[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] [DONATE]
	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Porczynska v EUIPO - Gap (ITM) (EU trade mark - Judgment) [2025] EUECJ T-44/24 (02 April 2025) URL: https://www.bailii.org/eu/cases/EUECJ/2025/T4424.html Cite as: ECLI:EU:T:2025:356, [2025] EUECJ T-44/24, EU:T:2025:356

[New search] [Contents list] [Help]

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

2 April 2025 (*)

( EU trade mark - Invalidity proceedings - EU word mark gappol - Earlier EU word mark GAP - Relative ground for invalidity - Likelihood of confusion - Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009 (now Article 8(1)(b) and Article 60(1)(a) of Regulation (EU) 2017/1001) - No limitation in consequence of acquiescence - Article 54(1) of Regulation No 207/2009 (now Article 61(1) of Regulation 2017/1001) - Genuine use of the earlier mark - Article 57(2) of Regulation No 207/2009 (now Article 64(2) of Regulation 2017/1001) - Article 56(3) of Regulation No 207/2009 (now Article 63(3) of Regulation 2017/1001) - Reimbursement of the costs of representation - Article 109(1) of Regulation 2017/1001 )

In Case T‑44/24,

Marzena Porczyńska, established in Łódź (Poland), represented by P. Matyjek and J. Porczyński, lawyers,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,

defendant,

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

Gap (ITM), Inc., established in San Francisco, California (United States), represented by M. Siciarek, lawyer,

THE GENERAL COURT (Sixth Chamber),

composed of M.J. Costeira (Rapporteur), President, M. Kancheva and P. Zilgalvis, Judges,

Registrar: V. Di Bucci,

having regard to the written part of the procedure,

having regard to the decision of the President of the Sixth Chamber of the General Court of 29 November 2024 granting the applicant's request that the hearing be cancelled,

gives the following

Judgment

1        By its action based on Article 263 TFEU, the applicant, Marzena Porczyńska, seeks the annulment and alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 December 2023 (Case R 634/2023-5) ('the contested decision').

I.      Background to the dispute

2        On 3 August 2021, the intervener, Gap (ITM) Inc., filed with EUIPO an application for a declaration of invalidity in respect of the EU trade mark registered following an application filed on 15 March 2016 by the applicant in respect of the word sign gappol.

3        The goods covered by the contested mark in respect of which a declaration of invalidity was sought fell within Class 25 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 corresponded to the following description: 'Clothing, footwear, headgear; knitted and woven shirts; T-shirts; polo shirts; leg warmers; dresses; waistcoats; coats; pyjamas; babygros; children suits; skirts; jumpers; suit trousers; underpants; caps; thermal clothing, namely shirts with long and short sleeves, jumpers, shorts, trousers, leggings, underpants, gym suits'.

4        The application for a declaration of invalidity was based on the earlier EU word mark GAP, registered on 27 May 2002 under No 27 292, covering goods in Class 25 and corresponding to the following description: 'Clothing, footwear, headgear'.

5        The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 60(1)(a), read in conjunction with Article 8(1)(b) and (5), 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).

6        On 31 January 2023, the Cancellation Division upheld the application for a declaration of invalidity on the basis of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation.

7        On 23 March 2023, the applicant lodged an appeal with EUIPO against the decision of the Cancellation Division.

8        By the contested decision, the Board of Appeal dismissed the appeal. As a preliminary point, it noted, first of all, that the intervener's representative met the conditions required to represent the intervener before EUIPO. Next, it found that the applicant had failed to prove that the contested mark had been in use for five years, with the result that one of the cumulative conditions laid down in Article 61(1) of Regulation 2017/1001 had not been met. In addition, the Board of Appeal held that the decision of the Polish Patent Office, which had acquired the force of res judicata relied on by the applicant, concerned different marks and that, accordingly, the condition requiring the subject matter to be the same had not been met. Finally, it held that the applicant's request for proof of use before the Cancellation Division was inadmissible on the ground that it had not been submitted by means of a separate document.

9        As regards the application for a declaration of invalidity based on Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation, the Board of Appeal found, first of all, that the relevant public consisted of the general public whose level of attention was average and that the relevant territory was that of the European Union, concentrating its analysis on the Polish part of the relevant public. Next, it found that the goods covered by the contested mark were identical to those designated by the earlier mark. Furthermore, the Board of Appeal found that the signs at issue were visually and phonetically similar 'at least to an average' degree and that the conceptual comparison '[did] not have a significant impact on the overall assessment'. It also noted that, for reasons of procedural economy, it had assessed the inherent distinctiveness of the earlier mark, which it considered to be normal. Lastly, the Board of Appeal found that it could not rule out a likelihood of confusion on the part of the Polish public, within the meaning of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(1)(b) of that regulation.

10      As regards the application for a declaration of invalidity based on Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(5) of that regulation, the Board of Appeal noted that, in so far as the application for a declaration of invalidity had been upheld on the basis of Article 60(1)(a), read in conjunction with Article 8(1)(b), there was no longer any need to examine that ground for invalidity.

11      Lastly, the Board of Appeal rejected the applicant's arguments in relation to the alleged 'trade bullying' it suffered at the hands of the intervener, on the ground that there was no such concept in EU trade mark law.

II.    Forms of order sought

12      The applicant claims, in essence, that the Court should:

–        annul 'the decisions at second and first instance' and order that 'the proceedings be discontinued';

–        in the alternative, alter the contested decision 'by annulling the contested decisions at first and second instance and by dismissing [the intervener's] application …';

–        in the alternative, annul 'the contested decisions at first and second instance' and refer the case back to EUIPO for reconsideration at first instance;

–        order the intervener to pay the costs;

–        require the intervener to provide proof that, during the five years preceding the date of the application for a declaration of invalidity, the earlier mark has been put to genuine use in the European Union in respect of the goods for which it had been registered, taking into account, in particular, its use in Poland;

–        order, by way of measures of inquiry, that the parties appear in person, that witnesses be heard and that letters rogatory be issued to the court having jurisdiction in Łódź (Poland), that an expert assessment be carried out in order to establish whether there is a likelihood of confusion on the part of the Polish public in the present case, and that a visual inspection of the place of business be carried out.

13      EUIPO contends that the Court should:

–        dismiss the action;

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

14      The intervener contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

III. Law

A.      The law applicable ratione temporis

15      Given the date on which the application for registration at issue was filed, namely 15 March 2016, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation 2017/1001) (see, to that effect, order of 5 October 2004, Alcon v OHIM, C‑192/03 P, EU:C:2004:587, paragraphs 39 and 40, and judgment of 23 April 2020, Gugler France v Gugler and EUIPO, C‑736/18 P, not published, EU:C:2020:308, paragraph 3 and the case-law cited).

16      Accordingly, in the present case, as regards the substantive rules, it is appropriate to interpret the references made by the Board of Appeal in the contested decision and by the parties in their pleadings to Article 8(1)(b) and (5), Article 60(1)(a), Article 61(1), Article 63(3) and Article 64(2) of Regulation 2017/1001 as referring to Article 8(1)(b) and (5), Article 53(1)(a), Article 54(1), Article 56(3) and Article 57(2) of Regulation No 207/2009, respectively, the wording of which is identical.

