Source: EURLEX
Language: en
Format: md

JUDGMENT OF THE GENERAL COURT (Second Chamber)

10 September 2025 (
[\*1](#t-ECR_62024TJ0425_EXT_EN_01-E0001)
)

(EU trade mark – Opposition proceedings – Application for EU figurative mark pastaZARA Sublime – Earlier EU word mark ZARA – Relative ground for refusal – No injury to reputation – Article 8(5) of Regulation (EC) No 40/94 – No link between the signs – No risk of unfair advantage being taken of the mark with a reputation – Existence of due cause for the use of the mark applied for)

In Case T‑425/24,

Ffauf Italia SpA, established in Riese Pio X (Italy), represented by P. Creta, A. Lanzarini, B. Costa and V. Basilavecchia, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by M. Chylińska and D. Gája, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Industria de Diseño Textil, SA, established in Arteixo (Spain), represented by G. Marín Raigal, E. Armero Lavie and J. Oria Sousa-Montes, lawyers,

THE GENERAL COURT (Second Chamber),

composed of A. Marcoulli, President, V. Tomljenović (Rapporteur) and L. Spangsberg Grønfeldt, Judges,

Registrar: G. Mitrev, Administrator,

having regard to the written part of the procedure,

further to the hearing on 8 May 2025,

gives the following

Judgment (
[1](#t-ECR_62024TJ0425_EXT_EN_01-E0002)
)

| 1 | By its action under Article 263 TFEU, the applicant, Ffauf Italia SpA, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 June 2024 (Case R 1576/2023-5) (‘the contested decision’).  … |

Forms of order sought

| 12 | The applicant claims that the Court should:   | – | annul the contested decision; |  | – | order EUIPO and the intervener to pay the costs. | |

| 13 | EUIPO contends that the Court should:   | – | dismiss the action; |  | – | order the applicant to pay the costs in the event that a hearing is convened. | |

| 14 | The intervener contends, in essence, that the Court should:   | – | dismiss the action; |  | – | order the applicant to pay the costs. | |

Law

…

The single plea in law, alleging infringement of Article 8(5) of Regulation No 40/94

…

The existence of due cause for using the mark applied for

| 95 | In essence, the applicant claims that it has used signs containing the word element ‘pastazara’ for several years, which constitutes due cause for the use of the mark applied for. |

| 96 | In that regard, it must be noted that whether there is a due cause which makes it possible to use a mark which adversely affects a mark with a reputation is a matter which must be interpreted restrictively (judgment of 16 March 2016, The Body Shop International v OHIM – Spa Monopole (SPA WISDOM), [T‑201/14](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2016%3A148&locale=en), not published, [EU:T:2016:148](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2016%3A148), paragraph [65](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2016%3A148&anchor=#point65)). |

| 97 | Moreover, the concept of ‘due cause’ may not only include objectively overriding reasons but may also relate to the subjective interests of a third party using a sign which is identical or similar to the mark with a reputation (see, by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, [C‑65/12](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49&locale=en), [EU:C:2014:49](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49), paragraph [45](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49&anchor=#point45)). |

| 98 | Thus, as is clear from Article 8(5) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark ([OJ 1994 L 11, p. 1](./../../../legal-content/EN/AUTO/?uri=OJ:L:1994:011:TOC)), the user of a sign similar to a mark with a reputation may rely on ‘due cause’ for the purpose of using that sign, that being an expression of the general objective of that regulation, which is to strike a balance between, on the one hand, the interests of the proprietor of a trade mark in safeguarding the essential function of that mark and, on the other, the interests of a third party in using, in the course of trade, such a sign for the purpose of denoting the goods and services that it markets (see judgment of 30 May 2018, Tsujimoto v EUIPO, [C‑85/16 P and C‑86/16 P](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2018%3A349&locale=en), [EU:C:2018:349](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2018%3A349), paragraph [90](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2018%3A349&anchor=#point90) and the case-law cited). |

| 99 | Furthermore, it is apparent from the case-law that the use by a third party of a sign similar to a mark with a reputation may be classified as due cause, within the meaning of Article 8(5) of Regulation No 40/94, if it is demonstrated, first, that that sign was being used before the abovementioned mark with a reputation was filed and, second, that such use is in good faith, which is determined by taking into account, in particular, how that sign has been accepted by, and what its reputation is with, the relevant public, the degree of closeness between the goods and services at issue and the economic and commercial significance of the use of the sign for the goods in question (see, to that effect and by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, [C‑65/12](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49&locale=en), [EU:C:2014:49](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49), paragraph [60](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49&anchor=#point60)). |

| 100 | It is in the light of the foregoing considerations that it must be examined whether, even if it were established that the relevant public would make a connection between the signs at issue and that the mark applied for would take unfair advantage of the repute of the earlier mark, the Board of Appeal was entitled to conclude that there was no due cause for using the mark applied for, which contains the word element ‘pastazara’. |

