Source: EURLEX
Language: en
Format: md

JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

3 September 2025 ([\*](#Footnote*))

( EU trade mark – Invalidity proceedings – EU word mark TUNA – Absolute ground for refusal – Mark of such a nature as to deceive the public – Article 7(1)(g) of Regulation (EC) No 207/2009 – Article 63(3) of Regulation (EU) 2017/1001 – Authority of a final decision )

In Case T‑377/24,

**Verband der Islamischen Kulturzentren eV,** established in Cologne (Germany), represented by C. Sánchez Margareto and M. Pastor Palomares, lawyers,

applicant,

v

**European Union Intellectual Property Office (EUIPO),** represented by D. Gája, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

**Inaba Shokuhin Co. Ltd,** established in Shizuoka (Japan),

THE GENERAL COURT (Eighth Chamber),

composed of A. Kornezov, President, G. De Baere and S. Kingston (Rapporteur), Judges,

Registrar: V. Di Bucci,

having regard to the written part of the procedure,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

gives the following

**Judgment**

1        By its action under Article 263 TFEU, the applicant, Verband der Islamischen Kulturzentren eV, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 May 2024 (Case R 1651/2023-5) (‘the contested decision’).

**Background to the dispute**

2        On 5 July 2013, Merkez Handels GmbH für Konsumgüter, the predecessor in law to the applicant, filed an application for registration of an EU trade mark with EUIPO in respect of the word sign TUNA.

3        Following the restriction made in the course of the proceedings before EUIPO, the mark applied for covered goods and services in, inter alia, Classes 29 to 31 and 35 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding, for each of those classes, to the following description:

–        Class 29: ‘Poultry; meat extracts; broth concentrates; meat extracts; meat jellies; herrings; soups; croquettes; edible oils; bacon; game; sausages; sausages in batter; meats; bouillon (preparations for making -); all the aforesaid goods other than in connection with tuna fish’;

–        Class 30: ‘Buns; bread; unleavened bread; sandwiches; petit-beurre biscuits; cheeseburgers [sandwiches]; meat pies; meat gravies; fondants; spring rolls; noodle-based prepared meals; sauces for use with pasta; pasties; pies; pizza; tomato sauce; all the aforesaid goods other than in connection with tuna fish’;

–        Class 31: ‘Live animals; foodstuffs for animals; algarovilla for animal consumption; seaweed for human or animal consumption; distillery waste for animal consumption; peanut meal for animals; peanut cake for animals; pet food; meal for animals; foodstuffs and fodder for animals; mash for fattening livestock; beverages for pets; yeast for animal consumption; dog biscuits; edible chews for animals; bran mash for animal consumption; strengthening animal forage; live animals; foodstuffs and fodder for animals; bird food; all the aforesaid goods other than in connection with tuna fish’;

–        Class 35: ‘Retailing and wholesaling in relation to meat, fish, poultry and game, meat extracts, salted fish, fish, preserved, fish, not live, fish fillets, foods prepared from fish, fish, tinned, isinglass for food, fish meal for human consumption, fish mousses, processed fish spawn, meat, meat, preserved, broth concentrates, meat extracts, meat jellies, meat, tinned, salted meats, herrings, vegetable soup preparations, soups, croquettes, edible oils, preparations for making soup, sausages, sausages in batter, charcuterie, preparations for making bouillon, buns, bread, unleavened bread, sandwiches, petit-beurre biscuits, cheeseburgers (sandwiches), meat pies, meat gravies, fondants (confectionery), spring rolls, noodle-based prepared meals, pasta sauce, pasties, pies, pizzas, tomato sauce, live animals, foodstuffs for animals, algarovilla for animal consumption, seaweed for human or animal consumption, distillery waste for animal consumption, fish (live), fish meal for animal consumption, pet food, meal for animals, foodstuffs for animals, mash for fattening livestock, dog biscuits, edible chews for animals, bran mash for animal consumption, strengthening animal forage, linseed for animal consumption, linseed meal for animal consumption, animal fattening preparations, stall food for animals, fish spawn, live animals, cattle food, bird food, all the aforesaid goods other than in connection with tuna fish’.

4        The application for registration was published on 13 January 2014 and the mark was registered on 31 May 2016 under No 11 960 721.

5        On 25 February 2022, Inaba Shokuhin filed an application for a declaration of invalidity of the contested mark in respect of the goods and services referred to in paragraph 3 above. The ground relied on in support of the application for a declaration of invalidity was that set out in Article 52(1)(a) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), read in conjunction with Article 7(1)(g) of that regulation.

