JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

29 October 2025 (*)

( EU trade mark – Opposition proceedings – Application for the EU word mark ITRON – Earlier EU word marks ITRON – Relative grounds for refusal – Article 8(1)(b) of Regulation (EU) 2017/1001 – Article 8(5) of Regulation 2017/1001 – Distance between the goods and services in question )

In Case T‑565/24,

Itron, Inc., established in Liberty Lake, Washington (United States), represented by P. Olson, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Gája, acting as Agent,

defendant,

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

Advanced Sanitairy Technologies, established in Aix-en-Provence (France),

THE GENERAL COURT (Sixth Chamber),

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

Registrar: V. Di Bucci,

having regard to the written part of the procedure,

having regard to the request for convening a hearing submitted by the applicant subject to the event that the Court should deem it necessary to examine the distinctive character of the earlier mark in the context of the examination under Article 8(5) of Regulation (EU) 2017/1001,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Itron, Inc., seeks, in essence, annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 August 2024 (Case R 1596/2023-1) (‘the contested decision’).

 Background to the dispute

2        On 29 November 2021, the other party to the proceedings before the Board of Appeal, Advanced Sanitairy Technologies, filed an application for registration of an EU trade mark with EUIPO in respect of the word sign ITRON.

3        The mark applied for covered goods in Classes 9, 11 and 20 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 corresponding, for each of those classes, to the following description:

–        Class 9: ‘Electrical power extension cords; multi-outlet socket blocks; power strips with movable sockets; electrical terminal blocks; junctions [electrical]; electric current switches’;

–        Class 11: ‘Lighting apparatus; Electric holiday lights; Electric lamps; Radiators, electric; Portable electric heaters; Central heating radiators; Refrigerating apparatus; Electric air conditioners; Portable air conditioners; Electric dehumidifiers; Apparatus for ventilating; Apparatus for drying; Electric towel warmers; Electric boilers; Electric fires; Wood burning stoves; Ventilation hoods for stoves; Ventilation hoods’;

–        Class 20: ‘Cable drums (Non-mechanical -) of non-metallic materials’.

4        On 1 March 2022, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

5        The opposition was based on, inter alia, the following earlier trade marks:

–        EU word mark ITRON, registered on 24 January 2005 under number 2923241 and duly renewed until 6 November 2032 (‘earlier mark 1’), designating goods and services in Classes 9, 38 and 42 and corresponding, in respect of each of those classes, to the following description:

–        Class 9: ‘Computer hardware, peripherals and devices; mobile signal transreceiver unit for use with automatic meter reading and telemetry in utilities and energy industries; computer software; computer software for programming, activating, modifying, controlling and communicating with utilities systems and energy equipment; computer software for use by the utilities and energy industries for automating and monitoring the distribution of utility, energy and water services to customers; computer hardware and software for use in the utilities, energy and water industries, namely for use in association with electric, gas, energy and water facilities and management; computer software for scheduling, assigning, dispatching and monitoring field operations for the utilities and energy industries; data collection computer systems, namely portable and stationary terminals, printers, communications controllers for transferring data from portable computer terminals to stationary computer terminals, communications cradles, function specific peripherals, computer operating programs and computer application programs for use in data collection and control applications; portable electronic utility meter reading and billing unit therefor; computer software for use in data collection and control, communications and data exchange, electronic meter reading, off-site meter reading, keyed meter reading and meter data recorders, all for use in the utilities and energy industries; computer software for billing customer accounts, for scheduling customer orders and for managing utility meters and energy equipment; computer software, namely computer operating programs and computer software for application and database integration for use in the utilities and energy industries; computer software for load management and demand response; computer software for design and designation of transmission and distribution lines and substations; communications software and hardware for connecting computer network users; communications software and hardware for connecting global computer, intranet and extranet networks’;

–        Class 38: ‘Telecommunications; telecommunication, communication and networking services; electronic delivery and transmission of messages, data, documents and information via the Internet, intranets, extranets, radio frequency networks, satellite, wireless networks and telephone lines; network conferencing services; electronic data interchange (EDI) and XML services; electronic mail services; radio communication; communication services; providing multiple-user access to a global computer information network; providing multiple-user access to local and wide area networks’;

