Judgment of the General Court (Ninth Chamber, sitting with five Judges) 30 September 2026

JUDGMENT OF THE GENERAL COURT (Ninth Chamber, sitting with five Judges)

30 September 2026 ( * )

( EU trade mark – Opposition proceedings – Application for EU figurative mark Jules Gents – Earlier United Kingdom word marks and international registration of the earlier word mark JOULES – Earlier EU figurative mark Joules – Agreement on the withdrawal of the United Kingdom from the European Union and from Euratom – Transition period – Expiry – Circumstances prior to the adoption of the decision at issue – Relevant moment for assessing the existence of an earlier mark – Relative grounds for refusal – No likelihood of confusion – Article 8(1)(b) and Article 8(5) of Regulation (EC) No 207/2009 – Lack of highly distinctive character of the earlier marks )

In Case T‑294/21,

Joules Ltd, established in Market Harborough (United Kingdom), represented by P. Martini-Berthon, lawyer,

applicant,

v

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

defendant,

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

Star Gold GmbH, established in Pforzheim (Germany),

THE GENERAL COURT (Ninth Chamber, sitting with five Judges),

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

Registrar: G. Mitrev, Administrator,

having regard to the written part of the procedure, in particular:

the decision of the General Court of 7 February 2023 taken pursuant to Article 69(d) of the Rules of Procedure of the General Court and after hearing the parties, to stay the proceedings pending the decision closing the proceedings in the case which gave rise to the judgment of 5 February 2026, EUIPO v Nowhere (C‑337/22 P, EU:C:2026:71),

the observations of EUIPO, lodged at the Registry of the General Court on 23 February 2026, on the conclusions to be drawn from the judgment of 5 February 2026, EUIPO v Nowhere (C‑337/22 P, EU:C:2026:71), for the present case,

further to the hearing on 12 September 2022,

having regard, following the cessation of Judge Frimodt Nielsen’s duties on 15 September 2023, to Article 22 and Article 24(1) of the Rules of Procedure, and to the parties’ failure to define their position on the organisation of a new hearing,

gives the following

Judgment

1 By its action based on Article 263 TFEU, the applicant, Joules Ltd, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 15 March 2021 (Case R 1123/2018‑1) (‘the contested decision’).

I. Background to the dispute

2 On 3 August 2016, Star Gold GmbH filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:

3 Following the restriction made in the course of the proceedings before EUIPO, the mark applied for covered goods in, inter alia, Class 14 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Jewellery; chronoscopes, cases for watches and clocks’.

4 On 29 November 2016, 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, in particular, on the following earlier marks:

– the United Kingdom word mark JOULES (‘earlier United Kingdom trade mark No 1’), filed on 17 September 2009 and registered on 19 March 2010 under No 2 526 463, covering, inter alia, goods in Class 14 corresponding to the following description: ‘Precious metals and their alloys and goods in precious metals or coated therewith; precious and semi-precious stones; chorological and chronometric instruments; watches and clocks; jewellery; cufflinks, tie pins, key rings, trinkets’;

– the United Kingdom word mark JOULES, filed on 8 December 2004 and registered on 18 November 2005 under No 2 379 939, covering goods and services in Classes 18, 25 and 35;

– the international registration designating the European Union No 876 494 for the word mark JOULES (‘the earlier international registration’), filed and registered on 6 December 2005, covering goods and services in Classes 18, 25 and 35 corresponding to the following descriptions:

– Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; hat boxes of leather or imitation leather; belts; trunks and travelbags; umbrellas, parasols and walking sticks; bags; backpacks; briefcases; game bags; garment bags; handbags; key cases; purses; rucksacks; school bags; walking stick seats; walking sticks’;

– Class 25: ‘Clothing, footwear and headgear; hats and hat frames; caps; outerclothing and overcoats; swimwear; underwear’;

– Class 35: ‘The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail clothing, footwear, headgear and accessories store; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from a clothing, footwear, headgear and accessories catalogue by mail order or by means of telecommunications’.

– the EU figurative mark reproduced below (‘the earlier EU trade mark’), filed on 14 December 2015 and registered on 24 June 2016 under No 14 902 787, covering, inter alia, goods and services in Class 14 corresponding to the following description: ‘Precious metals and their alloys and goods in precious metals or coated therewith; precious and semi precious stones; horological and chronometric instruments; watches and clocks; jewellery; cufflinks, tie pins, key rings, trinkets’:

6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

7 On 16 April 2018, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009. It found that there was a likelihood of confusion between earlier United Kingdom trade mark No 1 and the mark applied for.

8 On 15 June 2018, Star Gold filed a notice of appeal with EUIPO against the Opposition Division’s decision.

9 On 27 May 2019, Star Gold requested the suspension of the proceedings pending the United Kingdom of Great Britain and Northern Ireland’s withdrawal from the European Union.

10 On 1 July 2019, the applicant submitted its observations on that application.

11 By communication of 18 July 2019, the Rapporteur of the Board of Appeal invited the applicant and Star Gold to submit their observations on a number of questions concerning the impact of the United Kingdom’s withdrawal from the European Union on the proceedings.

12 On 17 September 2019, the applicant submitted its observations in response to the Rapporteur’s communication.

13 By the contested decision of 15 March 2021, the Board of Appeal upheld the appeal and rejected the opposition.

14 In the first place, the Board of Appeal found, in essence, that, in the light of the United Kingdom’s withdrawal from the European Union and the expiry, on 31 December 2020, of the transition period (‘the transition period’) provided for in Articles 126 and 127 of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (OJ 2020 L 29, p. 7; ‘the Withdrawal Agreement’), the earlier United Kingdom trade marks no longer enjoyed the status of trade marks registered in a Member State within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009 at the date of the contested decision, with the result that they could no longer be taken into consideration in the examination of the opposition.

15 In the second place, the Board of Appeal considered that it was competent under Article 71(1) 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) to continue the examination of the opposition on the basis of the earlier international registration and the earlier EU trade mark, which enjoyed the status of registered trade marks.

16 In the third place, the Board of Appeal examined the ground of opposition based on Article 8(1)(b) of Regulation 2017/1001 and rejected it, finding that there was no likelihood of confusion on the part of the relevant public.

17 In the fourth place, the Board of Appeal examined the ground of opposition based on Article 8(5) of Regulation 2017/1001. In that regard, it found in essence that, in so far as the relevant evidence submitted by the applicant in order to establish the reputation of the earlier marks was limited to the territory of the United Kingdom, it could not be taken into consideration. Therefore, the Board of Appeal also rejected the opposition in so far as it was based on that ground.

II. Forms of order sought

18 The applicant claims that the Court should:

– annul the contested decision;

– order EUIPO to pay the costs, including those incurred before the Board of Appeal.

19 At the hearing, the applicant clarified the fact that it claimed that not only should the contested decision be annulled, but that the judgment of the General Court should also be substituted for the contested decision, which was recorded in the minutes of the hearing.

20 EUIPO contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

III. Law

21 As a preliminary point, it must be noted that, given the date on which the application for registration at issue was filed, namely 3 August 2016, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM , C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO , C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

22 Consequently, in the present case, in so far as concerns the substantive rules, the references to Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the parties in their pleadings must be understood as referring to the same provisions of Regulation No 207/2009, the wording of which is substantively identical.

23 Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain , C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.

24 In support of its action, the applicant relies, in essence, on four pleas in law, alleging, first, infringement of Article 71(1) of Regulation 2017/1001 and Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms, signed at Rome on 4 November 1950 (ECHR), secondly, infringement of Article 71(1) and Article 95(1) of Regulation 2017/1001, Article 27(2) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1) and Article 6 ECHR, thirdly, infringement of Article 8(1)(b) of Regulation No 207/2009 and, fourthly, infringement of Article 8(5) of Regulation No 207/2009.

A. The first plea in law, alleging infringement of Article 71(1) of Regulation 2017/1001 and of Article 6 ECHR

25 In order to reject the application for registration of the mark applied for, the Opposition Division concluded that there was a likelihood of confusion between the mark applied for and earlier United Kingdom trade mark No 1, and found that there was no need to examine the other earlier rights relied on by the applicant in support of the opposition.

26 However, the Board of Appeal found that, since the earlier United Kingdom trade marks no longer enjoyed the status of trade marks registered in a Member State within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009 at the date of the contested decision, they could no longer be taken into consideration in the examination of the opposition. In that context, the Board of Appeal observed that, in view of the United Kingdom’s withdrawal from the European Union and the expiry, on 31 December 2020, of the transition period, EU law, and therefore Regulation No 207/2009, had ceased to apply to and in the United Kingdom. Furthermore, it added that, under Article 71(1) of Regulation 2017/1001, through the effect of the appeal brought before it, it was called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact. In those circumstances, the earlier right relied on in support of the opposition must not only be valid on the date on which the opposition is filed, but it must still be valid on the date on which the Board of Appeal rules on that opposition.

27 The applicant submits, in essence, that the Board of Appeal erred in law in holding that, after the United Kingdom’s withdrawal from the European Union, the earlier United Kingdom trade marks relied on in support of the opposition could no longer be taken into consideration in the examination of the opposition. The relevant date for the purposes of assessing whether there is a relative ground of opposition is the date on which the application for registration of the mark applied for was filed. Consequently, the fact that the earlier mark lost the status of a trade mark registered in a Member State, in particular because of the United Kingdom’s withdrawal in accordance with Article 50 TEU, after that date has no bearing on the examination of the opposition. In the present case, on the date on which the application for registration of the mark applied for was filed, the earlier United Kingdom trade marks relied on in support of the opposition were still valid and enforceable in the European Union and constituted ‘earlier marks’ within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009. At the hearing, the applicant submitted, in essence, that the position adopted by the Board of Appeal was contrary to the principle of legal certainty. According to the applicant, the assessment of the existence of relative grounds for opposition must be carried out only on that specific date and cannot, contrary to the position of the Board of Appeal in the contested decision, be carried out on the date the Board of Appeal’s decision is taken.

28 The applicant submits, in any event, that it retains an interest in preventing the registration of the mark applied for, in so far as, first, the earlier United Kingdom trade marks enjoyed a certain period of protection in the territory of the European Union and, secondly, they continue to be used in the territory of the European Union.

29 Alternatively, the applicant asserts that the Board of Appeal should have issued a communication, pursuant to Article 70(2) of Regulation 2017/1001, to request the parties to submit their observations on the judgments which it applied, namely the judgments of 30 January 2020, Grupo Textil Brownie v EUIPO – The Guide Association (BROWNIE) (T‑598/18, EU:T:2020:22), and of 23 September 2020, Bauer Radio v EUIPO – Weinstein (MUSIKISS) (T‑421/18, EU:T:2020:433). At the hearing, it stated, in response to a question from the Court, that that argument was to be interpreted as an infringement of its right to be heard.

