervener does not demonstrate genuine use of the earlier Italian figurative mark ZARA in respect of ‘dry pasta of Italian origin’ in Class 30.
71      EUIPO and the intervener dispute the applicant’s arguments.
72      According to settled case-law, it is apparent, in essence, from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 of that regulation (now recital 24 of Regulation 2017/1001), and from Rule 22(3) of Regulation No 2868/95 that the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to an EU trade mark application is to restrict the number of conflicts between two marks unless there is a
good commercial justification for the lack of genuine use of the earlier mark deriving from an actual function of that mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade mark protection to the case where large-scale commercial use has been made of the marks (see judgment of 17 January 2013, Reber v OHIM – Wedl & Hofmann (Walzer Traum), T‑355/09, not published, EU:T:2013:22, paragraph 25 and the case-law cited).
73      There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
74      When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of creating or maintaining market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 40; see also, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43).
75      As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (judgments of 8 July 2004, MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON), T‑334/01, EU:T:2004:223, paragraph 35, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 41).
76      In order to examine, in a particular case, whether an earlier trade mark has been put to genuine use, an overall assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, a low volume of goods marketed under the trade mark may be compensated for by a high intensity of use or a period of very regular use of that trade mark or vice versa (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42).
77      The turnover and the volume of sales of the goods under the earlier trade mark cannot be assessed in absolute terms but must be looked at in relation to other relevant factors, such as the volume of business, production or marketing capacity or the degree of diversification of the undertaking using the trade mark and the characteristics of the goods or services on the relevant market. As a result, use of the earlier mark need not always be quantitatively significant in order to be deemed genuine (judgments of 8 July 2004, HIPOVITON, T‑334/01, EU:T:2004:223, paragraph 36, and of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 42). Even minimal use can therefore be sufficient to be classed as genuine, provided that it is regarded as warranted, in the relevant economic sector,
as a means of maintaining or creating market shares for the goods or services protected by the mark. It follows that it is not possible to determine a priori, and in the abstract, what quantitative threshold should be chosen in order to determine whether use is genuine or not, so that a de minimis rule, which would not allow EUIPO or, on appeal, the Court, to appraise all the circumstances of the dispute before it, cannot be laid down (judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 72).
78      In addition, it must be noted that, under the combined provisions of Article 15(1)(a) of Regulation No 207/2009 (now Article 18(1)(a) of Regulation 2017/1001) and Article 42(2) and (3) of Regulation No 207/2009, proof of genuine use of an earlier national or EU trade mark which forms the basis of an opposition against an EU trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (see judgment of 8 December 2005, CRISTAL CASTELLBLANCH, T‑29/04, EU:T:2005:438, paragraph 30 and the case-law cited).
79      It is in the light of those considerations that it is necessary to assess whether the Board of Appeal made an error of assessment in finding that the evidence adduced by the intervener showed genuine use of the earlier Italian figurative mark ZARA in relation to ‘dry pasta of Italian origin’.
80      Since the EU trade mark application submitted
by the applicant
before the Board of Appeal of EUIPO was published on 22 June 2010, the five-year period referred to in Article 42(2) of Regulation No 207/2009 runs from 22 June 2005 to 21 June 2010, which the applicant does not dispute.
81      In the present case, it is apparent from the contested decision that the intervener submitted, during the proceedings before EUIPO and with a view to proving genuine use of the earlier Italian figurative mark ZARA, the following documents:
–        a witness statement of the chairman of the board of directors of Pasta Zara dated 13 September 2013 and a chart containing sales figures for the period from 2005 to 2010 referring to exports of pasta covered by the earlier Italian figurative mark ZARA;
–        two catalogues in electronic form, identified as Catalogues No 1 and No 2, depicting several types of dry pasta and flour;
–        two promotional documents dated 2010 and 2011, containing information on the various activities of Pasta Zara and promotional indications of the different types of pasta offered by Pasta Zara;
–        several samples of packaging and advertisements for different types of pasta covered by the figurative mark pasta ZARA;
–        25 invoices addressed to companies established in Italy dated between
5 August 2005 and
31 August 2010, referring to the word sign PASTA ZARA;
–        five invoices addressed to Pasta Zara, dated between
18 January 2006 and
11 May 2010, relating to its participation in a trade fair.
82      The analysis of that evidence was carried out by the Board of Appeal in paragraphs 26 to 53 of the contested decision and may be summarised as set out in the paragraphs below.
83      First of all, as regards the period of use, the Board of Appeal took the view that the invoices addressed to customers in Italy showed a certain frequency of sales throughout the relevant period between 2005 and 2010. Next, the five invoices relating to participation in a trade fair also concerned the relevant period, as did one of the promotional documents. Furthermore, it found that, although the catalogues were not dated, Catalogue No 1 had been created and registered before the end of the relevant period and Catalogue No 2 contained information regarding facts occurring during the relevant period. Lastly, the witness statement of the chairman of the
board of directors of Pasta Zara, combined with the invoices and documents concerning the company’s profile, contained relevant information regarding the presence of the mark on the Italian market during the relevant period.
84      As regards the place of use, the Board of Appeal found, in paragraphs 30 and 31 of the contested decision, that the earlier Italian figurative mark ZARA had been used in the relevant territory, namely Italy, since it was sufficiently clear from the evidence produced that the intervener sold its goods to numerous customers in that country and all the documents were drafted in Italian.