–        Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services; providing temporary use of online non-downloadable software; providing temporary use of on-line non-downloadable computer software for programming, activating, modifying, controlling and communicating with utilities systems and energy equipment; providing temporary use of on-line non-downloadable computer software for scheduling, assigning, dispatching and monitoring field operations for the utilities industry; providing temporary use of on-line non-downloadable computer software for meter data collection and monitoring of energy and water usage; providing temporary use of on-line non-downloadable computer software for load management and demand response; providing temporary use of on-line non-downloadable computer software for design and designation of transmission and distribution lines and substations; application service provider (ASP); application service provider (ASP) featuring software for programming, activating, modifying, controlling and communicating with utilities systems and energy equipment; application service provider (ASP) featuring software for scheduling, assigning, dispatching and monitoring field operations for the utilities industry; application service provider (ASP) featuring software for meter data collection and monitoring of energy and water usage; computer software design, maintenance, modification, installation and implementation services; technical support services; updating of computer software for others; monitoring of network systems; network design, implementation and maintenance for others; licensing of software and intellectual property’.

–        EU word mark ITRON, registered on 18 June 1999 under number 222323 and duly renewed until 11 April 2026 (‘earlier mark 2’), designating goods and services in Classes 9, 16, 37 and 42 and corresponding, in respect of each of those classes, to the following description:

–        Class 9: ‘Data collection communication network systems, comprised of combination encoder/transceivers, portable, mobile, and stationary data collection transceivers, intelligent communication adapters, function specific peripherals, computer operating programs, and computer application programs’;

–        Class 16: ‘Printed computer user manuals’;

–        Class 37: ‘Repair and maintenance services for computer hardware systems’;

–        Class 42: ‘Repair and maintenance services for computer software systems’.

6        The grounds relied on in support of the opposition were, in particular, those set out in Article 8(1)(b) 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 Article 8(5) of that regulation.

7        On 19 June 2023, the Opposition Division dismissed the opposition in respect of all the goods and services referred to in paragraph 3 above.

8        On 26 July 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

9        By the contested decision, the Board of Appeal dismissed the appeal. In particular, it found that, first, in the light of Article 8(1)(b) of Regulation 2017/1001, the goods and services in question were different, which prevented the application of that article. Second, in the light of Article 8(5) of that regulation, the Board of Appeal found that the distance between the goods designated by the mark applied for and the goods and services in respect of which the reputation of earlier mark 1 had been established was so great that the latter goods and services belonged to completely different market segments, which prevented the relevant public from establishing a link between the marks at issue. According to the Board of Appeal, that distance ‘outweigh[ed] all the other factors which may contribute to the establishment of a link [between those marks], such as the similarity between the conflicting marks and the degree of reputation of earlier mark 1’.

 Forms of order sought

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

–        annul the contested decision;

–        order EUIPO to pay the costs.

11      EUIPO contends, in essence, that the Court should:

–        annul the contested decision in so far as it found that there is no link between the marks at issue, in the context of the examination under Article 8(5) of Regulation 2017/1001, solely on the basis of the distance between the goods in question;

–        in the alternative, dismiss the action in its entirety should the Court consider that the contested decision found that there is no link between the marks at issue not solely on the basis of the distance between the goods in question but also, implicitly, on the intrinsic distinctive character of the earlier mark;

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

 Law

12      In support of its action, the applicant relies on two pleas in law, alleging (i) infringement of Article 8(5) of Regulation 2017/1001 and (ii) misapplication of Article 8(1)(b) of that regulation.

13      EUIPO disputes the arguments raised by the applicant in support of the second plea. By contrast, as regards the first plea, EUIPO takes the view, in essence, that if the Court were to rule that the absence of any link between the marks at issue is based solely on the factor relating to the distance between the goods and services in question, the Board of Appeal erred in law by relying solely on that factor in order to find that there was no link between the marks at issue, with the result that the contested decision ought to be annulled to that extent. In the alternative, EUIPO contends that, if the Court were to find that the Board of Appeal did not give precedence to that factor over the others, by having implicitly examined, and carried out a global assessment of, the other relevant factors, the first plea must be rejected and, accordingly, the action dismissed in its entirety.

