ext/celex/62025TJ0106
JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
4 March 2026 ( * )
( EU trade mark – Opposition proceedings – Application for the EU figurative mark Pol’s FREEZE FRESH – Earlier EU figurative marks PAUL depuis 1889 and PAUL LE CAFE – Relative ground for refusal – Detriment to the distinctive character or repute of the earlier mark – Article 8(5) of Regulation (EU) 2017/1001 – Link between the marks at issue )
In Case T‑106/25,
Pols Erm Tarim Anonim Sirketi, established in Ankara (Türkiye), represented by L. Todev, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Holder SAS, established in Marcq-en-Barœul (France),
THE GENERAL COURT (Ninth Chamber),
composed of S. Kingston, President, P. Zilgalvis (Rapporteur) and J. Hettne, Judges,
Registrar: P. Nuñez Ruiz, Administrator,
having regard to the written part of the procedure,
further to the hearing on 20 November 2025,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Pols Erm Tarim Anonim Sirketi, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 13 December 2024 (Case R 1369/2024-4) (‘the contested decision’).
I. Background to the dispute
2 On 6 September 2022, the applicant filed an application with EUIPO, pursuant to 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) for registration of an EU trade mark in respect of the following figurative sign:
3 The mark applied for covered, inter alia, goods in Classes 29, 30, 31 and 32 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: ‘Fish, seafood and molluscs, not live; meat and meat products; prepared insects and larvae; processed fruits, fungi, vegetables, nuts and pulses; sausage skins and imitations thereof; soups and stocks, meat extracts; prepared vegetable dishes; prepared salads; prepared meat dishes; prepared meals made from seafood substitutes; prepared meals made from poultry [poultry predominating]; prepared meals made from meat [meat predominating]; prepared meals made from fish substitutes; prepared meals containing [principally] eggs; prepared meals containing [principally] chicken; prepared meals containing [principally] bacon; prepared meals consisting primarily of kebab; prepared meals consisting primarily of meat substitutes; prepared meals consisting primarily of turkey; prepared meals consisting principally of game; prepared dishes consisting primarily of fishcakes, vegetables, boiled eggs, and broth (oden); prepared meals consisting substantially of seafood’;
– Class 30: ‘Coffee, teas and cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; processed grains, starches, and goods made thereof, baking preparations and yeasts; salts, seasonings, flavourings and condiments; sugars, natural sweeteners, sweet coatings and fillings, bee products; bread; cereal bars and energy bars; pastries, cakes, tarts and biscuits (cookies); sweets (candy), candy bars and chewing gum’;
– Class 31: ‘Agricultural and aquacultural crops, horticulture products; live animals, organisms for breeding’;
– Class 32: ‘Beer and non-alcoholic beer; non-alcoholic beverages; non-alcoholic preparations for making beverages’.
4 On 12 January 2023, Holder SAS, the other party to the proceedings before the Board of Appeal, filed a notice of opposition to registration of the mark applied for in respect of all the goods and services covered by that mark, including those referred to in paragraph 3 above.
5 The opposition was based on the following earlier marks:
– the EU figurative mark PAUL depuis 1889, reproduced below, registered on 26 March 2019 under number 17057019, covering goods and services in Classes 29, 30, 32, 35 and 43 and corresponding, for each of those classes, to the following description:
– Class 29: ‘Prepared (or cooked) meals made from vegetables, meat, fish, poultry or game; meat, fish, poultry and game; preserved frozen, dried and cooked fruits and vegetables; potato crisps; olives, preserved, tapenades; prepared nuts, hazelnuts and almonds; gherkins, jellies, jams, compotes, fruit salads, crystallised fruits, fruit-based snack food, vegetable salads, soups; eggs, milk, milk products; edible oils and fats; charcuterie, crustaceans, not live, tinned meat, tinned fish; milk beverages, milk predominating’;
– Class 30: ‘Prepared or cooked dishes based on pastry, pasta or rice; coffee, tea, coca, sugar, rice, tapioca, sago, artificial coffee; flour for food and preparations made from cereals; bread, rusks, pastry, confectionery, Viennese pastries, cakes, pancakes, edible decorations for cakes, pizzas, quiches, tacos, tortillas, sandwiches, pasta, meat pies, ices, custard, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, seasonings, condiments, garden herbs (preserved), spices, ice, chocolate; beverages with a coffee, tea, cocoa or chocolate base; mayonnaise’;
– Class 32: ‘Beers, mineral and aerated waters, non-alcoholic drinks and preparations for making beverages (except those based on coffee, tea or cocoa, and milk beverages), fruit drinks and fruit juices, syrups for beverages, whey beverages, lemonades, fruit nectars, soda water, non-alcoholic aperitifs, essences for making beverages’;
– Class 35: ‘Retailing of foodstuffs, including: prepared (or cooked) dishes based on vegetables, meat, fish, poultry or game, meat, fish, poultry and game, preserved, frozen, dried and cooked fruits and vegetables, potato crisps, preserved olives, tapenades, processed almonds, hazelnuts and walnuts, gherkins, jellies, jams, compotes, fruit salads, crystallised fruits, snack foods based on fruits, vegetable salads, soups, eggs, milk and milk products, edible oils and fats, charcuterie, crustaceans (not live), tinned meat, tinned fish, milk beverages, milk predominating, prepared (or cooked) dishes based on pastry, pasta or rice, coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour for food and preparations made from cereals, bread, rusks, pastry, confectionery, Viennese pastries, cakes, pancakes, edible decorations for cakes, pizzas, quiches, tacos, tortillas, sandwiches, pasta, meat pies, edible ices, custard, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, seasonings, condiments, preserved garden herbs, spices, ice, chocolate, beverages based on coffee, tea, cocoa or chocolate, mayonnaise’;
– Class 43: ‘Services for providing food and drink, catering services, self-service restaurants, snack-bars, cafeterias, cafés, bars, tea rooms, preparation of take-away meals and dishes’.
– the EU figurative mark PAUL LE CAFE, reproduced below, registered on 14 March 2019 under number 17092719 and covering goods and services in Classes 29, 30, 35 and 43.
6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation 2017/1001.