| 101 | In the first place, in so far as the applicant complains that the Board of Appeal failed to take into account the items of evidence relating to extracts from the commercial register and trade mark registrations which it submitted, it must be observed that it is apparent from paragraphs 99 to 106 of the contested decision that the Board of Appeal took into account the various company names of the applicant, such as PASTAZARA Sas di Dalla Costa Roberto & C., from 1978, and PASTAZARA SpA, from 1988. Furthermore, it took into account the registrations of the marks ZARA and pastaZARA filed by the applicant since the 1960s, noting the example of the Italian registration of the figurative mark pastaZARA, filed in 1968. |

| 102 | In addition, it must be pointed out that all the marks of which the applicant is the proprietor, examined by the Board of Appeal in paragraphs 101 to 103 of the contested decision, contain the word element ‘pastazara’, which is identical or very similar to the word element which appears in the mark applied for and on which the Board of Appeal based its conclusion relating to the similarity of the signs at issue. Moreover, a significant proportion of the figurative marks noted by the Board of Appeal contain the figurative element depicting a woman carrying wheat with a rural landscape in the background, which is present in the mark applied for. |

| 103 | Consequently, it must be held that signs displaying the word element ‘pastazara’ were being used by the applicant to market its goods before the earlier mark ZARA was filed, namely, on 3 July 2001, and even before the expansion of that mark in the 1980s and 1990s, which led to the acquisition of its reputation, as has been noted in paragraph 36 above. |

| 104 | Such circumstances differ significantly from those which were relevant in the case that gave rise to the judgment of 6 July 2012, Jackson International v OHIM – Royal Shakespeare (ROYAL SHAKESPEARE) ([T‑60/10](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2012%3A348&locale=en), not published, [EU:T:2012:348](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2012%3A348)), cited by the Board of Appeal in paragraph 104 of the contested decision. Contrary to what the Board of Appeal incorrectly found, in the present case, in order to claim that there was due cause for using the mark applied for, the applicant submitted evidence not of past use of the mark applied for, but, first, of the fact that such a mark was based on other marks of which the applicant was the proprietor, such as the figurative marks pastaZARA, and on the name ‘Zara’, in so far as it is linked to its identity and history, and, second, of the fact that its goods had been marketed under those figurative marks for decades. |

| 105 | In the second place, it is apparent from paragraph 106 of the contested decision that the Board of Appeal took into account the evidence submitted by the applicant in order to prove the use in good faith of signs containing the word element ‘pastazara’, relying in particular on its history, the various national and international registrations of trade marks containing that word element ‘pastazara’, and invoices, packaging, catalogues and leaflets of the applicant showing variants of the figurative mark pastaZARA. Thus, the Board of Appeal concluded that that evidence showed that the use of the name ‘Zara’ by the applicant related to the actual origin of its business in the Dalmatian city of Zara, now Zadar (Croatia), in the 1930s, continuing until 1943, and that the applicant had already used signs containing the name ‘Zara’ to denote pasta or similar goods, inter alia in Europe, before the filing date of the earlier mark in 2001 and even before the first use of the mark ZARA by the intervener in 1975. There is no need to call into question that assessment, which, moreover, is not disputed. |

| 106 | In the third place, it is apparent from the evidence referred to in paragraph 102 above that the applicant was the proprietor of international registrations of trade marks that contained the word element ‘pastazara’ covering a significant number of territories of States within the European Union, namely Austria, Germany, Benelux, Bulgaria, Croatia, the Czech Republic, France, Hungary, Portugal, Romania, Slovakia and Slovenia. Furthermore, the invoices, packaging, catalogues and leaflets submitted by the applicant, to which the Board of Appeal referred, in paragraph 103 of the contested decision, show the marketing of pasta under signs containing the word element ‘pastazara’ in the territory of several of those States as well as in Denmark, Estonia, Greece, Ireland, Italy, Lithuania, Latvia, Poland and Sweden. That evidence demonstrates a high degree of acceptance of signs containing the word element ‘pastazara’ in a significant part of the European Union, for the purposes of the case-law cited in paragraph 99 above. |

| 107 | In the fourth place, the use of the name ‘Zara’ by the applicant, linked to its identity and history, and the various marks containing the word element ‘pastazara’ which it registered and used for the marketing of its goods, noted in paragraphs 103 and 106 of the contested decision, attest to the economic and commercial significance of the use of signs containing the word element ‘pastazara’ for the applicant, within the meaning of the case-law cited in paragraph 99 above. |

| 108 | In the fifth place, as regards the degree of closeness between the goods at issue, it must be recalled, as has been stated in paragraph 82 above, that the Board of Appeal acknowledged that the fashion goods covered by the mark with a reputation and the pasta covered by the mark applied for have nothing in common, as they are neither complementary nor in competition and are usually offered by different companies active in different sectors. |

| 109 | In the sixth place, the Board of Appeal considered, in paragraph 107 of the contested decision, that there was in the present case no due cause for the use of the mark applied for, since the applicant had not demonstrated that the use of the term ‘zara’ was necessary for the marketing of the goods covered by the mark applied for, there was no prior agreement with the intervener authorising the use of that mark, and there was no evidence concerning the value of the investments in the promotion and advertising of that mark or its acceptance by the relevant public. |