14      In that connection, it should be observed that, in so far as concerns the procedural position taken by EUIPO, the latter cannot be required to defend systematically every contested decision of a Board of Appeal or automatically to claim that every action challenging such a decision should be dismissed, and nothing prevents EUIPO from endorsing a head of claim of the applicant’s (see, to that effect, judgment of 25 October 2005, Peek & Cloppenburg v OHIM (Cloppenburg), T‑379/03, EU:T:2005:373, paragraph 22).

 The first plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001

15      The first plea is divided, in essence, into two complaints by way of which the applicant claims that the Board of Appeal (i) erred in its assessment when examining the factor relating to the distance between the goods and services in question, and (ii) erred in law when examining the other factors relating to the link between the marks at issue.

16      EUIPO essentially disputes the applicant’s arguments in the alternative only, and solely in so far as the Court might find that the Board of Appeal implicitly took into account the intrinsic distinctive character of the mark with a reputation.

17      Article 8(5) of Regulation 2017/1001 provides that, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2 thereof, the trade mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

18      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation 2017/1001, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 5 June 2018, Prada v EUIPO – The Rich Prada International (THE RICH PRADA), T‑111/16, not published, EU:T:2018:328, paragraph 26 and the case-law cited).

19      Furthermore, pursuant to the case-law, the types of injury referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the marks at issue, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them even though it does not confuse them. The existence of such a link between the mark applied for and the earlier mark on the part of the relevant public is therefore an implied essential precondition for the application of Article 8(5) of Regulation 2017/1001 (see judgments of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 26 and the case-law cited, and of 11 November 2020, Totalizator Sportowy v EUIPO – Lottoland Holdings (Lottoland), T‑820/19, not published, EU:T:2020:538, paragraph 26 and the case-law cited).

20      The existence of such a link must be appreciated globally, taking into account all factors relevant to the circumstances of the case. Those factors include, first, the degree of similarity between the marks at issue, second, the strength of the earlier mark’s reputation, third, the nature of the goods or services for which the marks at issue are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public, fourth, the degree of the earlier mark’s distinctive character, whether inherent or acquired through use and, fifth, the existence of a likelihood of confusion on the part of the public (judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 42, and of 16 December 2010, Rubinstein v OHIM – Allergan (BOTOLIST), T‑345/08 and T‑357/08, not published, EU:T:2010:529, paragraph 66; see also judgment of 22 January 2015, Tsujimoto v OHIM – Kenzo (KENZO), T‑322/13, not published, EU:T:2015:47, paragraph 34 and the case-law cited).

21      In the present case, as a preliminary point, it should be noted that it is not necessary to call into question the assessments made by the Board of Appeal in paragraphs 93 to 98 of the contested decision – which, moreover, are not disputed by the applicant – according to which, first, the mark applied for was identical to earlier mark 1 and, second, the latter mark, which was registered on 24 January 2005, had a reputation to an average degree in Germany, Spain, France and Poland for smart utility meters and providing software solutions for smart utility meters, since the applicant was a global provider of technology and services.

22      Thus, the first three conditions identified in paragraph 18 above must be regarded as having been met, since earlier mark 1 is registered, identical to the mark applied for and characterised by a reputation to an average degree.

23      It is therefore necessary to examine the assessment made by the Board of Appeal in relation to the implicit condition, recalled in paragraph 19 above, concerning the link between the signs at issue.

24      In that connection, as regards the assessment of the link between the marks at issue, in the light of the considerations set out in paragraph 21 above, it is also not necessary to call into question the findings of the Board of Appeal – which are, moreover, not disputed by the applicant – relating to the first two factors identified in paragraph 20 above, according to which the mark applied for is identical to earlier mark 1, which has a reputation to an average degree.

 The third factor, relating to the distance between the goods and services in question, including between the relevant sections of the public for those goods and services

25      By way of the first complaint under the first plea in law, the applicant disputes the assessments of the Board of Appeal, according to which the marks at issue are intended for such different sections of the public that no link can be established between those marks. In the applicant’s submission, that finding is neither supported by the evidence nor based on the arguments of the parties, which is contrary to both the obligation incumbent on the Board of Appeal to state reasons, in accordance with Article 94(1) of Regulation 2017/1001, and to the evidence, produced by the applicant but not evaluated by the Board of Appeal, that residential users, representing the general public, are also part of the relevant public. Similarly, there is an overlap as regards electricity companies between the relevant sections of the public for the goods and services in question. In any event, the applicant recalls that, since Article 8(5) of Regulation 2017/1001 was created precisely in order to make express provision for protection vis-à-vis goods and services that are not similar, placing excessive emphasis on the dissimilarity between them is not in line with the law or the case-law in this field.

26      According to EUIPO, the applicant  rightly maintains that the objective of Article 8(5) of Regulation 2017/1001 is to ensure, inter alia, protection against different goods or services, where the earlier mark has a reputation in the European Union.

27      In the present case, the Board of Appeal considered, as regards the nature of the goods and services in question, that the goods covered by the mark applied for are tangible, simple and mechanical, unlike the goods and services covered by early mark 1, which are intangible and highly sophisticated. The use of those goods was also found to be different, since the goods covered by the mark applied for are controlled directly by the user, usually manually, whereas those goods covered by earlier mark 1 are installed by public utility or electricity company services at the consumer’s premises and typically do not require direct interaction by the consumer, but rather specific software solutions. According to the Board of Appeal, the relevant public for earlier mark 1, which public is composed of utilities and electricity companies, does not establish a link between the marks at issue also on account of the different purpose of the goods and services in question: on the one hand, those providing simple mechanical functions – such as the provision of light, heat, cooling, etc. – and, on the other hand, those that are ‘next-generation’ smart solutions, such as the monitoring of energy consumption. That board also relied on the failure, on the part of the applicant, to demonstrate an overlap between manufacturers or suppliers in order to find that no link would be established, by the relevant public, between the marks at issue, since the goods and services in question belong to completely different market segments, with the result that they are neither in competition with each other, nor complementary.

28      In that connection, as a preliminary point, it should be recalled that, according to the case-law, the existence of a difference between the goods and services covered by the marks at issue does not suffice, in itself, to preclude a certain proximity between the goods and services for the purposes of Article 8(5) of Regulation 2017/1001; a direct and immediate link between them is not necessary (see judgment of 9 September 2020, Kludi v EUIPO – Adlon Brand (ADLON), T‑144/19, not published, EU:T:2020:404, paragraph 159 and the case-law cited).

29      As regards the applicant’s line of argument that the marks at issue are not intended for such different sections of the public that no link can be established between those marks, it should be observed, first, that the applicant wrongly maintains that the general public should be regarded as being part, in the present case, of the relevant public for reputed smart utility meters and software solutions.

30      It should, admittedly, be noted that the evidence produced by the applicant and examined by the Board of Appeal in paragraphs 95 to 97 of the contested decision does indeed refer to the intention of the European Commission to involve the general public more actively in the use and monitoring of energy consumption through, inter alia, two-way smart utility meters. Nevertheless, that evidence consists in documents announcing that a public policy is to be put in place, and not exhibits establishing that consumers are in fact actually involved in the monitoring of their electricity consumption. Similarly, two-way meters allow electricity companies, moreover, to take readings of energy consumption without employees going to consumers in order to read their meters.

31      Consequently, in the absence of elements to substantiate the applicant’s line of argument further, it must be held that, although such information may give an indication of the possible development of the relevant public in question, the documents relating to the public policies that the Commission wishes to implement do not prove the applicant’s argument that the general public was part of the relevant public using the applicant’s goods and services.

32      Second, the applicant also wrongly maintains that the contested decision is vitiated by a contradiction in the grounds as to the finding that the relevant public for reputed smart utility meters and software solutions is composed exclusively of professionals.

33      In that connection, it should be observed that the Board of Appeal found, in paragraph 29 of the contested decision, that the general public was part of the relevant public for the goods covered by earlier mark 1, in Class 9, solely with regard to non-specialised broad categories of goods, such as ‘computer software’. However, the specialised goods and services, covered by earlier mark 1, such as smart utility meters and the software solutions relating thereto, were intended for professionals (public utility companies, electricity undertakings).

34      Consequently, since a finding was made as to the reputation of earlier mark 1 only with regard to smart utility meters and the software solutions relating thereto, the identification made in that connection by the Board of Appeal of a relevant public composed solely of professionals is perfectly logical and consistent, in spite of the applicant’s objections, since reputed smart utility meters and the software solutions relating thereto do not belong to the general category of ‘computer software’, identified by the Board of Appeal, but rather to specialised goods and services covered by earlier mark 1, intended for professionals.

35      Thus, the Board of Appeal complied with its obligation concerning both the statement of reasons for the contested decision – which is not vitiated by any contradiction in that regard – and the evidence produced by the applicant, which evidence was duly taken into account by that board (see paragraph 30 above).

36      By contrast, third, the applicant is justified in arguing that electricity undertakings mark the overlap between the respective sections of the relevant public for each of the marks at issue. Indeed, in accordance with the analysis carried out by the Board of Appeal in paragraph 103 of the contested decision, the relevant public for earlier mark 1 in part comprises electricity companies. However, the same undertakings also form part of the relevant public, made up of professionals, for the goods designated by the mark applied for, identified by the Board of Appeal in paragraphs 27 to 30 of the contested decision.

37      Consequently, the finding of the Board of Appeal, which is apparent from paragraphs 103 to 105 of the contested decision, that the goods and services in question were intended for completely different sections of the public is vitiated by an error of assessment (see paragraph 36 above).

38      It follows from the foregoing that the first complaint in the first plea is well founded, since the Board of Appeal made an error of assessment.

39      However the scope of that error will be examined in the overall analysis of the factors that make it possible to establish a link between the marks at issue, it being understood that the finding of an error would justify the automatic annulment of the contested decision only in so far as it has any bearing on the outcome of the proceedings (see, to that effect and by analogy, judgment of 15 October 2020, Rothenberger v EUIPO – Paper Point (ROBOX), T‑49/20, EU:T:2020:492, paragraph 70).

 The other factors and the global assessment of the factors for the purposes of establishing a link between the marks at issue

40      By the second complaint in the first plea, the applicant claims, in essence, that by failing to examine all of the relevant factors that make it possible to establish a link between the marks at issue by, in fact, taking account of the third factor alone in order that it might outweigh the others, and by failing to carry out a global assessment of the factors identified by the judgment of 5 June 2018, Prada v EUIPO – The Rich Prada International (THE RICH PRADA), (T‑111/16, not published, EU:T:2018:328, paragraph 30), cited in paragraph 100 of the contested decision, the Board of Appeal erred in law. Thus, according to the applicant, account should be taken, in the present case, in particular of the identity of the marks at issue, which may compensate for any distance between the goods and services in question, in accordance with the case-law of the General Court.

41      In that connection, EUIPO observes that the Court has expressly recognised, in its judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA) (T‑62/16, EU:T:2018:604, paragraph 100), that the dissimilarity between the goods and services in question is not a sufficient factor for excluding the establishment, by the relevant public, of a link between the marks at issue. Moreover, EUIPO recalls that these are factors that must be examined globally and not as cumulative conditions. According to EUIPO, the conclusion that there is no link between the marks at issue in the present case appears to be based solely on the finding of a great distance between the goods and services in question. However, according to EUIPO, that approach on the part of the Board of Appeal is incorrect, since the aim of Article 8(5) of Regulation 2017/1001 is in fact to provide protection to marks with a reputation against other similar marks, applied for in respect of different goods. Consequently, if the dissimilarity of the goods were the sole reason why there exists no link between the marks at issue, which appears to be the case in the present proceedings, that would run counter to the underlying logic of that provision. Accordingly, EUIPO takes the view that the contested decision should be annulled in such an event.

42      In the alternative and while acknowledging that the Board of Appeal failed to carry out the examination identified in paragraph 56 of the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655), relating to whether the mark ITRON is unique or essentially unique for the purposes of establishing its intrinsic distinctive character, EUIPO argues that that examination could justify the dismissal of the opposition, should the General Court find that it was carried out implicitly but necessarily by the Board of Appeal, since, in essence, the word ITRON is not so very original and alludes to electronic goods.