6        On 13 June 2023, the Cancellation Division declared the contested mark invalid in respect of all the goods and services listed in paragraph 3 above.

7        On 2 August 2023, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

8        By the contested decision, the Board of Appeal dismissed the appeal.

**Forms of order sought**

9        The applicant claims that the Court should:

–        annul the contested decision;

–        annul all the orders as to costs made by EUIPO against the applicant;

–        order EUIPO to pay the costs.

10      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs in the event that an oral hearing is convened.

**Law**

***Determination of the applicable law*** **ratione temporis**

11      In support of its action, the applicant relies on two pleas in law, alleging (i) infringement of Article 59(1)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1), in conjunction with Article 7(1)(g) thereof, and (ii) infringement of Article 63(3) of that regulation.

12      As a preliminary point, it must be noted that, given the date on which the application for registration at issue was filed, namely 5 July 2013, 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).

13      Consequently, in the present case, as regards the substantive rules, the references made by the applicant, in the line of argument put forward, to Article 59(1)(a) of Regulation 2017/1001, read in conjunction with Article 7(1)(g) of that regulation, must be understood as referring to Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(g) of that regulation.

14      Furthermore, given that, 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 dispute is governed by the procedural provisions of Regulation 2017/1001.

***The s****ubject matter** **of the proceedings***

15      The applicant submits that, on 11 July 2024, it filed a request with EUIPO for limitation of the goods and services covered by the contested mark. The request for limitation consisted of the addition of the specification ‘all the aforesaid meat, poultry and animal related goods prepared under Halal slaughtering’ to each of the lists of goods and services at issue in Classes 29 to 31 and 35.

16      EUIPO argues that the request for limitation has no relevance to the present action, inasmuch as it was filed after the adoption of the contested decision.

17      It must be stated in that regard that, under Article 43(1) of Regulation No 207/2009, a trade mark applicant may, at any time, withdraw his, her or its EU trade mark application or restrict the list of goods or services contained therein.

18      In accordance with settled case-law, for reasons of procedural economy, the Court may take account of a restriction of the goods and services covered in the trade mark application on condition that that restriction is not such as to change the factual context to which the Board of Appeal’s examination related as regards the goods or services not affected by that restriction. Thus, a restriction carried out in accordance with Article 43(1) of Regulation No 207/2009 subsequent to the adoption of the decision which is being contested may be taken into consideration by the Court where the trade mark applicant limits itself strictly to reducing the subject matter of the dispute by withdrawing certain categories of goods or services from the list of goods and services covered in the trade mark application. As the Board of Appeal must assess whether there is a likelihood of confusion in relation to each of the goods and services in respect of which the EU trade mark application is made, the mere removal of one or more categories of goods and services from the list in respect of which the trade mark application is filed is not, in principle, such as to alter the factual context to which the Board of Appeal’s examination related as regards the goods and services not affected by that restriction (see, to that effect, judgment of 21 February 2024, *Hoffmann* v *EUIPO – Moldex/Metric (Holex)*, T‑767/22, not published, EU:T:2024:108, paragraph 21 and the case-law cited).

19      Where, on the other hand, the restriction of the goods and services covered in the trade mark application leads to an alteration of the subject matter of the dispute, inasmuch as it results in the introduction of new elements which had not been submitted for examination by the Board of Appeal for the purposes of the adoption of the decision which is being contested, it may not, in principle, be taken into account by the Court. Such is the case where the restriction of the goods and services consists in specifications capable of influencing the assessment of the similarity of the goods and services or the determination of the target public and of altering, consequently, the factual context which had been put before the Board of Appeal (see, to that effect, judgment of 21 February 2024, *Holex*, T‑767/22, not published, EU:T:2024:108, paragraph 22 and the case-law cited).

20      In the present case, by its request for limitation, the applicant seeks to restrict the goods in Classes 29 to 31 and the services relating to those goods in Class 35 in respect of which the contested mark is registered, in order to cover exclusively foodstuffs prepared according to the Halal ritual. Thus, the restriction at issue does not constitute a mere removal of certain goods or services from the list, but entails an alteration of the description of the goods concerned and, thus, is capable of altering the factual context to which the Board of Appeal’s examination related, in so far as it concerns one of the characteristics of the goods at issue, which is capable of influencing the assessment of the nature of the goods and services covered by the contested mark and the determination of the relevant public.

