Corte di giustizia UE n. 2017/2026

[OSCURATO:PERSONA] ([OSCURATO:PERSONA]) 16 September 2026 ( * ) ( EU trade mark – [OSCURATO:PERSONA] proceedings – Application for the EU figurative mark [OSCURATO:SOCIETA] – Earlier EU figurative mark CristianoFissore – Relative ground for refusal – Likelihood of confusion – [OSCURATO:PERSONA] 8(1)(b) of Regulation (EU) 2017/1001 – No peaceful coexistence between the marks at issue – No limitation in consequence of acquiescence – [OSCURATO:PERSONA] 61(1) of Regulation 2017/1001 ) [OSCURATO:PERSONA] T‑60/25, [OSCURATO:SOCIETA], established in Rapallo (Italy), represented by M. Cera and M. Perletti, lawyers, applicant, v [OSCURATO:PERSONA] (EUIPO), represented by A. Ringelhann and V. Ruzek, acting as Agents, defendant, the other party to the proceedings before the [OSCURATO:PERSONA] of Appeal of EUIPO, intervener before the [OSCURATO:PERSONA], being Paraggi GmbH, established in Frankfurt (Germany), represented by J. Müller‑Broich, lawyer, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), composed of E. [OSCURATO:PERSONA], [OSCURATO:PERSONA], M. [OSCURATO:PERSONA] (Rapporteur) and E. [OSCURATO:PERSONA]‑[OSCURATO:PERSONA], [OSCURATO:PERSONA], [OSCURATO:PERSONA]: G. Mitrev, Administrator, having regard to the written part of the procedure, further to the hearing on 25 March 2026, gives the following [OSCURATO:PERSONA] 1 By its action under [OSCURATO:PERSONA] 263 TFEU, the applicant [OSCURATO:SOCIETA]. seeks, in essence, the annulment and alteration of the decision of the [OSCURATO:PERSONA] of Appeal of the [OSCURATO:PERSONA] (EUIPO) of 26 November 2024 ([OSCURATO:PERSONA] R 2215/2023‑4) (‘the contested decision’). Background to the dispute 2 On 16 July 2021, the applicant filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign: 3 The mark applied for covered goods in Class 25 of the [OSCURATO:PERSONA] the [OSCURATO:PERSONA] of Goods and [OSCURATO:PERSONA] for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Clothing, footwear and headgear’. 4 On 13 September 2021, the intervener, Paraggi GmbH, filed a notice of opposition to registration of the mark applied for in respect of the goods covered. 5 The opposition was based on the earlier EU figurative mark filed on 22 February 2002, registered on 30 April 2003, duly renewed since then and reproduced below: 6 That earlier mark, as registered, covered goods in Classes 3, 18 and 25, and corresponds, for each of those classes, to the following description: –        Class 3: ‘Perfumery, cosmetics, sun-tanning preparations, deodorants, toilet soaps, shampoos, dentifrices, essential oils, hair lotions, shaving and after-shave creams and soaps’; –        Class 18: ‘Bags, handbags, suitcases, satchels, billfolds, key fobs, brief cases, umbrellas, leatherware, whips and saddlery’; –        Class 25: ‘Knitted and textile outer clothing, underwear, belts, neckties, swimsuits, footwear, headgear’. 7 The ground relied on in support of the opposition was that set out in [OSCURATO:PERSONA] 8(1)(b) of Regulation (EU) 2017/1001 of the [OSCURATO:PERSONA] and of the Council of 14 June 2017 on the [OSCURATO:PERSONA] trade mark (OJ 2017 L 154, p. 1). 8 On 9 August 2022, the applicant asked the intervener to produce proof of genuine use of the earlier mark. 9 On 25 August 2022, the intervener produced 40 items of evidence within the prescribed period. 10 By decision of 8 September 2023, the [OSCURATO:PERSONA] upheld the opposition on the basis of the earlier mark and refused the mark applied for in its entirety, on the ground that there was a likelihood of confusion within the meaning of [OSCURATO:PERSONA] 8(1)(b) of Regulation 2017/1001. 11 On 6 November 2023, the applicant filed a notice of appeal with EUIPO against the decision of the [OSCURATO:PERSONA]. It submitted 70 annexes to the [OSCURATO:PERSONA] of Appeal. 12 By the contested decision, the [OSCURATO:PERSONA] of Appeal dismissed the appeal. It concluded that there was a likelihood of confusion in respect of all the goods covered by the mark applied for. Forms of order sought 13 The applicant claims, in essence, that the [OSCURATO:PERSONA] should: –        find that there is no likelihood of confusion between the marks at issue and that, regardless of the existence of a likelihood of confusion, pursuant to [OSCURATO:PERSONA] 61 of Regulation 2017/1001, the intervener lacks standing to bring opposition proceedings because it acquiesced, for a period of more than five years prior to the filing of the application for registration of the mark applied for, in the use of that trade mark; –        alter the contested decision accordingly, by dismissing the intervener’s opposition and granting the application for registration of the trade mark. 14 EUIPO contends that the [OSCURATO:PERSONA] should: –        dismiss the action; –        order the applicant to pay the costs incurred by EUIPO in the event that a hearing is convened. 15 The intervener contends that the [OSCURATO:PERSONA] should dismiss the action. Law 16 In support of its action, the applicant relies on two pleas in law alleging, first, infringement of [OSCURATO:PERSONA] 8(1)(b) of Regulation 2017/1001 and, second, in essence, infringement of [OSCURATO:PERSONA] 61 of that regulation. Preliminary observations The applicant’s heads of claim 17 As regards the applicant’s first head of claim, it must be pointed out that that head of claim requests that the [OSCURATO:PERSONA] make a number of findings akin to declarations. In that regard, it is sufficient to bear in mind that, when exercising judicial review of legality under [OSCURATO:PERSONA] 263 TFEU, the [OSCURATO:PERSONA] does not have the jurisdiction to make declaratory rulings (see, to that effect, judgment of 25 February 2026, Empreinte v EUIPO (Shape of a corkscrew) , T‑437/25, not published, EU:T:2026:146, paragraph 13 and the case-law cited). It follows that the applicant’s first head of claim must be rejected on the ground of lack of jurisdiction. 18 As regards the applicant’s second head of claim, first, it must be held that, by that head of claim, the applicant is necessarily seeking not only the alteration of the contested decision, but also the annulment thereof, which, moreover, can be deduced from the submission of the applicant’s two pleas (see, to that effect, judgment of 27 February 2014, [OSCURATO:PERSONA] v OHIM – [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) , T‑509/12, EU:T:2014:89, paragraphs 15 and 16 and the case-law cited). 19 Second, in so far as the applicant’s second head of claim requests that the [OSCURATO:PERSONA] grant the application for registration and may be understood as requesting that the [OSCURATO:PERSONA] alter the contested decision within the meaning of [OSCURATO:PERSONA] 72(3) of Regulation 2017/1001 by adopting the decision that the [OSCURATO:PERSONA] of Appeal should have taken, in accordance with the provisions of that regulation, it must be noted that the [OSCURATO:PERSONA] of Appeal does not have power to take cognisance of a claim that it should register an EU trade mark. Nor, in those circumstances, is it for the [OSCURATO:PERSONA] to take cognisance of a claim for alteration requesting that it amend the decision of a [OSCURATO:PERSONA] of Appeal to that effect (see, to that effect, judgment of 12 April 2011, [OSCURATO:PERSONA]-[OSCURATO:PERSONA] v OHIM ([OSCURATO:PERSONA]) , T‑28/10, EU:T:2011:158, paragraph 13 and the case-law cited). It follows that the applicant’s second head of claim must be rejected, to that extent, on the ground of lack of jurisdiction. 