43      In the present case, having regard to the analysis conducted by the Board of Appeal as regards the factors examined (see paragraphs 21 and 24 above), it found, in paragraph 107 of the contested decision, that the distance between the goods and services in question outweighed all the other factors which may contribute to the establishment of a link between the marks at issue, such as the similarity between the marks at issue and the degree of reputation of earlier mark 1. Consequently, it rejected the opposition in the light of Article 8(5) of Regulation 2017/1001.

44      It is thus clear from the conclusion drawn by the Board of Appeal in paragraph 107 of the contested decision that that board confined itself to examining only three of the five factors identified in the case-law cited in paragraph 20 above.

45      In that connection, in the first place, it is apparent from the analysis conducted by the Board of Appeal in paragraphs 102 to 105 of the contested decision that that board focused exclusively, and wrongly, on the distance between the goods and services in question, which appears to be the sole justification explaining, in paragraph 107 of that decision, why no link would be established, by the relevant public, between the marks at issue. That finding was reached by the Board of Appeal despite considerations relating to the identity of those marks, and the reputation of earlier mark 1 to an average degree.

46      However, it should be recalled, as EUIPO does, that in accordance with the case-law, the dissimilarity between the goods and services in question is not a sufficient factor for excluding the establishment, by the relevant public, of a link between the marks at issue (judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA), T‑62/16, EU:T:2018:604, paragraph 100).

47      In the second place, while the case-law does not require that the degree of inherent distinctiveness of an earlier mark and the degree of distinctiveness acquired by use be taken into consideration, but only one of the two (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 42; see also judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA), T‑62/16, EU:T:2018:604, paragraph 84 and the case-law cited), it should however be noted that, in the present case, the Board of Appeal failed to establish either of the two, and consequently failed to carry out an examination of whether the mark with a reputation is unique or essentially unique. That question was not addressed by the Board of Appeal either in its analysis or in the conclusion drawn in paragraph 107 of the contested decision (see paragraph 43 above), which prevents the Court from being able to find that that examination was carried out, albeit implicitly, as EUIPO argues in the alternative.

48      The Board of Appeal ought to have examined the question whether the mark with a reputation was unique or essentially unique, which was a relevant factor in the present case, in so far as the ability of a trade mark to identify the goods or services for which it is registered and used as coming from the proprietor of that mark and, therefore, its distinctive character are all the stronger if that mark is unique – that is to say, if the word of which it consists has not been used by anyone for any goods or services other than by the proprietor of the mark for the goods and services it markets (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 56).

49      In the third place, the Board of Appeal carried out a global examination, but failed to assess, at the very least, the intrinsic distinctive character of early mark 1 since, in paragraph 107 of the contested decision, that board failed to refer to that factor amongst the factors that might influence its overall assessment.

50      Consequently, it follows from the foregoing that, by justifying the absence of any link between the marks at issue solely on the basis of the difference between the goods and services in question without examining whether earlier mark 1 was unique or essentially unique and, as a result, failing to carry out an assessment of all of the relevant factors in the present case (see paragraphs 45, 47 and 49 above), the Board of Appeal erred in law.

51      It follows that the second complaint in the first plea is also well founded.

52      Accordingly, the analysis relating to Article 8(5) of Regulation 2017/1001 was vitiated by both the error of assessment found in paragraph 37 above and the error of law identified in paragraph 50 above.

53      In the light of all the foregoing considerations, the applicant’s first plea in law must be upheld.

54      Since the assessment of the Board of Appeal is invalid having regard to one of the grounds of opposition, the contested decision must be annulled in its entirety (see, to that effect, judgment of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 207), without it being necessary to rule on the applicant’s second plea in law.

55      Furthermore, as regards the request for convening a hearing submitted by the applicant, subject to the event that the Court should deem it necessary to examine the distinctive character of the earlier mark in the context of the examination under Article 8(5) of Regulation 2017/1001, suffice it to observe that, since it has not ruled on that question and has had sufficient information available to it from the material in the file, the Court does not consider it necessary to allow that request.

 Costs

56      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.

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

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 26 August 2024 (Case R 1596-2023-1);

2.      Orders EUIPO to pay the costs.

Delivered in open court in Luxembourg on 29 October 2025.

*      Language of the case: English.