21      In those circumstances, in accordance with the case-law cited in paragraph 19 above, it must be held that such a restriction cannot, in the present case, be taken into account by the Court for the purpose of examining the legality of the contested decision. Consequently, the present dispute concerns the list of goods and services covered by the contested mark, as examined by the Board of Appeal.

***Substance***

22      In support of its action, the applicant relies on two pleas in law, alleging (i) infringement of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(g) thereof, and (ii) infringement of Article 63(3) of Regulation 2017/1001.

23      In the present case, it is appropriate first of all to examine the second plea, before examining the first plea.

*The second plea in law, alleging infringement of Article 63(3) of Regulation 2017/1001*

24      By its second plea, the applicant argues, in the first place, that the conditions laid down in Article 63(3) of Regulation 2017/1001 were fulfilled before the Board of Appeal, with the result that the appeal brought before that body by the other party to the proceedings before EUIPO should have been dismissed as inadmissible. The applicant submits that EUIPO assessed several times the absolute ground for refusal referred to in Article 7(1)(g) of Regulation No 207/2009 in relation to the contested mark in the context of the initial proceedings for registration of that mark and that it ultimately ‘waived’ that ground for refusal before the registration of the contested mark in 2016. Accordingly, and in the interests of legal certainty, EUIPO should follow the same reasoning as in the past, rejecting that ground for refusal, given that the circumstances remain unchanged.

25      In the second place, the applicant relies on the principles of equal treatment and of sound administration in so far as EUIPO should take into account the context of previous decisions which the latter has taken in identical circumstances.

26      EUIPO disputes the applicant’s line of argument.

27      In the first place, it should be borne in mind that, in accordance with Article 63(3) of Regulation 2017/1001, an application for revocation or for a declaration of invalidity is inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits, either by EUIPO or by an EU trade mark court as referred to in Article 123 of that regulation, and the decision of EUIPO or that court on that application has acquired the authority of a final decision.

28      In the present case, it is common ground that Article 7(1)(g) of Regulation No 207/2009 was relied on both during the initial procedure for registration of the contested mark before EUIPO and during the invalidity proceedings which gave rise to the contested decision.

29      However, it is sufficient to note, as is correctly argued by EUIPO, that, in the present case, the conditions referred to in paragraph 27 above are not satisfied.

30      As regards the identity of the subject matter, it must be pointed out that the procedure for registration and invalidity proceedings have different purposes. One relates to the registration of a trade mark and the other relates to the declaration of invalidity of a trade mark. It follows from Article 6 of Regulation 2017/1001 that the purpose of registration of a sign as an EU trade mark is to obtain such a mark, whereas, as the Board of Appeal noted in paragraph 23 of the contested decision, the purpose of invalidity proceedings is, inter alia, to enable EUIPO to review the validity of the registration of a mark and to adopt, where necessary, a position which it should have adopted of its own motion under Article 37(1) of Regulation No 207/2009 (order of 19 June 2014, *Donaldson Filtration Deutschland* v *ultra air*, C‑450/13 P, EU:C:2014:2016, paragraph 40; see, also, judgment of 27 November 2024, *Vino Vintana* v *EUIPO – Torrevento (SINCE 1974 PRIMITIVO DI MANDURIA)*, T‑276/24, not published, EU:T:2024:868, paragraph 36 and the case-law cited).

31      Thus, the registration of a mark cannot give rise to a legitimate expectation for the proprietor of that mark with regard to the result of subsequent invalidity proceedings (judgment of 19 May 2010, *Ravensburger* v *OHIM – Educa Borras (Memory)*, T‑108/09, not published, EU:T:2010:213, paragraph 25).

32      Therefore, the procedure for registration and invalidity proceedings do not share the same subject matter. As the conditions relating to the identity of the parties, subject matter and cause of action are cumulative, such a finding is sufficient to conclude that the decision to register the contested mark had not acquired the authority of a final decision in relation to the contested decision.

33      It follows that the applicant’s line of argument in that regard must be rejected.

34      In the second place, the line of argument alleging that, by failing to take account of EUIPO’s previous decisions relating to the contested mark, the Board of Appeal acted in breach of the principles of equal treatment and of sound administration cannot succeed.