7 On 6 May 2024, the Opposition Division upheld the opposition based on the earlier mark PAUL depuis 1889 on the basis of Article 8(5) of Regulation 2017/1001 in respect of the goods referred to in paragraph 3 above.
8 On 5 July 2024, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
9 By the contested decision, the Board of Appeal upheld that appeal in part. First, it annulled the Opposition Division’s decision in so far as it had upheld the opposition and rejected the applicant’s application for registration in respect of ‘live animals, organisms for breeding’ in Class 31. Second, it dismissed the appeal in respect of the other goods referred to in paragraph 3 above.
10 As regards the goods in respect of which the Board of Appeal dismissed the appeal, first, it found, in essence, by focusing the comparison of the signs at issue on the French public, that those signs had a low degree of visual similarity, a high or very high degree of phonetic similarity, and a high degree of conceptual similarity if it were accepted that the name Paul conveys a semantic concept. Second, it noted that the reputation of the earlier mark PAUL depuis 1889 had been demonstrated for at least a significant part of the French public, for preparations made from cereals; bread and pastries in Class 30, retailing of foodstuffs, namely preparations made from cereals; bread and pastries in Class 35 and services for providing food and drink in Class 43. Third, the Board of Appeal found that the link between the marks at issue was established as regards the goods and services at issue in so far as, in its view, there was a close connection between the goods and services for which the reputation of the earlier mark PAUL depuis 1889 had been proved and the goods covered by the mark applied for referred to in paragraph 3 above, with the exception of ‘live animals, organisms for breeding’ in Class 31. Fourth and lastly, it found that the mark applied for had been likely to take unfair advantage of the distinctive character or the repute of the earlier mark PAUL depuis 1889 in the perception of the relevant public, without the applicant having established that there was due cause in support of its application for registration.
II. Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision in so far as it did not uphold its claims;
– order EUIPO to re-examine the opposition or, in the alternative, alter the contested decision to the effect that there are no relative grounds for refusal of registration of the mark applied for in respect of all the goods in respect of which the opposition was upheld;
– order EUIPO and, as the case may be, the intervener to pay the costs, including those incurred before the Opposition Division and the Board of Appeal.
12 EUIPO contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs in the event that a hearing is convened.
III. Law
A. The claim that EUIPO should be ordered to re-examine the opposition
13 EUIPO submits, inter alia, that the applicant’s claim that the Court should order it to re-examine the opposition is inadmissible on the ground that it is not for the Court to issue directions to an institution, body, office or agency of the European Union.
14 When questioned on that point at the hearing, the applicant stated that that claim is in line with the practice of the Court and, consequently, should be admissible.
15 In that regard, it is sufficient to recall that, when exercising judicial review of legality under Article 263 TFEU, the Court has no jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see order of 26 October 1995, Pevasa and Inpesca v Commission , C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission , T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited).
16 It follows that the applicant’s claim that the Court should order EUIPO to re-examine the opposition must be rejected on the ground of lack of jurisdiction.
B. Substance
17 In support of its action, the applicant relies on three pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001, second, failure to take into account the weak distinctive character of the earlier marks and, third, infringement of Article 8(5) of that regulation.
1. The first and second pleas in law, in so far as they allege infringement of Article 8 (1)(b) of Regulation 2017/1001
18 It should be noted that the first plea is entitled as alleging infringement of Article 8(1)(b) of Regulation 2017/1001. In particular, in support of that plea and in the context of the second plea, the applicant claimed that the Board of Appeal erred in its assessment of the likelihood of confusion.
19 As EUIPO observed, it should be noted that the Board of Appeal examined the ground referred to in Article 8(1)(b) of Regulation 2017/1001 only in relation to ‘live animals and organisms for breeding’ in Class 31 in respect of which, as stated in paragraph 9 above, the applicant has been successful and which, having regard to the applicant’s first head of claim, do not fall within the subject matter of the present dispute.
20 In that regard, it must be borne in mind that, in so far as pleas which do not seek to challenge the grounds on which the Board of Appeal dismissed the appeal brought before it do not make it possible to establish the illegality of the decision taken by it, they are incapable of leading to the annulment of that decision and may be rejected as ineffective (see, to that effect, judgment of 27 April 2022, Group Nivelles v EUIPO – Easy Sanitary Solutions (Shower drainage channel) , T‑327/20, EU:T:2022:263, paragraph 101 and the case-law cited).
21 That is the case here as regards the first plea and the second plea, in so far as they allege infringement of Article 8(1)(b) of Regulation 2017/1001, the contested decision, as regards the goods covered by the present dispute, being based on Article 8(5) of Regulation 2017/1001, and not on Article 8(1)(b) of that regulation.
22 It is true that, in the context of the application of Article 8(5) of Regulation 2017/1001, the existence of a likelihood of confusion on the part of the public is one of the relevant factors for the purpose of assessing the link between the marks at issue (order of 29 January 2025, Fashion Box v EUIPO – Ghostthinker (RE:PLAY) , T‑164/24, not published, EU:T:2025:123, paragraph 21; see also, by analogy, judgment of 27 November 2008, Intel Corporation , C‑252/07, EU:C:2008:655, paragraphs 41 and 42). It must be stated, however, that in the present case the Board of Appeal did not find that there was such a likelihood of confusion.
23 It follows that the first and second pleas in law must be rejected as ineffective, in so far as they allege infringement of Article 8(1)(b) of Regulation 2017/1001.
24 However, it must be pointed out that the line of argument put forward in support of the first plea and the second plea contain arguments relating to the similarity of the signs at issue and which are relevant for the application of Article 8(5) of Regulation 2017/1001, which constitutes the only legal basis examined by the Board of Appeal for the goods falling within the scope of the present dispute. In particular, the second plea relates to the distinctive character of the earlier marks, which is also a relevant criterion for the application of that provision. Furthermore, when questioned on that point at the hearing, the applicant confirmed that its arguments relate both to infringement of Article 8(1)(b) of Regulation 2017/1001 and to infringement of Article 8(5) of that regulation.
