1

By its action under Article 263 TFEU, the applicant, Eti Gıda Sanayi ve Ticaret AŞ, seeks the annulment of the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 14 December 2023 (Case R 1016/2023-3) (‘the contested decision’).

2

On 28 October 2016, the applicant filed an application for registration of a Community design with EUIPO, pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

3

The Community design in respect of which registration was sought and which is contested in the present case is represented in the following view:

4

The goods to which the contested design is intended to be applied are in Class 32.00 of the Locarno Agreement Establishing an International Classification for Industrial Designs of 8 October 1968, as amended, and correspond to the following indication: ‘Bags [packaging] (ornamentation for)’.

5

On 21 January 2019, the intervener, Star Foods E.M. SRL, filed an application with EUIPO for a declaration of invalidity of the contested design in respect of the goods referred to in paragraph 4 above.

6

The ground relied on in support of the application for a declaration of invalidity was that set out in Article 25(1)(e) of Regulation No 6/2002, in the version prior to the entry into force of Regulation (EU) 2024/2822 of the European Parliament and of the Council of 23 October 2024 (OJ L, 2024/2822), read in conjunction with Article 36(2)(b) and (c) of lege nr. 84 privind mărcile și indicațiile geografice (Law No 84 on trade marks and geographical indications) of 15 April 1998 (Monitorul Oficial al României, No 337 of 8 May 2014; ‘the Romanian law on trade marks’). The intervener had based that application on the earlier Romanian word mark KRAX and on three earlier Romanian figurative marks, depicting the same word element ‘krax’ in different stylisations. The four earlier marks were registered for, inter alia, goods in Class 30, and, more specifically, for ‘preparations made from cereals’. The intervener contended that, on account of the similarities between the earlier signs and the goods covered by them, there is a likelihood of confusion within the meaning of the Romanian law on trade marks, thus enabling it to prohibit the use of its distinctive sign in the contested design. Moreover, since the earlier national marks have a reputation in Romania, their reproduction in a similar manner in that design would enable the holder of that design to benefit from their reputation and from the marketing effort and, consequently, its use would be detrimental to their distinctive character within the meaning of the provision in question.

7

At the applicant’s request, by decision of 11 December 2019, the Invalidity Division stayed the proceedings pending a final decision from the Tribunalul Bucureşti (Regional Court, Bucharest, Romania) before which the earlier national figurative mark No 142285 (‘the earlier mark’) was also contested.

8

By decision of 13 March 2023, the Invalidity Division, after resuming the proceedings following the final dismissal of the appeal brought before the national court, upheld the application for a declaration of invalidity, by beginning its examination on the basis of the earlier mark, filed on 12 September 2014, registered on 5 May 2016 in the name of the intervener and represented in the following view:

9

More specifically, the Invalidity Division first of all found that the earlier mark had an average degree of inherent distinctive character and that its validity had been confirmed by the Romanian courts. Next, it took the view, in essence, that the goods covered by that mark and those to which the contested design is intended to be applied were identical, that that mark and that design were visually similar to an average degree and were phonetically identical and that, therefore, the similarities between the two signs were sufficient to conclude that there was a likelihood of confusion. In those circumstances, since the intervener had the right to prohibit, under Article 36(2)(b) of the Romanian law on trade marks, the use of the sign used in that design, it declared the design invalid, in accordance with Article 25(1)(e) of Regulation No 6/2002 in its earlier version. Given that the application had been upheld on the basis of the inherent distinctive character of the mark at issue, it concluded that there was no need to adjudicate on the alleged enhanced distinctive character claimed by the intervener, or on its claim seeking to prohibit the use of the sign in the design concerned on account of the alleged reputation of such a mark. Similarly, it found that there was no longer any need to examine the other earlier rights relied on by the intervener.

10

On 14 May 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Invalidity Division.

11

By the contested decision, the Board of Appeal dismissed the appeal. In essence, it found that it had been necessary to examine the appeal solely on the basis of the earlier mark and concluded that the Invalidity Division was justified in declaring the contested design invalid pursuant to Article 25(1)(e) of Regulation No 6/2002 in its earlier version, read in conjunction with Article 36(2)(b) of the Romanian law on trade marks, since there was a likelihood of confusion. In that regard, it found that the goods covered by that mark and those to which that design is intended to be applied were similar, that the signs at issue were visually similar to an average degree and phonetically identical and that the word elements of those signs had no meaning for the Romanian public, with the result that a conceptual comparison was impossible. Furthermore, as regards the request for proof of use of that mark, it took the view that there was no need to examine the applicant’s arguments, since the mark at issue and that design had been registered for less than five years at the time when the application for a declaration of invalidity was filed. In addition, it found that there was also no need to examine the acquiescence claim according to Romanian law, asserted by the applicant.