20 However, in so far as the applicant’s second head of claim requests that the [OSCURATO:PERSONA] alter the contested decision by dismissing the intervener’s opposition, a decision which the applicant claims ought to have been taken by the [OSCURATO:PERSONA] of Appeal, it must be held that the [OSCURATO:PERSONA] has jurisdiction to hear it. Admissibility of the evidence adduced for the first time before the [OSCURATO:PERSONA] 21 EUIPO contends that the evidence contained in Annexes A.15, A.20 and A.22 to the application, which includes, inter alia, photographs of clothing, was not filed in the proceedings before EUIPO, but has been submitted for the first time before the [OSCURATO:PERSONA] and is therefore inadmissible. 22 It is clear from the documents before the [OSCURATO:PERSONA] that that evidence was not submitted before the adjudicating bodies of EUIPO, but has been produced for the first time before the [OSCURATO:PERSONA]. 23 In that regard, it must be borne in mind that the purpose of actions before the [OSCURATO:PERSONA] under [OSCURATO:PERSONA] 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. Pursuant to [OSCURATO:PERSONA] 95 of that regulation, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the [OSCURATO:PERSONA] of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann et Backer (HOOLIGAN) , T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited). [OSCURATO:PERSONA] may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM , C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul , C‑29/05 P, EU:C:2007:162, paragraph 53). Therefore, it is not the [OSCURATO:PERSONA]’s function to review the facts in the light of evidence produced for the first time before it. Furthermore, to allow the examination of such evidence would be contrary to [OSCURATO:PERSONA] 188 of the Rules of Procedure of the [OSCURATO:PERSONA], according to which the parties’ pleadings may not change the subject matter of the proceedings before the [OSCURATO:PERSONA] of Appeal (see judgment of 14 May 2009, [OSCURATO:PERSONA] v OHIM – Edwin ([OSCURATO:PERSONA]) , T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited). 24 Accordingly, Annexes A.15, A.20 and A.22 to the application must be declared inadmissible and there is no need to examine their evidential value. The first plea, alleging infringement of [OSCURATO:PERSONA] 8 (1)(b) of Regulation 2017/1001 25 By the first plea, the applicant complains that the [OSCURATO:PERSONA] of Appeal erred in finding that there was a likelihood of confusion. In that regard, it raises, in essence, six complaints, alleging, first, an incorrect assessment of the relevant public, second, an incorrect comparison of the goods at issue, third, an incorrect comparison of the signs at issue, fourth, an incorrect assessment of the distinctive character of the earlier mark, fifth, failure to take account of the peaceful coexistence of the marks at issue and, sixth, an incorrect global assessment of the likelihood of confusion. 26 EUIPO and the intervener dispute the applicant’s arguments. 27 [OSCURATO:PERSONA] 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. 28 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) , T‑162/01, EU:T:2003:199, paragraphs 30 to 32 and the case-law cited). 29 For the purpose of applying [OSCURATO:PERSONA] 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel) , T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited). The relevant public and its level of attention 30 The applicant submits that, in the luxury fashion sector, the average consumer has a high level of attention, not an average level of attention. 31 [OSCURATO:PERSONA] of Appeal found that, in the present case, the goods covered by the mark applied for, namely ‘clothing, footwear and headgear’, were aimed at the general public, whose level of attention was average, and that, since the earlier mark was an EU trade mark, the relevant territory for the purpose of assessing the likelihood of confusion was the territory of the [OSCURATO:PERSONA]. 32 In that regard, it is sufficient to note that the goods covered by the mark applied for consist of ‘clothing, footwear and headgear’ in Class 25 and that such general indications are not limited to luxury goods that are actually marketed by the applicant to a relevant public with a high level of attention, but include, in essence, goods aimed at the general public, whose level of attention is average. 33 For the purpose of assessing whether there is a likelihood of confusion, only the description of the goods in respect of which registration of the trade mark was sought is relevant. The intended or actual use of that mark cannot be taken into account, since the registration does not contain a restriction to that effect. It follows that the specific use which the proprietor of the mark applied for has made of its sign is not capable of changing the goods or services taken into account for the purposes of the assessments underlying the finding of the existence of a likelihood of confusion, such as the definition of the relevant public and its level of attention or the similarity between those goods or services in the mind of that public (see judgment of 4 May 2022, [OSCURATO:PERSONA] v EUIPO – IFIS (FIS) , T‑237/21, not published, EU:T:2022:267, paragraph 29 and the case-law cited). 34 In the present case, it is not apparent from the description of the goods covered by the mark applied for, as reproduced in paragraph 3 above, that they are expensive and high-end goods. In the absence of any specific information to the contrary, they may come within any range and are not necessarily expensive or luxury items (see judgment of 30 September 2015, Mocek and Wenta KAJMAN [OSCURATO:PERSONA]‑Usługowo‑Produkcyjna v OHIM – Lacoste (KAJMAN) , T‑364/13, not published, EU:T:2015:738, paragraph 26 and the case-law cited). 35 [OSCURATO:PERSONA] of Appeal did not therefore make an error of assessment in determining the relevant public and its level of attention. The comparison of the goods 36 The applicant claims, in essence, that the goods protected by the marks at issue are aimed at different publics and must therefore be regarded as different. Although the applicant accepts that the goods at issue fall within the same category, it submits that the goods actually sold under the marks at issue are not identical, but cover completely different sub-segments of the textiles market, differ radically in terms of price, quality, exclusivity and distribution channels, and are not in direct competition with each other. In particular, it criticises the [OSCURATO:PERSONA] of Appeal for not taking into account the significant differences between the goods at issue, notably as regards their nature, given the substantial difference in unit price (goods costing EUR 50 as opposed to cashmere goods costing EUR 700 to EUR 1 000), their intended purpose, given the difference in clothing style (classic and formal as opposed to fashion and leisure), and their distribution channels (own shops and website as opposed to major e-commerce sites). It concludes that, although those goods fall within the same category (clothing), an overall analysis of all the relevant factors reveals that those goods cannot be identical. 