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 OMV! BY VAGISIL – Earlier EU figurative marks OMV – Relative ground for refusal – Detriment to repute – Link between the marks at issue – Article 8(5) and Article 60(1)(a) of Regulation (EU) 2017/1001 )

In Case T‑303/24,

**OMV AG,** established in Vienna (Austria), represented by C. Schumacher and B. Kapeller-Hirsch, lawyers,

applicant,

v

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

defendant,

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

**Combe International LLC,** established in White Plains, New York (United States),

THE GENERAL COURT (Eighth Chamber),

composed of A. Kornezov, President, K. Kecsmár (Rapporteur) and S. Kingston, 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, OMV AG, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 April 2024 (Case R 804/2023-4) (‘the contested decision’).

**Background to the dispute**

2        On 16 August 2021, the applicant filed an application for a declaration of invalidity of the EU trade mark which had been registered following an application filed by the other party to the proceedings before the Board of Appeal, Combe International LLC, on 2 November 2018, in respect of the word sign OMV! BY VAGISIL.

3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought are in, inter alia, Classes 3 and 5 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 3: ‘Non-medicated cosmetic products, namely, feminine hygiene washes, feminine soothing creams for the skin, moisturizers for the skin at the external vaginal area, feminine deodorant powders, pre-moistened feminine wipes/towelettes, pre-shave balms, pre-shave gels, pre-shave lotions, post-shave balms, post-shave liquids, and post-shave lotions’;

–        Class 5: ‘Medicated non-prescription products, namely, vaginal lubricants, vaginal moisturizers, medicated products for the vaginal area, anti-itch gels for the skin at the external vaginal area, feminine antiperspirant gels, prefilled applicators for internal and external lubrication and moisturization of the vagina, medicated anti-itch creams, and pre-moistened feminine wipes/towelettes’.

4        The application for a declaration of invalidity was based on the following earlier figurative marks:

–        EU trade mark No 000 221 598 filed on 8 September 1997, registered on 21 March 2000, represented as follows:

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)

–        EU trade mark No 000 221 606 filed on 8 September 1997, registered on 23 January 2001, represented as follows:

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)

5        The earlier trade marks, renewed until 8 September 2027, are registered for the following goods and services:

–        Class 1: ‘Chemicals used in industry, petrochemical products (ethylene, propylene, butadiene, polyethylene, polypropylene), petroleum coke’;

–        Class 4: ‘Industrial oils and greases (other than edible oils and fats and essential oils); lubricants; fuels (including motor spirit) and illuminants; petrol, diesel oils, heating oils’ (the latter product relating only to the earlier mark No 000 221 598);

–        Class 37: ‘Extraction of crude oil, bitumen of all types, natural gas and mineral raw materials’;

–        Class 40: ‘Processing and exploiting of crude oil [processing and extraction of crude oil, in the case of the earlier trade mark No 000 221 606], bitumen of all types, natural gas and mineral raw materials’.

6        The grounds relied on in support of that application for a declaration of invalidity were, in particular, those set out in Article 60(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), read in conjunction with Article 8(1)(b) of that regulation for goods and services in Classes 1, 4, 37 and 40 of the earlier marks. Moreover, the application for a declaration of invalidity was also based on Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(5) of that regulation, and relied on the reputation claimed for the earlier marks, limited to the goods in Class 4 and the services in Classes 37 and 40.

7        On 24 February 2023, the Cancellation Division dismissed the application for a declaration of invalidity in its entirety.

8        On 14 April 2023, the applicant filed a notice of appeal with EUIPO against the Cancellation Division’s decision.

9        By the contested decision, the Fourth Board of Appeal of EUIPO dismissed the appeal in its entirety. In particular, it found, first of all, that there was no similarity between the goods and services of the earlier marks and the goods of the contested mark, with the result that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. Next, the Board of Appeal continued its examination in the light of Article 8(5) of that regulation, at the end of which it found, in essence, that, although the signs at issue were similar to at least an average degree and the earlier marks enjoyed a strong reputation in Austria in respect of the goods and services for which a reputation had been claimed in Classes 4, 37 and 40, no link could be established between the marks at issue, on account, in particular, of the dissimilarity between the goods and the services at issue and the markets concerned. Lastly, in the absence of such a link, the Board of Appeal found that the use of the contested mark was not capable of taking unfair advantage of, or of being detrimental to, the distinctive character or the repute of the earlier marks.