12

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

13

EUIPO contends that the Court should:

14

The intervener contends that the Court should:

15

In support of the action, the applicant relies, in essence, on three pleas in law, alleging, first, infringement of Article 25(1)(e) of Regulation No 6/2002 in its earlier version, second, infringement of Articles 94 and 95 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) and of Article 40(1) of the Romanian law on trade marks, as amended (Monitorul Oficial al României, No 856 of 18 September 2020; ‘the new Romanian law’) and, third, breach of its rights of the defence.

16

The Court considers that it is appropriate to begin by examining the third plea, to proceed by examining the second plea and to conclude by examining the first plea.

17

The applicant complains, in essence, that the Board of Appeal breached its rights of the defence and, more specifically, its right to be heard, by repeatedly failing to take account of its observations relating to the fact that the intervener is not the proprietor of the Romanian figurative mark No 071100. According to the applicant, the intervener has not adduced proof of the existence of that mark, of the name of the proprietor of that mark or of the renewal of the mark at issue. It concludes that the Board of Appeal should have dismissed the appeal against the Invalidity Division’s decision as inadmissible for failure to properly identify the actual holder of the earlier right.

18

EUIPO and the intervener dispute the applicant’s arguments.

19

According to Article 62 of Regulation No 6/2002 in its earlier version, decisions of EUIPO may be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. The general principle of protection of the right to defend oneself is enshrined in the law of EU designs by that provision. According to that general principle of EU law, a person whose interests are significantly affected by a decision addressed to him or her and taken by a public authority must be given the opportunity to make his or her point of view known. The right to be heard thus extends to all the matters of fact or of law which form the basis of the decision, but not to the final position which the authority intends to adopt (judgment of 9 February 2017, Mast-Jägermeister v EUIPO (Beakers), T‑16/16, EU:T:2017:68, paragraph 57), or to each well-known fact on which it relies in order to arrive at that position (see judgment of 29 April 2020, Bergslagernas Järnvaru v EUIPO – Scheppach Fabrikation von Holzbearbeitungsmaschinen (Wood-splitting tool), T‑73/19, not published, EU:T:2020:157, paragraph 15 and the case-law cited).

20

The purpose of actions before the Court is to review the legality of the decisions of the Boards of Appeal of EUIPO within the meaning of Article 61 of Regulation No 6/2002 (judgment of 20 October 2021, JMS Sports v EUIPO – Inter-Vion (Spiral hair elastic), T‑823/19,EU:T:2021:718, paragraph 11) and Article 188 of the Rules of Procedure of the General Court provides that the pleadings lodged by the parties in proceedings before it may not change the subject matter of the proceedings before the Board of Appeal.

21

In the present case, it is apparent from EUIPO’s file and from the application for a declaration of invalidity initially filed on 21 January 2019 that the Romanian figurative mark No 071100 was not relied on in support of that application, with the result that that mark did not form part of the subject matter of the proceedings. Therefore, under the combined provisions of Article 61 of Regulation No 6/2002 and Article 188 of the Rules of Procedure, the applicant’s claims relating to the mark at issue change the subject matter of the proceedings, since that mark had not been relied on in support of that application.

22

In those circumstances, the applicant is not justified in claiming that the Board of Appeal breached its rights of the defence by failing to take account of its observations relating to the fact that the intervener is not the proprietor of the Romanian figurative mark No 071100.

23

It follows that the third plea must be rejected as unfounded.

24

The applicant complains that the Board of Appeal infringed Articles 94 and 95 of Regulation 2017/1001 and Article 40(1) of the new Romanian law. First, according to the applicant, the Board of Appeal erred in law by not ordering the intervener to submit proof of use of the earlier mark which did not fall within the five-year grace period. Second, it claims, in essence, that the Board of Appeal should have examined the appeal against the Invalidity Division’s decision in the light of that law and, therefore, pursuant to that latter provision, should have requested proof of genuine use of that mark in invalidity proceedings based on Article 39 of that law, the wording of which is identical to that of Article 36 of the Romanian law on trade marks in force at the time when the application for a declaration of invalidity was lodged.

25

EUIPO and the intervener dispute the applicant’s arguments.

26

One of the requirements under Article 25(1)(e) of Regulation No 6/2002 in its earlier version is that EU law, or the national legislation governing the earlier sign relied on in support of an application for a declaration of invalidity on the basis of that provision, ‘confer on the right holder of the sign the right to prohibit’ the use of its sign in a subsequent design (judgment of 12 May 2010, Beifa Group v OHIM – Schwan-Stabilo Schwanhäußer (Instrument for writing), T‑148/08, EU:T:2010:190, paragraph 63).

27

In the present case, the earlier signs relied on in support of an application for a declaration of invalidity include, inter alia, the earlier mark, which is a Romanian figurative mark, governed by the provisions of the Romanian law on trade marks. Article 36(2) of that law confers on the proprietor of a mark the right to prohibit the use of any sign in respect of which, because of its identity with, or similarity to, the mark at issue and the identity or similarity of the goods or services covered by that mark and by the sign concerned, there exists a likelihood of confusion on the part of the public.