37 According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, 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). Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, [OSCURATO:PERSONA] v OHIM – [OSCURATO:PERSONA] (PiraÑAM diseño original [OSCURATO:PERSONA]) , T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited). 38 In the present case, as a preliminary remark, it should be noted that the [OSCURATO:PERSONA] of Appeal found, without being challenged on that point by the applicant, that the earlier mark had been put to genuine use for ‘knitted and textile outer clothing; headgear, namely knitted caps’ in Class 25. Those are therefore the goods covered by that mark that must be taken into account for the purposes of the comparison. 39 As regards the comparison of the goods at issue, the [OSCURATO:PERSONA] of Appeal noted, first of all, that the applicant did not dispute that the items of clothing covered by the mark applied for were identical to the knitted and textile outer clothing in respect of which it had been shown that the earlier mark had been put to genuine use. It considered that that conclusion was correct given that the latter goods were included in the former. Similarly, it found that the headgear covered by the mark applied for and the ‘headgear, namely knitted caps’, in respect of which it had been shown that the earlier mark had been put to genuine use, were identical. In addition, it rejected the applicant’s arguments relating to a difference in price and quality as ineffective, on the ground that the analysis of the likelihood of confusion, including that of the similarity of the goods, was ‘prospective’ and therefore independent of the actual circumstances of use by the proprietors of the marks at issue. Last, it noted that the applicant did not dispute the fact that the footwear covered by the mark applied for and the knitted and textile outer clothing in respect of which it had been shown that the earlier mark had been put to genuine use were similar to an average degree, owing to their common nature and intended purpose. According to the [OSCURATO:PERSONA] of Appeal, those goods were often found in the same retail outlets and were aimed at the same public; consumers looking for clothing in a shop or particular section of a shop would expect to find shoes in that same shop or section of a shop, and vice versa, and, moreover, many manufacturers and stylists designed and produced clothing and shoes. 40 Those findings of the [OSCURATO:PERSONA] of Appeal must be upheld and cannot be invalidated by the applicant’s arguments. 41 It should be noted, as observed by EUIPO, that the applicant’s arguments do not relate to the individual goods to be compared, but rather refer, in a general manner, to the price and high quality of the applicant’s goods, to the intended purpose of those goods and the way that they are sold, and to the luxury brand image enjoyed by the mark applied for. The applicant therefore relies essentially on the actual use of the marks for the goods on the market. 42 In that regard, it must be borne in mind that the actual use which the proprietor of the mark applied for has made of its sign is not capable of changing the goods to be compared for the purposes of the global assessment of the existence of a likelihood of confusion (see paragraph 33 above). 43 In other words, the alleged obvious differences in the price, quality, intended purpose and distribution channels of the goods, which result from their actual use, cannot be taken into account when assessing whether the goods at issue are similar within the meaning of [OSCURATO:PERSONA] 8(1)(b) of Regulation 2017/1001. 44 In the present case, the applicant’s arguments relating to the differences in price, quality, intended purpose and distribution channels between its own goods and those of the intervener are ineffective, since they concern the actual use of the marks on the market. Only the goods in respect of which registration of the mark was sought and the goods in respect of which the earlier mark was registered and for which genuine use has been proved are relevant. 45 For that reason, given that the applicant does not dispute that the goods at issue fall within the same category (see paragraph 36 above), its arguments do not prove that the [OSCURATO:PERSONA] of Appeal made any errors in the comparison of the goods at issue. 46 It is therefore necessary to uphold the [OSCURATO:PERSONA] of Appeal’s findings, which are free from error, that the goods at issue are in part identical (‘clothing’ and ‘headgear’ covered by the mark applied for, on the one hand, and ‘knitted and textile outer clothing, namely knitted caps’ covered by the earlier mark, on the other), and in part similar to an average degree (‘footwear’ covered by the mark applied for, on the one hand, and ‘knitted and textile outer clothing’ covered by the earlier mark, on the other). The comparison of the signs at issue 47 The applicant claims, in essence, that the marks at issue are visually and phonetically different and have a different conceptual meaning. 48 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited). 49 The comparison must be made by examining each of the marks in question as a whole. Thus, assessment of the similarity between two marks in principle means more than taking just one component of a composite trade mark and comparing it with another mark. It is only in circumstances where the overall impression conveyed to the relevant public by a composite trade mark is dominated by one or more of its components and where all the other components of that mark are negligible that the assessment of the similarity can, by way of exception, be carried out solely on the basis of the dominant element (see judgment of 6 November 2024, House of Prince v EUIPO – Biały ([OSCURATO:PERSONA]) , T‑118/23, not published, EU:T:2024:778, paragraph 30 and the case-law cited). 50 In the case of a word mark composed of a first name and a surname, account must be taken of all the relevant factors of each case and, in particular, of the fact that the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on the distinctive character of that name. The issue of whether or not a word element is perceived as a common first name is also relevant for the purpose of assessing the distinctive character of that element (see, to that effect, judgment of 16 December 2020, [OSCURATO:PERSONA] v EUIPO – [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) , T‑863/19, not published, EU:T:2020:632, paragraphs 75 and 76 and the case-law cited). 