85      As regards the nature of use, the Board of Appeal found, in paragraphs 32 to 43 of the contested decision, that a figurative sign consisting of, inter alia, the word element ‘pastazara’ appeared on the various items of evidence as an element serving to designate the commercial origin of the goods covered by the earlier Italian figurative mark ZARA and that the use of that sign could therefore be regarded as use as a trade mark. Next, it found that a link could be established between the word sign PASTA ZARA, as it appeared on the invoices, and the figurative sign consisting of, inter alia, the word element ‘pastazara’, as used on the goods and as it appeared in the catalogues. Lastly, the Board of Appeal compared the earlier Italian figurative mark ZARA with the figurative sign consisting of, inter alia, the word element ‘pastazara’ and found that they were reproduced identically and that the addition of the word ‘pasta’ did not alter the distinctive character of that earlier mark as it had been registered. Similarly, the fact that the figurative element of that mark was registered in black and white, although it appeared in different colours on the market, did not alter the distinctive character of that mark. Consequently, the Board of Appeal found that the version in which the earlier Italian figurative mark ZARA was used, as it appeared in Catalogue No 1 and in the invoices, could be regarded as a variation of the registered form, which did not alter its distinctive character.
86      In paragraphs 44 to 53 of the contested decision, the Board of Appeal noted, with regard to the extent of use, that the invoices addressed to customers established in Italy during the relevant period provided direct evidence of the volume of actual sales, in an amount exceeding EUR 40 000, for the various types and sorts of ‘dry pasta’ covered by the word sign PASTA ZARA. However, by means of the catalogues, a link could be established between those different types and sorts of dry pasta and the earlier Italian figurative mark ZARA,
as it was used on the market. In that regard, even though some invoices also included other goods, a large part of the sales referred to types of dry pasta. The evidence showed regular and constant sales of those goods in Italy during the relevant period. Furthermore, the invoices were representative, since their reference numbers were not consecutive. In addition, the existence of actual sales of different types of pasta designated by the earlier Italian figurative mark ZARA was also confirmed by the references to turnover figures in the witness statement or by the promotional catalogues showing the profile of the company Pasta Zara. Lastly, the Board of Appeal found that, considered as a whole, the evidence demonstrated the existence of genuine, public and outward-looking commercial activity for the purpose of creating or preserving an outlet for at least the ‘dry pasta of Italian origin’ in respect of which the earlier Italian figurative mark ZARA was registered.
87      In the light of the foregoing, the Board of Appeal found, in paragraphs 54 to 56 of the contested decision, that the intervener had provided sufficient indications as to the place, period, nature and extent of use of the earlier Italian figurative mark ZARA to confirm that that mark had been put to genuine use in respect of ‘dry pasta of Italian origin’ during the relevant period.
88      Having regard to the evidence in the file, it must be held that the Board of Appeal correctly assessed the facts of the case.
89      In this respect, first, as regards the witness statement of the chairman of the board of directors of Pasta Zara, the applicant’s argument, referred to in paragraph 65 above,
that the findings contained in that witness statement are not supported by any other evidence demonstrating genuine use must be rejected. On the contrary, it appears, in paragraphs 29 and 50 of the contested decision, that the Board of Appeal assessed that witness statement twice, in conjunction with other evidence such as the invoices, Catalogue No 1 and the promotional catalogues and that the applicant did not put forward any argument capable of calling those findings into question.
90      Secondly, as regards the catalogues, it is apparent from the contested decision that the Board of Appeal found that, even though they were not dated, the electronic version of Catalogue No 1 had been registered on 3 May 2010, that is to say, during the relevant period, and Catalogue No 2 contained a reference to an award received by the intervener during that period. The applicant has not put forward any argument capable of calling those findings into question. In addition, in
so
far as the applicant claims, in paragraph 66 above, that those catalogues were not proof of genuine use, since no
dissemination or external use has been accredited, it must be observed that, although the case-law requires a mark to be used publicly and outwardly, that obligation does not rest on each item of evidence capable of proving genuine use of the mark, with the result that the applicant’s argument is ineffective (see, to that effect, judgment of 23 September 2020, Osório & Gonçalves v EUIPO – Miguel Torres (in.fi.ni.tu.de), T‑601/19, not published, EU:T:2020:422, paragraph 44 and the case-law cited).
91      Thirdly, as is apparent from paragraph 90 above, the mere fact that the promotional catalogues are internal documents is not sufficient, in itself, to call into question the Board of Appeal’s assessment of them, which the applicant has not, in itself, disputed. Likewise, contrary to the applicant’s claims, it is apparent from the contested decision that the Board of Appeal sufficiently explained the reasons why it had to be held that the use of the word sign PASTA ZARA and the figurative sign containing the word element ‘pastazara’ had to be regarded as use of the earlier Italian figurative mark ZARA.
92      Fourthly, as regards the invoices submitted by the intervener, it should be noted, as EUIPO did, that they are representative of the volume of sales of ‘dry pasta’ in the relevant territory, since the reference numbers of those invoices are not consecutive and the dates on which they were drawn up relate to the whole of the relevant period. Furthermore, as is apparent from the case-law cited in paragraph 77 above, even though it may be regarded as low in the sector concerned, the sales figure for an amount of approximately EUR 40 000, as shown by the
invoices addressed to customers established in Italy during the relevant period, is nevertheless sufficient to establish the extent of use of the earlier Italian figurative mark ZARA. Therefore, the applicant is wrong to argue that the turnover shown by those invoices is insufficient to demonstrate genuine use of the earlier mark, particularly because, in accordance with the case-law, it is not a question of assessing the commercial success of the intervener. The applicant’s argument that the Board of Appeal incorrectly
took into consideration the fact that the intervener was the ‘leading Italian exporter of pasta’ is, in that regard, ineffective. In addition, it is apparent from the contested decision that the Board of Appeal took into consideration all the documents which had been submitted in order to find that the intervener had demonstrated genuine, outward-looking commercial activity in connection with the earlier Italian figurative mark ZARA.