28

It is true that Article 40(1) of the new Romanian law, relied on by the applicant in its written pleadings, provides that, at the defendant’s request, the proprietor of an earlier trade mark adduces proof that, during the five-year period preceding the date of that action, the trade mark has been put to genuine use in connection with the goods or services in respect of which it is registered and which are invoked, or that there are reasons for non-use, provided that, at that date, the earlier mark has been registered for at least five years and that, in the absence of proof to that effect, the action is dismissed.

29

However, Article 40(1) of the new Romanian law, which derives from the national reform of the trade mark law intended to transpose Article 17 of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1), is not applicable in the present case, since it was not in force at the time when the application for registration or the claim for priority of the contested design was filed. In view of the date on which the application for registration in question was filed, namely 28 October 2016, which is determinative for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 6/2002 in its earlier version and the Romanian law on trade marks in the version in force on that date (see, by analogy, 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).

30

Furthermore, as regards the alleged infringement of Articles 94 and 95 of Regulation 2017/1001, it should be noted that, under Article 94 of that regulation, decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments and that, under Article 95(2) of that regulation, EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.

31

In addition, according to the case-law, since no specific provision is made in Regulation No 6/2002 concerning the procedure for requesting proof of genuine use of the earlier sign, to be followed by the proprietor of the Community design in respect of which an application for a declaration of invalidity has been brought on the basis of that sign, it must be held that that request for proof must be submitted to EUIPO expressly and in due time. As a rule, that request must be submitted within the period of time granted by the Invalidity Division to the proprietor of the Community design at issue for submitting its observations in response to that application for a declaration that the design is invalid. The case‑law developed in relation to Article 47(2) and (3) of Regulation 2017/1001 also applies, by analogy, to requests for proof of genuine use submitted in invalidity proceedings in accordance with Article 25(1)(e) of Regulation No 6/2002, since, in this context, too, it is unacceptable that the Board of Appeal could be put in the position of having to rule on a dispute which is different from the dispute brought before the Invalidity Division, that is to say, a dispute the scope of which has been extended through the introduction of the preliminary issue of genuine use of the earlier sign, relied on in support of the application for a declaration of invalidity (see, to that effect, judgment of 12 May 2010, Instrument for writing, T‑148/08, EU:T:2010:190, paragraphs 67 to 72).

32

In the present case, as EUIPO and the intervener correctly contend, the applicant did not submit a request for proof of genuine use of the earlier mark in due time before the Invalidity Division and mentions it for the first time only in the statement setting out the grounds of appeal dated13 July 2023. Therefore, the request for proof of use of the earlier mark submitted before the Board of Appeal was inadmissible. Therefore, the request for proof of use of the earlier mark submitted before the Board of Appeal was inadmissible.

33

It must nevertheless be noted that the Board of Appeal did not reject the request for proof of use of the earlier mark submitted to it as inadmissible, but stated, in paragraph 52 of the contested decision, that the five-year period from the date of filing of the application for a declaration of invalidity, namely 21 January 2019, had not expired. Thus, by adopting a position on the expiry of the grace period, the Board of Appeal ruled on the substance of the applicant’s new arguments in order to disregard them, without, however, even if it had made an error in that regard, that error being such as to call into question the legality of the contested decision, since it does not, in those circumstances, affect the operative part of that decision.

34

As a result of the inadmissibility of the request for proof of genuine use of the earlier mark submitted before the Board of Appeal, the second plea must be rejected.

35

The applicant submits that the Board of Appeal infringed Article 25(1)(e) of Regulation No 6/2002 in its earlier version by incorrectly finding that there was a likelihood of confusion.

36

The applicant complains, in essence, that the Board of Appeal, first, made an error of assessment as regards the determination of the goods at issue, second, examined the appeal against the Invalidity Division’s decision on the basis of the perception of the average consumer and not that of the informed user, third, erred in finding that the signs at issue were visually similar to an average degree and phonetically identical and, fourth, erred in finding that the earlier mark had an average degree of distinctive character, in particular, due to the fact that the word element ‘krax’ of that mark had a meaning for the relevant public, and that that mark had coexisted for more than 10 years with the EU trade mark CRAXX.

37

EUIPO and the intervener dispute the applicant’s arguments.

38

Article 25(1)(e) of Regulation No 6/2002 in its earlier version provides that a design may be declared invalid if a distinctive sign is used in a subsequent design and EU law or the law of the Member State governing that sign confers on the right holder of the sign the right to prohibit such use.

39

According to the case-law, an application, based on the ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002 in its earlier version, for a declaration that a Community design is invalid can succeed only if it is found that the relevant public will form the impression that use is made, in that Community design, of the distinctive sign relied on in support of the application for a declaration of invalidity. The examination of that ground for invalidity must be based on the perception by the relevant public of the distinctive sign relied on in support of that ground, as well as on the overall impression which the sign leaves in the mind of the public (see judgment of 24 September 2019, Piaggio & C. v EUIPO – Zhejiang Zhongneng Industry Group (Mopeds), T‑219/18, EU:T:2019:681, paragraph 67 and the case-law cited).