25 According to settled case-law, the concept of similarity between the marks at issue and the criteria to be taken into consideration when assessing the similarity between the marks at issue are the same in the case of a refusal to register a mark applied for because of a likelihood of confusion, pursuant to Article 8(1)(b) of Regulation 2017/1001, and in the case of refusal because of damage to the reputation of an earlier mark, pursuant to Article 8(5) of Regulation 2017/1001 (see judgment of 24 September 2025, Tamasu Butterfly Europa v EUIPO – Domu Brands (BTFY) , T‑326/24, not published, EU:T:2025:892, paragraph 81 and the case-law cited).
26 Consequently, the third plea and all of the applicant’s arguments in support of the first and second pleas, which relate to the similarity of the signs at issue and their distinctive character, must be examined together.
2. The third plea in law, alleging infringement of Article 8 (5) of Regulation 2017/1001 and the first and second pleas, in so far as they relate to the similarity of the signs at issue and their distinctive character
27 The applicant disputes, first, the Board of Appeal’s findings relating to the comparison of the signs at issue, second, the Board of Appeal’s assessments as regards the reputation of the earlier marks, third, the considerations relating to the inherent distinctiveness of the earlier marks and the link between the marks at issue and, fourth, the Board of Appeal’s findings relating to the unfair advantage which the mark applied for would take without due cause of the distinctive character or reputation of the earlier marks.
28 EUIPO disputes the applicant’s claims.
29 Article 8(5) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, 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 the 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.
30 In that regard, it should be borne in mind that, although the primary function of a mark is that of an indication of origin, every mark also has an inherent economic value which is independent of and separate from that of the goods and services for which it has been registered. The messages which are conveyed by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Thus, Article 8(5) of Regulation 2017/1001 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark has been registered (see, to that effect, judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS) , T‑215/03, EU:T:2007:93, paragraph 35).
31 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. Second, that mark and the mark applied for must be identical or similar. Third, in the case of an earlier EU trade mark, it must have a reputation in the European Union. Fourth, 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, VIPS , T‑215/03, EU:T:2007:93, paragraph 34 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).
32 As regards the fourth condition defined in Article 8(5) of Regulation 2017/1001, the types of injury referred to in that provision, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant public makes a connection between those two marks. In other words, the relevant public establishes a link between them even though it does not confuse them (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO , C‑471/16 P, not published, EU:C:2017:602, paragraph 50 and the case-law cited). The existence of such a link in the mind of the relevant public between the mark applied for and the earlier mark is therefore an implied essential precondition for the application of Article 8(5) of Regulation 2017/1001 (see judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA) , T‑62/16, EU:T:2018:604, paragraph 22 and the case-law cited).
33 In the present case, it should be noted that the opposition under Article 8(5) of Regulation 2017/1001 was upheld by the Opposition Division and by the Board of Appeal solely on the basis of the earlier mark PAUL depuis 1889. The Board of Appeal, like the Opposition Division, found that the reputation of the earlier mark PAUL LE CAFE had not been established in the present case. Therefore, for the purposes of examining the present plea, the expression ‘earlier mark’ will refer only to the earlier mark PAUL depuis 1889.
34 Similarly, it must be borne in mind that the present dispute concerns only the goods in respect of which the appeal against the Opposition Division’s decision was dismissed by the Board of Appeal, that is to say, the goods referred to in paragraph 3 above, with the exception of ‘live animals, organisms for breeding’ in Class 31.
(a) The comparison of the signs at issue
35 It must be pointed out that the condition that the signs at issue must be identical or similar is common to Article 8(1)(b) and Article 8(5) of Regulation 2017/1001. That condition presupposes, both in the context of Article 8(1)(b) of that regulation and in the context of Article 8(5) thereof, the existence, in particular, of elements of visual, phonetic or conceptual similarity (see judgment of 11 June 2025, Fattorie Garofalo – Società Cooperativa Agricola v EUIPO – Pastificio Lucio Garofalo (fattorie garofalo) , T‑1036/23, not published, EU:T:2025:592, paragraph 37 and the case-law cited).
36 However, those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation 2017/1001 is conditional upon a finding of such similarity between the marks at issue that there exists, on the part of the relevant section of the public, a likelihood of confusion as to the commercial origin of the goods or services covered by those marks, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5). Accordingly, the types of injury referred to in Article 8(5) of Regulation 2017/1001 may be the consequence of a lesser degree of similarity between the earlier mark and the mark applied for, provided that it is sufficient for the relevant public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under Article 8(1)(b) or under Article 8(5) of Regulation 2017/1001 (see judgment of 11 June 2025, fattorie garofalo , T‑1036/23, not published, EU:T:2025:592, paragraph 38 and the case-law cited).
37 In that context, it is apparent from the case-law relating to the application of Article 8(1)(b) of Regulation 2017/1001 that the assessment of the visual, phonetic or conceptual similarity of the signs at issue must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see, to that effect, judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
38 As a preliminary point, it should be noted that the Board of Appeal, in order to carry out the comparison of the signs at issue, focused on the French public. The applicant does not take issue with that approach.
(1) The distinctive and dominant elements of the signs
39 The applicant submits that there is no relevant similarity between the mark applied for and the earlier mark. It maintains that the Board of Appeal, in examining the mark applied for, limited its analysis to the element ‘pol’s’ and wrongly excluded the element ‘freeze fresh’ which it found was devoid of distinctive character. The goods covered by the mark applied for are dried using the method of lyophilising the goods, known to the relevant public, and are not frozen, with the result that the element ‘freeze fresh’ will not be regarded as descriptive by the relevant public. Similarly, that element contains an inherent contradiction in so far as a frozen product will not be perceived by the public as being fresh, with the result that that element does not describe the goods offered by the applicant. In addition, the applicant uses the element ‘freeze fresh’ as a domain name for its website. Moreover, the applicant submits that the element ‘paul’ is a common first name in the naming traditions of Romance and Germanic languages and should be regarded as having a very weak distinctive character, or even as being devoid of any distinctive character.
40 EUIPO disputes the applicant’s claims.
41 It should be borne in mind that the assessment of similarity between two trade marks cannot be limited to taking into consideration only one component of a composite trade mark and comparing it with another trade mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
42 For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide) , T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano) , T‑242/06, not published, EU:T:2007:391, paragraph 51).
43 As regards the assessment of whether one or more given components of a composite trade mark is dominant, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) , T‑6/01, EU:T:2002:261, paragraph 35).