30 EUIPO disputes the applicant’s arguments.

31 As a preliminary point, it should be noted that, under Article 50(3) TEU, the Treaties ceased to apply to the United Kingdom on the date on which the Withdrawal Agreement entered into force on 1 February 2020, so that that State is no longer, as from that date, a Member State (see judgment of 9 June 2022, Préfet du Gers and Institut national de la statistique et des études économiques , C‑673/20, EU:C:2022:449, paragraph 55 and the case-law cited). However, the fourth recital in the preamble to that agreement states that the law of the European Union in its entirety ceases to apply to the United Kingdom from the date of entry into force of that agreement ‘subject to the arrangements laid down’ therein. Article 126 and the first sentence of Article 127(1) of that agreement state that unless otherwise provided, EU law would continue be applicable to and in the United Kingdom during a transition period starting on the date of entry into force of that agreement and ending on 31 December 2020.

32 It should be noted that Articles 54 to 61 of the Withdrawal Agreement, which appear in Title IV, entitled ‘Intellectual Property’, of Part Three thereof, and which are applicable from the end of the transition period, in accordance with the fourth paragraph of Article 185 of that agreement, do not state what treatment is to be given to an opposition brought before the date of entry into force of that agreement, on the basis of an earlier right protected in the United Kingdom, and which is pending at the end of that period.

33 Furthermore, it should be observed that Regulation No 207/2009 does not specify the relevant date to be taken into account when assessing the existence of relative grounds for opposition. Article 8(1)(b) and Article 8(5) of that regulation provide only that, upon opposition by the proprietor of an earlier trade mark, ‘the trade mark applied for shall not be registered …’.

34 However, in the first place, it should be observed that, first, Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 are drafted in the present tense. It therefore follows from the wording of those provisions that, in order for the opposition to be upheld, the earlier mark must be valid until the date on which a decision is taken as to whether ‘the trade mark applied for shall not be registered’ (see, to that effect and by analogy, judgment of 5 February 2026, EUIPO v Nowhere , C‑337/22 P, EU:C:2026:71, paragraphs 105 to 107).

35 Secondly, that interpretation is supported by the context of which Article 8(1)(b) and Article 8(5) of Regulation No 207/2009 form part.

36 In particular, it follows from the wording of Article 8(4) of Regulation No 207/2009, which forms part of the context of the abovementioned provisions, that the acquisition of the earlier right relied on in support of an opposition based on that provision must be assessed in the light of the date of filing of the application for the EU trade mark concerned or, as the case may be, the priority date, and that it is necessary, in order for that opposition to be upheld, that that earlier right confer on its proprietor the ‘right to prohibit the use of a subsequent trade mark’ under the legislation of a Member State or that of the European Union, not only on that date, but also at the later date on which that opposition was filed and until the date on which a decision is taken as to whether ‘the trade mark applied for shall not be registered’ (see, to that effect, judgment of 5 February 2026, EUIPO v Nowhere , C‑337/22 P, EU:C:2026:71, paragraph 107).

37 Thirdly, that interpretation is borne out by the objectives of the opposition proceedings.

38 In that regard, it should be noted that the exclusive right conferred by those regulations on the proprietor of the EU trade mark belongs to the person who first registered or acquired the trade mark concerned. In that regard, as is apparent from Article 46 of Regulation No 207/2009, it is the date of filing of the application for registration relating to that mark or, as the case may be, the date of the priority claimed for that application that is decisive. In the event of a conflict between two marks, the mark acquired or registered first is presumed to have satisfied the conditions required for protection before the EU trade mark registered second (see judgment of 5 February 2026, EUIPO v Nowhere , C‑337/22 P, EU:C:2026:71, paragraph 115 and the case-law cited).

39 From that point of view, opposition proceedings, which are among the mechanisms for prior review available in the context of the procedure for registration of EU trade marks, serve the purpose of preventing the registration of EU trade marks liable to conflict with other marks or other signs used in the course of trade by enabling the proprietor of an earlier mark to prevent a sign that is liable to infringe that mark from being registered, without prejudice to the right of that proprietor, under Regulation No 207/2009, to bring infringement proceedings on account of the use of a subsequent mark or an application for a declaration of invalidity in respect of that mark, once it has been registered (see judgment of 5 February 2026, EUIPO v Nowhere , C‑337/22 P, EU:C:2026:71, paragraph 116 and the case-law cited).

40 Furthermore, the general objective of Regulation No 207/2009 is to strike a balance between, first, the interests of the proprietor of a trade mark in preserving the essential function of that mark, which is to guarantee the identity of the origin of the goods or services for which it is registered for the consumer or end user by enabling him or her, without any possibility of confusion, to distinguish those goods or services from others which have another origin, and, secondly, the interests of other economic operators in having signs capable of designating their goods and services (see judgment of 5 February 2026, EUIPO v Nowhere , C‑337/22 P, EU:C:2026:71, paragraph 117 and the case-law cited).

41 In order that a trade mark may achieve its essential function, Regulation No 207/2009 confers on the proprietor of that mark a set of rights, while limiting them to what is strictly necessary for the performance of that function (see, to that effect, judgment of 5 February 2026, EUIPO v Nowhere , C‑337/22 P, EU:C:2026:71, paragraph 118).

42 Thus, in a situation in which the earlier mark no longer enjoys protection in the relevant territory on a date subsequent to that of the filing of the application for registration of the EU trade mark, the essential function of that mark can no longer be compromised by the registration of the EU trade mark, since such an earlier mark is no longer capable of fulfilling that essential function (see, to that effect, judgment of 5 February 2026, EUIPO v Nowhere , C‑337/22 P, EU:C:2026:71, paragraph 121).

43 It follows from the foregoing that the existence of a relative ground for refusal relied on in support of an opposition to the registration of an EU trade mark must be assessed not only as at the date of filing of the application for that registration, but also on the date on which EUIPO gives a final decision on the opposition (see, to that effect, judgment of 5 February 2026, EUIPO v Nowhere , C‑337/22 P, EU:C:2026:71, paragraphs 101 and 122).

44 In the second place, as from the end of the transition period, referred to in paragraph 31 above, a trade mark registered in the United Kingdom, relied on in support of an opposition, no longer constitutes a trade mark protected by the law of a Member State. In that regard, it should be borne in mind that, in accordance with the principle of territoriality, recalled in recitals 2 to 4 of Regulation No 207/2009 and applied to the EU trade mark in the second sentence of Article 1(2) of that regulation, the legal effects of a trade mark are limited to the territory in which it is protected. Thus, in accordance with that principle, for the purpose of applying Article 8(1)(b) and Article 8(5) of that regulation, it is only in the territory in which the sign concerned is protected that the applicable law confers on that sign exclusive rights that may enter into conflict with an EU trade mark (see, to that effect and by analogy, judgment of 5 February 2026, EUIPO v Nowhere , C‑337/22 P, EU:C:2026:71, paragraph 160).

45 It does not follow from the Withdrawal Agreement that the parties to that agreement established a derogation from the principle of territoriality (see judgment of 5 February 2026, EUIPO v Nowhere , C‑337/22 P, EU:C:2026:71, paragraph 161).

46 There can be thus no conflict between earlier trade marks that are protected in the United Kingdom and an EU trade mark, in the event that the latter is registered after the date of expiry of the transition period, given that the latter mark will, in that case, have effect in a territory other than that in which those earlier trade marks are protected (see judgment of 5 February 2026, EUIPO v Nowhere , C‑337/22 P, EU:C:2026:71, paragraph 162).

47 In the present case, it must be stated that, on the date of the contested decision, the earlier United Kingdom trade marks relied on by the applicant in support of its opposition no longer enjoyed the status of trade marks registered in a Member State within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009, on account of the transition period having ended.

48 The Board of Appeal was therefore right to take into consideration, in the contested decision, the fact that the earlier United Kingdom trade marks relied on by the applicant in support of the opposition no longer enjoyed the status of trade marks registered in a Member State within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009 and, therefore, could no longer form the basis of the opposition.

49 The applicant’s arguments are not such as to cast doubt on that finding.

50 First, the applicant’s argument, put forward at the hearing, that the position adopted by the Board of Appeal is contrary to the principle of legal certainty cannot succeed, since the existence of relative grounds for opposition must be assessed on a specific date, namely that of the filing of the application for registration, and cannot vary.

51 In that regard, it should be recalled that, according to settled case-law, the principle of legal certainty requires that legal rules be clear and precise, and aims to ensure that situations and legal relationships governed by EU law remain foreseeable (see judgment of 15 September 2005, Ireland v Commission , C‑199/03, EU:C:2005:548, paragraph 69 and the case-law cited).

52 It should nevertheless be noted that the principle of legal certainty must be reconciled with the obligation incumbent on the Boards of Appeal to ensure a correct application of Regulation No 207/2009. In that context, it does not in any way preclude the Boards of Appeal from taking into consideration matters of law which relate to the withdrawal of a Member State from the European Union which occurred after the date of filing of the application for registration of the mark, but before the adoption of EUIPO’s final decision, and which are capable of affecting the status of the earlier mark, relied on in support of the opposition, as a trade mark registered in a Member State within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009. In the light of the considerations set out in paragraphs 34 to 43 above, the date on which the decision of the Board of Appeal is adopted constitutes an objective and relevant temporal factor for the taking into account of new matters arising during the proceedings, which offers opponents adequate protection against arbitrariness as regards the exercise of the powers of the Board of Appeal.

53 Furthermore, the applicant was able to foresee, to a degree that is reasonable in the circumstances of the present case, having regard to the judgments of 13 September 2006, MIP Metro v OHIM – Tesco Stores (METRO) (T‑191/04, EU:T:2006:254), and of 14 February 2019, Beko v EUIPO – Acer (ALTUS) (T‑162/18, not published, EU:T:2019:87), referred to during the administrative procedure, that, following the United Kingdom’s withdrawal from the European Union, the fact that the earlier United Kingdom trade marks lost the status of trade marks registered in a Member State, within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009, was a legal factor which could be taken into consideration by the Board of Appeal.

54 In addition, by the communication of 18 July 2019, the applicant was invited to comment on whether the circumstances of the case were comparable to a situation in which an earlier mark loses its validity during the proceedings.

55 Accordingly, in the present case, the applicant cannot rely on a lack of foreseeability as regards the position adopted by the Board of Appeal on the earlier United Kingdom trade marks after the effective withdrawal of the United Kingdom from the European Union.