40

The ground for invalidity specified in Article 25(1)(e) of Regulation No 6/2002 in its earlier version does not necessarily presuppose a full and detailed reproduction of an earlier distinctive sign in a subsequent Community design. Even though the Community design may lack certain features of the sign in question or may have different, additional features, this may constitute ‘use’ of that sign, particularly where the omitted or added features are of secondary importance (see judgment of 7 February 2018, Şölen Çikolata Gıda Sanayi ve Ticaret v EUIPO – Zaharieva (Packaging for ice-cream cornets), T‑794/16, not published, EU:T:2018:70, paragraph 22 and the case-law cited).

41

This is particularly the case, as is apparent from well-established case-law, where the public retains only an imperfect picture of marks registered in the Member States or EU trade marks. That applies to every type of distinctive sign. As a consequence, if a distinctive sign as used in a subsequent Community design lacks certain secondary features or has additional features, the relevant public will not necessarily notice those changes vis-à-vis the earlier distinctive sign. On the contrary, it may believe that the sign it remembers is being used in the subsequent Community design (see judgment of 7 February 2018, Packaging for ice-cream cornets, T‑794/16, not published, EU:T:2018:70, paragraph 23 and the case-law cited).

42

It follows that Article 25(1)(e) of Regulation No 6/2002 in its earlier version is applicable where use is made not only of a sign that is identical to that relied on in support of an application for a declaration of invalidity but also of a sign that is similar (see judgment of 7 February 2018, Packaging for ice-cream cornets, T‑794/16, not published, EU:T:2018:70, paragraph 24 and the case-law cited).

43

In accordance with Article 36(2)(b) of the Romanian law on trade marks, the proprietor of a trade mark may, in essence, request the competent judicial body to prevent third parties not having his or her consent from using in the course of trade any sign in respect of which, because of its identity with, or similarity to, the trade mark or the identity or similarity of the goods or services to which the sign is affixed, there exists a likelihood of confusion on the part of the public, including the likelihood of association between the sign and the trade mark.

44

As the Board of Appeal was fully entitled to point out in paragraph 27 of the contested decision, Article 36(2)(b) of the Romanian law on trade marks constitutes the transposition into Romanian law of Article 10(2)(b) of Directive 2015/2436, the wording of which is itself identical to Article 5(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25). Therefore, the concept of ‘likelihood of confusion’ within the meaning of Article 36(2)(b) of that law must be interpreted in the light of the case‑law relating to Article 5(1)(b) of Directive 2008/95 and to Article 10(2)(b) of Directive 2015/2436 (see, to that effect, judgment of 7 February 2018, Packaging for ice-cream cornets, T‑794/16, not published, EU:T:2018:70, paragraphs 25 and 26).

45

According to the case-law of the Court of Justice, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a ‘likelihood of confusion’ within the meaning of Article 10(2)(b) of Directive 2015/2436. The existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (see, to that effect, judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraphs 22 and 23, and of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraphs 23 to 29).

46

In the light of those considerations, it is necessary to examine whether the Board of Appeal was fully entitled to confirm the decision of the Invalidity Division upholding the application for a declaration of invalidity of the contested design on the basis of Article 25(1)(e) of Regulation No 6/2002 in its earlier version, after taking the view, pursuant to Article 36(2)(b) of the Romanian law on trade marks, that there was a likelihood of confusion on the part of the relevant public.

47

As a preliminary point, in accordance with the case-law cited in paragraphs 44 and 45 above, the present proceedings concern the scope of protection of a mark and, more specifically, the question whether the proprietor of that earlier mark may prohibit the use of its distinctive sign in the contested design. Therefore, contrary to the applicant’s arguments, there is no need to examine the present plea by taking into account the impression conveyed to the informed user or the individual and novel character of the contested design, within the meaning of Articles 4 to 6 of Regulation No 6/2002.

48

The applicant disputes, in essence, the Board of Appeal’s findings that the goods at issue are similar. More specifically, it submits that there was no indication that the contested design would be used for snack sticks.

49

EUIPO and the intervener dispute the applicant’s arguments.

50

In order to ascertain the product in which the contested design is intended to be incorporated or to which it is intended to be applied, the relevant indication in the application for registration of that design should be taken into account, but also, where necessary, the design itself, in so far as it makes clear the nature of the product, its intended purpose or its function (judgment of 18 March 2010, Grupo Promer Mon Graphic v OHIM – PepsiCo (Representation of a circular promotional item), T‑9/07, EU:T:2010:96, paragraph 56).

51

In addition, in assessing the similarity of the goods at issue, all the relevant factors relating to those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (judgment of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 23).

52

As regards, in particular, the complementary nature of the goods and services, which may alone justify the conclusion that the goods and services are similar, it should be noted that goods or services are complementary if there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or for the provision of those services lies with the same undertaking. Thus, when determining whether goods or services are complementary, the perception of that public of the importance of a product or service for the use of another product or service should, ultimately, be taken into account (see judgment of 7 February 2018, Packaging for ice-cream cornets, T‑794/16, not published, EU:T:2018:70, paragraph 37 and the case-law cited).