44 Lastly, where a trade mark consists of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting the name of the mark than by describing the figurative element of that mark (see judgment of 28 September 2022, Copal Tree Brands v EUIPO – Sumol + Compal Marcas (COPAL TREE) , T‑572/21, not published, EU:T:2022:594, paragraph 31 and the case-law cited).
45 In the present case, as regards the earlier mark, the Board of Appeal found that the word element ‘paul’, written in white uppercase letters, was the only distinctive and dominant element of that mark. It found that the other elements making up that sign, namely, first, the element ‘depuis 1889’, written in very small characters, was barely legible and would be perceived as the date of the beginning of the trade mark proprietor’s activity, and, second, the black square, framed by a white line, corresponded to simple geometrical shapes and would be perceived as decorative, with the result that those elements were devoid of distinctive character.
46 As regards the mark applied for, the Board of Appeal found that the word element ‘pol’s’, written in a stylised white font on an orange background, could clearly be perceived as such, at least by a non-negligible part of the relevant public. As regards the word elements ‘freeze’ and ‘fresh’, it found that they will be understood by the French public on account, first, of their proximity to the French words ‘ freezer ’ and ‘ frais ’ and, second, of the fact that the word ‘fresh’ is part of basic English vocabulary. Consequently, the Board of Appeal found that the element ‘freeze fresh’ indicated that the goods covered in Class 29 and in part those in Classes 30 and 32 were frozen and fresh or freshly frozen, whereas for the other goods in Classes 30 and 32, those elements could refer to the fact that those goods give the impression of being frozen and fresh. As regards agricultural and aquacultural crops and horticulture products, the Board of Appeal stated that those goods may be kept frozen in order to stay fresh. Thus, the element ‘freeze fresh’ is descriptive and, therefore, devoid of distinctive character in respect of all of those goods, with the result that, for those goods, the element ‘pol’s’ is the only distinctive element.
47 Lastly, as regards the applicant’s argument that the goods concerned are not frozen, but rather dehydrated by means of a particular process which involves freezing the product and then vaporising the ice crystals, the Board of Appeal stated that the distinctive character of a trade mark must be defined in relation to the goods covered by that mark.
48 As regards, first, the earlier mark, the applicant does not dispute that the element ‘paul’ is dominant in that mark. As regards the distinctive character of that element, it must be held that, contrary to what the applicant claims, it is not weakly distinctive despite the fact that it is a common male first name. As the Board of Appeal correctly stated, it gives no indication of the characteristics of the goods and services covered by the earlier mark and has no connection with them. Furthermore, it must be held that the Board of Appeal did not make an error of assessment in finding that the other elements of which the earlier mark consists were devoid of distinctive character (see paragraph 45 above).
49 It follows that the Board of Appeal did not make an error of assessment in finding that, in the earlier mark, the element ‘paul’ was the distinctive and dominant element.
50 As regards, second, the mark applied for, it must be stated that none of the elements of which it consists, namely ‘pol’s’ and ‘freeze fresh’, was considered dominant by the Board of Appeal. That finding is untainted by an error of assessment. Similarly, the Board of Appeal was justified in claiming that the element ‘pol’s’, which did not describe the characteristics of the goods covered by the mark applied for, was distinctive.
51 The applicant criticises the Board of Appeal for finding that the element ‘freeze fresh’ was weakly distinctive. As is apparent from paragraph 46 above, the Board of Appeal stated that the French-speaking public would understand the meaning of the English words ‘freeze’ and ‘fresh’ on account of their proximity to the French words ‘ freezer ’ and ‘ frais ’. Moreover, the term ‘fresh’ is part of basic English vocabulary and will also be recognised by the majority of the French-speaking part of the relevant public.
52 In that regard, it should be borne in mind that, according to the case-law, a word which forms part of the basic vocabulary of the English language could easily be understood by the non-English-speaking part of the relevant public even if it has only a rudimentary knowledge of English. Similarly, where English terms have an equivalent in the language of the non-English-speaking public and a link may be established by that public between those terms and their translation into the language concerned, then that public is considered to understand their meaning (see, to that effect, judgment of 19 June 2024, Naturgy Energy Group v EUIPO – Global Power Service (gps global power service) , T‑312/23, not published, EU:T:2024:399, paragraphs 36 and 38 and the case-law cited). That case-law also applies to the word ‘freezer’ which is commonly used in French to designate the ice compartment of a refrigerator and which, consequently, forms part of English vocabulary known and understood by a large part of the relevant public (see, by analogy, judgment of 30 April 2014, Beyond Retro v OHIM – S&K Garments (BEYOND VINTAGE) , T‑170/12, not published, EU:T:2014:238, paragraph 68 and the case-law cited). It follows that the Board of Appeal did not make an error of assessment when it found that the element ‘freeze fresh’ would be understood by the French-speaking public.
53 Similarly, as the Board of Appeal stated, the element ‘freeze fresh’ may be perceived by the public as being descriptive of the goods covered by the mark applied for. That element appears to indicate that the goods at issue, which are foodstuffs as a whole, are frozen and fresh or freshly frozen or give the impression of being so. In that regard, it must be stated that the applicant’s argument that the goods cannot be fresh and frozen at the same time is unfounded because, as is apparent from paragraph 31 of the contested decision, the majority of the goods covered by the mark applied for may be kept frozen in order to stay fresh.
54 Moreover, the mere fact, referred to at the hearing, that the elements ‘freeze fresh’ cannot be descriptive in respect of certain goods in Class 30, such as coffee and tea, is not such as to call into question the merits of the Board of Appeal’s assessments. As EUIPO stated at the hearing, without being challenged by the applicant, the Board of Appeal’s assessment that those elements may refer to a sensation of being fresh is also relevant for coffee and tea which may be consumed in the form of iced tea or iced coffee.