**Forms of order sought**

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs.

11      EUIPO contends that the Court should:

–        dismiss the action in its entirety;

–        order the applicant to pay the costs incurred in the event that a hearing is convened.

**Law**

12      The applicant relies, in essence, on two pleas in law, alleging, first, the misapplication of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(5) of that regulation, and secondly, the misapplication of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation.

13      As regards the first plea in law, the applicant alleges that the Board of Appeal accorded decisive value to the lack of similarity between the goods and services and did not carry out a global assessment of all the relevant factors to establish the existence of a link between the marks at issue, which led it to dismiss the application for a declaration of invalidity.

14      In the first place, the applicant highlights the exceptional reputation of the earlier marks, in particular in Austria. In the second place, the applicant maintains that the Board of Appeal made an incorrect assessment by not taking due account of all the relevant factors in establishing whether a link existed between the marks at issue. In the last place, the applicant argues that the contested mark is likely to be detrimental to the distinctive character of the earlier marks, by taking unfair advantage of the distinctive character or reputation of those marks, thus leading to their dilution.

15      EUIPO disputes that line of argument.

16      Article 60(1)(a) of Regulation 2017/1001 provides that an EU trade mark is to be declared invalid on application to EUIPO where there is an earlier trade mark as referred to in Article 8(2) of that regulation and the conditions set out in paragraph 5 of that article are fulfilled.

17      Article 8(5) of Regulation 2017/1001 provides that the trade mark applied for must not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

18      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation 2017/1001, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgments of 22 March 2007, *Sigla* v *OHIM – Elleni Holding (VIPS)*, T‑215/03, EU:T:2007:93, paragraphs 34 and 35 and the case-law cited, and of 31 May 2017, *Alma-The Soul of Italian Wine* v *EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE)*, T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited).

19      The types of injury referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them even though it does not necessarily confuse them. The existence of a link between the mark applied for and the earlier mark with a reputation, which must be assessed globally, account being taken of all factors relevant to the circumstances of the case, is therefore an essential precondition for the application of that provision (see judgment of 30 March 2022, *Copal Tree Brands* v *EUIPO – Sumol + Compal Marcas (COPALLI)*, T‑445/21, not published, EU:T:2022:198, paragraph 37 and the case-law cited).

20      As a preliminary point, it should be stated, like the Board of Appeal did, that the goods of the contested mark are intended for the general public, whereas those of the earlier marks are intended for the general public and professionals. Where consumers consist of both the general public and professionals, it is therefore necessary to take account of the section of the public with the lowest level of attention, that is to say, the general public (see, to that effect, judgment of 30 September 2016, *Flowil International Lighting* v *EUIPO – Lorimod Prod Com (Silvania Food)*, T‑430/15, not published, EU:T:2016:590, paragraph 19 and the case-law cited).

21      Furthermore, since the reputation of the earlier marks in one Member State is sufficient to confer on them the protection of trade marks with a reputation in the European Union (see, to that effect, judgment of 6 October 2009, *PAGO International*, C‑301/07, EU:C:2009:611, paragraphs 28 and 29), the Board of Appeal focused on the evidence concerning Austria, which is the applicant’s national market and where, consequently, a link between the signs at issue was most likely to be established. The applicant does not take issue with that approach.

22      It is in the light of the foregoing considerations that the merits of the applicant’s line of argument must be assessed.

***The similarity of the signs at issue***

23      The applicant submits, in essence, that the Board of Appeal’s assessment of the similarity of the signs at issue is incorrect in so far as it only recognised that those signs were similar to at least an average degree.

24      EUIPO disputes that argument and maintains that the word element ‘by vagisil’ cannot be considered to be negligible in the overall impression produced by the contested mark. EUIPO further states that that element contributes to distinguishing the signs at issue and that the assessment carried out by the Board of Appeal should be upheld.

25      It should be recalled that the existence of a similarity between an earlier mark and a contested mark is a precondition for the application both of Article 8(1)(b) and of Article 8(5) of Regulation 2017/1001. That requirement presupposes, within the framework of those two provisions, that there are, in particular, elements of visual, phonetic or conceptual similarity (see, to that effect, judgments of 24 March 2011, *Ferrero* v *OHIM*, C‑552/09 P, EU:C:2011:177, paragraphs 51 and 52, and of 4 October 2017, *Gappol Marzena Porczyńska* v *EUIPO – Gap (ITM) (GAPPOL)*, T‑411/15, not published, EU:T:2017:689, paragraph 148).