53

In that respect, the assessment as to whether goods and services are complementary, in the context of a likelihood of confusion, does not rely on the existence of a connection between the goods and services at issue in the mind of the relevant public from the point of view of their nature, their method of use and their distribution channels. A criterion based on a connection between the method of use of those goods or services does not make it possible to carry out a full assessment as to whether those goods and services are indispensable or important for each other, which is required when analysing whether the goods and services are complementary. The fact that the method of use of a product or service is unrelated to the method of use of another product or service does not imply, in all cases, that the use of one is not important or indispensable for the use of the other (see judgment of 7 February 2018, Packaging for ice-cream cornets, T‑794/16, not published, EU:T:2018:70, paragraph 38 and the case-law cited).

54

In the present case, the Board of Appeal found, in paragraph 35 of the contested decision, that the goods at issue were complementary and, therefore, similar. In that regard, it correctly pointed out that it is apparent from the designation of the product concerned by the contested design and from its representation that that design is intended to be applied to packaging for snack sticks. Those snack sticks are included in the general category of everyday consumer foodstuffs, such as snacks or related goods, which are identical to the ‘preparations made from cereals’ in Class 30 and covered by the earlier mark.

55

It follows that the contested design intended to be applied to packaging is, at the very least, important for the use of the goods covered by the earlier mark, with the result that there is, within the meaning of the case-law cited in paragraph 52 above, a close connection between them which is indicative of their complementarity and, therefore, their similarity.

56

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).

57

In the first place, in accordance with the case-law which states that where the earlier mark is a national mark, the relevant territory is that in which that mark is protected (see, to that effect, judgments of 3 September 2010, Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 34, and of 2 March 2022, Laboratorios Ern v EUIPO – Beta Sports (META), T‑192/21, not published, EU:T:2022:105, paragraph 28), the Board of Appeal found, in paragraph 36 of the contested decision, that the relevant territory was Romania, since that mark is registered and protected in that Member State.

58

In the second place, in so far as the goods covered by the earlier mark and those concerned by the contested design relate, inter alia, to snack sticks intended for the general public (see paragraph 54 above), the Board of Appeal found that the relevant public consisted of consumers whose level of attention was average when purchasing that type of goods.

59

Those findings are free from error and must be upheld.

60

According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see, to that effect, judgments of 23 October 2002, Matratzen Concord v OHIM – Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 10 December 2008, MIP Metro v OHIM – Metronia (METRONIA), T‑290/07, not published, EU:T:2008:562, paragraph 41).

61

The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the signs by the average consumer of the goods in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark or another distinctive sign as a whole and does not proceed to analyse its various details (judgments of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 23, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 25).

62

Assessment of the similarity between two signs means more than taking just one component of a composite sign and comparing it with another sign. On the contrary, the comparison must be made by examining each of the signs in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite sign may not, in certain circumstances, be dominated by one or more of its components (see, to that effect, judgments of 6 October 2005, Medion, C‑120/04, EU:C:2005:594, paragraph 29, and of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 36). 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).

63

In the present case, before assessing the similarity of the signs at issue, it is necessary to examine their distinctive and dominant elements.

64

As the Board of Appeal observed in paragraph 39 of the contested decision, the earlier mark consists of the term ‘krax’, written in stylised upper-case letters, arranged in descending order from the upper-case letter ‘K’ to the upper-case letter ‘X’, against a dark, irregularly shaped background.

65

As regards the contested design, the Board of Appeal described that design, in paragraph 40 of the contested decision, as featuring a rectangular blue background, a cluster of snack sticks and a piece of triangular cheese on the left‑hand side. The word elements ‘eti’, ‘crax’ and ‘sticks’ are positioned one below the other and placed above the figurative elements. The word elements ‘crax’ and ‘sticks’ are depicted in white upper-case letters with a blue border, whereas the word element ‘eti’ is written in red with a white and black border and includes an unspecified black figurative element near its top left corner. According to the Board of Appeal, the word element ‘crax’ clearly stands out due to its larger size, its central position and its particular stylisation in relation to the other word elements.

66

The applicant complains, in essence, that the Board of Appeal found that the word element ‘crax’ of the contested design was capable, on its own, of dominating the image of that design. According to the applicant, all the other components of that design are not negligible in the overall impression conveyed by it, since the similarity of the signs depends on the distinctive character of their components and any other relevant factors. Moreover, it claims that the word element ‘eti’ is the most dominant element in the overall impression conveyed by the design at issue, with the result that that word element will attract the relevant public’s attention the most. It submits, therefore, that the word elements ‘crax’ and ‘sticks’ are secondary and devoid of distinctive character in relation to the goods at issue.