93      Fifthly, as regards the invoices relating to participation in a trade fair, it should be noted that proof of use is not limited to documents which show the extent of use, but that it can also apply to documents relating to the place, duration and nature of use
(see, to that effect, judgment of 23 September 2020, in.fi.ni.tu.de, T‑601/19, not published, EU:T:2020:422, paragraph 44 and the case-law cited). Thus, even though they do not show the extent of use, those invoices could still be taken into account by the Board of Appeal in order to find that there had been genuine use of the earlier Italian figurative mark ZARA and, in particular, in order to demonstrate that that mark had been used in connection with genuine, public and outward-looking commercial activity. The applicant’s argument, referred to in paragraph 69 above, that those documents should not be taken into account since they are not genuine evidence of sales must therefore be rejected.
94      In those circumstances, the first plea in law must be rejected as unfounded.
The second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
95      The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, consists, in essence, of two parts. The first alleges errors in the comparison of the goods and services designated by the marks at issue and the second alleges errors in the comparison of those marks.
–       The first part of the second plea, alleging errors in the comparison of the goods and services designated by the marks at issue
96      The Board of Appeal found, in paragraphs 60 to 91 of the contested decision, that the ‘dry pasta of Italian origin’ in Class 30 covered by the earlier Italian figurative mark ZARA, and the ‘olive oil’ in Class 29 and ‘rice, breadsticks, balsamic vinegar, sauces for pasta’ in Class 30 covered by the earlier international word mark LE DELIZIE ZARA, were similar to various degrees to the goods and services in Classes 29, 30, 35 and 43 referred to in paragraph 3 above and covered by the mark applied for.
97      The applicant disputes the reasoning of the Board of Appeal with regard to the assessment of the similarity between the goods in Classes 29 and 30 designated by the
marks at issue. It claims that the Board of Appeal infringed the case-law according to which, in the case of foodstuffs, the fact that one product may constitute an ingredient of another product or that they may be sold in the same sales outlets is not sufficient to create a similarity between them.
98      As regards the services in Class 35 covered by the mark applied for, the applicant submits that, contrary to the finding of the Board of Appeal, the fact of offering services for the sale of goods that are identical to the goods covered by the earlier marks is not sufficient to establish a relationship of complementarity or similarity between them.
99      Similarly, in respect of the ‘restaurant services (food), self-service restaurants, cafeterias’ in Class 43 covered by the mark applied for, on the one hand, and the ‘dry pasta’ covered by the earlier Italian figurative mark ZARA and the ‘sauces for pasta’ covered by the earlier international word mark LE DELIZIE ZARA, on the other, the applicant submits that the fact that the goods are offered in a restaurant is not a sufficient reason to find similarity between those goods and services; they must be offered by the same undertaking under the same mark. Moreover, the existence of a similarity between the goods and services in question is based on the erroneous premiss that those services could be offered in the same places as those in which the goods are sold as take away and ready to
eat. However, that is not the case for ‘dry pasta’ or ‘sauces for pasta’, which are generally sold through different distribution channels and are not generally sold as such in a restaurant.
100    EUIPO and the intervener dispute the applicant’s arguments.
101    Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, 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. Furthermore, under Article 8(2)(a)(ii) and (iii) of Regulation No 207/2009 (now Article 8(2)(a)(ii) and (iii) of Regulation 2017/1001), ‘earlier trade marks’ means trade marks registered in a Member State and trade marks registered under international arrangements which have effect in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
102    According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
103    For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
104    It must also be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).
105    It is in the light of those principles that the assessment of the likelihood of confusion between the signs on the part of the relevant public, as carried out by the Board of Appeal, must be examined.
106    In paragraphs 58 and 59 of the contested decision, the Board of Appeal stated that it began its examination of the likelihood of confusion by taking into account the earlier Italian figurative mark ZARA and the earlier international word mark LE DELIZIE ZARA, and that the relevant territory for assessing whether there was such a likelihood was Italy and the United Kingdom. Since the goods were intended for the general public, it took the view that it was necessary to base its assessment on the perception of the general public in Italy and the United Kingdom, whose level of attention was average when purchasing the goods in question, since they were everyday consumer foodstuffs.
107    It is necessary to uphold those findings, which, moreover, are not disputed by the parties, inasmuch as they appear to be well founded in the light of the information in the case file.
108    As regards the assessment of the similarity of the goods and services, according to the case-law, all the relevant factors relating to those goods and services should be taken into account, which include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23). Other factors may also be taken into account such as the distribution channels of the goods and services concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
109    In the present case, it is necessary to examine whether the Board of Appeal was entitled to find, in paragraphs 60 to 91 of the contested decision, that the goods and services covered by the mark applied for and the goods covered by the earlier marks displayed a certain similarity.