26      However, the provisions referred to in paragraph 25 above differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation 2017/1001 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in the latter provision may be the consequence of a lesser degree of similarity between the marks at issue, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under Article 8(1)(b) of Regulation 2017/1001 or under Article 8(5) (judgment of 24 March 2011, *Ferrero* v *OHIM*, C‑552/09 P, EU:C:2011:177, paragraphs 53 and 54).

27      Next, the more similar the marks at issue are, the more likely it is that the contested mark will bring the earlier mark with a reputation to the mind of the relevant public (see judgment of 18 November 2015, *Mustang* v *OHIM – Dubek (Mustang)*, T‑606/13, not published, EU:T:2015:862, paragraph 42 and the case-law cited).

28      Lastly, it should be borne in mind that, in relation to the visual, phonetic and conceptual similarities, the comparison of the signs at issue must be based on the overall impression given by those signs, taking account, inter alia, of their distinctive and dominant elements (see judgment of 25 January 2012, *Viaguara* v *OHIM – Pfizer (VIAGUARA)*, T‑332/10, not published, EU:T:2012:26, paragraph 32 and the case-law cited).

29      It is in the light of the foregoing considerations that the merits of the applicant’s arguments as regards the Board of Appeal’s comparison of the signs at issue must be assessed.

30      First of all, visually, the Board of Appeal found that the marks at issue differed in the earlier marks’ graphic depiction, but that that graphic depiction would be perceived as merely decorative, and in the exclamation mark and the second and third words of the contested sign, namely the words ‘by’ and ‘vagisil’ respectively. The Board of Appeal also recalled that consumers generally pay greater attention to the beginning of a mark than to its end. Consequently, taking into account the presence of the letters ‘O’, ‘M’ and ‘V’ in each of the marks at issue, the Board of Appeal found that they were visually highly similar.

31      Next, phonetically, the Board of Appeal found that the word element ‘omv’ which is common to the marks at issue made an impact on consumers, but that the ending ‘by vagisil’ of the contested sign lessened the phonetic similarity. Accordingly, it found that the signs were phonetically similar to ‘at least’ an average degree.

32      Lastly, conceptually, the Board of Appeal found that the common letters ‘omv’ did not convey any concept and that, on account of the elements ‘by vagisil’ indicating the origin of the ‘omv’ products in the sense of ‘made by vagisil’, the signs at issue were conceptually different.

33      In the present case, the earlier marks consist exclusively of the word element ‘OMV’, which is composed of three capital letters and has no obvious meaning for the relevant public. The contested mark consists of two distinct word elements, the first, ‘omv!’, and the second, ‘by vagisil’. The word element ‘omv!’ of the contested mark reproduces in full the word element of the earlier marks, to which an exclamation mark is added, which, as a punctuation mark, is not such as to alter the perception of that contested mark. The word element ‘by vagisil’ consists of the word ‘by’, whose meaning is self-evident, and the term ‘vagisil’, perceived as a brand or a trade mark. In the light of its position at the beginning of the sign and its brevity, the word element ‘omv!’ attracts more attention from the relevant public. It should therefore be held that that element constitutes the dominant element of the contested mark, while the word element ‘by vagisil’ has a secondary character.

34      As regards the applicant’s arguments relating to the similarity between the signs at issue, it must be noted that they are limited to general observations concerning the presence of the word element ‘OMV’ that is common to those signs. In particular, the applicant does not make a clear distinction between the different types of similarity (visual, phonetic, conceptual), nor does it demonstrate in what way the Board of Appeal’s assessment is vitiated by an error of assessment.

35      Accordingly, the applicant’s arguments are not capable of calling into question the Board of Appeal’s findings on the degree of similarity of the signs at issue.

***The r****eputation of the earlier trade marks***

36      In the contested decision, the Board of Appeal established the earlier marks’ high degree of reputation for the goods and services in Classes 4, 37 and 40 in Austria.

37      The applicant maintains, in essence, that the Board of Appeal should have recognised in its analysis that the earlier marks enjoyed an exceptionally high degree of reputation, which was not limited to the goods and services in the classes listed in paragraph 36 above, but which extended beyond the oil and gas sector.