67

Furthermore, the applicant disputes the Board of Appeal’s findings that the word element ‘crax’ has no meaning for the relevant public and is therefore distinctive. According to the applicant, that public will perceive that word element, first, as referring to the goods in Class 30 and marketed in Romania under the name ‘craxuri’ and, second, as being descriptive, in that it refers to the sound which is produced when crunchy or crispy foodstuffs are consumed, such as snack sticks.

68

EUIPO and the intervener dispute the applicant’s arguments.

69

According to the case-law, in the assessment of the dominant character of one or more given components of a complex sign, 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 complex sign (see, to that effect, judgment of 23 October 2002, MATRAZEN, T‑6/01, EU:T:2002:261, paragraph 35).

70

In addition, in order to determine the distinctiveness of an element making up a sign, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the sign 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 sign has been registered (see judgment of 8 July 2015, Deutsche Rockwool Mineralwoll v OHIM – Ceramicas del Foix (Rock & Rock), T‑436/12, EU:T:2015:477, paragraph 28 and the case-law cited).

71

Where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, distinctive character. Most often, it will be possible to recognise those elements as having 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 the relevant consumers and to be remembered by them. That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (see judgment of 18 January 2023, YAplus DBA Yoga Alliance v EUIPO – Vidyanand (YOGA ALLIANCE INDIA INTERNATIONAL), T‑443/21, not published, EU:T:2023:7, paragraph 69 and the case-law cited).

72

In the present case, in the first place, it should be noted that, first, the Board of Appeal correctly concluded, in paragraph 39 of the contested decision, that the applicant had not adduced evidence of a possible meaning of the word element ‘crax’ of the contested design or of the word element ‘krax’ of the earlier mark and of any association between a possible meaning of those terms with the goods at issue. Moreover, the Board of Appeal was also right to find, in essence, that the applicant cannot rely on the coexistence of other similar national marks in the absence of evidence of their use in the relevant territory.

73

In that regard, it must be borne in mind that, according to Article 63 of Regulation No 6/2002 in its earlier version, in proceedings relating to a declaration of invalidity, as provided for in Article 25(1)(e) of that regulation in its earlier version, EUIPO’s examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought, and that EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned. Furthermore, as regards the applicant’s argument concerning the low degree of distinctiveness of the word ‘craxuri’ in that it is frequently used as regards the goods at issue, it must be pointed out that the truth of this has not been established. The only evidence adduced by the applicant in support of that argument consists of a list of trade marks that include the word ‘craxx’ for goods in Classes 29 and 30. However, simply listing a relatively limited number of trade marks, without information making it possible to measure how much they are known by the reference public, does not support the conclusion that that public makes an association between the word ‘craxuri’ and those goods (see, to that effect, judgment of 13 April 2011, Sociedad Agricola Requingua v OHIM – Consejo Regulador de la Denominación de Origen Toro (TORO DE PIEDRA), T‑358/09, not published, EU:T:2011:174, paragraph 35). Consequently, there is no need to call into question the Board of Appeal’s assessment, arising from paragraph 41 of the contested decision, that the word element ‘crax’ has no meaning for the relevant public and, therefore, has distinctive character.

74

Second, the Board of Appeal was right to find, in paragraph 41 of the contested decision, that the word element ‘eti’ had distinctive character, since it had no meaning for the relevant public. However, on account of its small size, that word element will play a secondary role in the overall impression conveyed by the contested design. Furthermore, the other elements making up that design, namely the word element ‘sticks’ and the figurative elements representing snacks and cheese, are descriptive of the goods concerned by that design, since they refer to cheese-flavoured snack sticks and are, therefore, devoid of distinctive character.

75

Third, it must be observed that the rectangular blue background is of a decorative nature and plays only a secondary role in the overall impression conveyed by the contested design. The same is true of the unspecified small black figurative element, which will have a limited, if any, impact on the overall impression conveyed by that design due to its very small size.

76

In the second place, according to the case-law, when a sign consists of both verbal and figurative elements, the former are, in principle, considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative elements of the sign (judgment of 7 February 2018, Packaging for ice-cream cornets, T‑794/16, not published, EU:T:2018:70, paragraph 49).

77

In that regard, it must be observed, as did the Board of Appeal in paragraphs 25 and 43 of the contested decision, that the word element ‘krax’ is the only word element of the earlier mark and that the word element ‘crax’ represents the most eye-catching element of the contested design. Those elements, which are stylised in a similar manner, in particular, in their white upper-case letters, are depicted in an ascending or descending size. In those circumstances and since all the other elements of that design play a secondary role in the overall impression or are descriptive, the Board of Appeal was right to conclude that the word element ‘krax’ was the most distinctive element making up that mark and that the word element ‘crax’ was the dominant element within that design.

78

The applicant claims that the signs at issue are not visually similar. According to the applicant, the word element ‘eti’ of the contested design must be regarded as attracting all the attention of the relevant public. In addition, it submits that all the other word and figurative elements of that design are immediately legible and will not be perceived as merely decorative elements.