35      It is true that, according to the case-law, and as is recalled by the applicant, EUIPO must, in the light of the principles of equal treatment and sound administration, take into account its previous decisions in respect of similar applications. It must consider with especial care whether it should decide in the same way or not, as the way in which those principles are applied must be consistent with respect for the principle of legality, which means that the examination of any trade mark application must be stringent and full, and must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case (see judgment of 10 March 2011, *Agencja Wydawnicza Technopol* v *OHIM*, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 77; see, also, judgment of 7 December 2022, *Puma* v *EUIPO – Vaillant (Puma)*, T‑623/21, not published, EU:T:2022:776, paragraph 108 and the case-law cited).

36      In the present case, contrary to the applicant’s assertions, it is apparent from the contested decision that the Board of Appeal examined in detail the previous decisions of EUIPO relied on by the applicant and concluded from that examination that they did not alter its conclusion as to the deceptive nature of the contested mark. In paragraphs 106 to 112 of the contested decision, the Board of Appeal correctly considered those decisions to be irrelevant, in the light of the case-law cited in paragraph 35 above. In that regard, it is sufficient to state, as EUIPO did, that the applicant has not put forward any substantiated argument calling into question the Board of Appeal’s findings in the matter.

37      In the light of all the foregoing considerations, the second plea in law must be rejected as unfounded.

*The first plea in law, alleging infringement of Article 52(1)(a) of Regulation No 207/2009, read in conjunction with Article 7(1)(g) of that regulation*

38      In support of its first plea, the applicant puts forward, in essence, an argument in three parts, alleging, first, an incorrect assessment of the scope of protection of the contested mark, second, an incorrect assessment of the relevant public and, third, an incorrect assessment of the likelihood of deception having regard, in particular, to the labelling of the goods marketed under the contested mark.

39      As a preliminary point, it should be borne in mind that, under Article 7(1)(g) of Regulation No 207/2009, trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service, must not be registered. Article 7(2) of that regulation provides that Article 7(1) is to apply notwithstanding that the grounds of non-registrability obtain in only part of the European Union.

40      The circumstances for refusing registration referred to in Article 7(1)(g) of Regulation No 207/2009 presuppose the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived (see judgment of 26 October 2017, *Alpirsbacher Klosterbräu Glauner* v *EUIPO (Klosterstoff)*, T‑844/16, EU:T:2017:759, paragraph 42 and the case-law cited).

41      It should be borne in mind, in that respect, that the essential function of a trade mark is to guarantee the identity of the origin of the goods or services designated by that mark to the consumer or end user by enabling him or her, without any possibility of confusion, to distinguish those goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or the services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality. A trade mark no longer fulfils that role of acting as a guarantee if the information that it contains deceives the public (see judgment of 13 May 2020, *SolNova* v *EUIPO – Canina Pharma (BIO-INSECT Shocker)*, T‑86/19, EU:T:2020:199, paragraph 72 and the case-law cited).

42      The absolute ground for refusal mentioned in Article 7(1)(g) of Regulation No 207/2009 can be assessed only, first, by reference to the goods or services at issue and, secondly, by reference to the relevant public’s perception of the mark (see judgment of 29 June 2022, *Hijos de Moisés Rodríguez González* v *EUIPO – Ireland and Ornua (La Irlandesa 1943)*, T‑306/20, EU:T:2022:404, paragraph 56 and the case-law cited).

43      Moreover, Article 7(1)(g) of Regulation No 207/2009 implies a sufficiently specific designation of potential characteristics of the goods and services covered by the trade mark. Only where the targeted consumer is led to believe that the goods and services possess certain characteristics which they do not in fact possess will he or she be deceived by the trade mark (see judgment of 29 June 2022, *La Irlandesa 1943*, T‑306/20, EU:T:2022:404, paragraph 57 and the case-law cited).

44      Furthermore, pursuant to Article 52(1)(a) of Regulation No 207/2009, an EU trade mark is to be declared invalid on application to EUIPO or on the basis of a counterclaim in infringement proceedings where that trade mark has been registered contrary to the provisions of Article 7 of that regulation.

45      In invalidity proceedings based on an absolute ground for refusal, as the registered EU trade mark is presumed to be valid, it is for the person who has filed the application for a declaration of invalidity to invoke before EUIPO the specific facts which call the validity of that trade mark into question (judgment of 13 September 2013, *Fürstlich Castell’sches Domänenamt* v *OHIM – Castel Frères (CASTEL)*, T‑320/10, EU:T:2013:424, paragraph 28).

46      It is in the light of those considerations, having regard to the Board of Appeal’s assessment as set out in the contested decision, that the applicant’s line of argument must be examined.