17      Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001 and by the provisions of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1). Article 82(2) of Delegated Regulation 2018/625 provides that, in essence, subject to certain exceptions, its provisions are to apply from 1 October 2017. More specifically, the provisions relating to applications for a declaration of invalidity are to apply to applications made after that date or to proceedings the adversarial part of which has started after that date. In the present case, the application for a declaration of invalidity was filed with EUIPO on 3 August 2021.

B.      Admissibility of Annex A5 to the application

18      The intervener disputes the admissibility of Annex A5 to the application on the ground that it was produced for the first time before the General Court.

19      It should be noted that Annex A5 to the application identifies various marks taken from the register of EU trade marks containing the suffix 'pol'.

20      Contrary to the intervener's submissions, it should be noted that, although it was produced for the first time before the Court, it cannot be rejected. It is apparent from the case-law that extracts from the register of EU trade marks are not strictly evidence, but relate to EUIPO's decision-making practice, in so far as they partially explain how that practice is applied. A party has the right to refer to EUIPO's practice in order to support a plea alleging infringement by the Board of Appeal of a provision of Regulation No 207/2009 (see, by analogy, judgment of 2 July 2015, BH Stores v OHIM – Alex Toys (ALEX), T‑657/13, EU:T:2015:449, paragraph 26).

21      Accordingly, Annex A5 to the application must be regarded as admissible.

C.      Substance

1.      The claim for annulment of the contested decision

22      In the context of its claim for annulment, the applicant raises, in essence, eight pleas in law, alleging:

–        infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation (now, respectively, Article 60(1)(a) and Article 8(1)(b) of Regulation 2017/1001);

–        infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation (now, respectively, Article 60(1)(a) and Article 8(5) of Regulation 2017/1001);

–        the 'trade bullying' it allegedly suffered from the intervener;

–        infringement of Article 54(1) of Regulation No 207/2009 (now Article 61(1) of Regulation 2017/1001);

–        infringement of Article 57(2) of Regulation No 207/2009 (now Article 64(2) of Regulation 2017/1001);

–        infringement of Article 120(1) of Regulation 2017/1001;

–        infringement of Article 56(3) of Regulation No 207/2009 (now Article 63(3) of Regulation 2017/1001);

–        infringement of Article 109(1) of Regulation 2017/1001.

(a)    The first plea in law, alleging infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation

23      In the context of its first plea, the applicant submits, in essence, that the Board of Appeal erred in the comparison of the goods at issue, in the assessment of the similarity of the signs at issue and of the likelihood of confusion.

24      EUIPO and the intervener dispute the applicant's arguments.

25      In that regard, it should be recalled that, under Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, on application by the proprietor of an earlier mark, a registered EU trade mark must be declared invalid if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

26      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public's perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgments of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited, and of 21 March 2019, Pan v EUIPO – Entertainment One UK (TOBBIA), T‑777/17, not published, EU:T:2019:180, paragraph 37 and the case-law cited).

27      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

28      Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it must be borne in mind that, for an EU trade mark to be declared invalid, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 76 and the case-law cited).

29      It is in the light of those considerations that it is necessary to assess whether the Board of Appeal was right to find in the present case that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

(1)    The relevant public and the relevant territory

30      In the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

31      In the present case, the Board of Appeal found that since the goods at issue were everyday consumer goods, the relevant public consisted of the general public whose level of attention was average.

32      The applicant claims that the goods covered by the contested mark and those covered by the earlier mark are not aimed at the same public.

33      However, it must be stated that the applicant does not identify the relevant public which the Board of Appeal was supposed to take into account.

34      In any event, it should be borne in mind that the goods at issue all fall within Class 25 and that it is apparent from the case-law that those goods are considered to be everyday consumer goods that are aimed at the general public, which will display an average level of attention when purchasing them (judgments of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easystep), T‑20/19, EU:T:2020:309, paragraph 40, and of 8 July 2020, Pablosky v EUIPO – docPrice (mediFLEX easySTEP), T‑21/19, EU:T:2020:310, paragraph 40).

35      Therefore, the Board of Appeal was right to find that the relevant public consisted of the general public whose level of attention was average.

36      As regards the relevant territory, the Board of Appeal found that, since the earlier mark was an EU trade mark, the relevant territory for the purpose of examining the likelihood of confusion was that of the European Union. However, it noted that, 'for an [EU trade mark] to be refused registration', it was sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exist in only part of that territory and that the examination of the likelihood of confusion was limited, in essence, to the Polish part of the relevant public.

37      There is no need to call into question those findings, which are not, moreover, disputed by the applicant.

(2)    The comparison of the goods

38      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).

39      It is also apparent from the case-law that goods can be considered to be identical when the goods designated by the contested mark are included in a more general category covered by the earlier mark (see, to that effect and by analogy, judgment of 21 February 2024, Azalee Cosmetics v EUIPO – L'Oréal (UK) (LA CREME LIBRE), T‑765/22, not published, EU:T:2024:106, paragraph 33 and the case-law cited).

40      In paragraphs 56 to 58 of the contested decision, the Board of Appeal found, in upholding the Cancellation Division's decision on that point, that the goods designated by the earlier mark included the goods covered by the contested mark and that, therefore, the goods at issue were identical.

41      The applicant submits that the mere fact that the goods at issue are in Class 25 cannot lead to the conclusion that they are identical or even similar to each other. It noted that the goods themselves, their places of manufacture, their distribution channels, the countries in which they are marketed, their quality and their style are different and that they are intended for different publics.

42      EUIPO and the intervener dispute the applicant's arguments.

43      In the present case, in the light of the wording of the goods covered by the contested mark (see paragraph 3 above), those goods must be regarded as falling within the broader categories of 'clothing', 'footwear' and 'headgear' covered by the earlier mark. Therefore, having regard to the fact that the goods covered by the two marks at issue are 'clothing, footwear, headgear' and in the light of the case-law cited in paragraph 39 above, it must be held that those goods are identical.

44      In so far as the applicant submits that the goods at issue are different, in that the goods themselves, their places of manufacture, their distribution channels, the countries in which they are marketed, their quality and their style are different and that they are intended for different publics, it is sufficient to point out, as EUIPO and the intervener contend, that the comparison of the goods must relate to the description of the goods covered by the marks at issue and not to the goods for which the marks are actually used (judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM'S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 30).

45      Consequently, the Board of Appeal did not err in its assessment that the goods at issue were identical.

(3)    The comparison of the signs

46      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

47      In the present case, the marks to be compared are the contested word mark gappol and the earlier word mark GAP.

48      Before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the Board of Appeal's assessment of the distinctive and dominant elements of the contested mark.

(i)    The distinctive and dominant elements of the contested mark

49      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 for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods 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 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).

50      It should also be noted that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is registered or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM – Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 52). Most often, it will be possible to recognise those elements as having a distinctive character only because of their combination with the other elements of the mark. Owing to their low, or even very low, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see, to that effect, judgment of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 53 and the case-law cited).