51 In the present case, the signs to be compared are the following: Earlier trade mark Trade mark applied for 52 Before comparing the signs at issue, their distinctive and dominant elements must be determined. – The distinctive and dominant elements of the signs at issue 53 In its arguments regarding the visual comparison, the applicant claims that the fact that the first name ‘[OSCURATO:PERSONA]’ is less distinctive than the surname ‘[OSCURATO:SOCIETA]’ does not in itself presuppose that the relevant public takes into account only the word ‘[OSCURATO:SOCIETA]’, particularly since, in the world of fashion, the first name is an important reference to the designer of the goods. It concludes that the earlier mark is in fact a single word and also adds that that mark is written in an elegant and very classic style. By contrast, in the mark applied for, the name ‘[OSCURATO:SOCIETA]’ is in an unusual typeface, the stylised fish is of greater importance than the name ‘[OSCURATO:SOCIETA]’ which appears inside it, and the association of those two elements makes that mark ‘distinctive, iconic and indistinguishable’. 54 [OSCURATO:PERSONA] of Appeal found that the earlier mark was a figurative mark composed of two word elements ‘[OSCURATO:PERSONA]’ and ‘[OSCURATO:SOCIETA]’ in a classic cursive typeface, and that it would be perceived by the relevant public as the name (first name and surname) of a person. It considered that the applicant had not disputed the [OSCURATO:PERSONA] finding that ‘[OSCURATO:PERSONA]’ was a common first name which had a close equivalent in more than 15 [OSCURATO:PERSONA] (for example, ‘[OSCURATO:PERSONA]’ in [OSCURATO:PERSONA] and Spanish, or ‘[OSCURATO:PERSONA]’ in French and German). The element ‘[OSCURATO:SOCIETA]’ which followed the first name ‘[OSCURATO:PERSONA]’ would be perceived by the relevant public as a surname of [OSCURATO:PERSONA] origin. [OSCURATO:PERSONA] of Appeal held that the relevant public in the [OSCURATO:PERSONA] as a whole was likely to attribute more importance to the surname, namely the element ‘[OSCURATO:SOCIETA]’, especially since the surname ‘[OSCURATO:SOCIETA]’ was relatively rare in Italy (and a fortiori elsewhere) whereas the first name ‘[OSCURATO:PERSONA]’, or a close equivalent thereof, was relatively common. 55 As regards the mark applied for, the [OSCURATO:PERSONA] of Appeal found that it was a composite sign associating the word element ‘[OSCURATO:SOCIETA]’, in an elongated typeface, with a figurative element. It noted that that figurative element was a round shape representing what could be perceived by a part of the relevant public as a stylised fish in a thick black frame, whereas other parts of the relevant public might not perceive the representation as a stylised fish as such and that, for those parts, the figurative element would appear decorative. It considered that, on account of its size and conceptual content, the stylised fish would create a notable visual impression, but that that was not sufficient to relegate the word element ‘[OSCURATO:SOCIETA]’ to a secondary role. In fact, the mark applied for would primarily be identified by its word element rather than its figurative element, which could only be described, whereas the word element ‘[OSCURATO:SOCIETA]’ was likely to be perceived and memorised independently of the figurative element. [OSCURATO:PERSONA] of Appeal concluded that the word element and the stylised fish were ‘codominant’ in the impression given by the mark applied for. 56 Those findings must be upheld. In particular, it should be noted that the earlier mark is perceived by the relevant public as the name of a person and that the element ‘[OSCURATO:SOCIETA]’ – a relatively rare surname in Italy (and a fortiori elsewhere in the [OSCURATO:PERSONA]) – is more distinctive than the element ‘[OSCURATO:PERSONA]’, which is a relatively common first name in Italy and, in different variants, in the [OSCURATO:PERSONA]. As regards the mark applied for, it associates the stylised word element ‘[OSCURATO:SOCIETA]’ with a figurative element which is perceived either as decorative or as a stylised fish, in which case it will be clearly perceived, without, however, relegating the word element to a secondary role, with the result that the word element ‘[OSCURATO:SOCIETA]’ and the figurative element of the stylised fish are elements of equal weight within the mark. 57 Those findings are not invalidated by the applicant’s arguments. 58 [OSCURATO:PERSONA], it is appropriate to reject the applicant’s claim that the first name ‘[OSCURATO:PERSONA]’, in combination with the surname ‘[OSCURATO:SOCIETA]’ in the earlier mark, is important because it refers to a specific person in the world of fashion. It must be observed that it is not at all well known, within the meaning of the case-law (judgment of 22 June 2004, Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) , T‑185/02, EU:T:2004:189, paragraph 29), that the first name ‘[OSCURATO:PERSONA]’ and the surname ‘[OSCURATO:SOCIETA]’ together identify a person known to the relevant public throughout the [OSCURATO:PERSONA]. The applicant did not provide any evidence to that effect in the proceedings before EUIPO either. It has therefore not been established in the present case that the earlier mark will be perceived by the relevant public throughout the [OSCURATO:PERSONA] as a mark composed of a first name and a surname which identify that person, rather than as the surname ‘[OSCURATO:SOCIETA]’ to which the first name ‘[OSCURATO:PERSONA]’ has been added (see, by analogy, judgment of 28 June 2012, I [OSCURATO:PERSONA] and [OSCURATO:PERSONA] v OHIM – Osra (B. [OSCURATO:PERSONA] 1952) , T‑133/09, EU:T:2012:327, paragraph 48). Consequently, the applicant’s claim does not call into question the [OSCURATO:PERSONA] of Appeal’s finding that, in essence, in the earlier mark, the relatively rare surname ‘[OSCURATO:SOCIETA]’ is dominant and more distinctive than the relatively common first name ‘[OSCURATO:PERSONA]’. 59 Second, it is also appropriate to reject the applicant’s claim that, in the mark applied for, the figurative element of the stylised fish plays a more important role than the word element ‘[OSCURATO:SOCIETA]’ which it contains. That cannot apply to the part of the relevant public which will perceive that figurative element as purely decorative, as the [OSCURATO:PERSONA] of Appeal observed. Moreover, the [OSCURATO:PERSONA] of Appeal also expressly took into account the part of the public which perceives that element as a stylised fish, acknowledging that that figurative element creates a notable visual impression, without, however, being capable of relegating the word element ‘[OSCURATO:SOCIETA]’ to a secondary role. By contrast, the applicant does not explain why that assessment is incorrect and even appears to contradict itself, given that it also submits that the association of that figurative element with that word element makes the mark applied for ‘distinctive, iconic and indistinguishable’. Consequently, the applicant’s claim does not call into question the [OSCURATO:PERSONA] of Appeal’s finding that, in the mark applied for, the word element ‘[OSCURATO:SOCIETA]’ and the figurative element of the stylised fish are elements of equal weight. 