47      It is appropriate to examine, first of all, the second part of the first plea, and then to consider the first and third parts of that plea together.

–       *The second part, alleging an incorrect assessment of the relevant public*

48      By the second part of its first plea, the applicant argues that the Board of Appeal incorrectly defined the relevant public. According to the applicant, the Board of Appeal disregarded an argument based on the fact that, in so far as the applicant’s purpose was to spread Islamic religious practice in Germany, it marketed only Halal goods, with the result that the relevant public was the Muslim public living in the European Union, which follows strict rules regarding meat consumption and whose level of attention is higher than average. Thus, the Board of Appeal erred in limiting itself to the finding that the goods and services at issue did not contain direct references to production according to the Halal ritual, but rather general references to foodstuffs. In that regard, it also relies on the request for limitation referred to in paragraph 15 above.

49      EUIPO disputes the applicant’s line of argument.

50      In the contested decision, the Board of Appeal found that, as the contested mark included a word which was in everyday usage in English, the assessment of the registrability of that mark was to be based on the English-speaking part of the public of the European Union, which at the very least includes the public in the Member States in which English is an official language, namely Ireland and Malta. Furthermore, in rejecting the applicant’s line of argument that the relevant public is limited solely to the Muslim public which often consumes Halal goods, the Board of Appeal stated that the goods and retail services at issue were intended for the general public, with an average level of attention, in so far as the list of goods and services covered by the contested mark did not refer to goods prepared according to the Halal ritual. By contrast, as regards wholesale services, it stated that those services are also aimed at the professional public, whose level of attention is high.

51      It is apparent from the case-law that the relevant public consists of the average consumer, who is deemed to be reasonably well-informed and reasonably observant and circumspect (see, to that effect, judgments of 27 February 2002, *Ellos* v *OHIM (ELLOS)*, T‑219/00, EU:T:2002:44, paragraph 30, and of 30 June 2004, *Norma Lebensmittelfilialbetrieb* v *OHIM (Mehr für Ihr Geld)*, T‑281/02, EU:T:2004:198, paragraph 27).

52      As a preliminary point, it should be noted that the applicant does not dispute the Board of Appeal’s finding as regards the wholesale services in Class 35 in respect of which a high level of attention was found.

53      In the present case, first, it must be pointed out that, pursuant to Article 7(2) of Regulation No 207/2009, the relevant public by reference to which the absolute ground for refusal must be assessed is an English-speaking public, as the word sign at issue consists of an element of the English language (see, to that effect, judgments of 15 October 2003, *Nordmilch* v *OHIM (OLDENBURGER)*, T‑295/01, EU:T:2003:267, paragraph 35 and the case-law cited, and of 29 November 2023, *Myforest Foods* v *EUIPO (MYBACON)*, T‑107/23, not published, EU:T:2023:769, paragraph 33).

54      Second, it should be noted that the applicant incorrectly submits that the relevant public is limited to the Muslim public living in the European Union. As the Board of Appeal correctly observed in paragraph 51 of the contested decision, the designation of the goods and services, as set out in paragraph 3 above, in no way refers to methods of preparation according to the Halal ritual. Consequently, all the goods and services are intended for general consumption, and not only for persons practising Islam, since anyone is likely at some time or another to acquire such goods either regularly or occasionally (see, to that effect, judgment of 11 May 2005, *Naipes Heraclio Fournier* v *OHIM – France Cartes (Sword in a pack of cards, knight of clubs and king of swords)*, T‑160/02 to T‑162/02, EU:T:2005:167, paragraph 45).

55      In addition, as regards the applicant’s arguments based on its request for limitation of the goods and services in the present case, those arguments must be rejected for the reasons set out in paragraphs 20 and 21 above.

56      Third, as regards the applicant’s line of argument that the use of the contested mark shows that that mark covers a limited category of consumers who consume meat prepared according to the Halal ritual, it is sufficient to bear in mind that the only date relevant for the purposes of the assessment of an application for a declaration of invalidity is the date of filing of the application for the mark at issue (orders of 24 September 2009, *Bateaux mouches* v *OHIM*, C‑78/09 P, not published, EU:C:2009:584, paragraph 18, and of 23 April 2010, *OHIM* v *Frosch Touristik*, C‑332/09 P, not published, EU:C:2010:225, paragraph 41). Therefore, material subsequent to the date of the trade mark application can be taken into account only if it relates to the situation on that date (judgment of 3 June 2009, *Frosch Touristik* v *OHIM – DSR touristik (FLUGBÖRSE)*, T‑189/07, EU:T:2009:172, paragraphs 19 and 28).

57      Fourth, contrary to the applicant’s assertions, the Board of Appeal did not disregard its line of argument as referred to in paragraph 56 above, but addressed it in paragraphs 50 to 59 of the contested decision, in which it found that the goods and services at issue targeted the general public, for the reasons summarised in paragraph 50 above.

58      Furthermore, as regards the level of attention of the relevant public, it is sufficient to state that the goods at issue in Classes 29 to 31 are everyday consumer goods which the customer normally purchases quickly and without paying great attention to them (see, to that effect, judgments of 17 December 2010, *Chocoladefabriken Lindt & Sprüngli* v *OHIM (Shape of a chocolate rabbit)*, T‑395/08, not published, EU:T:2010:550, paragraph 20, and of 29 January 2019, *The GB Foods* v *EUIPO – Yatecomeré (YATEKOMO)*, T‑336/17, not published, EU:T:2019:36, paragraph 45 and the case-law cited).

59      It follows that the Board of Appeal did not err in finding that the public by reference to which the registrability of the contested mark had to be assessed was the general public in Ireland and Malta, with an average level of attention for the goods in Classes 29 to 31 and the services in Class 35, with the exception of wholesale services in respect of which a high level of attention had been established.

60      Accordingly, the second part of the first plea in law must be rejected.

–       *The first and third parts, alleging an incorrect assessment of the scope of protection and use on the market of the contested mark and of the marketing of the goods at issue*

61      By the first part of its first plea, the applicant submits that the Board of Appeal did not properly take into account the scope of protection of the contested mark and made several errors of assessment regarding the information which it put forward to show how the contested mark is used on the market.

62      In the first place, it argues that the Board of Appeal disregarded the restriction filed for by the applicant in 2013 in respect of the goods and services at issue, which was worded as follows: ‘all the aforesaid goods other than in connection with tuna fish’ (‘the restriction made in 2013’).

63      In the second place, the applicant submits that the Board of Appeal infringed Article 7(1)(g) of Regulation No 207/2009 by relying on mere assumptions when it found that there was a connection between the goods marketed under the contested mark and fish-related products. In that regard, the applicant recalls that it has provided several arguments and items of evidence relating to the way in which the goods at issue are used on the market and seeking to show, inter alia, that the ingredients of those goods are clearly listed on the packaging, that those goods are placed on supermarket shelves containing meat-related products and that consumers follow a very strict transparency policy. The applicant adds that the contested mark was not perceived as deceptive by the relevant public at the time of the filing of the application for registration and that it has never received complaints in connection with the goods at issue marketed under that mark.

64      In that regard, in the third part of its first plea, the applicant claims that the goods covered by the contested mark comply with EU labelling rules, so that a mere inspection of the product enables the consumer to determine whether or not that product contains tuna, contrary to the Board of Appeal’s findings. The applicant refers to examples of the labelling and packaging of the goods marketed under the contested mark in that regard and emphasises that the relevant public may, by means of that labelling, easily become aware of the fact that all the foodstuffs sold under the contested mark are meat-related products.

65      In the third place, the applicant refers to several earlier German registrations, as well as to an EU trade mark of which it is the proprietor, which cover meat-related products in order to demonstrate that the contested mark was already distinctive at the time of its registration, without giving rise to a risk of deception with regard to the relevant public.

66      In the fourth place, the applicant claims that the purpose of the documents which it submitted during the administrative procedure was not to prove that the contested mark had acquired distinctive character for consumers, but rather to explain the relevance and context of that mark and the intention behind the application for registration of that mark, which was not to deceive, but to sell foodstuffs which comply with the Halal ritual. According to the applicant, the documents show the way in which the goods are being labelled and sold on the internet and in shops and supermarkets and cannot be disregarded by the Court, in so far as they clarify the situation as it stood on the date of the filing of the application for registration of the contested mark. In the same vein, the applicant submits that fish- and meat-related foodstuffs are placed in different sections of shops and websites and that consumers are familiar with the organisation of shops and cannot confuse those goods.

67      EUIPO disputes the applicant’s arguments.

68      In the contested decision, first of all, the Board of Appeal noted that the contested mark consisted of the word ‘tuna’ and would be understood by the relevant public as referring to ‘large fish that live in warm seas and are caught for food and this fish eaten as food’. The applicant does not dispute that finding.

69      Next, the Board of Appeal found that the goods and services at issue consisted essentially of different foodstuffs for human or animal consumption or services linked to those goods, all sharing the characteristic of not containing or not having any connection with tuna, which was confirmed by the restriction made in 2013. However, according to the Board of Appeal, the exclusion, by the restriction made in 2013, of goods and services in connection with tuna necessarily implied that those goods and services were capable of having a connection with that fish. In that context, at least part of the relevant public would understand the contested mark as referring to tuna as an ingredient of the foodstuffs concerned. However, according to the Board of Appeal, the restriction made in 2013 clearly indicates otherwise.

70      Thus, in the first place, it must be held that, contrary to the applicant’s assertions, the Board of Appeal did not disregard the restriction made in 2013. On the contrary, it found that, having regard to the meaning of the contested mark, there was a clear inconsistency between the information conveyed by that mark, which refers to tuna, and the characteristics of the goods and services at issue, given that the list of those goods and services expressly excluded the goods and services in connection with tuna. Therefore, the Board of Appeal found that there was a serious risk that the relevant public would think that the goods and services bearing the contested mark possess certain characteristics which they do not in fact possess.

71      The applicant’s line of argument does not call that finding into question. It is apparent from the case-law that, for the purpose of applying Article 7(1)(g) of Regulation No 207/2009, the Board of Appeal should have ascertained whether, on the date of the application for registration of the mark, there was any inconsistency between the information which the contested mark conveyed and the characteristics of the goods designated in that application (see judgment of 29 June 2022, *La Irlandesa 1943*, T‑306/20, EU:T:2022:404, paragraph 71 and the case-law cited). In the present case, the Board of Appeal correctly found that the relevant public would perceive the contested mark as indicating that the goods and services covered by it contain tuna, consist of tuna or originate from tuna. It follows that the sign is capable of deceiving the relevant public as to the quality of the goods and services concerned, given that they do not contain or relate to such an ingredient (see, by analogy, judgment of 19 July 2017, *Lackmann Fleisch- und Feinkostfabrik* v *EUIPO (медведь)*, T‑432/16, not published, EU:T:2017:527, paragraph 54).

72      Thus, the Board of Appeal duly established that, at the time of the filing of the application for registration of the contested mark, there was a contradiction between the meaning of that mark and the characteristics of the goods and services at issue, which could not be overcome by the restriction made in 2013.

73      In the second place, as regards the applicant’s line of argument that the packaging of the goods at issue enables consumers to become aware of the fact that those goods do not contain tuna, it should be pointed out that, as was observed by the Board of Appeal, tuna and foodstuffs which do not contain tuna are often placed next to each other on supermarket shelves. Furthermore, as there are no particular shapes of packaging which are typically used only for tuna, those products cannot be distinguished solely by means of the shape of their packaging. On the contrary, for example, certain goods in Class 29, such as, in particular, poultry and meat extracts, are often presented cut into pieces which can easily be confused with pieces of tuna, especially since tuna meat and meat-related products are a similar colour and, in any event, are sometimes packaged in opaque packaging, which prevents consumers from clearly identifying the foodstuffs contained therein.

74      In that regard, contrary to what is claimed, in essence, by the applicant, the Board of Appeal did not err in relying on well-known facts, relating to the connections between the goods and services at issue and tuna-related goods, in paragraphs 81 to 83 of the contested decision. Indeed, in invalidity proceedings, the Board of Appeal may take into consideration, in addition to the arguments and facts put forward by the parties, facts which are well known, that is, facts which are likely to be known by anyone or can be learned from generally accessible sources, in order to ascertain whether a ground for refusal precluded registration of the mark at issue at the time of filing of the application for registration (see judgment of 7 February 2024, *Beauty Biosciences* v *EUIPO – Société de Recherche Cosmétique (BEAUTYBIO SCIENCE)*, T‑81/23, not published, EU:T:2024:59, paragraph 22 and the case law cited).

75      As regards the labelling requirements under EU legislation relied on by the applicant, it must be pointed out that the applicant’s line of argument in that regard implies that the deceptive nature of the mark would be detected only at the time of reading the label listing the ingredients of the goods. Contrary to the applicant’s assertions, it is therefore by no means obvious that consumers will be aware that those goods do not contain tuna. As was recalled by the Board of Appeal, it is apparent from the case-law that offering to consumers the opportunity to check the label to see which ingredients are used in the manufacturing of a foodstuff does not, in itself, preclude the mark referring to those foodstuffs from being deceptive (see, to that effect, judgment of 26 October 2017, *Klosterstoff*, T‑844/16, EU:T:2017:759, paragraph 45 and the case-law cited).