51      In paragraphs 63 to 65 of the contested decision, the Board of Appeal noted, in essence, that the Polish public will break the contested mark down into two word elements, namely 'gap' and 'pol'. As regards the word element 'gap', the Board of Appeal found that it was meaningless and that it was therefore distinctive. As regards the word element 'pol', it found, in essence, that the Polish public could perceive it as an indication of origin, namely Poland, and, therefore, understand it as a descriptive suffix indicating that the goods covered by the contested mark had a Polish origin. That understanding is apparent, in particular, from 'numerous extracts from the internet' provided by the intervener.

52      The applicant submits, in essence, that the relevant public does not identify the word element 'pol' in the contested mark and does not perceive it as an indication of origin, namely Poland.

53      EUIPO and the intervener dispute the applicant's arguments.

54      In the light of the parties' arguments, it is necessary to examine whether the Board of Appeal was right to find, in essence, that the Polish public perceived the contested mark as consisting of the word elements 'gap' and 'pol' and understood the latter word element as an indication of origin, namely Poland.

55      In that regard, it must be borne in mind that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, while perceiving a word sign, he or she will identify the elements which, for him or her, suggest a concrete meaning or resemble words which he or she knows (see judgment of 5 October 2020, Eugène Perma France v EUIPO – SPI Investments Group (NATURANOVE), T‑602/19, not published, EU:T:2020:463, paragraph 28 and the case-law cited).

56      As regards the word element 'gap', common to the marks at issue, there is no need to call into question the Board of Appeal's assessment, which, moreover, has not been disputed by the applicant, that, in essence, for a non-negligible part of the Polish public, that element has no meaning and therefore has an average degree of distinctiveness.

57      As regards the word element 'pol', it should be noted that it is apparent from EUIPO's file, in particular from Annexes 5, 6 and 7 to the application for a declaration of invalidity and from Annexes 3, 4 and 5 to the intervener's observations before the Board of Appeal, that the latter produced as evidence, namely:

–        extracts from websites containing articles relating to undertakings whose names contain the suffix 'pol' and in particular several extracts from the online encyclopaedia Wikipedia, the first on Herbapol, companies established in Poland specialising in the treatment of herbs and food production and in herbal medicinal and cosmetic preparations, the second on Pekpol, a group of companies, also established in Poland, specialising in the meat industry, the third on MarcPol, a former Polish trading company, and the fourth on SWISS KRONO, a company formerly named Kronopol, established in Poland and specialising in wood products;

–        extracts from the website 'biznesmeblowy.pl' relating to the change of the KRONOPOL brand to SWISS KRONO;

–        an extract from the EUIPO database containing several trade mark registrations containing the element 'kronopol', the proprietor of which is SWISS KRONO.

58      It is apparent from that evidence that the element 'pol' is used in the name of several companies established in Poland, which has, moreover, been confirmed by the applicant, and that it is included within several EU trade marks owned by a Polish company.

59      Accordingly, the Board of Appeal was right to conclude, in essence, on the basis of the evidence provided by the intervener during the administrative proceedings, that the Polish public, or at least a non-negligible part of it, was accustomed to the use of the suffix 'pol' in reference to Poland and could identify it as such within the contested mark.

60      The applicant, who was required to demonstrate, with corroborating evidence, that the analysis carried out by the Board of Appeal was incorrect in respect of a significant part of the relevant public (see, to that effect, judgment of 19 December 2019, Japan Tobacco v EUIPO – I.J. Tobacco Industry (I.J. TOBACCO INDUSTRY), T‑743/18, not published, EU:T:2019:872, paragraph 35 and the case-law cited), has not succeeded in calling that finding into question. It merely stated that the relevant public would not break down the contested mark in so far as it consisted of an indivisible word, written in 'the same font', and that it did not contain any element which was dominant, but did not put forward any evidence capable of establishing the perception of the relevant public on which it relied. The only evidence which it submitted was Annex A5 to the application, from which it is apparent that there are EU trade mark registrations including the suffix 'pol', the proprietors of which are not Polish. However, that fact is not such as to call into question the finding that the Polish public, or at least a non-negligible part of it, is likely to identify the suffix 'pol' in the contested mark as a reference to Poland.

61      As regards the analogy drawn by the applicant to other examples of words, such as Interpol or Europol, in which the element 'pol' is just as important as the elements placed at the beginning of those words, it is sufficient to note, as the intervener has done, that it merely endorses the finding that the relevant public will break down the contested mark, consisting of the elements 'gap' and 'pol'.

62      As to the remainder, although the applicant claims that, according to the case-law, the reputation and the degree of distinctive character of a sign, which concern it as a whole, do not make it possible to determine which component of that sign is dominant in the perception of the relevant public, it is sufficient to state that the Board of Appeal was right, in so far as it did not analyse the reputation of the contested mark, not to apply that case-law in the present case.

63      In those circumstances, it should be noted that the word element 'gap', common to the marks at issue, which has no meaning for a non-negligible part of the Polish public and therefore has an average distinctive character, contributes significantly to the overall impression produced by those marks and that the word element 'pol', of which the contested mark is composed, indicating the geographical origin of the goods and thus having a weak distinctive character, will have a limited impact on the overall impression created by those marks, an impression which must, however, always be taken into account in the context of their visual, phonetic and conceptual comparison.

64      It is appropriate to examine, taking into account the foregoing considerations, whether the visual, phonetic and conceptual comparison of the marks at issue carried out by the Board of Appeal is vitiated by errors of assessment.

(ii) The visual, phonetic and conceptual comparison of the signs at issue

–       Visual comparison of the signs at issue

65      In paragraphs 68 and 70 to 74 of the contested decision, the Board of Appeal noted that the signs at issue shared the letters 'g', 'a' and 'p', but differed in the letters 'p', 'o' and 'l', placed at the end of the contested sign. It found that the only element making up the earlier sign was included in its entirety within the contested sign. The Board of Appeal noted that those signs coincided in the first word element of the contested sign, that that element was the only element making up the earlier sign and that the only element which differed was descriptive. It found that there was at least an average degree of visual similarity.

66      The applicant claims that the signs at issue are visually different. It argues that the earlier sign consists of three letters, whereas the contested sign contains six letters and is written in upper-case letters.

67      EUIPO and the intervener dispute the applicant's arguments.

68      In that regard, it should be recalled that, according to the case-law, what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (judgment of 25 March 2009, Kaul v OHIM – Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraph 83).

69      Furthermore, it is also apparent from the case-law that, where the sole component of the earlier mark is included in its entirety within the contested mark, the signs at issue are partially identical in such a manner as to create a certain impression of visual similarity in the mind of the relevant public (see judgment of 20 June 2018, Anabi Blanga v EUIPO – Polo/Lauren (HPC POLO), T‑657/17, not published, EU:T:2018:358, paragraph 30 and the case-law cited).

70      In the present case, it should be noted that the contested sign consists of six letters, namely the letters 'g', 'a', 'p', 'p', 'o' and 'l', and the earlier sign of three, namely the letters 'g', 'a' and 'p'. Accordingly, the signs at issue have three out of six letters in common. Furthermore, the only word element of which the earlier mark is composed is entirely included in the distinctive word element of the contested mark.

71      The only difference between the signs at issue lies in the word element 'pol' placed at the end of the contested mark, which, as is apparent from paragraph 63 above, has a weak distinctive character and has a limited impact on the overall impression created by the contested mark.

72      The view must therefore be taken that the signs at issue are visually similar to an average degree.

73      None of the applicant's other arguments can cast doubt on such a finding.

74      First, the fact that the earlier sign consists of three letters, whereas the contested sign contains six letters, is not sufficient to conclude that there is no similarity between the signs at issue. In the present case, those signs share three out of six letters in the same order, namely those of the most distinctive element of the mark applied for, and the earlier sign is included in its entirety within the contested sign. As is apparent from the case-law cited in paragraph 68 above, what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order.

75      Secondly, it also cannot be inferred from the use of lower-case or upper-case letters that the marks at issue are dissimilar, since the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the graphic or stylistic characteristics which that mark might possess (see judgment of 29 April 2015, Chair Entertainment Group v OHIM – Libelle (SHADOW COMPLEX), T‑717/13, not published, EU:T:2015:242, paragraph 50 and the case-law cited).

–       Phonetic comparison of the signs at issue

76      In paragraphs 69 to 74 of the contested decision, the Board of Appeal noted, in addition to the assessments referred to in paragraph 65 above and common to the visual and phonetic comparison of the signs at issue, that those signs coincided in the pronunciation of the letters 'g', 'a' and 'p', but that they differed in the syllable 'pol' in the contested mark. It concluded that they were phonetically similar at least to an average degree.

77      The applicant submits that the signs at issue are phonetically different. It submits that the earlier mark consists of one syllable, whereas the contested mark contains two syllables. It adds, as regards the contested mark, that the emphasis is placed on the syllable 'pol', that a very strong emphasis must be placed on the double 'p' and that the two syllables of which it consists are equally important.

78      EUIPO and the intervener dispute the applicant's arguments.

79      In the present case, the contested sign consists of two syllables, namely the syllables 'gap' and 'pol', and the earlier sign of a single syllable, namely the syllable 'gap'. Accordingly, the contested sign and the earlier sign are partially identical, inasmuch as the 'gap' element, which is pronounced in the same way, is common to both signs.

80      The phonetic difference between the two signs at issue, resulting from the addition of the second syllable in the contested sign, namely 'pol', is not sufficient to rule out the phonetic similarity between those signs taken as a whole, in particular in view of the fact that the common element 'gap' is pronounced in the same way.

81      In that regard, as has already been held, the fact that the number of syllables is different is not sufficient to conclude that there is no phonetic similarity between the signs at issue (see, to that effect, judgment of 19 May 2011, PJ Hungary v OHIM – Pepekillo (PEPEQUILLO), T‑580/08, EU:T:2011:227, paragraph 79 and the case-law cited).

82      In the present case, it should be noted that the applicant does not dispute that the first syllable of the contested mark is pronounced in an identical manner to the sole syllable of the earlier mark. Accordingly, in so far as half of the contested sign is pronounced in the same way as the earlier mark, any difference in pronunciation created by the presence of the weakly distinctive element 'pol' is not such as to rule out any phonetic similarity between the signs at issue.

83      The view must therefore be taken that the signs at issue are phonetically similar to an average degree.

–       Conceptual comparison of the signs at issue

84      In paragraphs 75 to 77 of the contested decision, the Board of Appeal found that the element common to the signs at issue 'gap' meant, inter alia, 'a space between two things' in English and evoked the concept of 'open mouth' in Swedish and that, even if the relevant public understood it, it had no meaning with regard to the goods at issue. It added that the contested mark, as a whole, had no meaning. According to the applicant, the signs at issue are distinguished only by the part of the public which understood the non-distinctive element 'pol'. The Board of Appeal concluded that the conceptual comparison '[did] not have a significant impact on the overall assessment'.

85      The applicant submits that the capital letters making up the earlier mark indicate the presence of an acronym, whereas the contested mark 'forms a … grammatical whole'. It adds that the English term 'gap' means 'a space between two things' whereas the Polish word 'gapa' (in English, 'airhead') means 'a person who is a bit clumsy, absent-minded and awkward' but has a 'positive connotation'. Accordingly, the signs at issue were conceptually different.

86      EUIPO and the intervener dispute the applicant's arguments.

87      In that regard, it should be borne in mind that, according to the case-law, where neither of the signs at issue has a meaning taken as a whole, it must be held that a conceptual comparison is not possible (see, to that effect, judgments of 21 September 2017, Novartis v EUIPO – Meda (Zymara), T‑214/15, not published, EU:T:2017:637, paragraph 149, and of 5 October 2017, Forest Pharma v EUIPO – Ipsen Pharma (COLINEB), T‑36/17, not published, EU:T:2017:690, paragraph 96).

88      In the present case, as regards the word 'gap', which constitutes the earlier mark and represents the first element of the contested mark, it must be noted that it has a meaning, inter alia, in English, namely 'a space between two things', and in Swedish, namely 'open mouth' (judgment of 4 October 2017, Gappol Marzena Porczyńska v EUIPO – Gap (ITM) (GAPPOL), T‑411/15, not published, EU:T:2017:689, paragraph 89). However, it is not apparent from the file that the part of the public on which the Board of Appeal relied understands those meanings. As regards the additional element 'pol' of the contested mark, as is apparent from paragraphs 58 to 62 above, the applicant has not succeeded in calling into question the Board of Appeal's assessment that, in essence, a non-negligible part of the Polish public is likely to understand it as an indication of origin, namely Poland. The fact remains that, taken as a whole, the contested mark has no meaning.

89      It follows that neither of the signs at issue has any meaning for the part of the relevant public in respect of which the Board of Appeal assessed whether there was a likelihood of confusion, namely the Polish public, with the result that a conceptual comparison of those signs is not possible.

90      It must be stated that the Board of Appeal found that the conceptual comparison '[did] not have a significant impact on the overall assessment'.

91      Such an assessment, even if it were vitiated by an error, would justify the annulment of the contested decision only in so far as it had any bearing on the outcome of the dispute.

92      That would not be the case if the result of the global analysis of the likelihood of confusion nevertheless led to the conclusion that there is a likelihood of confusion in respect of all the contested goods, within the meaning of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation.

93      The applicant's other arguments cannot succeed.

94      As regards the applicant's argument that the capital letters making up the earlier mark indicate the presence of an acronym, whereas the contested mark 'forms a … grammatical whole', it is sufficient to note that the applicant has not provided any other evidence to prove such a finding.

95      As regards the applicant's argument relating to the Polish word 'gapa' (in English, 'airhead'), it must be observed that the contested mark consists of the word 'gappol' and that the applicant does not explain to what extent the relevant public will associate it with the term 'gapa', having regard in particular to the fact that that word does not correspond to one of the two elements of which that mark consists.

96      It follows from the foregoing considerations that the signs at issue are visually and phonetically similar to an average degree and that a conceptual comparison of them is not possible.

(4)    The distinctiveness of the earlier mark

97      In paragraphs 78 to 81 of the contested decision, the Board of Appeal decided, as the Cancellation Division did, for reasons of procedural economy, not to examine the intervener's claims relating to the enhanced distinctiveness of the earlier mark, but to base its analysis on the inherent distinctiveness of that mark. It found in that regard that, since the earlier mark had no meaning for the public in the relevant territory with regard to the goods which it designates, its distinctiveness was normal.