60 Third, in so far as the applicant claims that the ‘strong distinctive character’ of the mark applied for is relevant for the purpose of assessing the similarity of the signs, it should be borne in mind that it is only the enhanced distinctiveness of the earlier mark, and not that of the mark applied for, which is relevant in the global assessment of the likelihood of confusion, because [OSCURATO:PERSONA] 8(1)(b) of Regulation 2017/1001 protects the interest of the proprietor of the earlier mark (see, to that effect, judgment of 14 May 2025, [OSCURATO:PERSONA] v EUIPO – ACRAF ([OSCURATO:PERSONA]) , T‑418/24, not published, EU:T:2025:491, paragraph 57 and the case-law cited; see also, by analogy, judgments of 3 September 2009, Aceites del Sur-Coosur v Koipe , C‑498/07 P, EU:C:2009:503, paragraph 84 and the case-law cited, and of 14 November 2019, Société des produits Nestlé v EUIPO – [OSCURATO:PERSONA] (Representation of a human figure on an escutcheon) , T‑149/19, not published, EU:T:2019:789, paragraph 40 and the case-law cited). 61 Last, it should be noted that the applicant does not dispute the [OSCURATO:PERSONA] of Appeal’s finding that the surname ‘[OSCURATO:SOCIETA]’ is relatively rare, whereas the first name ‘[OSCURATO:PERSONA]’, or a close equivalent thereof, is relatively common. Moreover, it has already been held that the first name ‘[OSCURATO:PERSONA]’ or its variants such as ‘[OSCURATO:PERSONA]’ are fairly or even very common in several countries of the [OSCURATO:PERSONA], with the result that they have weak distinctive character (see judgment of 16 December 2020, [OSCURATO:PERSONA] , T‑863/19, not published, EU:T:2020:632, paragraph 81 and the case-law cited). 62 [OSCURATO:PERSONA] of Appeal therefore did not make an error of assessment in determining the distinctive and dominant elements of the signs at issue. – The visual comparison 63 On the basis of the arguments already set out in paragraph 53 above, the applicant concludes that the marks at issue are visually very different overall. 64 [OSCURATO:PERSONA] of Appeal found that the signs at issue had the word element ‘[OSCURATO:SOCIETA]’ in common and that they differed in the first word element of the earlier mark ‘[OSCURATO:PERSONA]’ and in their figurative elements. It did agree that there were obvious differences in the visual impressions left by the signs, but took the view that those differences were, however, insufficient to eliminate the impact of the common word element ‘[OSCURATO:SOCIETA]’, which was dominant in the earlier mark and codominant in the mark applied for. According to the [OSCURATO:PERSONA] of Appeal, that partial identity remained perceptible despite the contrasts in the stylisation of the two signs. Consequently, it concluded that the signs at issue were visually similar to a below-average degree. 65 Those findings must be upheld and are not invalidated by the applicant’s arguments. 66 In particular, it should be noted that the applicant’s arguments are based essentially on the incorrect premiss that the common element ‘[OSCURATO:SOCIETA]’ is not more distinctive than the element ‘[OSCURATO:PERSONA]’ in the earlier mark, and is secondary in relation to the stylised fish in the mark applied for. However, as held in paragraphs 58 and 59 above, the element ‘[OSCURATO:SOCIETA]’ is more distinctive than the element ‘[OSCURATO:PERSONA]’ in the earlier mark and has the same weight as the figurative element of the stylised fish in the mark applied for. In those circumstances, the presence of that common element ‘[OSCURATO:SOCIETA]’ in the marks at issue is sufficient to support the finding that those marks are not different overall, but have a below-average degree of similarity. 67 [OSCURATO:PERSONA] of Appeal therefore did not make an error of assessment in finding that the signs at issue were visually similar to a below-average degree. – The phonetic comparison 68 The applicant submits that the two marks at issue are phonetically different since the earlier mark, CristianoFissore, consists of 16 letters whereas the mark applied for, [OSCURATO:SOCIETA], consists of seven letters. In addition, the name ‘[OSCURATO:PERSONA]’ is ‘important-sounding’ in particular owing to the meaning of the first name [OSCURATO:PERSONA], which originates from the [OSCURATO:PERSONA] religion. It concludes that the two signs are not phonetically identical. 69 [OSCURATO:PERSONA] of Appeal found that the pronunciation of the signs at issue coincided in the three syllables of the element ‘[OSCURATO:SOCIETA]’, present identically in both signs, and differed in the sound of the element ‘[OSCURATO:PERSONA]’ in the earlier mark. It concluded therefrom that the signs were phonetically similar to an average degree. 70 Those findings must be upheld and are not invalidated by the applicant’s arguments. 71 In that regard, the applicant’s argument that the signs are phonetically completely different because of the difference in the number of letters, notwithstanding the common element ‘[OSCURATO:SOCIETA]’, must be rejected. In addition, the claim that the element ‘[OSCURATO:PERSONA]’ is ‘important-sounding’ owing to its meaning being of [OSCURATO:PERSONA] origin is manifestly unfounded. As a common first name, the element ‘[OSCURATO:PERSONA]’ is less distinctive than the unusual element ‘[OSCURATO:SOCIETA]’ in the earlier mark and there is no reason for the sound produced by the element ‘[OSCURATO:PERSONA]’ to play a more important role than that produced by the common element ‘[OSCURATO:SOCIETA]’ in the phonetic comparison. 72 Therefore, the [OSCURATO:PERSONA] of Appeal did not make an error of assessment in finding that the signs at issue were phonetically similar to an average degree. – The conceptual comparison 73 Conceptually, the applicant acknowledges that there is no doubt that the two marks both contain the surname ‘[OSCURATO:SOCIETA]’, but considers that that is not sufficient to conclude that the two marks are conceptually identical or similar. According to the applicant, the first name ‘[OSCURATO:PERSONA]’, although common, is distinctive, and states that the earlier mark CristianoFissore corresponds to a specific person, namely the designer who launched the clothing line. By contrast, the figure of the stylised fish in the mark applied for introduces a concept related to the geographical origin of the mark which the earlier mark lacks, since that figure evokes the sea and therefore recalls the origins of the family mark [OSCURATO:SOCIETA] in the town of Rapallo (Italy). The stylised logo also conveys the idea of leisure, comfort, sport and vitality and is a symbol of [OSCURATO:PERSONA] quality and excellence, in contrast to the goods of lower quality sold under the earlier mark. It concludes that, from a conceptual point of view, the two marks have a completely different meaning, which has been reinforced over the years as a result of the global reach of the mark applied for comprising a stylised fish. 74 [OSCURATO:PERSONA] of Appeal noted that the [OSCURATO:PERSONA] had concluded that the signs were conceptually similar to at least an average degree, on account of the higher intrinsic value of the surname. In other words, the signs had been considered similar to the extent that they shared the same surname. 75 [OSCURATO:PERSONA] of Appeal recalled that the principles derived from the case-law were as follows. [OSCURATO:PERSONA], although the surname was, in principle, more memorable than a first name, it was necessary to take account of the fact that that surname was unusual or, on the contrary, very common. Similarly, where the same surname was combined with a first name, it was necessary to ascertain whether that first name was rare or common. 76 In the present case, the [OSCURATO:PERSONA] of Appeal found that the surname ‘[OSCURATO:SOCIETA]’ was less common than the first name ‘[OSCURATO:PERSONA]’, that there was no conceptual similarity simply because the signs consisted of surnames, and that the parties had not established that the expression ‘[OSCURATO:PERSONA]’ related to a known and clearly identifiable person and formed, in itself, a logical unit. Therefore, the signs were not conceptually different merely because the first name ‘[OSCURATO:PERSONA]’ was joined with the surname ‘[OSCURATO:SOCIETA]’ in the earlier mark. It also found that the stylised fish in the mark applied for introduced an element of conceptual differentiation, but found that that element of conceptual differentiation had a limited impact, because the fish was so stylised that the concept may not be grasped spontaneously by a significant part of the relevant public. 77 In the present case, as a preliminary point, it should be noted that, as stated in paragraph 61 above, the first name ‘[OSCURATO:PERSONA]’ is quite common, whereas the surname ‘[OSCURATO:SOCIETA]’ is quite rare, with the result that the latter is more distinctive than the former. 78 [OSCURATO:PERSONA] of all, on the assumption that it is possible to make a conceptual comparison of first names and surnames with no semantic content, it must be held that the signs at issue, which have in common the surname ‘[OSCURATO:SOCIETA]’ that has no semantic content, are not conceptually different simply because the first name ‘[OSCURATO:PERSONA]’ is joined with that surname in the earlier mark, since that mark does not evoke any person who is known and clearly identifiable in the mind of the relevant public. On the contrary, those signs are likely to be regarded as similar because they share that uncommon surname and may be perceived as identifying the same family group. 79 Next, although it is appropriate to acknowledge the element of conceptual differentiation resulting from the figurative element of the stylised fish, it must be held, as the [OSCURATO:PERSONA] of Appeal found, that that element has only a limited impact, since the fish is so stylised that that concept may not be grasped spontaneously by a significant part of the relevant public. 80 Furthermore, the applicant’s claim that the stylised fish will be perceived as a reference to the seaside resort of Rapallo (Italy), which is the place of origin of the mark [OSCURATO:SOCIETA], cannot succeed, since the applicant has not established such a perception in the mind of the relevant public and it does not constitute a well-known fact. 81 Last, it must be observed that, on the assumption that a surname which has no semantic content is not a concept as such and, consequently, it does not follow from the common element ‘[OSCURATO:SOCIETA]’ that there is a conceptual similarity between the signs at issue, the element of conceptual differentiation resulting from the stylised fish has, in any event, an impact which is much too limited to counteract the visual and phonetic similarities between those signs. 82 [OSCURATO:PERSONA] of Appeal did not therefore make an error of assessment in carrying out the conceptual comparison between the signs at issue. The distinctiveness of the earlier trade mark 83 The applicant claims that the [OSCURATO:PERSONA] of Appeal was correct in finding that the intervener had not demonstrated the distinctiveness of the earlier mark and, accordingly, that that aspect cannot be taken into account. 84 [OSCURATO:PERSONA] of Appeal found that the intervener had not demonstrated enhanced distinctiveness through use of the earlier mark and that the inherent distinctiveness of that mark had to be assessed. It found that the earlier mark had no meaning for the goods in question from the perspective of the public throughout the [OSCURATO:PERSONA], and that it was not common, including in its country of origin, Italy. It therefore concluded that the distinctiveness of the earlier mark had to be regarded as normal. 85 In that regard, it must be held that the applicant’s claim that the earlier mark has, in essence, only a low degree of distinctiveness is based on a misreading of the contested decision and manifestly lacks any factual basis. It should be noted that, contrary to the applicant’s interpretation, the [OSCURATO:PERSONA] of Appeal found that enhanced distinctiveness (and not average distinctiveness) had not been demonstrated, and that therefore the distinctiveness had to be regarded as normal, given that the earlier mark had no meaning for the goods in question in the perception of the relevant public in the [OSCURATO:PERSONA] and that it was not widespread, including in Italy. 86 Conversely, it must be observed that the intervener, contrary to its unsubstantiated assertions, did not demonstrate enhanced distinctiveness through use of the earlier mark in the [OSCURATO:PERSONA]. 87 [OSCURATO:PERSONA] of Appeal did not therefore make an error of assessment in finding that the distinctiveness of the earlier mark was normal. The alleged peaceful coexistence of the marks at issue 88 The applicant submits, in essence, that the [OSCURATO:PERSONA] of Appeal erred in rejecting its claim that peaceful coexistence between the marks at issue had been established, meaning that a likelihood of confusion would, in any case, be excluded due to the relevant public’s familiarity with the mark applied for. That familiarity is based on the highly distinctive character of the word ‘[OSCURATO:SOCIETA]’ inside a stylised fish, resulting from its international presence and its long-standing use as a company name in the [OSCURATO:PERSONA] and in third countries, as well as its online presence on the internet and social networks. 89 It should be borne in mind that the peaceful coexistence of the marks at issue may be indicative of the absence of a likelihood of confusion if the public has become familiar with those trade marks to the point of distinguishing their commercial origin despite objective similarities. The absence of a likelihood of confusion may thus be inferred from the peaceful nature of the coexistence of the marks at issue on the market concerned (see, to that effect, judgments of 11 December 2024, [OSCURATO:PERSONA] v EUIPO – [OSCURATO:PERSONA] (blue is underwriting) , T‑447/23, not published, EU:T:2024:894, paragraph 90 and the case-law cited, and of 10 September 2025, EFFAS v EUIPO – CFA Institute (CEFA [OSCURATO:PERSONA]) , T‑592/24, not published, EU:T:2025:851, paragraph 40 and the case-law cited). 90 ‘Honest concurrent use’ may thus, in exceptional circumstances, prevent adverse effects on the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services (see, to that effect, judgment of 22 September 2011, Budějovický Budvar , C‑482/09, EU:C:2011:605, paragraph 84). 91 While the possibility cannot be entirely excluded that, in certain cases, the coexistence of earlier marks on the market could eliminate the likelihood of confusion between two marks at issue, such a possibility can be taken into consideration only if, at the very least, during the proceedings before EUIPO concerning relative grounds for refusal, the applicant for the EU trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 10 September 2025, JSherwood v EUIPO – INA [OSCURATO:PERSONA] (JSherWood wear it with pride) , T‑448/24, not published, EU:T:2025:855, paragraph 24 and the case-law cited). 92 As regards the geographic scope of such coexistence, it is apparent from the case-law that, where the opposition to the registration of an EU trade mark is based on an earlier EU trade mark and the coexistence of that earlier mark with a trade mark identical to the mark applied for is relied on in support of the claim that there is no likelihood of confusion between the marks at issue, it is for the party relying on that coexistence to establish proof of it throughout the [OSCURATO:PERSONA] (see judgments of 3 October 2019, [OSCURATO:PERSONA] and [OSCURATO:PERSONA] v EUIPO – [OSCURATO:PERSONA] ([OSCURATO:PERSONA]) , T‑533/18, not published, EU:T:2019:727, paragraph 59 and the case-law cited, and of 10 March 2021, [OSCURATO:PERSONA] v EUIPO – Ornua (KERRYMAID) , T‑693/19, not published, EU:T:2021:124, paragraph 160 and the case-law cited). 93 [OSCURATO:PERSONA] of Appeal rejected the applicant’s claim that the marks at issue coexist peacefully. [OSCURATO:PERSONA], it recalled that coexistence had to be demonstrated in the territory in which the earlier trade mark is protected and that, where the earlier mark was an EU trade mark, establishing coexistence in a single [OSCURATO:PERSONA] would inevitably be insufficient. In the present case, it noted that the applicant’s arguments and proof of concurrent use of both marks focused mainly on Italy, which meant that coexistence could not rule out a likelihood of confusion in other [OSCURATO:PERSONA]. 94 Second, the [OSCURATO:PERSONA] of Appeal recalled that coexistence had to be based on the absence of a likelihood of confusion, which could require proof of the public’s actual familiarity with each of the marks at issue, before the date of filing of the mark applied for, and of the duration of the coexistence. In the present case, it noted that the use of a sign identical to the mark applied for might have begun in the 1990s, but that there was no evidence that the earlier mark had been used before 2016, that is to say, only five years before the date on which the mark applied for was filed. Moreover, it noted that proof of actual familiarity with both marks by the [OSCURATO:PERSONA] public and, a fortiori, other [OSCURATO:PERSONA] consumers, was missing. It concluded that the applicant had not established that each of the marks at issue enjoyed market recognition on its own, that is, independently of the other, such as to prevent a likelihood of confusion from arising. 95 Those findings must be upheld and are not invalidated by the applicant’s arguments. 96 In the present case, it is sufficient to note that the evidence produced by the applicant relates primarily to Italy and secondarily to certain [OSCURATO:PERSONA], in particular Germany, France, Spain and Belgium, but does not cover the whole territory of the [OSCURATO:PERSONA], or even the majority of the territory of the [OSCURATO:PERSONA]. Therefore, the applicant’s claim relating to the coexistence of the trade marks must be rejected on that ground alone. 97 Furthermore, as held by the [OSCURATO:PERSONA] of Appeal, the evidence submitted by the applicant is not, in any event, suitable for proving that the public actually knows the two marks at issue and that the coexistence between those marks was based on the absence of a likelihood of confusion. That evidence included, for example, an undated photograph of a ‘shopping bag’, some label prints dating back to 2012/2013, and some Instagram posts which neither show those marks nor indicate the location from which those posts were accessed or the target public. It follows that, contrary to what the applicant claims, the evidence which it submitted in the proceedings before EUIPO is not capable of constituting a body of consistent evidence demonstrating that the coexistence was based on the absence of any likelihood of confusion on the part of the relevant public. 98 [OSCURATO:PERSONA] of Appeal did not therefore make an error of assessment in finding that there was no evidence of the peaceful coexistence of the marks at issue throughout the territory of the [OSCURATO:PERSONA]. The global assessment of the likelihood of confusion 99 The applicant submits that, as a consequence of the errors highlighted in its previous complaints and, in particular, of the fact that the [OSCURATO:PERSONA] of Appeal did not take due account of the low level of distinctiveness of the earlier mark, the highly distinctive style of the goods sold under the mark applied for and the history and recognition of that mark, the [OSCURATO:PERSONA] of Appeal incorrectly concluded that there was a likelihood of confusion. It also submits that the intervener has not submitted any evidence of actual confusion as to the origin of the goods, leading the public to attribute them to the same undertaking. 100 According to settled case-law, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (see judgment of 5 March 2020, Foundation for the Protection of the [OSCURATO:PERSONA] of Cyprus named Halloumi v EUIPO , C‑766/18 P, EU:C:2020:170, paragraph 69 and the case-law cited; see also, by analogy, judgment of 29 September 1998, Canon , C‑39/97, EU:C:1998:442, paragraph 17). 101 Moreover, since the particular circumstances in which the goods covered by the marks are marketed may vary over time and depend on the wishes of the proprietors of those marks, the prospective analysis of the likelihood of confusion between two marks cannot be dependent on the marketing intentions of the proprietors of the marks, whether implemented or not, which are by their very nature subjective (see, to that effect, judgment of 25 September 2018, Grendene v EUIPO – Hipanema (HIPANEMA) , T‑435/17, not published, EU:T:2018:596, paragraph 36 and the case-law cited). 