110    First, as regards the comparison between the goods in Class 29 covered by the mark applied for and the goods covered by the earlier marks, it must first of all be stated that the Board of Appeal correctly found, in paragraph 65 of the contested decision, that the ‘preserved, frozen, dried and cooked fruits and vegetables’ covered by the mark applied for and the ‘sauces for pasta’ covered by the earlier international word mark LE DELIZIE ZARA responded to the same nutritional needs, were produced and manufactured by linked undertakings and could also serve the same purpose, that is to say, being mixed with different kinds of pasta. The Board of Appeal was therefore fully entitled to conclude that the goods in question
displayed a certain degree of similarity. In the light of the factors which indicate similarity highlighted by the Board of Appeal, to which it is possible to add the fact that the ingredients of pasta sauces
generally include vegetables or even certain fruits, the degree of similarity between the goods in question must be classified as average.
111    Next, as regards the ‘jellies, jams, compotes’ covered by the mark applied for and
the ‘sauces for pasta’ covered by the earlier international word mark LE DELIZIE ZARA, it must be observed that, although it is true that those goods are, in respect of the former, sweet and, in respect of the latter, savoury, the fact remains that, contrary to the applicant’s assertions, they may be used concurrently. First, since the association of a sweet-and-sour mixture is relatively widespread and sought after in the culinary sector, sugary goods, such as those in the present case, may be used in the development of sauces for the purpose of accompanying a savoury
dish such as meat. Second, it is not unusual, in the light of consumer habits, for ‘sauces for pasta’ also to be used for purposes other than that of accompanying a pasta dish: they may also accompany other preparations such as meat-based dishes. In addition, as the Board of Appeal was fully entitled to observe in paragraph 66 of the contested decision, those goods may also be packaged in similar containers, are usually distributed through the same distribution channels and are addressed to the same public. The Board of Appeal therefore did not err in its assessment in finding that there was a similarity between those goods, which, in the light of the foregoing, must, in the present case, be classified as low.
112    In addition, as regards
the ‘milk products’ covered by the mark applied for, the Board of Appeal did not err in finding that they were similar to the
‘olive oil’ covered by the earlier international word mark LE DELIZIE ZARA, in so far as ‘olive oil’ may be used
interchangeably with butter which itself forms part of ‘milk products’ (see, to that effect, judgment of 27 September 2018, Ntolas v EUIPO – General Nutrition Investment (GN Laboratories), T‑712/17, not published, EU:T:2018:618, paragraph 26). Furthermore, the fact that their ingredients differ does not affect the finding that they are interchangeable because they are intended to meet an identical need (judgment of 8 July 2004, VITAFRUIT, T‑203/02, EU:T:2004:225, paragraph 67). In view of their interchangeability, those goods therefore display a high degree of similarity.
113    Lastly, as regards the ‘edible oils’ and ‘edible …
fats’ covered by the mark applied for, the Board of Appeal was entitled to find that the former were identical and the latter similar to the ‘olive oil’ covered by the earlier international word mark LE DELIZIE ZARA. In view of the fact that ‘edible …
fats’ and ‘olive oil’ have the same use and are interchangeable, it must be held that there is a high degree of similarity between those goods.
114    Secondly, as regards the comparison between the goods in Class 30 covered by the mark applied for and the goods covered by the earlier marks, it should be noted, first of all, that the Board of Appeal found that the ‘preparations made from cereals’ and ‘rice …; …bread …;
vinegar, sauces (condiments)’ covered by the mark applied for were identical to,
respectively, the ‘dry pasta of Italian origin’ covered by the earlier Italian figurative mark ZARA, and the ‘rice, breadsticks, balsamic vinegar, sauces for pasta’ covered by the earlier international word mark LE DELIZIE ZARA. Since those findings do not appear to be vitiated by any error and are not disputed by the parties, they must be upheld.
115    Next, as regards the comparison between the ‘tapioca’, ‘sago’, ‘flour’, ‘yeast’ and ‘baking-powder’ covered by the mark applied for and the ‘breadsticks’ covered by the earlier international word mark LE DELIZIE ZARA, the Board of Appeal correctly held in paragraphs 73, 74 and 77 of the contested decision that there was a similarity between those goods which, in the present case, had to be classified as low. First, the goods covered by the mark applied for may be basic components of ‘breadsticks’ and, second, the goods in question are mostly offered in bakeries and often come from the same undertakings (see, to that effect, judgment of 19 September 2018, Eddy’s Snack Company v EUIPO – Chocoladefabriken Lindt & Sprüngli (Eddy’s Snackcompany), T‑652/17, not published, EU:T:2018:564, paragraphs 34 and 35). Contrary to the applicant’s assertions, the fact that one is an ingredient of the other is therefore not the only factor leading to a finding that the goods in question are similar.
116    In addition, it must be held that the ‘rice-based snack food’ covered by the mark applied for and the ‘breadsticks’ covered by the earlier international word mark LE DELIZIE ZARA are interchangeable in so far as they have the same use, that is to say, they are to be consumed as carbohydrate-based pre-meal snacks, irrespective of their different ingredients. Similarly, as the Board of Appeal noted in paragraph 75 of the contested decision, they may be in competition with each other and may have the same producers and the same end users while being distributed through the same distribution channels, since they are generally present in the same sections of supermarkets, or in sections which are close to one another. The Board of Appeal was therefore entitled to take the view that those goods were similar and, in the light of the foregoing, it must be held that those goods display a high degree of similarity. The applicant has merely argued that the goods in question did not have the same nature, were not distributed through the same distribution channels and did not come from the same producers. However, those general and unsubstantiated challenges do not call into question the foregoing conclusions.