38      EUIPO disputes, first of all, the admissibility of that argument on the ground that it was not raised before the Board of Appeal. Furthermore, it contends that the evidence produced by the applicant is not capable of showing that the earlier marks are inherently very distinctive and recognised in practically all contexts.

39      In the first place, as regards the admissibility of that argument, it should be recalled that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO, for the purposes of Article 72 of Regulation 2017/1001. Pursuant to Article 95 of Regulation 2017/1001, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 21 May 2025, *Bella Tawziaa II* v *EUIPO – Belkheir (ELSEBAE 4011 B552)*, T‑1085/23, not published, EU:T:2025:522, paragraph 26 and the case-law cited).

40      In that regard, it should be noted that the case-law has already, on numerous occasions, used the expression ‘exceptional reputation’ to describe a reputation which goes beyond the relevant public as regards the goods or services for which the earlier mark is registered (see judgment of 7 June 2023, *Chocolates Lacasa Internacional* v *EUIPO – Esquitino Madrid (Conguitos)*, T‑339/22, not published, EU:T:2023:308, paragraph 37 and the case-law cited).

41      In the present case, it is apparent from the administrative file that the applicant sought, before the Board of Appeal, to demonstrate the existence of such an exceptional reputation, going beyond the relevant public as regards the goods and services for which the earlier marks were registered.

42      First, both before the Cancellation Division and before the Board of Appeal, the applicant argued that the earlier marks had an exceptional reputation (an ‘outstandingly high reputation’).

43      Secondly, in its observations in reply before the Board of Appeal, the applicant relied on several studies on the cross-sectoral reputation of the earlier marks. In particular, in the study contained in Exhibit No 58, produced before EUIPO, entitled ‘Study by INTEGRAL 2020 in Austria’, and concerning the level of awareness of the names of certain undertakings, regardless of the sector in which they operated, the earlier marks were recognised by 96% of the general public, which made those marks the most recognised by the Austrian public ahead of other well-known marks unrelated to the applicant’s field of activity. In that regard, the applicant had, moreover, claimed before EUIPO that the objective of that study was not to examine whether those marks were known to the relevant public for specific products or services, but to measure their reputation in a cross-industry context.

44      Therefore, it must be held that, contrary to what EUIPO maintains, the applicant claimed, in the administrative procedure, that the earlier marks enjoyed an exceptional reputation extending beyond the goods and services in Classes 4, 37 and 40, with the result that the plea of inadmissibility raised by EUIPO must be rejected.

45      In the second place, it should be noted that the evidence, including the study referred to in paragraph 43 above, whose evidential value and reliability are not disputed, shows, as the applicant maintains, the exceptionally high reputation of the earlier marks.

46      Furthermore, it should be noted that the Board of Appeal accepted that the earlier marks were widely known, stating that the awareness studies carried out in 2020 in Austria showed a total ‘aided’ awareness of the OMV mark of 100% or close among the Austrian public. Furthermore, the ‘unaided’ awareness of the OMV mark, demonstrated in those studies, was also very high, namely over 80%.

47      The Board of Appeal also found that other studies submitted before it, without specifying the field for which the earlier marks were known, confirmed the high degree of ‘aided’ awareness of those marks in Austria, which amounted to 99% in 2021 and 100% in 2020.

48      Accordingly, it must be found that the earlier marks enjoyed a reputation which extended beyond the relevant public as regards the goods and services for which those marks were registered and, therefore, an exceptional reputation within the meaning of the case-law referred to in paragraph 40 above.

49      It follows that, by finding that the earlier marks enjoyed a high degree of reputation, whereas the evidence brought to its attention demonstrated that those marks enjoyed an exceptional reputation extending beyond the relevant public as regards the goods and services for which those marks were registered, the Board of Appeal made an error of assessment as to the strength and extent of the reputation of those marks.

***The link between the marks at issue***

50      The applicant claims that the Board of Appeal erred in its global assessment of the relevant factors for the purpose of establishing whether a link existed between the marks at issue, by giving too much weight to the comparison of the goods and services covered by those marks.

51      According to settled case-law, whether a link between the marks at issue exists must be assessed globally, taking into account all factors relevant to the circumstances of the case. Those factors include the degree of similarity between the marks at issue; the nature of the goods or services for which the marks at issue are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (see judgment of 13 December 2023, *Laboratorios Ern* v *EUIPO – Ahlberg-Dollarstore (A’PEAL)*, T‑56/23, not published, EU:T:2023:798, paragraph 39 and the case-law cited).