76      Consequently, it is sufficient to state that the Board of Appeal did not err in finding that the opportunity to check the label of a product did not preclude a consumer from simply relying on the word element ‘tuna’ of which the contested mark consists when making a purchase in haste. For such purchases, consumers will not seek to analyse the wording of the packaging or check the content of the packaged goods and could, consequently, be misled.

77      In addition, it is sufficient to note, as the Board of Appeal did, that, once the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived has been established, it becomes irrelevant that the mark applied for might also be perceived in a way that is not misleading (judgment of 27 October 2016, *Caffè Nero Group* v *EUIPO (CAFFÈ NERO)*, T‑29/16, not published, EU:T:2016:635, paragraph 48).

78      In the third place, as regards the applicant’s arguments seeking to claim use of the contested mark on the market, based on both use prior and use subsequent to the registration of that mark and also relied on in the third part of the first plea, it should be borne in mind that the deceptive nature of a mark constitutes an absolute ground for invalidity of that mark under the provisions of Article 52(1)(a) of Regulation No 207/2009, in conjunction with Article 7(1)(g) thereof, and, in addition, a ground for revocation under Article 51(1)(c) of that regulation.

79      Article 51(1)(c) of Regulation No 207/2009 expressly provides that the misleading nature of a registered trade mark, which justifies a declaration that the rights of its proprietor are revoked, arises from the use made of that mark, whereas the provisions of Article 52(1)(a) of that regulation, in conjunction with Article 7(1)(g) thereof, which render invalid a mark that has been registered in spite of its deceptive nature, do not contain any reference to such use.

80      Thus, the examination of an application for a declaration of invalidity requires it to be established that the sign filed for the purposes of registration as a trade mark was per se of such a nature as to deceive the consumer at the time when the application for registration was filed, as the subsequent management of that sign is irrelevant (see, to that effect, judgments of 8 June 2017, *W.F. Gözze Frottierweberei and Gözze*, C‑689/15, EU:C:2017:434, paragraphs 55 and 56, and of 29 June 2022, *La Irlandesa 1943*, T‑306/20, EU:T:2022:404, paragraph 66).

81      Indeed, any specific circumstance unrelated to the intrinsic qualities of the mark which does not result from the mark itself and from the list of goods and services covered by that mark, such as its particular use on the market, should not be taken into consideration in the assessment of deceptiveness under Article 7(1)(g) of Regulation No 207/2009.

82      Consequently, in the present case, the contested mark ‘in itself’ should be regarded as deceptive, without taking account of external circumstances such as the use which has been made of it, as is correctly noted by EUIPO.

83      In the fourth place, as regards the applicant’s line of argument based on the absence of intention to deceive, it should be borne in mind that the application of the ground for refusal in Article 7(1)(g) of Regulation 2017/1001 does not require an intention to deceive the consumer. Indeed, in order to find that a mark has been registered in breach of the ground for refusal relating to the risk of deception, it must be established that the sign filed for the purposes of registration as a trade mark creates per se such a risk (see order of 31 March 2023, *Thomas Henry* v *EUIPO (MATE MATE)*, T‑482/22, not published, EU:T:2023:185, paragraph 64 and the case-law cited).

84      It follows that the first and third parts of the first plea are unfounded.

85      In the light of all of the foregoing, as the three parts have been rejected, the first plea in law must be rejected in its entirety.

86      It follows that the action must be dismissed in its entirety.

**Costs**

87      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

88      Although the applicant has been unsuccessful, EUIPO has contended that the applicant should be ordered to pay the costs only in the event that an oral hearing is convened. As no oral hearing has been organised, it is appropriate to order each party to bear its own costs.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      **Dismisses the action;**

2.      **Orders each party to bear its own costs.**

|  |  |  |
| --- | --- | --- |
| Kornezov | De Baere | Kingston |

Delivered in open court in Luxembourg on 3 September 2025.

|  |  |  |
| --- | --- | --- |
| V. Di Bucci |  | O. Porchia |

|  |  |  |
| --- | --- | --- |
| Registrar |  | President |

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[\*](#Footref*)      Language of the case: English.

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