117    Similarly, as the Board of Appeal correctly found in paragraph 78 of the contested decision, the ‘salt, mustard; …;
spices’ covered by the mark applied for and the ‘olive oil’ and ‘balsamic vinegar’ covered by the earlier international word mark LE DELIZIE ZARA are similar to a certain degree, in so far as they are characterised by a similar use and intended purpose and by the same distribution channels and are usually
produced by the same undertakings. There is therefore an average degree of similarity between them. The applicant’s argument that those goods appear in different forms is not such as to call those findings into question.
118    Lastly, as regards the comparison between the ‘pastry’ covered by the mark applied for and the ‘breadsticks’ covered by the earlier international word mark LE DELIZIE ZARA, the Board of Appeal found, in paragraph 76 of the contested decision, that those goods were similar. Having regard to the fact that they are bakery products, that they may have the same producers and the same end users and that, in the case of savoury pastry, those goods may be in competition with each other, the Board of Appeal was right to find that they are similar. In the light of the relevant factors in the present case, it must be held that the degree of similarity between those goods is high.
119    Thirdly, as regards the comparison between, on the one hand, the ‘retailing and wholesaling in shops, selling via global computer networks, by catalogue, by mail order, by telephone, by radio and television and via other electronic means of preserved, frozen, dried and cooked fruits and vegetables, edible oils, rice, flour and preparations made from cereals, bread, vinegar, sauces (condiments)’ in Class 35 covered by the mark applied for and, on the other, the ‘dry pasta of Italian origin’ covered by the earlier Italian figurative mark ZARA and the ‘rice, breadsticks, balsamic vinegar, sauces for pasta’ and ‘olive oil’ covered by the earlier international word mark LE DELIZIE ZARA, the Board of Appeal found that they were similar to an average degree.
120    It must be borne in mind that the goods and services in question cannot be regarded as being similar in the light of their nature, their intended purpose and their method of use. Owing to the fungible character of the former and the non-fungible character of the latter, their nature is different. Their intended purpose is also different, since foodstuffs are intended to be used by the purchaser, whereas the services in question are intended, inter alia, to provide the necessary assistance to the purchaser concerned. Lastly, they do not have the same method of use either, since goods are to be consumed, whereas the use of a service consists in, inter alia, obtaining information concerning
goods before proceeding to purchase them (see, to that effect, judgment of 15 February 2011, Yorma’s v OHIM – Norma Lebensmittelfilialbetrieb (YORMA’S), T‑213/09, not published, EU:T:2011:37, paragraph 34 and the case-law cited). The objective of retail trade is the sale of goods to consumers, which includes, in addition to the legal sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction, that activity consisting, inter alia, in selecting an assortment of goods offered for sale and in offering a variety of services aimed at inducing the consumer to conclude the abovementioned transaction with the trader in question rather than with a competitor (see, to that effect, judgment of 15 February 2011, YORMA’S, T‑213/09, not published, EU:T:2011:37, paragraph 33 and the case-law cited).
121    Therefore, it could be held that there was a similarity between the goods and the retail services relating to those goods, as there was a link of complementarity between them
(see judgment of 16 October 2013, El Corte Inglés v OHIM – Sohawon (fRee YOUR STYLe.), T‑282/12, not published, EU:T:2013:533, paragraph 37 and the case-law cited).
122    Although the criterion of the complementary nature of the goods and services in question represents only one factor among several others – such as the nature, the method of use or the distribution channels of those goods and services, in the light of which their similarity may be assessed, the fact remains that it is an autonomous criterion capable of being the sole basis for the existence of such a similarity (see, to that effect, judgment of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 23).
123    In that regard, it must be noted that, according to settled case-law,
goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking.
Thus, for the purposes of the assessment of whether goods or services are complementary, the perception of the relevant public of the importance of a product or service for the use of another product or service should, ultimately, be taken into account (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 22 and the case-law cited).
124    In line with the findings of the Board of Appeal in the contested decision, the ‘edible oils, rice, flour and preparations made from cereals, bread, vinegar, sauces (condiments)’ to which part of the retail and wholesale services covered by the mark applied for relate may be regarded as identical to the ‘dry pasta of Italian origin’ covered by the earlier Italian figurative mark ZARA and the ‘rice, breadsticks, balsamic vinegar, sauces for pasta’ and ‘olive oil’ covered by the earlier international word mark LE DELIZIE ZARA. Thus, the relationship between the services provided in connection with wholesaling and retailing covered by the mark applied for and the goods covered by the earlier marks is close in the sense that the goods are indispensable or, at the very least, important for the provision of those services, which are specifically provided when those goods are sold. Such services, which are provided with a view to selling certain specific goods, would be meaningless in the absence of those goods. Similarly, those services will, from the point of view of the relevant consumer, play an important role when he or she
comes to purchase the goods offered for sale (see, by analogy, judgment of 15 February 2011, YORMA’S, T‑213/09, not published, EU:T:2011:37, paragraph 39 and the case-law cited). Therefore, it must be held that there is a relationship of complementarity between those services and those goods within the meaning of the case-law.