52      In that regard, it should be recalled from the outset that, as stated in paragraphs 30 and 31 above, the signs at issue are visually highly similar and phonetically similar to ‘at least’ an average degree. Furthermore, as is apparent from paragraph 48 above, the earlier trade marks have an exceptional reputation.

53      It is therefore necessary to determine whether the Board of Appeal correctly assessed the other factors referred to in paragraph 51 above.

*The distinctive character of the earlier marks*

54      The applicant claims that the Board of Appeal did not sufficiently take into consideration the uniqueness and the enhanced distinctiveness acquired through extensive use of the earlier marks.

55      EUIPO disputes that line of argument and argues, in essence, that the sequence of three letters ‘o’, ‘m’ and ‘v’ constitutes an acronym which is very frequently used in different contexts and to which the relevant public is widely exposed and accustomed, with the result that the earlier marks cannot be defined as ‘unique’. Furthermore, the mere fact that those marks do not consist of commonly understood terms and lack any inherent meaning that would be widely known to the public is manifestly insufficient to make them intrinsically highly distinctive, or even ‘essentially unique’, as the applicant claims.

56      According to the settled case-law recalled in paragraph 51 above, the reputation or the degree of distinctive character, whether inherent or acquired through use, is among the relevant criteria for the purpose of assessing the link within the framework of Article 8(5) of Regulation 2017/1001.

57      Without it being necessary to analyse the other arguments of the parties, it should be borne in mind that the exceptional reputation of the earlier marks reinforces their distinctive character, which should be considered to be strong (see, to that effect, judgment of 6 July 2012, *Jackson International* v *OHIM – Royal Shakespeare (ROYAL SHAKESPEARE)*, T‑60/10, not published, EU:T:2012:348, paragraph 57).

58      In the present case, as stated in paragraphs 43 to 49 above, the earlier trade marks have an exceptional reputation in that they are among the most recognised trade marks in Austria, regardless of the field of activity at issue. This demonstrates the high distinctive character acquired through use of the earlier marks.

*The comparison of the goods and services*

59      The applicant disputes the Board of Appeal’s finding that there is no similarity or complementarity between the goods and services covered by the marks at issue. It maintains that there is a certain proximity between the goods covered by the contested mark, in Classes 3 and 5, and the goods and services covered by the earlier marks, in Classes 4, 37 and 40. The applicant observes that the general public’s awareness that hygiene and body care products may contain ingredients sourced from petroleum and its derivatives shows a certain degree of complementarity between the goods and services of the marks at issue.

60      Furthermore, the applicant argues that the distribution channels of the goods and services covered by the marks at issue could overlap in so far as the goods covered by the contested mark could be purchased at one of the applicant’s numerous filling stations, goods which the relevant public will associate, in particular, with the goods in Class 4 covered by the earlier marks and which are commonly available at those filling stations.

61      EUIPO disputes the applicant’s argument to the extent that, in its view, the similarity and complementarity of the goods and services have not been demonstrated. The fact that the goods covered by the contested mark may be manufactured from petrochemical derivatives does not in any way show that they are complementary to the goods and services covered by the earlier marks. The evidence provided by the applicant does not allow such a link to be established, since it is too general or concerns irrelevant classes of products. Lastly, the fact that body care products are available at filling stations is not relevant for the purpose of determining whether there is a link between the goods and services at issue.

62      In that regard, as recalled in paragraph 51 above, although the existence of a similarity between the goods and services covered by the marks at issue does not constitute a condition for the application of the relative ground for refusal laid down in Article 8(5) of Regulation 2017/1001, the nature and the degree of closeness of the goods or services concerned constitute factors that are relevant in order to assess whether a link between those marks exists (see judgment of 28 February 2024, *Puma* v *EUIPO – Société d’équipements de boulangerie pâtisserie (BERTRAND PUMA La griffe boulangère)*, T‑184/23, not published, EU:T:2024:133, paragraph 56 and the case-law cited).

63      In the present case, the Board of Appeal found that the goods and services under comparison related to radically different market sectors and served different purposes, had a different nature, were marketed in completely different ways through different channels, were sold through entirely different sales outlets and were produced by different manufacturers.