56 Secondly, as regards the applicant’s argument, put forward in the alternative, that the Board of Appeal, by failing to issue, in accordance with Article 70(2) of Regulation 2017/1001, a further communication asking the parties for their observations on the effects of the judgments of 30 January 2020, BROWNIE (T‑598/18, EU:T:2020:22), and of 23 September 2020, MUSIKISS (T‑421/18, EU:T:2020:433), infringed the applicant’s right to be heard, it should be borne in mind that, in accordance with the second sentence of Article 94(1) of Regulation 2017/1001, decisions of EUIPO are to be based only on reasons on which the parties concerned have had an opportunity to present their comments. In accordance with Article 70(2) of that regulation, in the examination of the appeal, the Board of Appeal is to invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself. Those provisions lay down the general principle of protection of the rights of defence. That principle includes the right to be heard, which is set out in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union (see, to that effect, judgments of 7 September 2017, VM v EUIPO – DAT Vermögensmanagement (Vermögensmanufaktur) , T‑374/15, EU:T:2017:589, paragraphs 119 and 120 (not published) and the case-law cited, and of 20 March 2019, Prim v EUIPO – Primed Halberstadt Medizintechnik (PRIMED) , T‑138/17, not published, EU:T:2019:174, paragraphs 24 and 25), and extends to all the factual and legal material which forms the basis for the decision, but not to the final position which the authority intends to adopt (order of 8 September 2015, DTL Corporación v OHIM , C‑62/15 P, not published, EU:C:2015:568, paragraph 45).

57 In the present case, it should be noted that, as stated in paragraph 54 above, the Board of Appeal invited the applicant, by the communication of 18 July 2019, on the one hand, to submit its observations on the question whether the fact that the earlier marks registered in the United Kingdom lost the status of trade marks registered in a Member State within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009 was comparable to a situation in which the earlier marks lose their validity during the proceedings and, on the other hand, to comment on the judgment of 14 February 2019, ALTUS (T‑162/18, not published, EU:T:2019:87), according to which, in essence, the earlier mark relied on in support of the opposition must be valid not only at the time of filing of the application for an EU trade mark against which a notice of opposition has been filed, but also at the time that EUIPO gives a decision on the opposition. Thus, the applicant was given the opportunity, including in response to the communication of 18 July 2019, to comment on all the matters of law and of fact which form the basis of the part of the contested decision concerning the earlier United Kingdom trade marks relied on in support of the opposition. As to the remainder, the Board of Appeal cannot be criticised for having breached the applicant’s right to be heard with regard to matters which do not form part of the statement of reasons for the contested decision. The applicant’s argument alleging a breach of its right to be heard must therefore be rejected.

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

B. The second plea in law, alleging infringement of Article 71(1) and Article 95(1) of Regulation 2017/1001, Article 27(2) of Delegated Regulation 2018/625 and Article 6 ECHR

59 The Board of Appeal found that it was competent to examine the case by exercising the powers of the Opposition Division on the basis of Article 71(1) of Regulation 2017/1001. In order to reach that conclusion, it analysed the relevant case-law and several provisions, such as Article 27 of Delegated Regulation 2018/625 and Articles 68, 70, 71, 73 and 95 of Regulation 2017/1001.

60 The applicant considers that the Board of Appeal made an error of assessment in deciding to exercise, contrary to Article 71(1) and Article 95(1) of Regulation 2017/1001, the powers of the Opposition Division. It submits that, in the light of the circumstances of the present case, the case should have been remitted to the Opposition Division. It claims that, by deciding not to remit the case to the Opposition Division, the Board of Appeal deprived it, first, of the opportunity to submit written observations on the earlier rights enjoying protection in the territory of the European Union and, therefore, deprived it of its right to be heard under Article 6 ECHR and, secondly, of one instance.

61 EUIPO disputes the applicant’s arguments.

62 In that regard, it should be borne in mind that, according to Article 71(1) of Regulation 2017/1001, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

63 First of all, it follows from Article 71(1) and from the scheme of Regulation 2017/1001 that, in ruling on an appeal, the Board of Appeal has the same powers as the department which was responsible for the decision appealed and that its examination concerns the dispute as a whole as it stands on the date of its ruling. Next, it is also apparent from that provision, as well as from settled case-law, that there is continuity in terms of their functions between the different units of EUIPO, namely the examiner, the Opposition Division, the division responsible for the administration of trade marks and legal issues and the Cancellation Divisions on the one hand, and the Boards of Appeal on the other. It follows from that continuity that, in the context of the review of the decisions taken by the EUIPO units which heard the application at first instance, the Boards of Appeal are required to base their decisions on all the matters of fact and of law which the parties put forward, either in the proceedings before the department which heard the application at first instance or in the appeal. Lastly, it must be held that it is apparent from the use of the verb ‘may’ in Article 71(1) of Regulation 2017/1001 that the Board of Appeal of EUIPO has a broad discretion for the purposes of ‘either exercis[ing] any power within the competence of the department which was responsible for the decision appealed or remit[ting] the case to that department for further prosecution’ (judgment of 2 April 2025, Giuliani v EUIPO – H&H (Swisse) , T‑442/23, not published, EU:T:2025:354, paragraph 60 and the case-law cited).

64 Furthermore, the fact that the Board of Appeal has broad discretion to exercise any power within the competence of the department which was responsible for the decision appealed or to remit the case to that department for further prosecution does not mean that its assessment falls outside the scope of judicial review by the Courts of the European Union. That fact does, however, restrict judicial review on the merits to ensuring that there is no manifest error of assessment or misuse of powers (see, by analogy, judgment of 4 May 2022, PricewaterhouseCoopers Belastingadviseurs v EUIPO – Haufe-Lexware (TAXMARC) , T‑619/21, not published, EU:T:2022:270, paragraph 25 and the case-law cited).

65 In the present case, the Board of Appeal decided to exercise the powers of the Opposition Division. After a thorough analysis of Article 71(1) of Regulation 2017/1001, in the interests of procedural economy and taking into account the consequences which the United Kingdom’s withdrawal from the European Union had for the earlier marks registered in that country, it considered it appropriate, in paragraph 163 of the contested decision, not to remit the case to the Opposition Division but to decide on all the earlier rights which were not registered only in the United Kingdom, namely the earlier EU trade mark and the earlier international registration. It justified that decision on the ground that the Opposition Division had carried out the same exhaustive examination of all the earlier rights, that it had placed the focus on the United Kingdom and that the applicant had put forward specific arguments about the earlier rights other than that on which the decision of the Opposition Division was based.

66 The Board of Appeal thus exercised its broad discretion under Article 71(1) of Regulation 2017/1001, in particular its discretion as to remit the case to the first instance.

67 Contrary to what the applicant claims, it cannot be held that, in so doing, the Board of Appeal made a manifest error of assessment. The applicant does not dispute, as is apparent, in essence, from paragraphs 9 and 166 of the contested decision, that during the exchanges of views on the impact of the United Kingdom’s withdrawal from the European Union, referred to in paragraphs 8 to 12 above, the applicant stated that the opposition should also be upheld on the basis of the other earlier rights. In particular, it is apparent from the documents before the Court that, in that context, the applicant stated that the earlier EU trade mark covered goods which were identical or highly similar to those covered by earlier United Kingdom trade mark No 1 and that, like earlier United Kingdom trade mark No 1, the earlier EU trade mark was phonetically and conceptually similar to a high degree and visually similar to an average degree to the mark applied for. Thus, the applicant put forward to the Board of Appeal specific arguments concerning the earlier rights other than earlier United Kingdom trade mark No 1 on which the decision of the Opposition Division was based. In the light of that factual and procedural context, the Board of Appeal cannot be criticised for not remitting the case to the Opposition Division.

68 The applicant’s other arguments are not such as to call that conclusion into question.

69 As regards the applicant’s argument that the Board of Appeal breached its right to be heard, it must be borne in mind that, according to the case-law, the Board of Appeal is not required to ask the parties for their observations on the existence of a likelihood of confusion between the mark applied for and one of the earlier marks if, as in the present case, the Board of Appeal bases its assessment of the likelihood of confusion on an earlier mark which the Opposition Division did not take into account but which was relied upon in support of that opposition (see, to that effect, judgment of 15 January 2013, Lidl Stiftung v OHIM – Lactimilk (BELLRAM) , T‑237/11, EU:T:2013:11, paragraph 27).

70 As regards the applicant’s argument that the Board of Appeal deprived it of the opportunity to submit additional observations with regard to the earlier EU trade mark and the earlier international registration, it must be observed that the applicant had a genuine opportunity to submit its observations on them before the Opposition Division. Furthermore, it could put forward, in its observations before the Board of Appeal, any additional argument which it considered relevant in that regard, and it was not necessary for it to be specifically invited to do so by the Board of Appeal (judgment of 4 March 2020, Tulliallan Burlington v EUIPO , C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 97).

71 In any event, as stated in paragraph 67 above and accepted by the applicant, the issue of the earlier EU trade mark and the earlier international registration was addressed during the exchanges of views on the impact of the United Kingdom’s withdrawal from the European Union.

72 Consequently, the applicant cannot claim to have been deprived of the opportunity to submit additional observations concerning the use of the earlier marks in the territory of the European Union.

73 As regards the applicant’s argument alleging infringement of Article 6 ECHR, it should be borne in mind that the Court has precluded the possibility of relying on a right to a fair ‘hearing’, enshrined in that article, before the Boards of Appeal of EUIPO, since proceedings before them are administrative and not judicial in nature (see judgment of 11 July 2013, Metropolis Inmobiliarias y Restauraciones v OHIM – MIP Metro (METRO) , T‑197/12, not published, EU:T:2013:375, paragraph 54 and the case-law cited).

74 Therefore, it must be held that the applicant has not established that the Board of Appeal made a manifest error of assessment in the exercise of its discretion under Article 71(1) of Regulation 2017/1001.

75 In the light of all of the foregoing, the second plea must be rejected as unfounded.

C. The third plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009

76 In the context of the third plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the applicant submits, in essence, that the Board of Appeal made several errors in the assessment of the likelihood of confusion on the part of the relevant public between the mark applied for and the earlier EU trade mark and the earlier international registration.

77 EUIPO disputes the applicant’s arguments.

78 In that regard, it should be borne in mind that, under Article 8(1)(b) of Regulation No 207/2009, 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 trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(iv) of that regulation, ‘earlier trade mark’ means trade marks registered under international arrangements which have effect in the European Union with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.