125    Consequently, the Board of Appeal was entitled to take the view, in paragraph 88 of the contested decision, that the ‘retailing and wholesaling in shops, selling via global computer networks, by catalogue, by mail order, by telephone, by radio and television and via other electronic means of … rice, flour and preparations made from cereals, bread, vinegar, sauces (condiments)’ in Class 35 covered by the mark applied for and the ‘dry pasta of Italian origin’ covered by the earlier Italian figurative mark ZARA and ‘rice, breadsticks, balsamic vinegar, sauces for pasta’ and ‘olive oil’ covered by the earlier international word mark LE DELIZIE ZARA were similar to an average degree.
126    As regards the ‘preserved, frozen, dried and cooked fruits and vegetables’ to which the retailing and wholesaling services covered by the mark applied for also relate, it must be borne in mind that an average degree of similarity has been established with the ‘sauces for pasta’ covered by the earlier international word mark LE DELIZIE ZARA. Even though those goods are not identical, they are goods which are generally manufactured by associated undertakings and in respect of which account must be taken of the complementary and ancillary nature of marketing activities within undertakings in that sector. Consequently, despite their remoteness, they are complementary goods and services for which the existence of a low degree of similarity should be established (see, to that effect, judgment of 9 June 2010,
Muñoz Arraiza v OHIM – Consejo Regulador de la Denominación de Origen Calificada Rioja (RIOJAVINA), T‑138/09, EU:T:2010:226, paragraphs 41 to 44).
127    Fourthly, as regards the comparison between, on the one hand, the ‘restaurant services (food), self-service restaurants, cafeterias’ in Class 43 covered by the mark applied for and, on the other,
the ‘dry pasta of Italian origin’ covered by the earlier Italian figurative mark ZARA and ‘sauces for pasta’ covered by the earlier international word mark LE DELIZIE ZARA,
the Board of Appeal was entitled, without committing any error, to examine whether there was a similarity on account of their complementarity rather than on account of factors such as their nature, their intended purpose or their method of use.
The goods and services in question are not identical and it is indisputable that, in the light of the factors relating to their nature, their intended purpose or their method of use, they are not similar (see, to that effect, judgment of 18 February 2016, Harrys Pubar and Harry’s New York Bar v OHIM – Harry’s New York Bar and Harrys Pubar (HARRY’S BAR), T‑711/13 and T‑716/13, not published, EU:T:2016:82, paragraph 58 and the case-law cited).
128    It follows from the case-law that foodstuffs, broadly speaking, including goods in Classes 29 and 30, on the one hand, and restaurant services, on the other, have,
despite their differences, a certain degree of similarity, since (i) the foodstuffs concerned are used and offered in the context of restaurant services, so that there is complementarity between those goods and services, (ii) the restaurant services can be offered in the same places as those in which the foodstuffs concerned are sold and (iii) the foodstuffs concerned may originate from the same undertakings or from economically linked undertakings which market packaged goods, or from restaurants which sell ready-made food to take away
(see, to that effect, judgment of 5 July 2016, Future Enterprises v EUIPO – McDonald’s International Property (MACCOFFEE), T‑518/13, EU:T:2016:389, paragraph 80).
129    The fact that the EUIPO directives cited by the applicant do not reflect exactly the case-law in that regard is irrelevant, since those directives are not binding legal acts for the purpose of interpreting provisions of EU law (judgment of 5 July 2016,
MACCOFFEE, T‑518/13, EU:T:2016:389, paragraph 81). Likewise, it must be borne in mind that, according to settled case-law, the legality of decisions of the Boards of Appeal must be assessed solely on the basis of Regulation No 207/2009 and not on that of EUIPO’s decision-making practice (see judgment of 10 February 2021, El Corte Inglés v EUIPO – MKR Design (PANTHÉ), T‑117/20, not published, EU:T:2021:81, paragraph 37 and the case-law cited).
130    In the present case, the Board of Appeal found that the ‘dry pasta of Italian origin’ and ‘sauces for pasta’ covered by the earlier Italian figurative mark ZARA and the earlier international word mark LE DELIZIE ZARA, respectively, could be sold in the same places as those in which the services relating to the sale of the goods were offered. Moreover, it found that the consumers were likely to be the same and that the goods and services in question were in competition with each other, as the consumer had the choice between purchasing foodstuffs and consuming them at home or visiting a restaurant, including a self-service restaurant or a cafeteria.
131    In that regard, it should be observed, as the applicant acknowledges in paragraph 65 of the application, that it is not unusual to find restaurants which also sell pasta. It cannot be ruled out that undertakings in that sector which market such a product will open a place of consumption, such as a restaurant or cafeteria, in order to market or serve their goods there or that, conversely, a restaurant will decide to market its own goods. This may be a commercial technique used to promote goods which may then also be purchased in the same place. However, contrary to the applicant’s claims, there is nothing to suggest that those goods will necessarily be fresh pasta and that those restaurants cannot sell dry pasta, the storage conditions for which are, moreover, more conducive to the marketing thereof. The applicant’s argument that dry pasta is not produced at the place of consumption is, in that regard, ineffective.
132    Therefore, having regard to the complementarity of those goods and services, the Board of Appeal was fully entitled to conclude, in paragraph 91 of the contested decision, that there was a certain degree of similarity, which must be classified as low, between the ‘restaurant services (food), self-service restaurants, cafeterias’ covered by the mark applied for and the ‘dry pasta of Italian origin’ covered by the earlier Italian figurative mark ZARA.
133    In the light of the foregoing considerations, the first part of the second plea must be rejected as being unfounded.