64      Admittedly, as the Board of Appeal correctly found, the market for hygiene and healthcare products in Classes 3 and 5 has nothing in common with the market for industrial oil, natural gas and fuels, which includes the goods and services for which the earlier marks are registered.

65      Likewise, the Board of Appeal correctly emphasised that the fact that the goods covered by the contested mark are made from petrochemical derivatives does not, on that ground alone, make them complementary to those covered by the earlier marks (see, to that effect, judgment of 15 October 2020, *Laboratorios Ern* v *EUIPO – Bio-tec Biologische Naturverpackungen (BIOPLAST BIOPLASTICS FOR A BETTER LIFE)*, T‑2/20, not published, EU:T:2020:493, paragraph 29 and the case-law cited).

66      However, as regards the distribution channels, the Board of Appeal did not rule out the possibility that filling stations may sell the personal care products covered by the contested mark. Furthermore, as stated in the contested decision, although the services of service stations are not included in the definition of the goods and services of the earlier marks, the applicant’s extended network of filling stations, called ‘OMV’, reinforces the awareness of the relevant public of the earlier marks for fuel and petrol marketed under the trade mark OMV, in Class 4. Consequently, and although nearby sales outlets may have different names from those of the filling stations at issue, it should be noted that it cannot be ruled out that there may be at least a partial overlap of the distribution channels.

67      Furthermore, as stated in paragraph 20 above, the intended publics of the marks at issue overlap in respect of the general public.

68      It must therefore be found that, although the goods and services at issue are neither similar nor complementary, there is some overlap between their distribution channels and they share the same relevant public, with the result that any proximity between those goods and services cannot be ruled out.

*Global assessment of the link between the marks at issue*

69      As recalled in paragraph 51 above, whether a link between the marks at issue exists must be assessed globally, taking into account all factors relevant to the circumstances of the case.

70      While the comparison between the goods and services covered by the marks at issue is one of the relevant factors in the assessment of whether there is a link between those marks, it should be borne in mind, as stated in paragraphs 16 and 17 above, that Article 8(5) of Regulation 2017/1001, read in conjunction with Article 60(1)(a) of that regulation, expressly provides for the situation in which a trade mark may be declared invalid in respect of goods or services which are not similar to those covered by an earlier trade mark.

71      In the present case, it should be stated that, given that the marks at issue are visually highly similar, phonetically similar to ‘at least’ an average degree and that the earlier marks have an exceptional reputation and enhanced distinctiveness, and, whilst dissimilar, the goods and services at issue have a certain proximity, the Board of Appeal made an error of assessment in ruling out the existence of a link between the marks at issue for the purposes of Article 8(5) of Regulation 2017/1001.

72      In any event, the Board of Appeal’s argument based on the fact that the link between the signs at issue was to be ruled out on account of the expression ‘by vagisil’ appearing in the contested mark, which clearly indicates the origin of the products, cannot succeed. That element cannot preclude the existence of a link between the marks at issue, since those marks coincide in the word element ‘omv’, which constitutes the dominant element of the contested mark, appearing at the beginning of that mark, and the only element of the earlier marks, it being specified, moreover, that that element has an inherent distinctive character.

73      Since the existence of such a link is an essential precondition for the application of Article 8(5) of Regulation 2017/1001, as recalled in paragraph 19 above, the error of assessment made by the Board of Appeal also led it to find, incorrectly, that, in the absence of such a link, the use of the contested mark was not likely to give rise to any of the three types of injury referred to in that provision. Since the Board of Appeal did not, for that reason, carry out an analysis of the fourth condition for the application of Article 8(5) of Regulation 2017/1001, it will be for the Board of Appeal to do so. It is not for the Court to carry out that analysis, for the first time, in the context of the present action, in a review of the legality of the contested decision.

74      It follows from the above that the first plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001, read in conjunction with Article 60(1)(a) of that regulation, must be upheld. Consequently, the contested decision must be annulled, without there being any need to rule on the other complaints made in connection with that plea, or on the second plea.

**Costs**

75      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.

76      Since EUIPO has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      **Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 5 April 2024 (Case R 804/2023-4);**

2.      **Orders EUIPO to bear its own costs and to pay those incurred by OMV AG.**

|  |  |  |
| --- | --- | --- |
| Kornezov | Kecsmár | Kingston |

Delivered in open court in Luxembourg on 3 September 2025.

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

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

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

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