102 [OSCURATO:PERSONA] of Appeal observed that the goods under comparison were identical or similar to an average degree and that the signs at issue were visually similar to a below-average degree and phonetically similar to an average degree. It noted that the similarity between the signs resulted mainly from the partial identity of the ‘codominant’ word element of the mark applied for and the most distinctive element of the earlier mark. It found that the differences between the signs, including the conceptual differences, namely the presence of the first name ‘[OSCURATO:PERSONA]’ in the earlier mark, the different stylisation of the graphic elements of the signs and the stylised fish in the mark applied for, although not negligible, were not sufficient to counteract the visual and phonetic similarities and avoid a likelihood of confusion, particularly in view of the way in which those goods, which were generally perceived visually, were marketed. It also rejected the applicant’s argument relating to the difference in price and quality of the parties’ respective goods as ineffective in the context of the ‘prospective’ analysis of the likelihood of confusion. 103 In that regard, it must be held that the [OSCURATO:PERSONA] of Appeal was correct to conclude, in essence, that, having regard to the principle of interdependence and, specifically, to the normal degree of distinctiveness of the earlier mark, the average level of attention and imperfect recollection of the relevant public, the identity or similarity of the goods at issue, the below-average degree of visual similarity, the average degree of phonetic similarity and the fact that the element of conceptual differentiation resulting from the stylised fish had an impact which was much too limited to counteract those visual and phonetic similarities between the signs at issue (see paragraphs 79 and 81 above), the existence of a likelihood of confusion, within the meaning of [OSCURATO:PERSONA] 8(1)(b) of Regulation 2017/1001, cannot be ruled out throughout the [OSCURATO:PERSONA]. The relevant public could be misled into thinking that the goods covered by the marks at issue come from the same undertaking or from economically linked undertakings. 104 That finding is not invalidated by the applicant’s arguments. 105 At the outset, it should be noted that the complaint raised against the global assessment of the likelihood of confusion in the contested decision is based essentially on the alleged errors relied on by the applicant in its previous complaints, which have already been rejected in paragraphs 30 to 98 above. 106 Furthermore, as regards the applicant’s reliance on the history and recognition of the mark applied for, it is sufficient to recall that that information has no bearing on the criteria for assessing the likelihood of confusion and is irrelevant for the purpose of determining whether there is a likelihood of confusion between the signs at issue (see, to that effect, judgment of 14 May 2025, [OSCURATO:PERSONA] , T‑418/24, not published, EU:T:2025:491, paragraph 90). 107 Last, in so far as the applicant claims that the intervener has not submitted any evidence of actual confusion as to the commercial origin of the goods, leading the public to attribute them to the same undertaking, it is sufficient to note that under [OSCURATO:PERSONA] 8(1)(b) of Regulation 2017/1001, it is not necessary to establish the existence of actual confusion, but the existence of a likelihood of confusion (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion ([OSCURATO:PERSONA]) , T‑346/04, EU:T:2005:420, paragraph 69). 108 Accordingly, the [OSCURATO:PERSONA] of Appeal did not make an error of assessment in finding that there was a likelihood of confusion in the present case. 109 The first plea must therefore be rejected. The second plea, alleging infringement of [OSCURATO:PERSONA] 61 of Regulation 2017/1001 110 By the second plea, formally alleging ‘infringement and misapplication of [OSCURATO:PERSONA] 8(1)(b) of Regulation 2017/1001’ and ‘the [intervener’s] lack of standing to bring opposition proceedings for having knowingly acquiesced in the use of the mark for more than five years’, that is to say, in essence, infringement of [OSCURATO:PERSONA] 61 of that regulation, the applicant claims that the intervener did not have standing to file the notice of opposition because, just as its predecessor in title [OSCURATO:SOCIETA] had done before 2016, it had acquiesced in the use of the mark applied for. 111 EUIPO and the intervener dispute the applicant’s arguments. 112 As a preliminary point, it must be stated that the [OSCURATO:PERSONA] of Appeal, without expressly rejecting the claim of limitation in consequence of acquiescence on the part of the applicant, did not call into question the intervener’s capacity as an opponent before the adjudicating bodies of EUIPO. 113 It should be recalled that, in accordance with [OSCURATO:PERSONA] 61 of Regulation 2017/1001, where the proprietor of an EU trade mark has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the [OSCURATO:PERSONA] while being aware of such use, he or she is no longer to be entitled on the basis of the earlier trade mark to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith. 114 [OSCURATO:PERSONA] of all, it must be observed, as EUIPO did, that [OSCURATO:PERSONA] 61(1) of Regulation 2017/1001 concerns the use of a later ‘EU trade mark’ – which is obtained exclusively by its registration under [OSCURATO:PERSONA] 1(1) of that regulation – and, consequently, does not apply to EU trade mark applications (see, to that effect and by analogy, judgment of 22 September 2011, Budějovický Budvar , C‑482/09, EU:C:2011:605, paragraph 54). Accordingly, limitation in consequence of acquiescence can be relied on only to preclude an application for a declaration of invalidity of a registered trade mark and is therefore unenforceable in opposition proceedings against a trade mark application, such as in the present case. 115 In that regard, it must be stated that limitation in consequence of acquiescence, applicable under EU law in invalidity proceedings, is a concept which differs from that of peaceful coexistence, which is applicable in opposition proceedings, given that, in order to establish such coexistence, it is necessary to prove, inter alia, that there is no likelihood of confusion (see paragraph 89 above). 116 Furthermore, in so far as the applicant also relies on [OSCURATO:PERSONA] 28 of the [OSCURATO:PERSONA], it is sufficient to observe that neither [OSCURATO:PERSONA] 61 of Regulation 2017/1001 nor any other provision of that regulation makes that provision of national law applicable to the EU trade marks at issue in the present dispute. 117 The second plea must therefore be rejected. 118 In the light of all the foregoing, the action must be dismissed in its entirety. Costs 119 [OSCURATO:PERSONA] 134(1) of the Rules of Procedure of the [OSCURATO:PERSONA], the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 120 In the present case, since the applicant has been unsuccessful and a hearing has been convened, it must be ordered to pay the costs incurred by EUIPO, in accordance with the form of order sought by EUIPO. 121 Since the intervener has not applied for costs, it is to bear its own costs. On those grounds, [OSCURATO:PERSONA] ([OSCURATO:PERSONA]), hereby: 1. Dismisses the action; 2. [OSCURATO:SOCIETA] to bear its own costs and to pay those incurred by the [OSCURATO:PERSONA] (EUIPO); 3. Declares that Paraggi GmbH is to bear its own costs. [OSCURATO:PERSONA][OSCURATO:PERSONA] in open court in [OSCURATO:PERSONA] on 16 September 2026. V. [OSCURATO:PERSONA] S. [OSCURATO:PERSONA] * Language of the case: English.