–       The second part of the second plea, alleging errors in the comparison of the marks at issue
134    The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
135    The applicant notes that, when comparing the marks at issue, it is necessary to rely on the overall impression which they make on the relevant public, having regard to their intrinsic quality. In the present case, the mark applied for has a clear and specific meaning which can be grasped directly by the relevant public, while there is a very marked conceptual difference between the marks at issue, so that, according to the applicant, despite the existence of visual or phonetic similarities, the Court may dispense with the global assessment of the likelihood of confusion.
136    In that regard, the applicant submits that the Board of Appeal erred in finding in the contested decision that the conceptual comparison of the marks at issue
either was not possible or remained neutral. From a conceptual point of view, the word sign ZARA is particularly well known to the relevant public as referring to the famous retail brand which belongs to the commercial origin of the applicant, so that the relevant public will associate the name ZARA with the applicant for services in Class 43. The Board of Appeal could not ignore the high reputation and ‘uniqueness’ of the word ‘zara’ and should have taken them into account when carrying out the global assessment of the likelihood of confusion in order to counteract the visual and phonetic similarities between the signs concerned.
137    Thus, in so far as, first, the conceptual impact of the mark applied for counteracts the visual and phonetic similarity between the signs
at issue and, second, the goods and services in question are dissimilar, the Board of Appeal erred in holding that use of the mark applied for to designate the goods and services in question was likely to create a likelihood of confusion with the earlier marks. Such a likelihood is excluded, because the mark ZARA is associated only with the applicant due to its extraordinary reputation and its qualification as a ‘unique trade mark’. Those findings apply in respect of all of the earlier rights relied on by the intervener in support of the opposition.
138    EUIPO and the intervener dispute the applicant’s arguments.
139    In the first place, as regards the comparison between, on the one hand, the mark applied for and, on the other, the earlier Italian figurative mark ZARA and the earlier international word mark LE DELIZIE ZARA, it should be noted that the word element ‘zara’, which is the sole element of the mark applied for, is entirely contained in the earlier marks. In those earlier marks, it does not appear to have any particular meaning in relation to the goods which they cover and it must be held that it is the most distinctive element in each of them. As regards the earlier Italian figurative mark ZARA, the only difference between that mark and the mark applied for arises from the presence of a figurative element in the earlier mark, representing a woman holding a sheaf of wheat, with a rural landscape in the background. As the Board of Appeal correctly observed in paragraph 95 of the contested decision, that figurative element does not have a significant degree of distinctiveness for foodstuffs in relation to ‘pasta’. Similarly, as regards the earlier international word mark LE DELIZIE ZARA, the Board of Appeal was fully entitled to find, in paragraph 114 of the contested decision, that the expression ‘le delizie’, which refers to the Italian expression meaning ‘delights’ and which constitutes the only difference between that mark and the mark applied for, would be associated by a part of the relevant public in the United Kingdom with its English equivalents ‘delicious’, ‘delights’ or ‘delicacies’. Having regard to the fact that the relevant goods are foodstuffs, it must be held that the distinctive character of that expression is weak for the part of the relevant public likely to associate it with those equivalent meanings.
140    As regards the visual comparison between the mark applied for and the earlier Italian figurative mark ZARA, the Board of Appeal found, in paragraph 98 of the contested decision, that the similarity between the signs at issue was lower than average. However, although there are differences between those signs, arising from the presence of a figurative element in the earlier mark, the fact remains that the common presence in those signs of the element ‘zara’, to which the consumer will pay greater attention as is apparent from paragraph 139 above, should have led the Board of Appeal to find that there was an average degree of similarity between them rather than a lower-than-average degree.
141    Similarly, as regards the visual comparison between the mark applied for and the earlier international word mark LE DELIZIE ZARA, it must be observed that, although the first part of a mark normally has a greater visual impact than its final part, so that consumers generally pay more attention to the first part of a mark than to its end, that consideration does not hold true in all cases (see, to that effect, judgment of 20 October 2016, Clover Canyon v EUIPO – Kaipa Sportswear (CLOVER CANYON), T‑693/15, not published, EU:T:2016:620, paragraph 31). In the present case, even though the expression ‘le delizie’ constitutes the first part of the earlier mark as is apparent from paragraph 139 above, this does not reduce the visual similarity created by the common word element ‘zara’, which will be the most likely to hold the consumer’s attention. Contrary to the findings of the Board of Appeal, the marks at issue therefore display a high – and not below-average – degree of visual similarity.
142    As regards the phonetic comparison, it should be noted that the mark applied for is identical to the earlier Italian figurative mark ZARA. By contrast, in so far as the expression ‘le delizie’ does not reduce the similarity resulting from the pronunciation of the common word element ‘zara’, it must be held that, contrary to
what was held by the Board of Appeal, the mark applied for and the earlier international word mark LE DELIZIE ZARA display a high degree of phonetic similarity.
143    As regards the conceptual comparison, it must be noted that the Board of Appeal was correct in finding, in paragraphs 101, 102 and 121 of the contested decision, that the word element ‘zara’, present in the signs at issue, could be perceived as a female first name, but had no meaning in relation to the goods and services concerned and that the conceptual comparison either was not possible or remained neutral.
144    In view of the fact that the earlier Italian figurative mark ZARA displays an average degree of visual similarity with the mark applied for and is phonetically identical to that mark, and that the earlier international word mark LE DELIZIE ZARA displays a high degree of visual and phonetic similarity with the mark applied for, it must be held that the marks at issue, considered as a whole, display a high degree of similarity, which arises from the presence of the element ‘zara’ in each of them, which, as is apparent from paragraph 139 above, is the most distinctive element in the earlier marks, which must be taken into account in the global assessment of the likelihood of confusion.
145    In that regard, the applicant submits that the Board of Appeal did not take into account the reputation of the mark applied for, which should have made it possible to counteract the visual and phonetic similarities between the marks at issue. However, it should be noted that reputation is relevant in assessing whether there is a likelihood of confusion as regards the earlier mark, but that that is not the case in respect of the assessment of the distinctiveness of the mark applied for. It follows from the case-law that the highly distinctive character of a sign is relevant only in respect of the earlier mark and not the later mark (judgment of 29 March 2017, J & Joy v EUIPO – Joy-Sportswear (J&JOY), T‑389/15, not published, EU:T:2017:231, paragraphs 94 and 95).
146    The applicant’s argument based on the alleged reputation of the mark applied for must therefore be rejected as being ineffective, without it being necessary to rule on whether it is out of time.
147    In the second place, as regards the existence of a likelihood of confusion between, on the one hand, the mark applied for and, on the other, the earlier Italian figurative mark ZARA and the earlier international word mark LE DELIZIE ZARA, the Board of Appeal found that there was a likelihood of confusion in respect of all the goods and services in Classes 29, 30, 35 and 43 covered by the mark applied for. However, as regards the goods in Classes 31 and 32 covered by that mark, it ruled out the existence of such a likelihood of confusion.
148    It should be borne in mind that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered by them. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa
(judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
149    In this respect, first, as regards the factor relating to the similarity of the signs at issue, it should be noted that that factor is likely to play an important role in so far as those signs are composed of the same word, namely ‘zara’. The mark applied for and the earlier Italian figurative mark ZARA, considered as a whole, display a high degree of similarity, with the only difference arising from the presence of a figurative element in the earlier mark, which is not highly distinctive in relation to the goods concerned. Similarly, the mark applied for and the earlier international word mark LE DELIZIE ZARA display a high degree of similarity, with the only difference arising from the presence of the expression ‘le delizie’ in the earlier mark, which does not counteract the similarity linked to the presence of the common element ‘zara’.
150    Secondly, as regards the distinctive character of the earlier marks, it should be noted that they have an average degree of inherent distinctiveness.
151    Thirdly, it is necessary to take into consideration the factor relating to the fact that the ‘edible oils’ and ‘rice, …; …
preparations made from cereals, bread, …; vinegar, sauces (condiments)’ covered by the mark applied for are identical to the goods covered by the earlier marks and that another part of the goods and services covered by the mark applied for, namely ‘edible … fats’, ‘preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; milk products’ and ‘rice, tapioca, sago; flour …, pastry; yeast, baking-powder; salt, mustard; …;
spices; rice-based snack food’, as well as ‘retailing and wholesaling in shops, selling via global computer networks, by catalogue, by mail order, by telephone, by radio and television and via other electronic means of preserved, frozen, dried and cooked fruits and vegetables, edible oils, rice, flour and preparations made from cereals, bread, vinegar, sauces (condiments)’ and
‘restaurant services (food), self-service restaurants, cafeterias’ are similar to various degrees
to the goods covered by the earlier marks.
152    In that regard, it should be borne in mind that all the goods in question are everyday consumer goods, in relation to which the relevant public will show an average degree of attention when purchasing them.
153    A likelihood of confusion could be found to exist only if the relevant public were likely to be misled as to the commercial origin of the goods in question.
154    In the present case, that likelihood appears to have been established with regard to all the goods and services covered by the mark applied for which are identical or similar to various degrees to the goods covered by the earlier marks. In the presence of the goods covered by the mark applied for, consumers forming part of the relevant public will establish a link between, on the one hand, that mark and, on the other, the earlier Italian figurative mark ZARA and the earlier international word mark LE DELIZIE ZARA, in so far as, first, the marks at issue, considered as a whole, display a high degree of similarity, secondly, the goods in question are identical or similar to various degrees and, thirdly, consumers will display only an average level of attention when purchasing those goods.
155    In the third place, as regards the other earlier marks relied on by the intervener in support of the opposition, it should be noted, as the Board of Appeal did in paragraphs 131 to 135 of the contested decision, that the goods covered by those marks in respect of which genuine use has been proved are either identical to the goods covered by the earlier Italian figurative mark ZARA and by the earlier international word mark LE DELIZIE ZARA, or do not call into question the finding of a lack of similarity in respect of the goods and services covered by the mark applied for which have been found to be dissimilar in respect of the goods covered by the earlier Italian figurative mark ZARA and by the earlier international word mark LE DELIZIE ZARA.
156    In the light of all of the foregoing, it must be held, in the present case, that the Board of Appeal was entitled, without committing any error, to conclude that there was a likelihood of confusion between the marks at issue, since the goods or services covered by them either displayed a certain degree of similarity or were identical. The second part of the second plea must therefore be rejected and, consequently, that plea in law must be rejected and the action must be dismissed in its entirety.
Costs
157    Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
158    Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Industria de Diseño Textil, SA (Inditex) to pay the costs.
Tomljenović
Schalin
Škvařilová-Pelzl
Delivered in open court in Luxembourg on 1 December 2021.
E. Coulon
S. Papasavvas
Registrar
President
*      Language of the case: English.