79 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the 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 – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) , T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

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

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

82 It is in the light of those considerations that it is necessary to examine whether, as the applicant claims, the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 by finding that, in the present case, there was no likelihood of confusion between the mark applied for and, on the one hand, the earlier EU trade mark and, on the other, the earlier international registration.

1. The assessment of the likelihood of confusion with the earlier EU trade mark

(a) The relevant territory

83 In paragraph 171 of the contested decision, the Board of Appeal noted, in essence, that the relevant territory for the purposes of assessing the likelihood of confusion was that of the European Union in its configuration after 31 December 2020, namely after the expiry of the transition period.

84 The applicant complains, in essence, that the Board of Appeal failed to take into account the relevant territory of the European Union in its configuration on the date on which the application for registration of the mark applied for was filed, namely 3 August 2016, when the United Kingdom was still a Member State of the European Union. It submits that, by taking into account the territory of the European Union in its configuration after 31 December 2020, namely after the expiry of the transition period, the Board of Appeal failed to take into account the territory of the United Kingdom and, therefore, erred in law.

85 EUIPO disputes the applicant’s arguments.

86 In that regard, it should be held that, in accordance with Article 8(1)(b) of Regulation No 207/2009, the existence of a likelihood of confusion must be assessed on the part of the public in the territory in which the earlier trade mark is protected (judgments of 26 April 2007, Alcon v OHIM , C‑412/05 P, EU:C:2007:252, paragraph 51, and of 13 September 2007, Il Ponte Finanziaria v OHIM , C‑234/06 P, EU:C:2007:514, paragraph 59).

87 It should also be noted that, after 31 December 2020, as is apparent from paragraph 31 above, the United Kingdom ceased to be a Member State of the European Union, with the result that the territory in which EU trade marks are protected is the territory of the European Union excluding that State.

88 In the present case, since the earlier mark is an EU trade mark, the existence of a likelihood of confusion must be assessed on the part of the public in the European Union. On the date of the contested decision, namely 15 March 2021, the United Kingdom was no longer a Member State of the European Union, with the result that the territory in which the earlier EU trade mark was protected was that of the European Union excluding that State. As is apparent from paragraph 48 above, the Board of Appeal had to take into consideration that change which occurred after the date on which the application for registration of the mark applied for was filed, but before the contested decision.

89 It must therefore be held that, contrary to what the applicant submits, the Board of Appeal did not err in its definition of the relevant territory.

(b) The relevant public and its level of attention

90 It is apparent from paragraphs 175 to 177 of the contested decision, read in conjunction with paragraphs 188 and 192 thereof, that the Board of Appeal found, in essence, that the goods at issue were aimed both at the general public and at the English-speaking specialist public. It noted that the level of attention of the specialist public was high and that that of the general public was high with regard to part of the goods and ‘reasonable’ with regard to the other part of the goods.

91 At the hearing, EUIPO stated, in response to a question from the Court, that the level of attention of the general public had to be interpreted as varying from average to high.

92 The applicant submits, in essence, that the level of attention of the relevant public will vary from low to high.

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

94 It should also be stated that, where the relevant public consists of two categories of consumers, the public with the lowest level of attention must be taken into consideration (see, to that effect, judgments of 15 July 2011, Ergo Versicherungsgruppe v OHIM – Société de développement et de recherche industrielle (ERGO) , T‑220/09, not published, EU:T:2011:392, paragraph 21 and the case-law cited, and of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS) , T‑247/12, EU:T:2014:258, paragraph 29).

95 Next, it should be noted that, where the marks at issue are registered or registration of those marks is sought in respect of different goods or services, the Board of Appeal is required to identify the consumers who, in the relevant territory, are likely to use each of those goods or services (judgment of 17 February 2017, Construlink v EUIPO – Wit-Software (GATEWIT) , T‑351/14, not published, EU:T:2017:101, paragraph 44).

96 In addition, according to the case-law, the relevant public to be taken into account for the purposes of assessing whether there is a likelihood of confusion is composed solely of consumers likely to use both the goods or services covered by the earlier trade mark and those covered by the mark in respect of which registration is sought (see, to that effect, judgments of 1 July 2008, Apple Computer v OHIM – TKS-Teknosoft (QUARTZ) , T‑328/05, not published, EU:T:2008:238, paragraph 23, and of 30 September 2010, PVS v OHIM – MeDiTA Medizinische Kurierdienst (medidata) , T‑270/09, not published, EU:T:2010:419, paragraph 28).

97 In the present case, it should be observed that, having regard to the nature of the goods and services at issue, namely the goods and services in, inter alia, Class 14, the Board of Appeal did not make an error of assessment in finding, in essence, that the relevant public consisted of the specialist public whose level of attention was high and the general public whose level of attention varied from average to high.

98 As regards ‘clothing’, ‘footwear’ and ‘headgear’ in Class 25, those goods are considered to be everyday consumer goods that are aimed at the general public, which will display an average level of attention when purchasing them (see, to that effect, judgments of 27 September 2012, Tuzzi fashion v OHIM – El Corte Inglés (Emidio Tucci) , T‑535/08, not published, EU:T:2012:495, paragraphs 3, 6 and 29; of 24 November 2016, CG v EUIPO – Perry Ellis International Group (P PRO PLAYER) , T‑349/15, not published, EU:T:2016:677, paragraphs 3, 6 and 27 and the case-law cited; and of 8 February 2019, Serendipity and Others v EUIPO – CKL Holdings (CHIARA FERRAGNI) , T‑647/17, not published, EU:T:2019:73, paragraphs 3, 6, 20 and 21).

99 The same conclusion applies mutatis mutandis to the other goods in Classes 18 and 25, such as goods made of leather and imitations of leather, various bags and even underwear, and to the services in Class 35, which relate, in essence, to the same goods and are aimed at the general public, namely retail services connected with the sale of clothing, footwear, headgear and fashion accessories (see, to that effect, judgment of 12 July 2019, Audimas v EUIPO – Audi (AUDIMAS) , T‑467/18, not published, EU:T:2019:513, paragraph 28).

100 As regards, by contrast, the goods in Class 14, they are aimed at the general public and the specialist public whose level of attention will vary from average to high depending on the type of goods, the frequency of purchase and their price. Since those goods are not purchased regularly and are generally bought through a salesperson, the average consumer’s level of attention must be considered to be higher than average and therefore, quite high. In that context, the evocation of ‘cheap’ jewellery is not sufficient to establish a reduced level of attention. The applicant does not cite or refer to any evidence capable of establishing that, for the part of the relevant public consisting of the general public, the purchase of jewellery corresponds to behaviour so habitual that it has become routine, and that the price point of those goods – even assuming that they are ‘cheap’ – is so low that they are purchased daily or even frequently, which would make it possible to establish the alleged level of attention (see, to that effect, judgment of 27 June 2019, Aldi v EUIPO – Crone (CRONE) , T‑385/18, not published, EU:T:2019:449, paragraphs 25 to 28).

101 Therefore, it must be held that the Board of Appeal did not err in its definition of the relevant public and the level of attention thereof.

(c) The comparison of the goods and services at issue

102 The Board of Appeal found, in paragraphs 178 to 180 of the contested decision, that the goods ‘jewellery; chronoscopes’ in Class 14 covered by the mark applied for were identical to the goods ‘chronological and chronometric instruments, jewellery’ in the same class covered by the earlier EU trade mark and that the goods ‘cases for watches and clocks’ in Class 14 covered by the mark applied for were similar to the goods ‘watches and clocks’ in the same class covered by the earlier EU trade mark on account of their complementarity.

103 There is no reason to call into question that assessment, which, moreover, is not disputed by the applicant.

(d) The comparison of the signs at issue

104 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).

105 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components of the mark are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

106 Before examining whether the signs at issue are visually, phonetically and conceptually similar, it is therefore necessary to determine their distinctive and dominant elements.

(1) The distinctive and dominant elements of the signs at issue

107 As regards the earlier EU trade mark, the Board of Appeal found, in paragraphs 183 to 187 and 197 of the contested decision, that it was a figurative mark consisting of the word element ‘joules’ in calligraphy that makes it more distinctive and makes the letters ‘o’ and ‘u’ difficult to read. It noted that, contrary to the Opposition Division’s findings, it was not apparent from the file, and it was not well known, that the word ‘joules’ was a male first name. It stated that that word was rather known as being the plural version of the basic unit for energy named after the British physician James Prescott Joule. According to the Board of Appeal, that meaning is part of an elementary education in physics and general knowledge of the relevant public and is confirmed by the definitions in the online versions of the Collins English Dictionary and Oxford English Dictionary . That conclusion cannot be altered by the fact that ‘joules’ is also the surname of the applicant’s founder, Tom Joule. The relevant public will perceive it, at most, as a surname which coincides with the reference to the unit of measurement. Thus, in so far as the word ‘joules’ has no meaning with regard to the goods and services covered by the earlier mark, the Board of Appeal concluded that that word had a normal level of inherent distinctiveness.

108 As regards the mark applied for, the Board of Appeal found, in essence, in paragraphs 188 to 190 of the contested decision, that it consisted of two slightly stylised word elements in upper-case letters and a centrally positioned, heart-shaped ampersand. It added that the word ‘jules’ was a French form of the name ‘Julius’, or the nickname ‘Julie’, and that the word ‘gents’ was the abbreviated form of ‘gentlemen’s’, and was used in the context of men’s products or services related to men. The Board of Appeal found that, according to the case-law, where a mark is composed of word elements and figurative elements, the former must, in principle, be considered to be more distinctive than the latter, as the average consumer will more easily refer to the goods or services in question by citing the name rather than describing the figurative element of the mark. It concluded that the mark applied for had to be considered as a whole.

109 The applicant submits that, as regards the earlier EU trade mark, the Board of Appeal erred in finding that the relevant public would perceive it as consisting of the word ‘joules’. According to the applicant, the Board of Appeal should have observed that part of the relevant public would perceive the letter ‘o’ of that mark as a ‘flourish’ of the letter ‘j’ and, therefore, perceive the mark as the word ‘jules’. It adds that the Board of Appeal also erred in finding that the relevant public would perceive the word ‘joules’ as the international unit of measurement of energy rather than as a male first name. It submits that there is no evidence in the file to establish that meaning. On the contrary, the parties argued before the Opposition Division that the word ‘joules’ would be perceived by the relevant public as a male first name or as a surname. Furthermore, the Board of Appeal’s assessment is illogical in so far as the surname of James Prescott Joule is the word ‘joule’ and not ‘joules’.

110 As regards the mark applied for, the applicant submits that the Board of Appeal erred in failing to take account of the fact that the word ‘gents’ forming part of that mark is descriptive with regard to the goods that it designates and, therefore, non-distinctive. It submits that, because of its non-distinctive character, the relevant public would attach less importance to it.