55 As regards the applicant’s claim that the goods covered by the mark applied for are not frozen, but dried using the method of lyophilisation, it must be borne in mind, as the Board of Appeal did, that, in opposition proceedings, EUIPO may only take account of the list of goods and services in respect of which an application is made as it appears in the trade mark application, subject to any amendments thereto (see, to that effect, judgment of 14 February 2019, Giove Gas v EUIPO – Primagaz (KALON AL CENTRO DELLA FAMIGLIA) , T‑34/18, not published, EU:T:2019:94, paragraph 28 and the case-law cited). The list of goods covered by the mark applied for (see paragraph 3 above) does not contain any information on the preparation processes and therefore does not in itself imply the use of the lyophilisation method relied on by the applicant. Thus, the Board of Appeal correctly found, in paragraph 32 of the contested decision, that, in the present case, the manufacturing process for the goods covered by the applicant’s application for registration was irrelevant for the assessment of the distinctive character of the elements ‘freeze’ and ‘fresh’.
56 It follows that the Board of Appeal correctly found that the word element ‘pol’s’ was the most distinctive element of the mark applied for.
(2) The visual comparison of the signs
57 The applicant submits that the mark applied for has two dominant and distinctive elements, namely ‘pol’s’ and ‘freeze fresh’, whereas the earlier mark consists of only one dominant and distinctive element, namely ‘paul’. The presence of the element ‘freeze fresh’ clearly distinguishes the marks at issue. Even if the visual comparison was made taking into account only the elements ‘paul’ and ‘pol’s’, it would only result in a very low degree of similarity in so far as the former appears in uppercase letters in a standard font on a black rectangle, whereas the second consists of an uppercase letter and three lowercase letters, written in a very stylised font on a complex orange background. There is practically no similarity between the elements ‘paul’ and ‘pol’s’, since they share only the letters ‘p’ and ‘l’ and the latter is in lowercase in the mark applied for, thus mitigating the visual similarity. Furthermore, it is apparent from the case-law that the presence of common letters is inevitable because of the limited number of letters in the alphabet.
58 EUIPO disputes the applicant’s arguments.
59 In the present case, the Board of Appeal noted that the distinctive word elements of the signs at issue, namely ‘paul’ and ‘pol’s’ which have in common the first letter ‘p’, as well as the letter ‘l’, but differ in their respective vowels ‘au’ and ‘o’, and in the possessive ‘s’ in the sign applied for, had a below-average degree of similarity. Similarly, the marks differed in their additional word elements. The word element ‘depuis 1889’ in the earlier mark plays only a secondary role within that mark in so far as it is devoid of distinctive character and difficult to read because of its size and position. As regards the element ‘freeze fresh’ of the mark applied for, it also plays a secondary role on account of its non-distinctive character for the goods covered by that mark. However, it cannot be completely overlooked by reason of its size and position.
60 First, it must be noted that the applicant’s arguments are based on the premiss that the element ‘freeze fresh’ in the mark applied for is distinctive in respect of the goods covered by that mark. As has already been stated in paragraphs 53 to 55 above, that premiss is unfounded.
61 Second, as regards the distinctive elements of the signs at issue, namely ‘paul’ and ‘pol’s’, although it is true, as the applicant submits, that they share only two out of four letters, the number of different letters is also the same. In view of the fact that the letters ‘p’ and ‘l’ coincide in the distinctive elements of the marks at issue, the Board of Appeal was justified in finding that the degree of visual similarity was low in the present case.
62 Third, the applicant relies on the case-law according to which, since the alphabet is made up of a limited number of letters, which, moreover, are not all used with the same frequency, it is inevitable that many words will have the same number of letters and even share some of them, but they cannot, for that reason alone, be regarded as visually similar (see judgment of 28 April 2021, Nosio v EUIPO – Tros del Beto (ACCUSÌ) , T‑300/20, not published, EU:T:2021:223, paragraph 42 and the case-law cited). It is sufficient to note that, in the present case, the Board of Appeal did not rely on the number of identical letters in order to find that the signs were visually similar to a low degree.
63 It follows from the foregoing that the Board of Appeal cannot validly be criticised for having found that the signs were visually similar to a low degree.
(3) The phonetic comparison of the signs
64 The applicant submits that the similarity in that regard is very low in so far as the mark applied for contains an additional distinctive element, namely ‘freeze fresh’. Similarly, it submits that the Board of Appeal, in finding that the elements ‘paul’ and ‘pol’s’ were identical, ignored the presence of the apostrophe and the letter ‘s’ in the mark applied for.
65 EUIPO disputes the applicant’s arguments.
66 In the present case, the Board of Appeal found that, in the earlier mark, only the element ‘paul’ will be pronounced, unlike the element ‘depuis 1889’ on account of its very small size and the lack of distinctive character of the latter element. In view of the principle that descriptive or non-distinctive elements are generally not pronounced, the Board of Appeal found that only the element ‘pol’s’ would be pronounced in the mark applied for. The pronunciation of the elements ‘paul’ and ‘pol’s’ by the French public would most likely differ only in the sound of the last letter ‘s’ in the mark applied for, provided that it is pronounced. Consequently, for the French-speaking part of the relevant public, the signs at issue have a very high degree of phonetic similarity. The degree of similarity remains high even if the word element ‘freeze fresh’ would be pronounced in the mark applied for.
67 As regards the applicant’s claims, it must be noted, as EUIPO submits, that the Board of Appeal took into account, first, the apostrophe and the additional letter ‘s’ in the mark applied for and, second, the elements ‘freeze fresh’. As regards the latter, it found, inter alia, that the degree of phonetic similarity remained high even if they would be pronounced.
68 In that regard, it must be borne in mind that, to economise on words, the relevant public tends not to pronounce elements with a weak distinctive character (judgment of 10 January 2024, Levantur v EUIPO – Fantasia Hotels & Resorts (LUXURY BAHIA PRINCIPE FANTASIA Don Pablo Collection) , T‑505/22, not published, EU:T:2024:3, paragraph 119). In the present case, as has already been held in paragraphs 53 to 55 above, the element ‘freeze fresh’ is descriptive of the goods at issue, with the result that the Board of Appeal did not make an error of assessment in finding that it might not be pronounced.
69 As regards the pronunciation of the distinctive and dominant element of the earlier mark, namely ‘paul’, and of the distinctive element of the mark applied for, namely ‘pol’s’, it will differ, for the French public, only in the last letter ‘s’ of the latter element.
70 In those circumstances, the Board of Appeal correctly found, without making an error of assessment, that the signs at issue had a very high degree of phonetic similarity and that, even if the descriptive element ‘freeze fresh’ were pronounced, that similarity remained high.
(4) The conceptual comparison of the signs
71 The applicant claims that the findings of the Board of Appeal are incorrect. It is true that the elements ‘paul’ and ‘pol’s’ refer to a name; however, the different spelling of the sound ‘o’ in both signs indicates that they form part of ‘different naming traditions’. The element ‘pol’s’ in the mark applied for refers to the abbreviation of the surname of the applicant’s founder. Furthermore, the element ‘freeze fresh’ has no conceptual link with the earlier mark, with the result that the conceptual similarity is limited to the mere fact that the marks at issue contain a name.
72 EUIPO disputes the applicant’s arguments.
73 In the present case, the Board of Appeal found that, if the male first name Paul, as such, conveys a semantic concept, there would be a high degree of conceptual similarity between the marks at issue when they are visually perceived by the part of the public for which the element ‘pol’ is a variant of the first name Paul. By contrast, if it is not accepted that a name conveys a concept, the signs are not conceptually similar because the other word elements of which the signs at issue consist are not distinctive.
74 It must be held, as the Board of Appeal did, that the French-speaking public will be able to perceive, both the element ‘pol’s’, present in the mark applied for, and the element ‘paul’, included in the earlier mark, as references to the male first name Paul, admittedly written differently.
75 In that regard, it should be borne in mind that the case-law is not entirely settled on how to carry out the conceptual comparison in the case of signs referring to surnames or first names of persons. According to one line of case-law, the fact that marks contain surnames or first names of persons opens up the possibility of a conceptual comparison, but does not necessarily imply that there is a conceptual similarity, since that can result only from an examination of each individual case. By contrast, according to a second line of case-law, a conceptual comparison between trade marks consisting of surnames or first names of persons is in principle impossible and neutral, unless there are special circumstances which make that comparison possible, such as, for example, the celebrity of one of the persons concerned (see judgment of 19 October 2022, Kaczorowska v EUIPO – Groupe Marcelle (MAESELLE) , T‑716/21, not published, EU:T:2022:646, paragraphs 68 and 70 and the case-law cited).
76 In the present case, the Board of Appeal carried out a conceptual comparison of the elements ‘paul’ and ‘pol’s’ on the basis of two opposing hypotheses reflecting the two lines of case-law referred to in paragraph 75 above, namely that a first name conveys a concept or that it does not convey a concept, without choosing between them. Accordingly, the applicant cannot reasonably criticise the Board of Appeal for having found, in particular, that the distinctive elements of the signs at issue, ‘pol’s’ and ‘paul’, refer, in the eyes of the French public, to the male first name Paul. The question whether one of the two hypotheses used by the Board of Appeal is decisive in the present case will be examined in the part relating to the existence of a link between the marks at issue (see paragraph 97 below).
77 As regards the other elements making up the marks at issue, namely ‘depuis 1889’ and ‘freeze fresh’, it must be borne in mind that they are devoid of distinctive character (see paragraphs 48 and 53 to 55 above). In that regard, it must be pointed out that conceptual differences arising solely from weakly distinctive elements attract consumers’ attention only in a limited manner (see, to that effect, judgments of 25 June 2025, Certinvest v EUIPO – Regal Ventures (Premium Quality REGAL Bakery) , T‑431/24, not published, EU:T:2025:636, paragraph 104 and the case-law cited). This applies all the more to elements which are devoid of distinctive character, as in the present case.
78 It follows that the Board of Appeal did not make an error of assessment in finding either that the marks at issue were conceptually similar or that that comparison remained neutral.
(b) The reputation of the earlier mark
79 The applicant submits that it is only in the event of genuine similarity that the question whether the earlier mark has a reputation must be analysed. The signs at issue are not similar in the present case. The applicant also disputes the Board of Appeal’s assessment that the earlier mark has a reputation for the goods and services in Classes 30, 35 and 43. According to the applicant, the evidence submitted by the proprietor of the earlier mark demonstrates its reputation only as regards the services in Class 35 and there was no reason to extend that reputation to the goods in Classes 29, 30, 31 and 32. It submits that, in similar circumstances, the opposition, based on the reputation of the earlier mark, to registration of a mark which included the element ‘paola’ was rejected in so far as the Board of Appeal found that the reputation of that mark had been proved only in respect of the services in Class 35.
80 EUIPO disputes the applicant’s arguments.
81 In the present case, the Board of Appeal found that the reputation of the earlier mark had been proved as regards preparations made from cereals; bread and pastries in Class 30, retailing of foodstuffs, namely preparations made from cereals; bread and pastries, in Class 35, and services for providing food and drink in Class 43. In particular, it noted that the evidence submitted by the proprietor of the earlier mark showed ‘extensive use [of the earlier mark for “Paul”] bakeries’, where bakery and pastry products were sold under the earlier mark. Thus, according to the Board of Appeal, that evidence showed that the services in Class 43 had been provided under the earlier mark. It follows that, under the earlier mark, not only bakery and pastry goods had been offered, but also a much wider range of foodstuffs and beverages. Moreover, the reputation of the earlier mark for bakery and pastry goods and their retailing and for fast-food restaurant services was confirmed by various decisions of the Institut national de la propriété industrielle (INPI) (National Institute of Industrial Property, France) recognising the enhanced distinctiveness, reputation and high level of recognition of the earlier mark for those goods and services.
82 First of all, as regards the applicant’s argument that, in the absence of any similarity between the signs at issue, there was no need to assess the reputation of the earlier mark, it must be pointed out that it is based on the incorrect premiss that there is no similarity in the present case. As is apparent from paragraphs 63, 70 and 78 above, the signs at issue have a low degree of visual similarity, a high or very high degree of phonetic similarity and, if it is accepted that a first name conveys a concept, a high degree of conceptual similarity.
83 Moreover, the applicant itself acknowledges that the signs at issue are phonetically similar to a ‘limited’ extent and visually and conceptually similar to a very low degree. As is apparent from the case-law, the existence of even a low degree of similarity between the signs at issue is a condition for the application of Article 8(5) of Regulation 2017/1001. The degree of that similarity is a relevant factor in the assessment of a link between those signs (judgment of 11 December 2014, Coca-Cola v OHIM – Mitico (Master) , T‑480/12, EU:T:2014:1062, paragraph 73). Similarly, the existence of a link between the marks at issue on the part of the relevant public must be assessed globally, taking into account all factors relevant to the circumstances of the case, including, inter alia, the strength of the earlier mark’s reputation (see judgment of 26 September 2018, PUMA , T‑62/16, EU:T:2018:604, paragraph 24 and the case-law cited). In those circumstances, the Board of Appeal was required to assess the reputation of the earlier mark.
84 Next, as regards the decision of another Board of Appeal, relied on by the applicant, relating to opposition proceedings against the registration as an EU trade mark of a sign containing the word element ‘paola’, it is true that, in that decision, the enhanced distinctiveness of the earlier mark was not recognised as regards the services in Class 43. Even if the evidence on which the various Boards of Appeal relied in order to assess both the enhanced distinctiveness of the earlier mark and its reputation was the same, the Board of Appeal which adopted the contested decision cannot validly be criticised for having found that the earlier mark had a reputation in respect of the services for providing food and drink in Class 43 on the ground that it would contradict the only decision relied on by the applicant.
85 It must be pointed out, in particular, that the INPI, whose decisions were submitted as evidence by the applicant, acknowledged, on several occasions between 2021 and 2022, that the earlier mark enjoyed a high degree of recognition, notoriety or renown, in particular for services for providing food and drink.
86 Lastly, as regards the applicant’s claim that there is no need to extend the reputation of the mark to the goods covered by the mark applied for, it is sufficient to note, as observed by EUIPO, that the Board of Appeal did not do so, with the result that that argument has no factual basis.
87 It follows that the applicant’s arguments are not such as to call into question the Board of Appeal’s finding as regards the existence of the reputation of the earlier mark for preparations made from cereals; bread and pastries in Class 30, retailing of foodstuffs, namely preparations made from cereals; bread and pastries, in Class 35, and services for providing food and drink in Class 43.
(c) The distinctive character of the earlier mark and the existence of a link between the marks at issue
88 The applicant submits that the Board of Appeal did not take into account the weak distinctive character of the earlier mark. The only distinctive element of that mark, namely the element ‘paul’, should be regarded as having a very weak distinctive character, or even as being devoid of distinctive character. Similarly, it is included in more than 1 000 EU trade marks currently registered. The reputation of the earlier mark could strengthen its distinctive character, but such distinctiveness remains limited.
89 According to the applicant, there is nothing to indicate that the relevant public would establish a link between the marks at issue. The marketing channels used by the proprietors of the marks at issue and the groups of consumers concerned are completely different.
90 Furthermore, in the part relating to the global assessment of the signs at issue, the applicant submits that, in view of the nature of the goods at issue, the visual aspect of the comparison should be given priority when assessing whether there is a likelihood of confusion on the part of the relevant public.
91 EUIPO disputes the applicant’s arguments.
92 The question whether a link between the marks at issue exists in the mind of the relevant public must be appreciated globally, taking into account all factors relevant to the circumstances of the case, such as: the degree of similarity between the marks at issue; the nature of the goods or services covered by those marks, 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 its 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 26 September 2018, PUMA , T‑62/16, EU:T:2018:604, paragraph 24 and the case-law cited). However, the existence of a likelihood of confusion between the marks at issue is not necessary, since the relevant public must only be able to establish a link between them without necessarily having to confuse them (see judgment of 28 May 2020, Martínez Albainox v EUIPO – Taser International (TASER) , T‑342/19, T‑342/19, not published, EU:T:2020:234, paragraph 30 and the case-law cited).
93 In the present case, the Board of Appeal found that the link between the marks at issue would be established as regards the goods and services at issue. In particular, it noted, inter alia, that all the goods covered by the marks at issue were food products belonging to the human food sector and targeted the same public which could purchase the goods at the same points of sale. Thus, there was a close connection between the goods and services in respect of which the reputation of the earlier mark has been proved and the goods covered by the mark applied for. That fact, combined with the, admittedly low, visual similarity, with the high or very high degree of phonetic similarity, possibly supplemented by a high degree of conceptual similarity, leads to a link being established between the mark applied for and the earlier mark with a reputation.
94 As regards, first, the applicant’s claim that the distinctive character of the earlier mark is weak, it is based on the premiss that the element ‘paul’ is weakly distinctive. As is apparent from paragraph 48 above, the distinctive character of that element is normal in the present case.
95 The fact that there are more than 1 000 registered trade marks containing that element cannot invalidate that finding. It is apparent from the case-law that the mere presence of marks containing a certain term in the trade mark register without any reference to their use on the market and to any challenge to those marks on account of the existence of a likelihood of confusion, does not permit the inference that the distinctive character of that term has been weakened in relation to the goods and services in respect of which those marks are registered (see, to that effect, judgment of 23 March 2022, Vetpharma Animal Health v EUIPO – Deltavit (DELTATIC) , T‑146/21, not published, EU:T:2022:159, paragraph 116 and the case-law cited).
96 As regards, second, the link between the marks at issue, it must be stated that the applicant’s vague and unsubstantiated arguments cannot call into question the Board of Appeal’s findings relating to the existence of such a link on the part of the relevant public. In particular, the Board of Appeal noted that the goods covered by the mark applied for and those in respect of which the reputation of the earlier mark had been demonstrated were food products targeted at the same public and likely to be available at the same points of sale. The applicant’s claim that those goods target different publics cannot succeed. As has already been stated in paragraph 55 above, the list of goods covered by the mark applied for does not make it possible to identify the method of preparation or preservation of those goods as referred to by the applicant. All the more so, it does not allow conclusions to be drawn as to the existence of the alleged differences as regards the public targeted by the goods covered by each of the marks at issue.
97 Furthermore, the Board of Appeal’s finding relating to the existence of a link between the marks at issue is supported by considerations relating to the similarity of the signs and the reputation of the earlier mark (see paragraph 93 above), which are free from any error of assessment. It follows, in particular, that the relevant public will be able to establish a link between the marks at issue irrespective of whether or not there is a conceptual similarity. Accordingly, the approach taken as to whether marks containing first names or surnames may be compared conceptually has no bearing on the legality of the contested decision. In those circumstances, there is no need to determine, in the present case, which hypothesis should have been adopted by the Board of Appeal.
98 As regards the question whether, when assessing the link between the marks at issue, it is necessary to take into account the manner in which the goods at issue are marketed and, for that reason, to give greater weight to the visual or phonetic similarity, it should be noted that that criterion is indeed relevant in the global assessment of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001. Similarly, as is apparent from the case-law cited in paragraphs 22 and 92 above, the likelihood of confusion is among the relevant factors to be taken into account in assessing whether there is a link between those marks. The fact remains that, in the present case, as has already been held in paragraph 22 above, the Board of Appeal did not find that there was a likelihood of confusion within the meaning of that provision. In those circumstances, the applicant’s argument cannot succeed.
(d) Unfair advantage and the existence of due cause
99 The applicant submits that the Board of Appeal’s finding that the applicant would take unfair advantage of the registration of the mark applied for is not supported by the evidence submitted. The Board of Appeal’s finding in that regard is justified only by the reputation of the earlier mark and does not contain an overall assessment of all the relevant factors. The Board of Appeal’s arguments are purely hypothetical and are based on incorrect findings concerning the similarity of the signs at issue.
100 Similarly, there is no argument to support the conclusion that registration of the mark applied for will be detrimental or may be detrimental to the distinctive character and repute of the earlier mark. In particular, it has not been proven that the use of a common first name would in any way allow undue advantage to be taken or that it has been detrimental to the distinctive character and reputation of the earlier mark.
101 In addition, the applicant submits that there is due cause for the use of the sign Pol’s in its name: it is an abbreviation of the surname of its founder and director. That link between the undertaking and its founder is sufficient for the lawful use of the mark applied for.
102 EUIPO disputes the applicant’s arguments.
103 The fourth of the conditions for the application of Article 8(5) of Regulation 2017/1001 refers to three distinct and alternative types of risk, namely that use of the trade mark applied for without due cause would (i) be detrimental to the distinctive character of the earlier mark, (ii) be detrimental to the repute of the earlier mark; or (iii) take unfair advantage of the distinctive character or repute of the earlier mark. The first type of risk referred to in that provision arises where the earlier mark is no longer capable of giving rise to immediate association with the goods for which it is registered and used. That risk thus refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk occurs where the goods or services covered by the mark applied for may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. The third type of risk concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. It should, however, be emphasised that in none of those cases is it necessary for there to be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 22 March 2007, VIPS , T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).
104 The existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. However, the existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation , C‑252/07, EU:C:2008:655, paragraphs 35 and 36).
105 In the present case, the Board of Appeal endorsed the Opposition Division’s finding that the mark applied for was likely to take unfair advantage of the distinctive character or the repute of the earlier mark in the perception of the relevant public.
106 The Opposition Division, for its part, found that a transfer of the positive associations projected by the image of the earlier mark was highly possible in the present case and that a substantial part of consumers could decide to turn to the goods covered by the mark applied for, taking the view that the mark applied for was somehow linked to the earlier mark, thereby misappropriating its attractive powers and advertising value. That could stimulate the increase in sales of the goods covered by the mark applied for in a disproportionate manner in comparison with the size of its promotional investment, thus leading to an unacceptable situation where the applicant would be allowed to take a ‘free-ride’ on the investment of the proprietor of the earlier mark in promoting and building-up the good reputation of its mark. Consequently, the Opposition Division found that there was a strong likelihood that the use without due cause of the mark applied for in relation to the goods covered by that mark could give the applicant an unearned benefit and lead to free-riding, that is to say, that it would be likely to take unfair advantage of the distinctive character or the repute of the earlier EU trade mark.
107 It must be borne in mind that the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, as confirmed by the conditional wording of Article 8(5) of Regulation 2017/1001. When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for it actually to occur in order to be able to prohibit that use. However, the proprietor of the earlier mark must prove that there is a serious risk that such an injury will occur in the future or, in other words, adduce prima facie evidence of a non-hypothetical future risk of unfair advantage or detriment (see judgment of 7 December 2017, Coca-Cola v EUIPO – Mitico (Master) , T‑61/16, EU:T:2017:877, paragraph 67 and the case-law cited).
108 In the present case, the Opposition Division clearly stated that the proprietor of the mark applied for was likely to take unfair advantage of the repute or distinctive character of the earlier mark in so far as a transfer of the positive associations projected by the image of the earlier mark was highly possible in the present case and that a substantial part of consumers could decide to turn to the goods covered by the mark applied for by taking the view that the mark applied for was somehow linked to the earlier mark, thereby misappropriating its attractive powers and advertising value. The vague claims put forward by the applicant do not call that finding into question.
109 Furthermore, contrary to the applicant’s claims, it is not use of a common first name but a sign which procures an unfair advantage for the proprietor of the mark applied for in that, on the part of the relevant public, that use could create an association with the earlier reputed mark.
110 As regards the due cause relied on by the applicant, it is sufficient to note, as EUIPO did, that it did not rely on it during the administrative procedure. In particular, the applicant’s reference to the word ‘pol’ being the abbreviation of the name included in the applicant’s company name before the Opposition Division cannot be regarded as invoking due cause for the purposes of the application of Article 8(5) of Regulation 2017/1001. It follows that this is a new argument which must be rejected as inadmissible (see, to that effect, judgment of 8 March 2023, Sympatex Technologies v EUIPO – Liwe Española (Sympathy Inside) , T‑372/21, not published, EU:T:2023:111, paragraph 142 and the case-law cited).
111 In the light of all the foregoing considerations, the third plea alleging infringement of Article 8(5) of Regulation 2017/1001, and the first and second pleas in so far as they relate to the similarity of the signs at issue and their distinctive character, must be rejected and, consequently, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the claim for alteration of the contested decision.
IV. Costs
112 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.
113 Since the applicant has been unsuccessful and a hearing has been held, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Pols Erm Tarim Anonim Sirketi to pay the costs.
Kingston | Zilgalvis | Hettne
Delivered in open court in Luxembourg on 4 March 2026.
V. Di Bucci | S. Papasavvas
Registrar | President
* Language of the case: English.