| 110 | In that regard, first of all, as the applicant in essence submits, it is not apparent from the case-law that the concept of ‘due cause’ is conditional on the use of the sign being necessary for the marketing of the goods in question. Indeed, in the case which gave rise to the judgment of 16 March 2016, SPA WISDOM ([T‑201/14](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2016%3A148&locale=en), not published, [EU:T:2016:148](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2016%3A148), paragraph [66](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2016%3A148&anchor=#point66)), in response to the argument that the term ‘spa’, within the sign in question, had become descriptive or generic for the purpose of identifying cosmetic goods, the Court held that it had not been established that the use of the term ‘spa’ had become necessary for the marketing of those goods. Such circumstances differ from those that are relevant in the present case, in that it is not a question of the use of a term that has allegedly become generic, but of the use of a name that is closely linked to the applicant’s history and to the marketing of its goods. |

| 111 | Next, it must be observed that it does not follow from the case-law referred to in paragraph 99 above that the concept of ‘due cause’ is conditional on a finding as to a specific level of recognition of the sign in question, on a given level of investment and promotional effort or on the enjoyment of a market share. It is apparent from that case-law that establishing whether there is due cause forms part of an overall examination of all the relevant factors which seeks to determine whether the sign in question was actually being used on the market before the mark with a reputation was filed and whether that use was in good faith (see, to that effect and by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, [C‑65/12](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49&locale=en), [EU:C:2014:49](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49), paragraph [60](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49&anchor=#point60)). |

| 112 | That being so, the evidence examined by the Board of Appeal in paragraphs 99 to 106 of the contested decision, as has been pointed out in paragraph 106 above, demonstrates the applicant’s activities relating to marketing of pasta under various marks containing the word element ‘pastazara’ in a significant part of the European Union. Furthermore, the actions brought by the applicant before various national courts, relying on signs containing the word element ‘pastazara’, to which the Board of Appeal refers in paragraph 105 of the contested decision, attest to the applicant’s efforts to defend its use of those signs. |

| 113 | Lastly, the Board of Appeal erred in rejecting as ineffective the applicant’s claims relating to its good faith. The good faith of a person alleging due cause for the use of a sign similar to a mark with a reputation is one of the factors that are relevant in the context of the overall examination to be carried out for the purposes of that condition laid down in Article 8(5) of Regulation No 40/94 (see, to that effect and by analogy, judgment of 6 February 2014, Leidseplein Beheer and de Vries, [C‑65/12](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49&locale=en), [EU:C:2014:49](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49), paragraph [56](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2014%3A49&anchor=#point56)). |

| 114 | In the light of the foregoing, it must be held that, although the Board of Appeal did not completely disregard the evidence relating to the applicant’s use of signs containing the element ‘pastazara’, some of which had been registered for decades in respect of foodstuffs in Class 30, and correctly observed that the applicant’s use of the name ‘Zara’ related to the actual origin of its business, the Board of Appeal did not draw the appropriate conclusions from those findings in its assessment of the factors that are relevant in order to establish whether there is due cause, within the meaning of Article 8(5) of Regulation No 40/94. |

| 115 | Having regard, first, to the applicant’s use of signs containing the word element ‘pastazara’ before the mark with a reputation was filed, as has been found in paragraph 103 above, and, second, to the evidence capable of attesting to the good faith of that earlier use, for the purposes of the case-law cited in paragraph 99 above, such as the absence of closeness between the goods at issue, established in paragraph 76 of the contested decision, and the various items of evidence, referred to in paragraphs 99 to 106 of the contested decision, relating to the history of the applicant’s activities and their connection with the city formerly known as Zara, the extent of the marketing of the goods under signs containing the word element ‘pastazara’ in a significant part of the European Union, the applicant’s efforts to defend that use and the economic and commercial significance of the use of those signs for the applicant’s activities, the Board of Appeal erred in concluding that the applicant had not established the existence of due cause for the use of the word element ‘pastazara’ within the mark applied for, within the meaning of Article 8(5) of Regulation No 40/94. |

| 116 | Accordingly, in addition to the decision to uphold the third part of the single plea in law relied on by the applicant, as set out in paragraph 91 above, it is also appropriate, in any event, to uphold the fifth part of that plea and, consequently, to annul the contested decision.  … |

|  | On those grounds,  THE GENERAL COURT (Second Chamber)  hereby: |

|  | | 1. | Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 3 June 2024 (Case R 1576/2023-5); | |

|  | | 2. | Orders EUIPO to bear its own costs and to pay one half of those incurred by Ffauf Italia SpA; | |

|  | | 3. | Orders Industria de Diseño Textil, SA to bear its own costs and to pay one half of those incurred by Ffauf Italia. | |

|  |  |
| --- | --- |
|  | Marcoulli  Tomljenović  Spangsberg Grønfeldt  Delivered in open court in Luxembourg on 10 September 2025.  [Signatures] |

---

(
[\*1](#c-ECR_62024TJ0425_EXT_EN_01-E0001)
) Language of the case: English.

(
[1](#c-ECR_62024TJ0425_EXT_EN_01-E0002)
) Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.

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