79

However, as has been noted in paragraph 77 above, the word element ‘crax’ of the contested design is the element which will attract the relevant public’s attention the most and, therefore, will have the greatest influence on the overall impression conveyed by that design.

80

In the present case, it should be observed that, visually, three out of the four letters of the distinctive and dominant word elements of the signs at issue coincide, namely in the sequence of letters ‘r’, ‘a’, ‘x’, all depicted in upper-case letters with a similar three-dimensional effect, slightly inclined from left to right, the size of the letters descending in the earlier mark and ascending in the contested design. Moreover, those signs differ, first, in their initial upper-case letter, namely ‘K’ and ‘C’, respectively, and, second, in the ascending or descending sequence of the size of their letters.

81

In that regard, the Board of Appeal correctly found, in paragraph 44 of the contested decision, that the differences between the signs at issue referred to in paragraph 80 above cannot outweigh the similarity created by the three identical letters stylised in a similar manner. However, even though those signs also differ in the presence, in the contested design, of the secondary word element ‘eti’, the non-distinctive word ‘sticks’, as well as the backgrounds, colouring and the small black figurative element, all of which are of a decorative nature, and in the non-distinctive depiction of snack sticks and cheese, those elements have no equivalent in the earlier mark and are not capable of outweighing the similarity of the dominant elements ‘krax’ and ‘crax’, on account of their lack of distinctive character and their secondary size and position.

82

It follows that the Board of Appeal did not make an error of assessment in finding that there was an average degree of visual similarity in respect of the signs at issue.

83

The applicant submits that there is no degree of phonetic similarity between the signs at issue. According to the applicant, even though consumers will pronounce only one of the word elements included in the contested design, to economise on words, this will be the word element ‘eti’, which bears no similarity to the word element ‘krax’ of the earlier mark.

84

In the present case, as is apparent from paragraph 74 above, the figurative elements and the word element ‘sticks’ making up the contested design are devoid of distinctive character and are of secondary importance. Furthermore, the word element ‘eti’, although distinctive on account of the lack of meaning in relation to the goods at issue, is of secondary importance on account of its size and position. In addition, as is also apparent from paragraph 81 above, the word elements ‘krax’ of the earlier mark and ‘crax’ of the contested design contain the same sequence of letters ‘r’, ‘a’, ‘x’, which, like the letters ‘k’ and ‘c’, will be pronounced in the same way.

85

In that regard, it should be borne in mind that, according to the case-law, where consumers are faced with a mark which consists of various word elements, of which some are of secondary importance, they tend to abbreviate orally that mark in order to make it easier to pronounce (see, to that effect, judgment of 30 November 2006, Camper v OHIM – JC (BROTHERS by CAMPER), T‑43/05, not published, EU:T:2006:370, paragraph 75). It follows that the word elements of the contested design other than the word element ‘crax’, all of which are of secondary importance, are less likely to attract the consumer’s attention and are therefore less likely to be pronounced. Moreover, the figurative elements will not be pronounced, with the result that consumers will be more likely to refer to the goods concerned by that design, pronouncing only the dominant element of that design, namely the word element ‘crax’.

86

Consequently, the Board of Appeal did not make an error of assessment in finding, in paragraph 45 of the contested decision, that there was a high degree of phonetic similarity in respect of the signs at issue.

87

The applicant submits that the Board of Appeal should have found that there was no conceptual similarity between the signs at issue. More specifically, it claims that the word element ‘eti’, which it alleges is the most dominant and the most distinctive element of the contested design, and the word element ‘krax’ of the earlier mark will both be perceived as fanciful and different words and that, of those signs, one is a word sign and the other a figurative sign, with the result that there is no conceptual similarity between those signs.

88

It must be borne in mind that the purpose of the conceptual comparison is to compare the ‘concepts’ which the signs at issue convey. The term ‘concept’ means, according to the definition given, for example, by the Larousse dictionary, a ‘general and abstract idea used to denote a specific or abstract thought which enables a person to associate with that thought the various perceptions which that person has of it and to organise knowledge about it’ (see judgment of 16 June 2021, Smiley Miley v EUIPO – Cyrus Trademarks (MILEY CYRUS), T‑368/20, not published, EU:T:2021:372, paragraph 52 and the case-law cited).

89

Similarly, according to the case-law, conceptual similarity means that the signs at issue coincide in their semantic content (see, to that effect, judgment of 11 November 1997, SABEL, C‑251/95, EU:C:1997:528, paragraph 24). It follows that where the relevant public does not understand the meaning of the words or cannot attribute a particular meaning to those signs, it is not possible to make a conceptual comparison (see, to that effect, judgments of 7 February 2018, Packaging for ice-cream cornets, T‑794/16, not published, EU:T:2018:70, paragraph 76, and of 6 April 2022, Agora Invest v EUIPO – Transportes Maquinaria y Obras (TRAMOSA), T‑219/21, not published, EU:T:2022:219, paragraph 117 and the case-law cited).