111 EUIPO disputes the applicant’s arguments.

112 For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods for which the mark has been registered (judgments of 13 June 2006, Inex v OHIM – Wiseman (Representation of a cowhide) , T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano) , T‑242/06, not published, EU:T:2007:391, paragraph 51).

113 In addition, although as a general rule the public will not consider a descriptive element forming part of a mark as the distinctive and dominant element in the overall impression produced by that mark, the fact remains that the low level of distinctiveness of an element of a mark does not necessarily mean, when its size or its position in the mark are taken into account, that that element is negligible in the overall impression produced by that mark (see judgment of 24 January 2024, U.I. Lapp v EUIPO – Labkable Asia (labkable Solutions for cables) , T‑636/22, not published, EU:T:2024:24, paragraph 50).

114 In the present case, it should be borne in mind that the determination of the distinctive and dominant elements of a mark presupposes that that mark is a composite sign (see, to that effect, judgment of 25 October 2023, Quantic Dream v EUIPO – Quentia (Q) , T‑458/21, not published, EU:T:2023:671, paragraph 43). However, the earlier EU trade mark is a word mark consisting of the sequence of letters ‘j’, ‘o’, ‘u’, ‘l’, ‘e’ and ‘s’, in the same typeface and having no characteristics differentiating them from each other.

115 Next, it should nevertheless be noted that the term ‘joules’ corresponds to the plural version of the unit of measurement used for energy. It is a universal term which is covered by an international standard and which exists in the same form and with the same meaning in all the languages of the European Union (see, to that effect and by analogy, judgment of 4 December 2014, Sales & Solutions v OHIM – Inceda (watt and Watt) , T‑494/13 and T‑495/13, not published, EU:T:2014:1022, paragraphs 23 and 31).

116 The applicant cannot claim that there is nothing in the file to establish that meaning. In that regard, it is sufficient to note that, in its statement in support of the opposition of 6 April 2017, the applicant itself noted that the word ‘joule’ had a meaning that was certain, namely the unit of measurement used for energy, but that, in the context of the goods at issue, the relevant public would not associate it with such a unit of measurement.

117 In any event, it should be observed that the Board of Appeal found, in paragraph 184 of the contested decision, that the meaning of the word ‘joule’ was part of an elementary education in physics and general knowledge of the relevant public. That assessment has not been disputed by the applicant.

118 Accordingly, it should be held that, at the very least, part of the relevant public will perceive the word ‘joules’ as referring to the unit of measurement used for energy which is covered by an international standard.

119 As regards the part of the relevant public which will not perceive it as such, it cannot be ruled out, as the applicant submits, that that part of the public is likely to associate it with a male first name or a surname.

120 In the light of the foregoing, it must be inferred that, whatever the relevant public’s understanding of the word element ‘joules’ in the earlier EU trade mark, that word has no clear meaning in relation to the goods and services covered by that mark and is therefore distinctive to an average degree.

121 As regards the mark applied for, it should be noted that its first word element, ‘jules’, corresponds, as the Board of Appeal correctly observed, to a French male first name. Since the applicant has not shown that that word had a particular meaning in relation to the goods and services covered by the mark applied for, or that it had a connection with them, the distinctiveness of that word element must be considered to be average (see, to that effect, judgment of 18 November 2020, Topcart v EUIPO – Carl International (TC CARL) , T‑377/19, not published, EU:T:2020:546, paragraphs 38 and 43).

122 As regards the second word element of the mark applied for, ‘gents’, it should be noted that, as is apparent from paragraph 188 of the contested decision and not challenged by the applicant, it constitutes the abbreviated form of the term ‘gentlemen’s’ and is used in the context of men’s products or services related to men. In that regard, it must be held, as the applicant submits, that, in so far as it is likely to be perceived by part of the relevant public, namely the English-speaking part of the European Union, consisting of Ireland and Malta, as a descriptive term referring to the fact that the goods at issue are intended for men, the word element ‘gents’ has a low degree of distinctiveness.

123 As regards the figurative element of the mark applied for, it should be pointed out that, as the Board of Appeal found in paragraph 190 of the contested decision, given its size, central position and stylisation, it cannot be regarded as purely decorative and must be regarded as having an average degree of distinctiveness.

124 In the light of the foregoing considerations, it must be held that although the second word element of the mark applied for, ‘gents’, may be regarded as descriptive and having a low degree of distinctiveness, for the English-speaking part of the relevant public, the Board of Appeal did not err in finding, in essence, that the mark applied for had to be considered as a whole. As is apparent from paragraph 113 above, although it is true that, as a general rule, the public will not consider a descriptive element forming part of a mark as the distinctive and dominant element in the overall impression produced by that mark, the fact remains that the low level of distinctiveness of an element of a mark does not necessarily mean, when its size or its position in the sign are taken into account, that that element is negligible in the overall impression produced by that mark.

125 In the present case, since the first word element, ‘jules’, forming part of the mark applied for has the same length and the same typeface as the second word element, ‘gents’, of that mark, it cannot be regarded as the element that the relevant public will keep in mind. Thus, that element, combined with the figurative element placed in the centre, cannot be regarded as leading, on account of its presence and position, to the word element ‘gents’, the size of which is not negligible in the overall impression, being disregarded when the signs in question are compared. That conclusion is only reinforced for the non-English-speaking part of the relevant public.

126 It is in the light of the foregoing considerations that it is necessary to examine whether the visual, phonetic and conceptual comparison made by the Board of Appeal between the earlier EU trade mark and the mark applied for is vitiated by errors of assessment.

(2) The visual, phonetic and conceptual comparisons

(i) The visual comparison

127 In paragraph 190 of the contested decision, the Board of Appeal found that the signs at issue coincided in the initial letter ‘j’ and the sequence of letters ‘u’, ‘l’, ‘e’ and ‘s’, but differed, first, in the letter ‘o’, absent in the mark applied for, secondly, in the heart-shaped ampersand in the centre of that mark, which played an important role because of its size, central position and stylisation, and, thirdly, in the second word element, ‘gents’, of that mark. Consequently, it concluded that, visually, there was ‘at most a low’ degree of similarity between those signs.

128 The applicant submits, in essence, that the signs at issue are visually similar.

129 In the present case, it must be held that the signs at issue share the letters ‘j’, ‘u’, ‘l’, ‘e’ and ‘s’, present in the earlier EU trade mark and in the first word element of the mark applied for. However, the mark applied for differs from the earlier EU trade mark in that the letter ‘o’ is absent from the word ‘jules’ and in that it contains a figurative element and a second word element. Furthermore, although the word elements ‘jules’ and ‘gents’ which make up the mark applied for are slightly stylised, the calligraphy used for the word element of the earlier EU trade mark is unusual.

130 In those circumstances, it must be held that the visual differences between the signs at issue contribute to the overall impression created by the marks at issue and are not cancelled out by the existence of the group of letters ‘jules’ which they have in common, even though it is positioned at the beginning of those marks.

131 It follows from those considerations that the Board of Appeal was right to conclude, in essence, that the degree of visual similarity between the earlier EU trade mark and the mark applied for was low.

(ii) The phonetic comparison

132 The Board of Appeal noted, in essence, in paragraph 191 of the contested decision, that there were differences between the pronunciation of the word element ‘joules’, in the earlier EU trade mark, and that of the first word element, ‘jules’, in the mark applied for. Furthermore, it found that the marks at issue differed on account of the presence of the second word element of the mark applied for and the ampersand symbol which would be pronounced as ‘and’. Consequently, it concluded that the phonetic similarity between the signs at issue was ‘at most low’.

133 The applicant submits, in essence, that the word ‘joules’ making up the earlier EU trade mark and the first word element, ‘jules’, of the mark applied for will be pronounced in the same way by the relevant English-speaking public and by the part of the relevant non-English-speaking public which will not identify the letter ‘o’ within the earlier EU trade mark. Furthermore, it submits that, contrary to what the Board of Appeal found, the relevant public will not perceive the figurative element of the mark applied for as a heart-shaped ampersand, but rather as a stylised heart, with the result that that public will not pronounce it.

134 EUIPO disputes the applicant’s arguments.

135 In the present case, it should be noted that the single word element of the earlier EU trade mark and the first word element of the mark applied for share the letters ‘j’, ‘u’, ‘l’, ‘e’ and ‘s’. Moreover, the letters ‘l’, ‘e’ and ‘s’ are in the same order. Thus, the sequence of letters ‘l’, ‘e’, and ‘s’ will give rise to an identical pronunciation.

136 However, the signs at issue differ, first, in the letter ‘o’, present only in the earlier EU trade mark. The first syllable of that mark, ‘jou’, and the first syllable of the mark applied for, ‘ju’, may therefore be pronounced differently by one part of the relevant public, and be pronounced in a similar way by another part of that public, namely the English-speaking part of the European Union, consisting of Ireland and Malta, or the part of the European Union which has a sufficient knowledge of English. Secondly, they differ in the second word element, ‘gents’, within the mark applied for.

137 Accordingly, it should be held that the signs at issue share only one syllable which will be pronounced in the same way, namely the syllable ‘les’, since the pronunciation of the first syllable ‘ju’ of the mark applied for will either be similar to or different from that of the syllable ‘jou’ in the earlier EU trade mark, and that they have a different number of syllables.

138 Furthermore, however the relevant public interprets the figurative element in the mark applied for, namely as a heart shape which will not be pronounced, as the applicant claims, or as an ampersand, as was found in the contested decision, which will be pronounced as ‘and’, the pronunciation of the word ‘gents’, which is absent from the earlier EU trade mark, makes the rhythm and intonation of the signs at issue different.

139 In those circumstances, it must be held that, in the light of the overall phonetic impression, the elements of similarity between the signs at issue are not sufficient to overturn a finding of a low degree of phonetic similarity, irrespective of the pronunciation rules used by the relevant public in the territory of the European Union.

140 Therefore, the Board of Appeal was right to find, in essence, that the degree of phonetic similarity between the earlier EU trade mark and the mark applied for was low.

(iii) The conceptual comparison

141 The Board of Appeal found, in essence, in paragraph 192 of the contested decision, that the relevant public will perceive the earlier EU trade mark as being the plural version of the basic unit of energy or, at most, a surname of French origin and, in that case, will understand the mark applied for as a first name and a reference to the word ‘gentlemen’s’. It therefore found that the signs at issue were conceptually dissimilar.

142 The applicant submits, in essence, that the signs at issue are conceptually similar.

143 EUIPO disputes the applicant’s arguments.

144 In that regard, it is important to recall that, according to the case-law, conceptual similarity means that the signs at issue use analogous semantic content (judgment of 11 November 1997, SABEL , C‑251/95, EU:C:1997:528, paragraph 24).

145 In the present case, it should be noted that, as is apparent from paragraphs 115 and 119 above, the term ‘joules’ making up the earlier EU trade mark corresponds to the plural version of the unit of measurement used for energy or to a male first name or a surname, and the mark applied for is composed of the word elements ‘jules’, which refers to a French first name, and ‘gents’, which corresponds, for the English-speaking part of the European Union or the part of the European Union which has a sufficient knowledge of English, to the abbreviated form of the term ‘gentlemen’s’. Furthermore, the figurative element forming part of the mark applied for will convey the concept of a heart and also the idea of love for the majority of the relevant public (see, to that effect, judgment of 25 January 2017, Sun System Kereskedelmi és Szolgáltató v EUIPO – Hollandimpex Kereskedelmi és Szolgáltató (Choco Love) , T‑325/15, not published, EU:T:2017:29, paragraph 66). That conceptual difference is only reinforced for the English-speaking part of the relevant public which understands the term ‘gents’.

146 It must be held that, regardless of how the relevant public understands the word element ‘joules’ making up the earlier EU trade mark, namely as the plural version of the unit of measurement used for energy or as a male first name or a surname, the fact remains that the signs at issue are conceptually dissimilar, since the first name or surname ‘joules’ making up the earlier EU trade mark is, in any event, different from the first name ‘jules’ within the mark applied for.

147 Therefore, it must be held that the signs at issue are conceptually dissimilar.

(e) Distinctiveness of the earlier EU trade mark

148 In paragraphs 194 to 197 of the contested decision, the Board of Appeal found, first, that, in so far as the applicant submits that the earlier EU trade mark has a reputation in the United Kingdom, the reputation and distinctiveness acquired through use in its territory are no longer relevant in the present case since that State is no longer part of the European Union. Secondly, it noted, in essence, that, although some of the evidence is capable of proving use, to some extent, in other EU Member States, most of that evidence relates to the sign Tom Joule, which differs in important elements from the earlier EU trade mark.

149 The Board of Appeal therefore decided to base the assessment of the distinctiveness of the earlier EU trade mark on its inherent distinctive character. In that regard, it found that, in so far as that earlier mark had no meaning in relation to the goods and services which it covers, its distinctiveness had to be seen as normal.

150 The applicant submits that the earlier EU trade mark is highly distinctive. It submits, in essence, that the Board of Appeal erred in failing to take into account the evidence submitted by the applicant to prove that the earlier EU trade mark had enhanced distinctiveness for the goods in Class 14 as a result of its reputation. In addition, it claims that it submitted other evidence capable of demonstrating ‘extensive use’ of the earlier EU trade mark in the territory of the European Union.

151 EUIPO disputes the applicant’s arguments.

152 According to the case-law, as is apparent from recital 8 of Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments of 11 November 1997, SABEL , C‑251/95, EU:C:1997:528, paragraph 24; of 29 September 1998, Canon , C‑39/97, EU:C:1998:442, paragraph 18; and of 22 June 1999, Lloyd Schuhfabrik Meyer , C‑342/97, EU:C:1999:323, paragraph 20).

153 The existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to state in general terms, for example by referring to specific percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character. Nevertheless, it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened. In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see judgment of 12 July 2006, Vitakraft-Werke Wührmann v OHIM – Johnson’s Veterinary Products (VITACOAT) , T‑277/04, EU:T:2006:202, paragraphs 34 and 35 and the case-law cited).

154 In the present case, the applicant submitted the following evidence in support of the claim that the public recognises its earlier marks:

– a sworn statement, in the form of a witness statement, from the CEO of the applicant;

– a printout from the online magazine Drapers of 11 December 2008 describing the Joules brand;

– printouts from the website ‘www.joulesgroup.com’ containing an article entitled ‘Joules takes home Mainstream Brand of the Year at industry awards’, of 17 November 2016, and an extract from the magazine Drapers entitled ‘Drapers Awards 2016: Mainstream Brand of the Year’, of 18 November 2016;

– a list of shops bearing the JOULES trade mark in the United Kingdom;

– a full list of trade stockists based in the United Kingdom and the European Union;

– screenshots from the websites ‘www.joules.com’ and ‘www.tomjoule.de’;

– extracts from catalogues of products marketed under the earlier EU trade mark and under the sign Tom Joule;

– extracts from recent marketing materials relating to the earlier EU trade mark, the sign Tom Joule and the mark JOULES;

– a list of trade shows which the applicant attended;

– newspaper extracts detailing the partnership activities pertaining to the Joules brand and to the earlier EU trade mark;

– a list of the awards and accolades received by the earlier EU trade mark and the mark Tom Joule;

– press articles relating to the coverage of the Joules brand from 2011 to 2016;

– a list of the number of visitors to the applicant’s websites.

155 It should be noted that some of the evidence submitted by the applicant – such as the printout from the online magazine Drapers of 11 December 2008 describing the Joules brand; the extracts from catalogues of products marketed under the earlier EU trade mark and under the sign Tom Joule; the extracts from recent marketing materials relating to the earlier EU trade mark, the sign Tom Joule and the mark JOULES; the newspaper extracts detailing the partnership activities pertaining to the Joules brand and to the earlier EU trade mark; and the press articles relating to the coverage of the Joules brand from 2011 to 2016 – relate to recognition of the earlier EU trade mark in the United Kingdom. That evidence, in essence, relates to the United Kingdom public, contains prices quoted in British pounds or relates to the territory of the United Kingdom.

156 In that regard, it should be recalled that, as is apparent from paragraphs 87 and 88 above, the relevant territory in the present case is that of the European Union excluding the United Kingdom.

157 Therefore, it must be held that, contrary to what the applicant submits, the Board of Appeal did not err in omitting to take into account the evidence relating to the use of the earlier EU trade mark in the territory of the United Kingdom.

158 It is true that, according to the case-law, the date to be taken into account for assessing the high distinctiveness of the earlier mark is the date on which the application for registration of the mark applied for was filed (see judgment of 15 October 2020, Decathlon v EUIPO – Athlon Custom Sportswear (athlon custom sportswear) , T‑349/19, not published, EU:T:2020:488, paragraph 74 and the case-law cited). However, it is also apparent from the case-law, as stated in paragraphs 43 and 44 above, first, that the existence of a relative ground for refusal relied on in support of an opposition to the registration of an EU trade mark must be assessed not only as at the date of filing of the application for that registration, but also on the date on which EUIPO gives a final decision on the opposition and, secondly, that, in accordance with the principle of territoriality, the legal effects of a trade mark are limited to the territory in which it is protected. However, the United Kingdom was no longer part of the territory of the European Union when the Board of Appeal delivered the contested decision. Accordingly, the evidence relating to the territory of the United Kingdom could not be taken into account.

159 As regards the other evidence submitted by the applicant, it should be held that that evidence does not demonstrate that a significant part of the relevant public in the Member States of the European Union is aware of the earlier EU trade mark.

160 As the Board of Appeal found in paragraph 196 of the contested decision, a significant part of the evidence referred to in paragraph 154 above – such as the screenshot from the website ‘www.tomjoule.de’, extracts from catalogues distributed in France, extracts from recent marketing material and the list of awards and accolades received by the applicant – relates to the use of the sign Tom Joule, which differs from the earlier EU trade mark in the element ‘tom’ and in the absence of the letter ‘s’ from the element ‘joule’.

161 Admittedly, it follows from the case-law that the acquisition of distinctive character of a mark may be as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceives the product or service, designated exclusively by the mark applied for, as originating from a given undertaking (judgment of 7 July 2005, Nestlé , C‑353/03, EU:C:2005:432, paragraph 30, and of 17 July 2008, L & D v OHIM , C‑488/06 P, EU:C:2008:420, paragraph 49). Therefore, regardless of whether the sign is used as part of a registered trade mark or in conjunction with the registered trade mark, the fundamental condition is that, as a consequence of that use, the sign may serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from a particular undertaking (judgment of 16 September 2015, Société des Produits Nestlé , C‑215/14, EU:C:2015:604, paragraph 65).

162 In the present case, the applicant has not put forward specific and precise arguments to suggest – nor has it established – that the sign Tom Joule could serve to identify, in the minds of the relevant class of persons, the goods to which it related as originating from its undertaking.

163 As to the remainder, it should be noted that the list of trade stockists based in the territory of the European Union does not give any indication as to the market share held by the earlier EU trade mark, or the intensity, geographical extent or duration of its use.

164 As regards the screenshot from the website ‘www.joules.com’, it should be borne in mind that the information on the internet reflects the advertising efforts made by the applicant in order to increase its public profile. However, it is not those efforts which are conclusive, but rather the actual recognition by the public resulting from those efforts, determined by means of the criteria set out in the case-law cited in paragraph 153 above (see, to that effect, judgment of 21 October 2014, Szajner v OHIM – Forge de Laguiole (LAGUIOLE) , T‑453/11, EU:T:2014:901, paragraph 158).

165 Furthermore, although the sworn statement, in the form of a witness statement, from the applicant’s CEO provides data on the applicant’s turnover and the size of the investments it made in order to promote the JOULES mark, in addition to the fact that that information is not supported by any evidence and is not accompanied by evidence capable of proving the size of the market share, in so far as that statement was not made by an independent third party but by a person who performs a management function within the applicant, it cannot in itself constitute sufficient evidence that the mark applied for has acquired distinctive character through use (see judgment of 21 November 2012, Getty Images v OHIM (PHOTOS.COM) , T‑338/11, not published, EU:T:2012:614, paragraph 51 and the case-law cited).

166 Furthermore, the applicant has not provided any data, such as opinion polls, market research or declarations from professional associations, indicating the proportion of the relevant public which, on account of the earlier EU trade mark, identifies the goods as originating from the applicant.

167 It follows that the evidence submitted by the applicant before EUIPO does not establish that the earlier EU trade mark is highly distinctive. That applies both to each piece of evidence individually and to all the evidence taken as a whole (see, to that effect, judgment of 17 April 2008, Ferrero Deutschland v OHIM , C‑108/07 P, not published, EU:C:2008:234, paragraphs 36 and 37).

168 In so far as the applicant has not demonstrated the existence of a high degree of distinctiveness in respect of the goods and services covered by the earlier EU trade mark, the inherent distinctiveness of that mark must be taken into account. The Board of Appeal was therefore right to find, in essence, in paragraph 197 of the contested decision, that the earlier EU trade mark was distinctive to an average degree.

(f) The overall assessment of the likelihood of confusion

169 The Board of Appeal noted, in essence, in paragraphs 198 to 204 of the contested decision, that, although the goods covered by the mark applied for were identical to the goods and services covered by the earlier EU trade mark, the signs at issue differed significantly, thus creating a different overall impression. It therefore concluded that there was no likelihood of confusion on the part of the relevant public for the purposes of Article 8(1)(b) of Regulation No 207/2009.

170 The applicant submits, in essence, that, in so far as the signs at issue are similar, the Board of Appeal was wrong to find that there was no likelihood of confusion in the present case.

171 EUIPO disputes the applicant’s arguments.

172 In that regard, it should be borne in mind that, according to the case-law, it is true that, by virtue of the principle of interdependence, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, and vice versa. However, there is nothing to prevent a finding that, in view of the circumstances of a particular case, there is no likelihood of confusion, even where identical goods are involved and there is a low degree of similarity between the marks at issue (see, to that effect, judgment of 3 June 2015, Giovanni Cosmetics v OHIM – Vasconcelos & Gonçalves (GIOVANNI GALLI) , T‑559/13, EU:T:2015:353, paragraph 132 (not published) and the case-law cited).

173 In the present case, as a preliminary point, it should be noted that, in essence, in its analysis, the Board of Appeal took into consideration the English-speaking part of the relevant public, which is the part for which a likelihood of confusion, should it exist, is most likely to arise. Furthermore, it must be stated that, first, it is apparent from paragraph 102 above that the goods covered by the mark applied for are identical or similar to the goods and services covered by the earlier EU trade mark. In addition, it must be observed, on the one hand, as is apparent from paragraphs 148 to 168 above, that the applicant has not provided proof that the degree of distinctiveness may be classified as high for the goods and services covered by the earlier EU trade mark and, on the other hand, that the degree of distinctiveness of that mark must be classified as average.

174 Secondly, it should be noted, as is apparent from paragraphs 131, 140 and 147 above, that the mark applied for, which contains a normally distinctive figurative element, and the earlier EU trade mark are visually and phonetically similar to a low degree and conceptually dissimilar.

175 In the light of those considerations, it must be held that, even if the goods at issue are identical or similar, that does not, however, allow for a finding, in the light of the circumstances of the present case, that there is a likelihood of confusion. The signs at issue are conceptually dissimilar. Furthermore, the visual and phonetic similarities are not particularly significant. They are limited to the presence of the letters ‘j’, ‘u’, ‘l’, ‘e’ and ‘s’ and are counterbalanced by the presence of the figurative element and the second word element, ‘gents’, in the mark applied for.

176 Therefore, the Board of Appeal did not err in finding that there was no likelihood of confusion on the part of the relevant public between the earlier EU trade mark and the mark applied for the purposes of Article 8(1)(b) of Regulation No 207/2009.

2. The assessment of the likelihood of confusion with the earlier international registration

(a) The relevant public

177 It is apparent from paragraphs 206 to 209 of the contested decision, read in conjunction with paragraphs 217 and 218 thereof, that the Board of Appeal found, in essence, that part of the goods at issue were aimed both at the general public and at the English-speaking specialist public in the European Union, and that the level of attention of the specialist public was high while that of the general public varied from ‘reasonable’ to high. It added that the goods in Classes 18 and 25 covered by the earlier international registration were aimed at the general public with an average level of attention.

178 At the hearing, in response to a question put by the Court, EUIPO stated that the level of attention of the general public had to be interpreted as varying from average to high.

179 The applicant considers, in essence, that the level of attention of the relevant public will vary from low to high.

180 For the same reasons as those set out in paragraphs 93 to 101 above, it must be held that the Board of Appeal did not err in its definition of the relevant public.

(b) The comparison of the goods and services at issue

181 In paragraphs 210 to 218 of the contested decision, the Board of Appeal found that the goods in Class 14 covered by the mark applied for differed from the goods in Classes 18 and 25 covered by the earlier international registration in their nature, their intended purpose and their method of use. Furthermore, they do not share the same manufacturers or the same distribution channels and are neither in competition with, nor complementary to, each other. It added that the same was true of the services in Class 35 covered by the earlier international registration, which refer to articles of clothing. The Board of Appeal concluded that the goods and services at issue were dissimilar or at most similar to a low degree.

182 The applicant claims that the goods ‘jewellery; chronoscopes, cases for watches and clocks’ in Class 14 covered by the mark applied for are similar to the services ‘the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail clothing, footwear, headgear and accessories store’ in Class 35 covered by the earlier international registration in so far as they may be sold in a retail accessories store. Thus, those goods and services share the same public and are complementary. The applicant submits that the goods ‘jewellery; chronoscopes’ in Class 14 covered by the mark applied for are similar to ‘clothing’ covered by the earlier international registration in that they may be aimed at the same public and be marketed in the same outlets. The same is true of ‘cases for watches and clocks’ in Class 14 covered by the mark applied for and ‘key cases’ in Class 18 covered by the earlier international registration.

183 EUIPO disputes the applicant’s arguments.

184 In that respect, it must be borne in mind that, 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 and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) , T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

185 As regards, more particularly, the complementarity of the goods and services, it must be recalled that complementary goods or services are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. That case-law definition implies that complementary goods or services can be used together, which presupposes that they are intended for the same public (see judgment of 22 January 2009, easyHotel , T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

186 In the present case, it should be noted that, first, as regards the comparison between the goods ‘jewellery; chronoscopes’ in Class 14 covered by the mark applied for and ‘clothing’ in Class 25 covered by the earlier international registration, contrary to what the applicant claims without submitting any further evidence, notwithstanding the fact that those goods belong to adjacent market segments, they differ in their nature, their intended purpose and their method of use. The raw materials from which they are manufactured are different. Furthermore, while clothing is manufactured to cover, conceal, protect and adorn the human body, watches and other horological goods are designed, inter alia, to measure and indicate time and jewellery has a purely ornamental function.

187 Furthermore, the goods referred to in paragraph 186 above are neither in competition with each other nor interchangeable. Nor can it be shown that those goods are similar by taking into account the sales outlets which they have in common. In that regard, it must be stated that, although it is true that it cannot be ruled out, in particular as regards those of the goods at issue which fall within the luxury sector, that they may be sold in the same premises, the fact remains that it has not been established, nor is it generally accepted, that that is the case for the majority of the goods at issue, in particular for those inexpensive goods which everyone can afford. Consequently, it cannot be held that the connection between those goods is sufficiently close and significant to hold that there is any similarity, even if only low in degree, between them (see, to that effect, judgment of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM – Cheng (B) , T‑505/12, EU:T:2015:95, paragraphs 49 to 53, 75 to 77 and 80).

188 Secondly, as regards the comparison between the goods ‘jewellery; chronoscopes, cases for watches and clocks’ in Class 14 covered by the mark applied for and the services ‘the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail clothing, footwear, headgear and accessories store’ in Class 35 covered by the earlier international registration, it must be held that, contrary to what the applicant claims, those services do not relate to the goods covered by the mark applied for, but refer to ‘accessories’, in general and in relation to ‘clothing’, ‘footwear’ and ‘headgear’. In the light of the above and given that it was for the applicant to specify the various goods to which the services ‘the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail clothing, footwear, headgear and accessories store’ relate (judgment of 7 July 2005, Praktiker Bau- und Heimwerkermärkte , C‑418/02, EU:C:2005:425, paragraph 50), it cannot be held that the connection between those goods is sufficiently close to support the conclusion that the goods have been proved, in the present case, to be complementary, as claimed by the applicant.

189 In any event, assuming that the goods ‘jewellery; chronoscopes, cases for watches and clocks’ in Class 14 covered by the mark applied for may be regarded as being accessories to which the services ‘the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail clothing, footwear, headgear and accessories store’ in Class 35 covered by the earlier international registration relate, and that those goods and services are similar on account of the fact that they may be offered in the same places and that those services are provided in connection with those goods and are therefore complementary, the degree of such similarity can only be low (see, by analogy, judgments of 24 September 2008, Oakley v OHIM – Venticinque (O STORE) , T‑116/06, EU:T:2008:399, paragraphs 52 to 56, and of 15 February 2011, Yorma’s v OHIM – Norma Lebensmittelfilialbetrieb (YORMA’S) , T‑213/09, not published, EU:T:2011:37, paragraphs 39 to 44).

190 Thirdly, the same is true of ‘cases for watches and clocks’ in Class 14 covered by the mark applied for and ‘key cases’ in Class 18 covered by the earlier international registration. Although they share certain elements as regards their nature and intended purpose, they do not have the same manufacturers or the same distribution channels and are neither in competition with, nor complementary to, each other, with the result that they must be regarded as being similar to a low degree.

191 In the light of the foregoing considerations, it must be held that the goods covered by the mark applied for are dissimilar or similar to a low degree to the goods and services covered by the earlier international registration.

(c) The comparison of the signs at issue

192 In paragraphs 217 and 218 of the contested decision, the Board of Appeal found, in essence, that the signs at issue differed not only in the presence of the letter ‘o’ in the earlier international registration and in the heart-shaped ampersand and the additional word element ‘gents’ that form part of the mark applied for, which give rise to a different visual impression and pronunciation, but also in their conceptual meaning. It concluded that the signs at issue were ‘at most’ visually and phonetically similar to a low degree and conceptually dissimilar.

193 The applicant considers that the Board of Appeal erred in applying the overall assessment of the earlier EU trade mark to the earlier international registration. It submits that one of the key aspects taken into account by the Board of Appeal in the overall assessment of the earlier EU trade mark is its calligraphy. However, the earlier international registration is a word mark and does not include any calligraphy. Thus, according to the applicant, the Board of Appeal should have carried out a new assessment of the earlier international registration.

194 EUIPO disputes the applicant’s arguments.

195 In the present case, it should be noted that the signs at issue share the letters ‘j’, ‘u’, ‘l’, ‘e’ and ‘s’, present in the earlier international registration and in the first word element of the mark applied for, but differ in the letter ‘o’ of the earlier international registration and in the presence of the figurative element and the second word element of the mark applied for.

196 As regards the visual comparison, it must be pointed out, first, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM – Star TV (STAR TV) , T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

197 In that regard, the presence in each of the marks at issue of several letters in the same order may be of some importance in the assessment of the visual similarity between those marks (see judgment of 24 October 2019, ZPC Flis v EUIPO – Aldi Einkauf (Happy Moreno choco) , T‑498/18, EU:T:2019:763, paragraph 93 and the case-law cited).

198 In the present case, admittedly, the earlier international registration shares several letters with the mark applied for. However, it should be noted that, taking account of their overall impression, the structure and length of the signs at issue are clearly different, with the result that the degree of visual similarity between them can only be low.

199 As regards the phonetic comparison, it must be held that the signs at issue share only one syllable which will be pronounced in the same way, namely the syllable ‘les’, since the pronunciation of the first syllable ‘ju’ of the mark applied for will either be similar to or different from that of the syllable ‘jou’ in the earlier international registration, with the result that, for the same reasons as those set out in paragraphs 137 to 140 above, they are similar only to a low degree.

200 As regards the conceptual comparison, it should be noted that, as is apparent from paragraphs 115 to 122 above, the term ‘joules’ making up the earlier EU trade mark corresponds to the plural version of the unit of measurement used for energy or to a first name or a surname, and the mark applied for is composed of the word elements ‘jules’, which refers to a French first name, and ‘gents’, which corresponds, for the English-speaking part of the European Union or the part of the European Union which has a sufficient knowledge of English, to the abbreviated form of the term ‘gentlemen’s’. Furthermore, the figurative element forming part of the sign applied for will convey the concept of a heart and also the idea of love for the majority of the relevant public. Therefore, for the same reasons as those set out in paragraphs 144 to 147 above, the signs at issue must be regarded as being conceptually dissimilar.

201 Therefore, the Board of Appeal did not err in finding, in essence, that the signs at issue were visually and phonetically similar to a low degree and conceptually dissimilar.

202 In so far as the applicant submits that the Board of Appeal erred in applying the overall assessment of the earlier EU trade mark to the earlier international registration, it should be noted that the Board of Appeal referred, in the context of the assessment of the earlier international registration in paragraphs 217 and 218 of the contested decision, to the same differentiating elements as those referred to in paragraphs 190 to 192 of that decision, applicable to the earlier international registration, namely the presence of the letter ‘o’ in the word ‘joules’, the heart-shaped ampersand in the centre of the mark applied for and the second word element, ‘gents’, of that mark, in order to conclude that there was ‘at most’ a low degree of visual and phonetic similarity. It is not apparent from the assessment in paragraphs 190 to 192 of that decision that the Board of Appeal took into account the calligraphy of the earlier EU trade mark in order to conclude that there was at most a low degree of visual and phonetic similarity between that mark and the mark applied for, which cannot be applied to the earlier international registration. Thus, the applicant’s argument that the Board of Appeal erred in applying the overall assessment of the earlier EU trade mark, one of the key aspects of which is the calligraphy within that mark, to the earlier international registration cannot succeed.

(d) The overall assessment of the likelihood of confusion

203 In paragraph 218 of the contested decision, the Board of Appeal found that, in view of the low degree of similarity between the signs at issue, the dissimilarity or low degree of similarity between the goods and services at issue and the average level of attention of the relevant public, there was no likelihood of confusion on the part of the relevant public between the earlier international registration and the mark applied for for the purposes of Article 8(1)(b) of Regulation No 207/2009.

204 The applicant claims, in essence, that the Board of Appeal erred in finding that there was no likelihood of confusion on the part of the relevant public between the earlier international registration and the mark applied for.

205 EUIPO disputes the applicant’s arguments.

206 As a preliminary point, it should be noted that, for the same reasons as those set out in paragraphs 167 and 168 above, the earlier international registration is distinctive to an average degree.

207 In the present case, it should be found that, first, the goods covered by the mark applied for are dissimilar or similar to a low degree to the goods and services covered by the earlier international registration.

208 Secondly, it should be observed that the mark applied for has only a low degree of visual and phonetic similarity with the earlier international registration and is conceptually dissimilar to that registration.

209 In those circumstances, it must be pointed out that, in essence, in the context of its analysis, the Board of Appeal took into consideration the English-speaking part of the relevant public, which is the part for which a likelihood of confusion, should it exist, is most likely to arise. Thus, it must be held that, in the context of an overall assessment, the visual, phonetic and conceptual differences between the signs at issue, combined with the dissimilarity or low degree of similarity between the goods and services at issue and the existence of the figurative element of the mark applied for, are sufficient to prevent the similarities arising from the fact that the earlier international registration and the mark applied for have in common the letters ‘j’, ‘u’, ‘l’, ‘e’ and ‘s’ occurring in the same order from giving rise to the risk that the relevant public might believe that the goods and services at issue come from the same undertaking or economically linked undertakings.

210 The Board of Appeal was therefore right to find, in the context of an overall assessment, that there was no likelihood of confusion on the part of the relevant public between the earlier international registration and the mark applied for for the purposes of Article 8(1)(b) of Regulation No 207/2009.

211 It follows from all of the foregoing that the third plea must be rejected as unfounded.

D. The fourth plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009

212 In paragraphs 219 to 222 of the contested decision, the Board of Appeal noted that, in accordance with Article 8(5) of Regulation No 207/2009, the earlier mark must, inter alia, have a reputation in the territory in which it is protected. It found that, ‘as mentioned above’, the relevant evidence submitted by the applicant in order to establish the reputation of the earlier marks was limited to the territory of the United Kingdom and could not be taken into account. It concluded that the condition relating to reputation was not satisfied and, therefore, rejected the opposition in so far as it was based on the ground for refusal set out in Article 8(5) of Regulation No 207/2009.

213 The applicant claims that the Board of Appeal made a number of errors in the assessment of that ground for refusal. First, it complains that the Board of Appeal failed to take into account the earlier United Kingdom trade marks and the reputation in the United Kingdom of the earlier EU trade mark and of the earlier international registration. Secondly, it claims that the Board of Appeal erred in finding that the earlier international registration and the earlier EU trade mark had no reputation in the territory of the European Union. The applicant considers, on the one hand, that the assessment in paragraph 222 of the contested decision, according to which the relevant evidence relied on in support of that reputation was limited to the United Kingdom and could not be taken into consideration, is inconsistent with the assessment in paragraph 196 of that decision, according to which the applicant had submitted evidence relating to the use of the earlier EU trade mark and the earlier international registration in other EU Member States. On the other hand, it submits that it provided extensive evidence to establish the reputation of the earlier EU trade mark and of the earlier international registration in other EU Member States.

214 EUIPO disputes the applicant’s arguments.

215 In the first place, in so far as the applicant claims that the assessment in paragraph 222 of the contested decision, according to which the relevant evidence relied on in support of the reputation was limited to the United Kingdom and could not be taken into consideration, is inconsistent with the assessment in paragraph 196 of that decision, which states that the applicant had submitted evidence proving the use of the earlier EU trade mark and the earlier international registration in other EU Member States, it should be noted, as observed by EUIPO, that the Board of Appeal, also in paragraph 222, used the wording ‘as mentioned above’. In so doing, it referred back to the analysis of the evidence which it carried out in the context of the assessment of the distinctiveness of the earlier EU trade mark, where it found, in essence, that that evidence was insufficient.

216 In the second place, as regards the applicant’s argument that the Board of Appeal erred in failing to take into account the earlier United Kingdom trade marks, it should be borne in mind that, in so far as the earlier United Kingdom trade marks no longer enjoyed the status of trade marks registered in a Member State within the meaning of Article 8(2)(a)(ii) of Regulation No 207/2009 at the time of the contested decision, for the same reasons as those set out in paragraphs 31 to 57 above, the Board of Appeal was also required not to take them into account in the examination of the ground for refusal set out in Article 8(5) of Regulation No 207/2009.

217 Furthermore, for the same reasons as those set out in paragraphs 155 to 158 above, which are applicable mutatis mutandis to reputation, the Board of Appeal did not err in omitting to take into account the evidence relating to the reputation of the earlier EU trade mark and of the earlier international registration in the territory of the United Kingdom.

218 In the third place, in so far as the applicant complains, in essence, that the Board of Appeal failed to take into account the evidence which it submitted in order to establish the reputation of the earlier EU trade mark and of the earlier international registration in the EU Member States, it must be borne in mind that, under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2 of that article, 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.

219 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, 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. Fourthly, 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 (judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS) , T‑215/03, EU:T:2007:93, paragraphs 34 and 35, and of 11 July 2007, Mülhens v OHIM – Minoronzoni (TOSCA BLU) , T‑150/04, EU:T:2007:214, paragraphs 54 and 55).

220 According to the case-law, in order to satisfy the requirement of reputation, a mark must be known to a significant part of the public concerned by the goods or services covered by that trade mark. In examining that condition, it is necessary to take into consideration all the relevant facts of the case, in particular the market share held by the earlier mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it. There is, however, no requirement for that mark to be known by a given percentage of the relevant public or for its reputation to cover all the territory concerned, so long as that reputation exists in a substantial part of that territory (see judgment of 29 January 2025, Desimo v EUIPO – Dulces y conservas Helios (ELIOS) , T‑607/23, not published, EU:T:2025:112, paragraph 114 and the case-law cited).

221 In the present case, it must be pointed out, as observed by EUIPO, that the applicant has not provided specific evidence to show that a significant part of the relevant public in the European Union has become accustomed to the earlier EU trade mark and to the earlier international registration for the goods and services which they cover.

222 As is apparent from paragraphs 159 to 162 above, a significant part of the evidence relates to the use of the sign Tom Joule and the applicant has not established that that sign could serve to identify, in the minds of the relevant class of persons, the goods to which it relates as originating from its undertaking.

223 As to the remainder, it must be pointed out that the other evidence submitted by the applicant does not contain any opinion polls of the relevant public relating, inter alia, to its perception of the earlier EU trade mark and the earlier international registration or to the question of which elements were memorised or, at the very least, recognised by that public, when faced with various marks in the course of its shopping, as referring to the applicant’s goods and services. In particular, the applicant has not, in addition, submitted opinion polls in which target persons who were shown the earlier EU trade mark and the earlier international registration had to state whether they knew them and, if so, what they associated them with (judgment of 12 February 2015, Compagnie des montres Longines, Francillon v OHIM – Staccata (QUARTODIMIGLIO QM) , T‑76/13, not published, EU:T:2015:94, paragraph 91).

224 The Board of Appeal did not therefore err in finding that the third condition set out in Article 8(5) of Regulation No 207/2009 and referred to in paragraph 219 above was not satisfied in the present case.

225 In the light of the foregoing, the fourth plea must be rejected as unfounded and, consequently, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s request that the Court ‘substitute its own decision’ for that of the Board of Appeal.

IV. Costs

226 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.

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

On those grounds,

THE GENERAL COURT (Ninth Chamber, sitting with five Judges)

hereby:

1. Dismisses the action;

2. Orders Joules Ltd to pay the costs.

Delivered in open court in Luxembourg on 30 September 2026.

* Language of the case: English.