98      The applicant submits, in essence, that the intervener has not proved the enhanced distinctiveness of the earlier mark.

99      In that regard, it is sufficient to note, as EUIPO observed, that, in paragraphs 79 and 80 of the contested decision, the Board of Appeal stated that, for reasons of procedural economy, it based its assessment on the inherent distinctiveness of the earlier mark.

100    As regards the inherent distinctiveness of the earlier mark, it should be noted that, as is apparent, in essence, from paragraph 88 above, the earlier mark has no meaning for the Polish public with regard to the goods which it designates.

101    Accordingly, the Board of Appeal was right to find, in essence, that the inherent distinctiveness of the earlier mark was average.

(5)    The global assessment of the likelihood of confusion

102    A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, VENADO with frame and others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

103    In paragraphs 85 to 91 of the contested decision, the Board of Appeal found that the goods at issue were identical and were aimed at the general public whose level of attention was average, that the earlier mark had a normal degree of inherent distinctiveness and that the signs at issue had at least an average degree of visual and phonetic similarity, whereas the conceptual comparison was of little consequence. It added that, in similar proceedings, it had been held that the fact that the earlier mark is both included in the contested mark and shares the initial part thereof was sufficient in order to conclude that the signs at issue produce an overall impression of similarity. In the view of the Board of Appeal, although the relevant public is unlikely to confuse the signs at issue, it may believe, based on the use of the common element 'gap' for identical goods, that they come from the same undertaking or from economically linked undertakings. It noted that, having regard in particular to the identity of the goods, it could not be ruled out that the relevant public might believe that the contested mark is a variant of the earlier mark, in particular its Polish variant. It found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

104    The applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion in the present case. Furthermore, the earlier mark is not well known in Poland. The applicant adds that the intervener has provided neither proof of use of the earlier mark nor any other evidence to suggest that the Polish public was likely to confuse the marks at issue. Since the intervener does not carry out any economic activity in Poland, there can be no likelihood of confusion on the part of the Polish public. In addition, the applicant submits that the Board of Appeal should have taken into account, first, the intervener's commercial policy, namely the fact that, if it makes an addition to its earlier trade mark, it concerns the social group or gender to which the product is addressed and not the country in which the product is sold or manufactured and, secondly, the fact that it operates on the market under its full trading name. Furthermore, those marks are not represented in the same way on the labels. Moreover, the search engine Google distinguishes the applicant from the intervener. EUIPO has also registered the trade mark KRONOPOL.

105    EUIPO and the intervener dispute the applicant's arguments.

106    In the present case, it should be noted that, first, as is apparent from paragraphs 45, 72, 83 and 101 above, the goods at issue are identical, the signs at issue, taken as a whole, have an average degree of visual and phonetic similarity and the earlier mark has an average degree of inherent distinctiveness.

107    Secondly, account should be taken of the fact that average consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their mind (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).

108    Thirdly, as the intervener submits, it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is also common in that sector for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various clothing lines from one another (see judgment of 4 October 2017, GAPPOL, T‑411/15, not published, EU:T:2017:689, paragraph 104 and the case-law cited).

109    Therefore, notwithstanding the assessment relating to the conceptual comparison referred to in paragraph 90 above, the Board of Appeal was right to conclude that the relevant public will be able to believe that the goods at issue come from the same undertaking or, at the very least, from economically linked undertakings.

110    None of the applicant's arguments is such as to cast doubt on that conclusion.

111    As regards the alleged errors made by the Board of Appeal in the comparison of the signs at issue, it should be pointed out that such arguments have already been examined and are not such as to call into question the conclusions drawn in that regard in paragraphs 72, 83 and 89 above.

112    As regards the argument that the earlier mark is not well known in Poland, it is sufficient to note that the reputation of the earlier mark is not a precondition for the application in the present case of Article 8(1)(b) of Regulation No 207/2009, unlike with regard to the application of Article 8(5) of that regulation (judgment of 6 November 2024, House of Prince v EUIPO – Biały (AROMA KING), T‑118/23, not published, EU:T:2024:778, paragraph 74).

113    As regards the argument that the intervener does not carry out any economic activity in Poland and has provided neither proof of use of the earlier mark nor any other evidence to suggest that the Polish public is likely to confuse the marks at issue, with the result that there can be no likelihood of confusion on the part of the Polish public, it is sufficient to recall that the use of the earlier mark is not a precondition for the application of Article 8(1)(b) of Regulation No 207/2009, unless a request is made in accordance with Article 57(2) of that regulation (see paragraph 156 below).

114    In so far as the applicant submits that the Board of Appeal should have taken into account, first, the intervener's commercial policy and, secondly, the fact that it operates on the market under its full trading name, it is sufficient to recall that, since particular marketing strategies for the goods covered by the marks may vary over time and depend on the wishes of the proprietors of those marks, an analysis of whether there will be a likelihood of confusion between two marks cannot be dependent on the marketing intentions of the proprietors of the marks, whether implemented or not, which are by their very nature subjective (judgments of 15 March 2007, T.I.M.E. ART v OHIM, C‑171/06 P, not published, EU:C:2007:171, paragraph 59, and of 9 September 2008, Honda Motor Europe v OHIM – Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 63).

115    As regards the argument that the marks at issue are not represented in the same way on the labels, it is sufficient to recall that, as is apparent from the case-law cited in paragraph 75 above, the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the graphic or stylistic characteristics which that mark might possess.

116    The argument that the search engine Google distinguishes the applicant from the intervener must also be rejected. Although it is undisputed that the signs at issue are not identical, even on Google, that fact is without prejudice to the average visual and phonetic similarity between them.

117    The same is true of the argument that EUIPO registered the KRONOPOL mark. In that regard, it is important to note that the decisions which the Boards of Appeal of EUIPO are led to take under Regulation No 207/2009 concerning registration of a sign as an EU trade mark are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation as interpreted by the EU judicature, and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65).

118    In those circumstances, in view of the fact that the Board of Appeal found, following a strict and comprehensive assessment, that there was a likelihood of confusion, the applicant cannot rely, for the purposes of invalidating that finding, on EUIPO's registration of an allegedly similar mark.

119    In the light of the foregoing, the first plea must be rejected as unfounded.

(b)    The second plea in law, alleging, in essence, infringement of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation

120    The applicant submits, in essence, that the intervener, first of all, has not demonstrated that the earlier mark has a reputation, next, has not proved that the contested mark took unfair advantage of the earlier mark and, lastly, has not proved that the relevant public established a link between the two marks.

121    EUIPO contests the applicant's arguments.

122    In that regard, it should be borne in mind that the lawfulness of a decision made by the Board of Appeal must be assessed solely on the basis of factual and legal findings contained in the contested decision (see judgment of 14 September 2022, Itinerant Show Room v EUIPO – Save the Duck (ITINERANT), T‑416/21, not published, EU:T:2022:560, paragraph 119 and the case-law cited).

123    In the present case, it should be noted that, in paragraph 96 of the contested decision, the Board of Appeal found that, since the opposition had to be upheld on the basis of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, it was not necessary to examine the ground of opposition on the basis of Article 53(1)(a), read in conjunction with Article 8(5).

124    Since the Board of Appeal did not examine the application for a declaration of invalidity on the basis of Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(5) of that regulation, the Court's examination cannot, in the present case, concern the question whether the conditions for the application of those provisions have been met.

125    Therefore, the second plea must be rejected as ineffective.

(c)    The third plea in law, alleging that the applicant suffered from 'trade bullying' at the hands of the intervener

126    The applicant submits, in essence, that the Board of Appeal should have classified the intervener's conduct as 'trade bullying' and rejected the application for a declaration of invalidity. According to the applicant, 'trade bullying' consists of the actions of a 'huge company' against a 'smaller entity', whereby it relies on the law to subject the latter to repeated legal proceedings, despite the fact that it does not have the same interests. In its view, that is the case of the intervener which systematically brings legal proceedings against it and challenges its trade marks. The letter in which the intervener announced that it was monitoring the applicant's activities and imposed conditions on it was evidence of such 'trade bullying'. The applicant adds that the intervener's attempt to eliminate it from the market for more than 20 years should be regarded as contrary to 'European Union standards', in that the intervener seeks to rely on the provisions relating to the application for a declaration of invalidity. In addition, the application for a declaration of invalidity was filed 'arbitrarily', without any real intention on the part of the intervener to protect its rights. It thus amounted to an 'abuse of procedural rights'.

127    EUIPO and the intervener dispute the applicant's arguments.

128    In that regard, it should be noted, as the Board of Appeal did in paragraph 92 of the contested decision, that there is no concept of 'trade bullying' in EU trade mark law.

129    Assuming that, by its claims, the applicant intends to rely on an abuse of rights, it should be borne in mind that, according to the case-law, there is a general principle of EU law according to which individuals may not rely on the rules of EU law in a fraudulent or abusive manner. Proof of an abusive practice requires, first, a combination of objective circumstances in which, despite formal observance of the conditions laid down by the EU rules, the purpose of those rules has not been achieved and, second, a subjective element consisting in the intention to obtain an advantage from the EU rules by artificially creating the conditions laid down for obtaining it (see judgment of 20 June 2019, Nonnemacher v EUIPO – Ingram (WKU), T‑389/18, not published, EU:T:2019:438, paragraph 20 and the case-law cited).

130    In the present case, it should be noted, as EUIPO observed, that the applicant confines itself, in essence, to submitting, in a vague and general manner, that, on account of the intervener's actions towards it, the intervener seeks to rely on the provisions relating to the invalidity of EU trade marks without demonstrating that the conditions for an abuse of rights have been met.

131    Furthermore, there is nothing in the file to suggest that the intervener filed the application for a declaration of invalidity not in order to defend its earlier mark, but solely in order to prevent the applicant from using the contested mark and to undermine the applicant's interests.

132    Accordingly, the third plea must be rejected as ineffective and, in any event, unfounded.

(d)    The fourth plea in law, alleging infringement of Article 54(1) of Regulation No 207/2009

133    In paragraphs 23 to 34 of the contested decision, the Board of Appeal found that the applicant had not demonstrated any material facts that would lead to the conclusion that the intervener had acquiesced in the use of the contested mark. It found that the mere statement that the sign GAPPOL had been registered and used in Poland for 20 years is irrelevant. In the Board of Appeal's view, it was for the applicant to provide objective evidence proving use of the contested mark, which it failed to do, since the registration certificates provided during the administrative procedure were insufficient to demonstrate any use. The Board of Appeal found that, since one of the conditions laid down in Article 54(1) of Regulation No 207/2009 had not been met, the Cancellation Division was not required to examine the other conditions.

134    The applicant submits, in essence, that the Board of Appeal erred in upholding the application for a declaration of invalidity and that the intervener had acquiesced in the use of the contested mark for five successive years.

135    EUIPO and the intervener dispute the applicant's arguments.

136    In that regard, it should be observed that, in accordance with Article 54(1) of Regulation No 207/2009, where the proprietor of an EU trade mark has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Union while being aware of such use, that proprietor is no longer to be entitled on the basis of the earlier trade mark to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith.

137    It follows that four conditions must be met before the period of limitation in consequence of acquiescence starts to run if there is use of a later trade mark which is identical with the earlier trade mark or confusingly similar. First, the later trade mark must be registered; second, the application must have been made in good faith by its proprietor; third, the later trade mark must be used on the territory where the earlier trade mark is protected; and fourth, the proprietor of the earlier trade mark must be aware of the use of that trade mark after its registration (see judgment of 27 January 2021, Turk Hava Yollari v EUIPO – Sky (skylife), T‑382/19, not published, EU:T:2021:45, paragraph 49 and the case-law cited).

138    According to the case-law, it is for the proprietor of the contested mark to show that the conditions in question have been met and, particularly, to establish, with supporting evidence, the date on which the proprietor of the earlier mark actually became aware of the use of the contested mark (see judgment of 27 January 2021, skylife, T‑382/19, not published, EU:T:2021:45, paragraph 49 and the case-law cited).

139    In the present case, it should be noted that the applicant raised the issue of a possible limitation in consequence of acquiescence in its observations on the application for a declaration of invalidity and reiterated that issue in its subsequent observations before the Cancellation Division and in the statement setting out the grounds of appeal before the Board of Appeal.

140    However, it must be noted, as the Board of Appeal did, that the applicant has not produced any evidence capable of establishing that the contested mark was used in the territory of the European Union.

141    The evidence provided by the applicant during the proceedings before EUIPO is as follows:

–        a printout from the central register and information from Poland on the relevant economic activity;

–        relevant certificates of entry in the commercial register;

–        a decision of the Polish Patent Office, accompanied by protection certificates;

–        copies of documents proving ownership of the dog named Mala Gapa;

–        a printout from the EUIPO database concerning the GAPPOL trade marks;

–        a printout from the Polish Patent Office database concerning the word mark GAP;

–        a letter from the intervener's representative dated 6 June 2008, addressed to the applicant, indicating that the intervener was monitoring the applicant's actions and warning it that, in the event of use of the syllable 'gap' other than in the sign GAPPOL, it would use all the means provided for by law to prevent infringement of its exclusive rights.

142    However, none of that evidence proves that the contested mark has actually been used in the territory of the European Union.

143    It follows that the applicant has not shown that the third condition referred to in paragraph 137 above, namely that the later mark must be used in the territory in which the earlier mark is protected, has been met.

144    Therefore, since one of the cumulative conditions referred to in paragraph 137 above has not been met, the Board of Appeal was fully entitled to reject the applicant's claim alleging limitation in consequence of acquiescence.

145    The applicant's other arguments are not such as to cast doubt on that finding.

146    As regards the argument alleging the existence of a dispute between the parties before the Polish Patent Office and the Polish courts, it is sufficient to note that the only evidence submitted by the applicant is a decision of the Polish Patent Office of 24 May 2000, which does not concern the contested mark and which relates to another period. The same is true of the applicant's argument that, in the letter of 6 June 2008, the intervener announced that it was monitoring the applicant's actions.

147    As regards the argument that there was an unwritten agreement between the parties that the marks at issue were dissimilar, it is sufficient to note, as EUIPO observed, that that has not been proved.

148    As regards the arguments that the intervener was aware of the registration of the contested mark, had not filed a notice of opposition against that mark, had not applied for a declaration of invalidity of the other word and figurative marks available to it and had acquiesced in the coexistence of the two marks, it must be held that, as is apparent from paragraph 33 of the contested decision, in the absence of proof of use of the contested mark, the Board of Appeal did not examine the other cumulative conditions laid down in Article 54(1) of Regulation No 207/2009.

149    It is also necessary to reject the argument that the use of the contested mark has not been disputed in the present case and that the proceedings are not revocation proceedings given that, as is apparent from paragraph 32 of the contested decision, the Board of Appeal analysed whether the applicant had proved use of that mark as a condition laid down in Article 54(1) of Regulation No 207/2009.

150    In so far as the applicant submits that the circumstances of the present case are different from those which gave rise to the judgment of 22 September 2011, Budějovický Budvar (C‑482/09, EU:C:2011:605), it must be held that the Board of Appeal did not apply that judgment in the present case, given that it found that the condition relating to the use of the later mark, which is one of the cumulative conditions laid down in Article 54(1) of Regulation No 207/2009, had not been met and that, therefore, the Cancellation Division was not required to analyse the other conditions laid down in that article.

151    Nor can the Court accept the argument that the intervener has made claims to the contrary in other disputes between the parties. In that regard, it must be noted, as EUIPO observed, that the applicant has not established to what extent the alleged disputes concern the marks at issue.

152    The fourth plea must therefore be rejected as unfounded.

(e)    The fifth plea in law, alleging, in essence, infringement of Article 57(2) of Regulation No 207/2009

153    In paragraphs 42 to 45 of the contested decision, the Board of Appeal noted that the applicant had not requested proof of use of the earlier mark in a separate document, with the result that its request was inadmissible under Article 19(2) of Delegated Regulation 2018/625.

154    The applicant complains that the Board of Appeal failed to ask the intervener to provide proof of use of the earlier mark, in particular in Poland, even though it had made an explicit request in writing.

155    EUIPO and the intervener dispute the applicant's arguments.

156    In that regard, it must be borne in mind that, according to Article 57(2) of Regulation No 207/2009, if the proprietor of the EU trade mark so requests, the proprietor of an earlier EU trade mark, being a party to the invalidity proceedings, is to furnish proof that, during the period of five years preceding the date of the application for a declaration of invalidity, the earlier EU trade mark has been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered and which he or she cites as justification for his or her application, or that there are proper reasons for non-use, provided the earlier EU trade mark has at that date been registered for not less than five years.

157    In accordance with Article 19(2) of Delegated Regulation 2018/625, a request for proof of use of an earlier mark is to be admissible only if it is submitted as an unconditional request in a separate document.

158    In the present case, it is apparent from EUIPO's file that the applicant requested proof of use of the earlier mark in its submission before the Cancellation Division, rather than as an unconditional request in a separate document as required by Article 19(2) of Delegated Regulation 2018/625.

159    It follows that the Board of Appeal did not make an error of assessment in finding that the request for proof of use submitted by the applicant was inadmissible.

160    The fifth plea must therefore be rejected as unfounded.

(f)    The sixth plea in law, alleging, in essence, infringement of Article 120(1) of Regulation 2017/1001

161    In paragraphs 14 to 22 of the contested decision, the Board of Appeal found that the intervener's representative was established in the European Union and had acted as a lawyer, with the result that he had the legal capacity to file the application for a declaration of invalidity on behalf of the intervener. That finding is supported by the power of attorney submitted by the intervener, which has no expiry date and is thus valid on the filing date of the application for a declaration of invalidity, which sets out the powers granted and names EUIPO as the body before which the intervener's representative may act. Furthermore, in practice, in accordance with the EUIPO Guidelines, if a lawyer is authorised to act in trade mark or design matters before the central intellectual property office of a Member State of the European Economic Area (EEA), he or she will be entitled to act before EUIPO. The Board of Appeal added that representatives before the Office need not file an authorisation unless EUIPO requests it or if, in inter partes proceedings, the other party expressly requests it. Taking into account the power of attorney filed on 18 March 2022, which eliminated any doubts as to the validity of the first power of attorney, dated 10 September 2012, the Cancellation Division was not required to request further documents.

162    The applicant submits, in essence, that the intervener's representative did not file a valid power of attorney until 21 March 2022, that is to say, after the date on which the application for a declaration of invalidity was filed, namely 3 August 2021, and that, therefore, he did not have the valid authority at the time when the application for a declaration of invalidity was filed. The applicant expressed doubts as to whether it was entitled to submit that request in its first observations, but EUIPO did not call on the intervener to produce any signed authorisation.

163    EUIPO and the intervener dispute the applicant's arguments.

164    Under Article 119(2) of Regulation 2017/1001, unless represented by an employee of an economically linked legal person having its domicile, principal place of business or a real and effective industrial or commercial establishment in the EEA, natural or legal persons having neither their domicile nor their principal place of business or a real and effective industrial or commercial establishment in the EEA are to be represented before EUIPO in accordance with Article 120(1) of that regulation in all proceedings provided for by that regulation, other than the filing of an application for an EU trade mark.

165    In accordance with Article 120(1)(a) and (b) of Regulation 2017/1001, the representation of natural or legal persons before EUIPO must be undertaken either by a legal practitioner qualified in one of the Member States of the EEA and having his or her place of business within the EEA, to the extent that he or she is entitled, within the said Member State, to act as a representative in trade mark matters, or by professional representatives whose names appear on the list maintained for that purpose by EUIPO.

166    Under Article 74 of Delegated Regulation 2018/625, employees who represent natural or legal persons within the meaning of Article 119(3) of Regulation 2017/1001, as well as legal practitioners and professional representatives entered on the list maintained by EUIPO pursuant to Article 120(2) of Regulation 2017/1001, are to file a signed authorisation with EUIPO for insertion in the file pursuant to Article 119(3) and Article 120(1) of Regulation 2017/1001 only where EUIPO expressly requires it or where there are several parties to the proceedings in which the representative acts before EUIPO and the other party expressly asks for it.

167    In the present case, it should be noted that the intervener is a legal person having its principal place of business in the United States and must, therefore, pursuant to Article 119(2) of Regulation 2017/1001, be represented by a professional who fulfils the requirements laid down in Article 120(1)(a) and (b) of that regulation.

168    It should also be noted that it is apparent from the file that the intervener's representative before EUIPO signed the application for a declaration of invalidity as an 'advocate' and filed a power of attorney, dated 10 September 2012, under which he was authorised, as an 'attorney', to act on behalf of the intervener, inter alia, before EUIPO. In addition, after the applicant challenged his authorisation to file the application for a declaration of invalidity, he provided a second power of attorney, dated 18 March 2022, drafted in the same terms as the first.

169    The applicant does not dispute that the intervener's representative met the conditions required to represent the intervener before EUIPO laid down in Article 120 of Regulation 2017/1001.

170    It submits, in essence, that the intervener's representative did not file a valid power of attorney until 21 March 2022, that is to say, after the date on which the application for a declaration of invalidity was filed, namely 3 August 2021, with the result that he did not have the valid authority at the time of filing.

171    In that regard, it is sufficient to observe that, as is apparent from paragraph 168 above, the applicant's representative filed, as an annex to the application for a declaration of invalidity, a power of attorney dated 10 September 2012, which expressly authorised him to act on behalf of the intervener, inter alia, before EUIPO and that it did not provide for any end date. It should also be noted that, following the applicant's challenge to its validity, that representative provided a second power of attorney, dated 18 March 2022 and drafted, in essence, in the same terms.

172    In that context, the Board of Appeal cannot be criticised for having found that the intervener's representative had a valid power of attorney at the time when the application for a declaration of invalidity was filed.

173    Although the applicant submits that EUIPO failed to call on the intervener to produce a signed power of attorney, and it expressed doubts, in its first observations, as to its representative's entitlement to file the application for a declaration of invalidity, it is sufficient to note that, as is apparent from paragraph 168 above, following those observations, the intervener's representative filed of its own motion a second power of attorney which confirmed the first, with the result that the Board of Appeal also cannot be criticised for having found that the Cancellation Division had not made an error of assessment in finding that it was not necessary to request additional documents.

174    The sixth plea must therefore be rejected as unfounded.

(g)    The seventh plea in law, alleging infringement of Article 56(3) of Regulation No 207/2009

175    In paragraphs 36 to 38 of the contested decision, the Board of Appeal found that the decision of the Polish Patent Office of 24 May 2000, delivered in Case SP.218/99, concerned the same parties, but related to different marks, namely the EU word mark GAPPOL and Polish figurative mark No 101 323 represented below:

Accordingly, in the Board of Appeal's view, the condition that the subject matter, cause of action and parties be the same had not been met, with the result that Article 56(3) of Regulation No 207/2009 was not applicable in the present case.

176    According to the applicant and contrary to the finding of the Board of Appeal, the abovementioned decision is enforceable on the ground that it establishes the earlier trade mark's lack of reputation in Poland and explains that the applicant, by registering the word mark GAPPOL in Poland and, subsequently, in the European Union, did not seek to take unfair advantage of the intervener's reputation. Accordingly, the fact that that word mark was registered in Poland before the registration of the earlier mark in the European Union is relevant in the present case in so far as the relevant public for the purposes of the global assessment of the likelihood of confusion is the Polish public.

177    EUIPO and the intervener dispute the applicant's arguments.

178    In that regard, it should be borne in mind that, pursuant to Article 56(3) of Regulation No 207/2009, an application for a declaration of invalidity is inadmissible where an application relating to the same subject matter and cause of action, and involving the same parties, has been adjudicated on its merits, either by EUIPO or by an EU trade mark court as referred to in Article 95 of that regulation, and the decision of EUIPO or that court on that application has acquired the authority of a final decision.

179    In addition, it should be noted that, according to the case-law, in order for decisions of a court of a Member State acting as an EU trade mark court to be binding on EUIPO, they must have the force of res judicata, which requires that parallel proceedings before that court and EUIPO concern the same parties and have the same subject matter and cause of action (see, to that effect, judgment of 21 July 2016, Apple and Pear Australia and Star Fruits Diffusion v EUIPO, C‑226/15 P, EU:C:2016:582, paragraph 52).

180    In the present case, it is common ground between the parties that the decision of the Polish Patent Office of 24 May 2000 in Case SP.218/99 did not concern an application for a declaration of invalidity seeking to call into question the validity of the contested mark, but concerned an application for a declaration of invalidity of Polish trade mark No 101 323. It follows that, in the present case, it does not have the same subject matter as the invalidity proceedings before EUIPO.

181    Consequently, the Board of Appeal was fully entitled to find, in essence, that it was not bound by the findings of the Polish Patent Office in the decision of 24 May 2000 in Case SP.218/99.

182    The seventh plea must therefore be rejected as unfounded.

(h)    The eighth plea in law, alleging infringement of Article 109(1) of Regulation 2017/1001

183    In paragraphs 97 and 98 of the contested decision, the Board of Appeal stated that, in accordance with Article 109(1) of Regulation 2017/1001 and Article 18 of Commission Implementing Regulation (EU) 2018/626 of 5 March 2018 laying down detailed rules for implementing certain provisions of Regulation 2017/1001, and repealing Implementing Regulation (EU) 2017/1431 (OJ 2018 L 104, p. 37), the applicant had to pay the intervener's costs in connection with the invalidity and appeal proceedings, which amounted to EUR 550 in respect of professional representation costs for the appeal proceedings and EUR 1 080 for the proceedings before the Cancellation Division, totalling EUR 1 630.

184    The applicant submits that the Board of Appeal infringed Article 109(1) of Regulation 2017/1001 in that it wrongly ordered the applicant to pay the costs.

185    In that regard, it must be borne in mind that, under Article 109(1) of Regulation 2017/1001, the losing party in proceedings for a declaration of invalidity or appeal proceedings is to bear the fees paid by the other party and that, without prejudice to Article 146(7) of that regulation, that party is also to bear all costs incurred by the other party that are essential to the proceedings, including travel and subsistence and the remuneration of an agent, adviser or legal practitioner, within the limits of the scales set for each category of costs in the conditions laid down in the implementing act.

186    In the present case, since, as is apparent from paragraph 8 above, the Board of Appeal dismissed the appeal brought by the applicant, it was fully entitled to order the applicant to pay the costs incurred by the intervener in the proceedings for a declaration of invalidity and appeal proceedings.

187    The eighth plea must therefore be rejected as unfounded and, accordingly, since all the pleas have been rejected, the claim for annulment of the contested decision must be dismissed.

2.      The claim for alteration of the contested decision

188    By the second part of its second head of claim, the applicant asks the Court to alter the contested decision 'by dismissing [the intervener's] application'.

189    Since the pleas relied on by the applicant in support of the claim for annulment have been rejected, as is apparent from paragraph 187 above, the contested decision is not vitiated by any of the grounds of unlawfulness referred to in Article 72(2) of Regulation 2017/1001, with the result that the second part of the applicant's second head of claim must be rejected.

190    In the light of the foregoing considerations, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the first part of the applicant's first, second and third heads of claim in so far as they concern the 'first instance' decision, the second part of the first head of claim, the second part of the third head of claim and the fifth head of claim.

191    As regards the applicant's requests for measures of inquiry, it must be held that, since the action must be dismissed, those requests must also be refused. In any event, it has not been shown that those measures are relevant for the purposes of the proceedings.

 Costs

192    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.

193    EUIPO has contended that the applicant should be ordered to pay the costs in the event that a hearing is convened. On 25 October 2024, the parties were summoned to the hearing and, at the applicant's request of 28 November 2024, the hearing was cancelled by the decision of the President of the Sixth Chamber of the General Court of 29 November 2024. In that context, since the parties were summoned to a hearing and the applicant has been unsuccessful, the applicant must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Marzena Porczyńska to pay the costs.

Delivered in open court in Luxembourg on 2 April 2025.

*      Language of the case: English.

© European Union
The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice. This electronic version is not authentic and is subject to amendment.

---

BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII
URL: https://www.bailii.org/eu/cases/EUECJ/2025/T4424.html