90

In the present case, the dominant elements of the signs at issue are meaningless for the relevant public (see paragraphs 73 and 77 above). They cannot therefore convey a concept to the relevant public.

91

As regards the other elements making up the contested design, as is apparent from paragraphs 74 and 77 above, they occupy a secondary position limiting their impact in the conceptual comparison of the signs at issue. However, that does not mean that those elements are entirely negligible. Thus, the word element ‘sticks’ and the ornamental figurative elements corresponding to a pile of snack sticks and a piece of cheese of that design must be taken into consideration in that comparison, since they convey a concept of everyday consumer foodstuffs, and refer to cheese-flavoured snack sticks.

92

Thus, contrary to the finding in paragraph 46 of the contested decision, it must be held, in the light of the foregoing, that the signs at issue are conceptually different.

93

The applicant claims that the earlier mark has, in essence, a weak degree of distinctive character since the word element ‘krax’ describes the sound produced during the consumption of cereal-based snacks and on account of the coexistence of that mark with the international registration designating the European Union of the mark CRAXX, registered on 7 December 2004 under reference 0854152A for identical goods in Classes 29 and 30.

94

First, as is apparent from paragraphs 73, 77 and 90 above, the word element ‘krax’ of the earlier mark, like the word element ‘crax’ of the contested design, has no meaning for the relevant public and the applicant has not adduced evidence that the word element ‘krax’ had a meaning for that public. As regards the applicant’s claim that the word element ‘krax’ is onomatopoeic in nature, an onomatopoeia of the sound produced when consuming crispy goods is not, in the present case, obvious.

95

Second, the applicant’s argument relating to the coexistence of the earlier mark with the mark CRAXX cannot succeed in order to demonstrate that, in the present case, the earlier mark has, in essence, a weak degree of distinctive character. The distinctive character of the earlier mark, whether that distinctive character derives from the inherent qualities of that mark or its reputation, concerns the capacity of that mark to identify the goods or services for which it has been registered as originating from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgments of 13 September 2018, Birkenstock Sales v EUIPO, C‑26/17 P, EU:C:2018:714, paragraph 31 and the case-law cited, and of 21 December 2021, Dr. Spiller v EUIPO – Rausch (Alpenrausch Dr. Spiller), T‑6/20, not published, EU:T:2021:920, paragraph 145 and the case-law cited). That distinctive character does not involve a comparison between a number of signs, but concerns only one sign, namely the earlier mark (see, to that effect, judgment of 11 June 2020, China Construction Bank v EUIPO, C‑115/19 P, EU:C:2020:469, paragraph 58).

96

Consequently, the Board of Appeal did not make any error of assessment in finding that the earlier mark had, in essence, an average degree of distinctive character.

97

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 signs and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the signs, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323 paragraph 19).

98

Moreover, for the purposes of the global assessment of the likelihood of confusion, account must be taken, in particular, of the fact that the average consumer, within the relevant public, only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26). In addition, a likelihood of confusion could be found to exist only if the relevant public were likely to be misled as to the commercial origin of the goods in question (see, to that effect, judgment of 24 November 2021, Jeronimo Martins Polska v EUIPO – Rivella International (Riviva), T‑551/20, not published, EU:T:2021:816, paragraph 86).

99

In the present case, the Board of Appeal found, in paragraph 51 of the contested decision, that there was a likelihood of confusion as to the commercial origin of the goods at issue in the light of consumers’ imperfect recollection of the signs at issue.

100

In that regard, first, as is apparent from paragraph 54 above, the Board of Appeal was justified in finding that the goods at issue were similar on account of their complementarity. Second, the signs at issue contain the common and dominant word elements ‘krax’ of the earlier mark and ‘crax’ of the contested design, which are meaningless and which are, therefore, distinctive (see paragraphs 69 to 77 above). Third, those signs are conceptually different (see paragraphs 88 to 92 above). Fourth, the Board of Appeal was also right in finding that those signs were visually similar to an average degree (see paragraphs 79 to 82 above). In addition, the same signs have a high degree of phonetic similarity (see paragraph 86 above). Fifth, the Board of Appeal was also right in finding that the earlier mark had an average degree of distinctive character (see paragraph 96 above).

101

It follows that the relevant public, with an average level of attention, may reasonably believe, when faced with the contested design, that the goods concerned and the goods covered by the earlier mark, which are similar, have the same commercial origin.

102

In those circumstances, the Board of Appeal did not make any error in finding, in paragraph 51 of the contested decision, that there was a likelihood of confusion as to the commercial origin of the goods for the purposes of Article 25(1)(e) of Regulation No 6/2002 in its earlier version, read in conjunction with Article 36(2)(b) of the Romanian law on trade marks.

103

It follows that the first plea is unfounded and must be rejected and, accordingly, the action must be dismissed in its entirety.

104

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

105

Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is organised, it is appropriate, since such a hearing has not been organised, to order EUIPO to bear its own costs.

On those grounds,

THE GENERAL COURT (Third Chamber)

hereby: