Judgment of the General Court (Ninth Chamber) 21 October 2026

JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

21 October 2026 ( * )

( EU trade mark – Opposition proceedings – Application for the EU figurative mark VOLARE – Earlier EU figurative marks VOLARE and VOLARE MAGAZINE – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – Similarity of the goods and services – Complementary nature )

In Case T‑513/25,

Volotea, SL, established in Barcelona (Spain), represented by I. Temiño Ceniceros, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,

defendant,

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

Italia Trasporto Aereo SpA (ITA Airways), established in Rome (Italy), represented by A. Mascetti and G. Beltrame, lawyers,

THE GENERAL COURT (Ninth Chamber),

composed of S. Kingston, President, A. Marcoulli (Rapporteur) and J. Hettne, Judges,

Registrar: J. Čuboň, Administrator,

having regard to the written part of the procedure,

further to the hearing on 16 June 2026,

gives the following

Judgment

1 By its action under Article 263 TFEU, the applicant, Volotea, SL, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 June 2025 (Case R 1377/2024‑1) (‘the contested decision’).

Background to the dispute

2 On 10 January 2022, the intervener, Italia Trasporto Aereo SpA (ITA Airways), filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:

3 The mark applied for covers goods and services in Classes 9, 35, 36 and 39 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, for Classes 9, 35 and 36, to the following description:

– Class 9: ‘Encoded loyalty cards; software for the management of loyalty programs; downloadable mobile applications for the management of loyalty programs; none relating to land vehicles or the automotive industry’;

– Class 35: ‘Advertising; organisation, operation and the control in relation to the following goods: promotional incentive schemes; administration of frequent flyer programs; administration of consumer loyalty programs; none relating to land vehicles or the automotive industry’;

– Class 36: ‘Issuance of tokens of value for use in respect of loyalty schemes; none relating to land vehicles or the automotive industry’.

4 On 27 June 2022, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

5 The opposition was based on the following earlier marks:

– EU mark registered on 1 October 2021 under No 18468285 in respect of the following figurative sign:

– EU mark registered on 8 October 2021 under No 18468287 in respect of the following figurative sign:

6 The earlier mark registered under No 18468285 covered, inter alia, goods and services in Classes 9, 16 and 41, corresponding, for each of those classes, to the following description:

– Class 9: ‘Electronic publications, downloadable, none of the aforementioned goods in relation to the following fields: vehicles for land use, the automotive industry’;

– Class 16: ‘Printed publications; periodicals; printed periodicals in the field of tourism, none of the aforesaid goods relating to the following fields: vehicles for land use, the automotive industry’;

– Class 41: ‘Providing online publications, none of the aforesaid relating to land vehicles or the automotive industry’.

7 The earlier mark registered under No 18468287 covered, inter alia, goods and services in Classes 9, 16 and 41, corresponding, for each of those classes, to the following description:

– Class 9: ‘Electronic publications, downloadable’;

– Class 16: ‘Printed publications; periodicals; printed periodicals in the field of tourism’;

– Class 41: ‘Providing online publications’.

8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

9 On 10 June 2024, the Opposition Division rejected the opposition in its entirety.

10 On 8 July 2024, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.

11 By the contested decision, the Board of Appeal dismissed the appeal on the ground that the goods and services at issue were dissimilar and that, consequently, the opposition based on a likelihood of confusion could not be upheld.

Forms of order sought

12 The applicant claims that the Court should:

– annul the contested decision;

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

13 EUIPO contends that the Court should:

– dismiss the action;

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

14 The intervener contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs, including those incurred before the Opposition Division and the Board of Appeal.

Law

15 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. That plea is divided, in essence, into two parts, alleging, first, an error of assessment regarding the lack of similarity between the goods and services at issue, including the definition of the public at which those goods and services are aimed and, secondly, an error of assessment regarding the absence of a likelihood of confusion.

16 Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not 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.

17 For the purpose of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel) , T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

Admissibility of the evidence contained in Annexes 4 to 6 to the application

18 The applicant produced several annexes in support of its application. Annex 4 to the application consists of a copy of the applicant’s online publication ‘VOLARE MAGAZINE’. Annex 5 comprises a sample of the additional services offered by the intervener’s ‘VOLARE’ loyalty program. Annex 6 consists of various newsletters sent in connection with the intervener’s loyalty program.

19 EUIPO contends that the documents constituting Annexes 4, 5 and 6 to the application were produced for the first time before the Court and are therefore inadmissible.

20 When questioned at the hearing, the applicant denied that those documents are inadmissible.

21 In that regard, the purpose of actions before the Court under Article 72(2) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal. Pursuant to Article 95 of Regulation 2017/1001, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005, SPAG v OHIM – Dann and Backer (HOOLIGAN) , T‑57/03, EU:T:2005:29, paragraph 17 and the case-law cited).

22 Therefore, it is not the Court’s function to review the facts in the light of documents adduced for the first time before it. To allow the examination of such evidence would be contrary to Article 188 of the Rules of Procedure, according to which the parties’ pleadings may not change the subject matter of the proceedings before the Board of Appeal. Accordingly, the evidence submitted for the first time before the Court must be declared inadmissible and there is no need to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI) , T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).

23 In the present case, it must be stated that, as is apparent from the file, since the documents contained in Annexes 4, 5 and 6 were not produced during the proceedings before EUIPO, they must be declared inadmissible.

The first part, concerning the comparison of the goods and services at issue

24 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, purpose, method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken) , T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).

25 Goods and services intended for different publics cannot be regarded as substitutable one for the other or, consequently, as being in competition with each other (see, to that effect, judgment of 22 January 2009, easyHotel , T‑316/07, EU:T:2009:14, paragraph 56).

26 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. By definition, goods or services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel , T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

27 It is in the light of those principles that the applicant’s arguments relating to the similarity between the goods and services covered by the earlier marks and those covered by the mark applied for in Classes 9, 35 and 36 must be examined. Furthermore, it should be noted that the applicant does not put forward any arguments challenging the Board of Appeal’s assessment as regards the lack of similarity between the goods and services covered by the earlier marks and the services covered by the mark applied for in Class 39, which, since it is not the subject of the present case, has therefore become final.

Preliminary observations on the goods and services at issue

28 The applicant submits that, in the comparison of the goods and services at issue, it is necessary to take into account the specific characteristics of the market sector concerned, which is that of air transport. Accordingly, it relies on explanations and evidence concerning its activities and those of the intervener in relation to the marks at issue in the air transport sector.

29 EUIPO and the intervener dispute the applicant’s arguments.

30 In that regard, first, it must be borne in mind that the assessment of the similarity of the goods and services at issue is carried out by taking into account the group of goods and services covered by the marks at issue and not the goods and services actually marketed under those marks (see, to that effect, judgment of 16 June 2010, Kureha v OHIM – Sanofi-Aventis (KREMEZIN) , T‑487/08, not published, EU:T:2010:237, paragraph 71). Consequently, as the intervener submits, the actual use of the marks at issue by the applicant and by the intervener is irrelevant in the comparison of the goods and services at issue.

31 Secondly, it must be borne in mind that the comparison of the goods and services at issue must be based on the list of goods and services covered by the marks at issue and that that list must be interpreted taking into account the literal meaning of the indication or term in question (see, to that effect, judgment of 24 May 2023, Granini France v EUIPO – Pichler (Joro) , T‑68/22, not published, EU:T:2023:287, paragraph 20 and the case-law cited). Accordingly, for the purpose of examining the similarity of the goods and services at issue, it is necessary to take into consideration the objective characteristics and qualities of those goods and services, as set out in the lists of goods and services covered by the marks at issue (see, to that effect, judgment of 12 February 2015, Klaes v OHIM – Klaes Kunststoffe (Klaes) , T‑453/13, not published, EU:T:2015:98, paragraph 29 and the case-law cited).

32 To that end, as is apparent from the case-law cited in paragraph 24 above, all the relevant factors characterising the relationship between the goods and services in question should be taken into account, which may also include, as the applicant rightly points out, the characteristics of the market sector concerned by the lists of goods and services at issue, if those characteristics are relevant for the objective assessment of the relationship between those goods and services.

33 In the present case, first, the goods and services in Classes 9, 35 and 36 covered by the mark applied for concern, in essence, the loyalty programs sector and, as regards Class 35, also the promotional incentive schemes sector, excluding goods and services relating to land vehicles and the automotive industry. Only the service of ‘administration of frequent flyer programs’ in Class 35 covered by the mark applied for relates to a more specific economic sector, namely that of air transport. Secondly, the goods and services covered by the earlier marks in Classes 9, 16 and 41 concern, in essence, the publications sector, including periodicals in the field of tourism, also excluding goods and services relating to land vehicles and the automotive industry. Accordingly, contrary to what the applicant claims, the market sector concerned by the lists of goods and services at issue is not that of air transport, except for the sole service of ‘administration of frequent flyer programs’ in Class 35 covered by the mark applied for.

34 However, beyond that service, since the lists of goods and services at issue are broad in scope – with the sole exclusion of those relating to land vehicles and the automotive industry – they also cover those goods and services in the air transport sector. Consequently, contrary to what the intervener submits, the applicant can legitimately rely on such goods and services in the air transport sector as examples included in the general categories of goods and services in those lists (see, by analogy, judgment of 20 November 2024, Domator24 v EUIPO – ACER (PREDATOR) , T‑33/23, not published, EU:T:2024:845, paragraph 58).

35 Moreover, it is apparent from paragraphs 20 to 29 of the contested decision that the Board of Appeal compared the goods and services at issue in accordance with those principles. The Board of Appeal took into account the broad scope of the lists of goods and services at issue and referred only, in paragraphs 24, 26 and 27 of the contested decision, to airlines by way of example, as well as, in paragraph 21 of that decision, in connection with the Opposition Division’s assessment, to loyalty offers and services offered ‘on board’.

36 It is in the light of those considerations concerning the scope of the goods and services at issue that the applicant’s arguments relating to the goods and services covered by the mark applied for must be examined.

The goods in Class 9 covered by the mark applied for

37 In paragraphs 20 to 24 and 29 of the contested decision, the Board of Appeal compared the goods in Class 9 covered by the mark applied for with the goods and services in Classes 9, 16 and 41 covered by the earlier marks and concluded that they were different.

38 In essence, first of all, in paragraph 21 of the contested decision, the Board of Appeal found that, although undertakings could inform their customers of their loyalty offers and services via publications, the publications covered by the earlier marks served as ancillary promotional items distributed alongside the provision or sale of other services and, as such, were not complementary to the goods in Class 9 covered by the mark applied for. In addition, the Board of Appeal added that it had not been demonstrated that the producers of the goods and services at issue were the same.

39 Next, in paragraph 22 of the contested decision, the Board of Appeal found, in essence, that ‘encoded loyalty cards’ covered by the mark applied for could be featured in and promoted by the publications covered by the earlier marks. However, the Board of Appeal noted that those publications could feature any subject matter and that that purely ancillary inclusion did not suffice to make them similar. According to the Board of Appeal, the nature, purpose and method of use of the goods and services at issue were different and there was also no complementarity between them.

40 Lastly, in paragraphs 23 and 24 of the contested decision, the Board of Appeal found, in essence, that the ‘software’ and ‘downloadable mobile applications’ for the management of loyalty programs covered by the mark applied for were dissimilar to the downloadable electronic publications covered by the earlier marks, since they differed in nature and purpose and in their relevant publics, distribution channels and producers.

– ‘Encoded loyalty cards’ in Class 9

41 The applicant claims that ‘encoded loyalty cards’ covered by the mark applied for include ‘virtual’ cards, which are sent to consumers via an electronic publication for use and download. Therefore, according to the applicant, downloadable electronic publications are the means by which virtual encoded loyalty cards reach consumers. In addition, such publications are an essential or even an indispensable tool for the use of those loyalty cards. Without downloadable electronic publications or the distribution of online publications, encoded loyalty cards could not function or be offered. Information plays an essential role in maintaining the interest and loyalty of consumers. Consequently, the nature, purpose and method of use of virtual encoded loyalty cards and downloadable electronic publications are very similar, which makes it possible to establish that they are complementary.

42 EUIPO contends that ‘encoded loyalty cards’ exist only in physical format and that, therefore, they cannot reach customers via electronic publications. There is no link between those cards and the goods and services covered by the earlier marks. Furthermore, according to EUIPO, such cards are purchased by companies to distribute to their customers, usually free of charge, and the distribution of those cards to customers therefore does not constitute marketing of those cards. Those cards are therefore aimed at a professional public.

43 The intervener submits that ‘encoded loyalty cards’ exist in physical format and that it is incorrect to consider that they reach the public via electronic publications. Furthermore, such cards do not require publications in order to function.

44 In the first place, it should be noted that, contrary to what EUIPO and the intervener submit, the concept of ‘encoded loyalty cards’ covered by the mark applied for does not appear to be limited to cards in physical format, but is sufficiently broad to include cards in virtual format, as the applicant argues. Although the ‘encoded’ nature of a card may take the form of a magnetic tape or a chip embedded in the card, it is now common for such an ‘encoded’ card to appear in an entirely dematerialised manner, as with bank cards. The same is therefore true of loyalty cards.

45 Next, as is apparent from the explanations given by the parties at the hearing, the concept of ‘encoded loyalty card’ refers to a personal loyalty card which is linked to the status – and, more particularly, the customer account or loyalty account – of a given person in relation to an undertaking.

46 Lastly, contrary to what EUIPO submits, it cannot be held that ‘encoded loyalty cards’ are marketed only by undertakings to other undertakings, which purchase them in order to distribute them free of charge to their customers. On the contrary, as the applicant’s explanations show, it cannot be ruled out that such cards may be produced directly by those undertakings, particularly when they are in virtual format, and be distributed by them to their customers. Consequently, contrary to what EUIPO submits, the public at which ‘encoded loyalty cards’ are aimed is not only the professional public, but also the general public.

47 Moreover, as the Board of Appeal pointed out in paragraph 23 of the contested decision, the same applies to ‘printed publications’ and ‘electronic publications, downloadable’ covered by the earlier marks, which are aimed at both the professional public and the general public. That is also the case for the service of ‘providing online publications’ covered by the earlier marks, since it consists of providing online access to those electronic publications, to the professional public and to the general public at which they are aimed. It follows that ‘encoded loyalty cards’ and those publications and the service of providing them online are aimed at the same relevant public.

48 In the second place, it is true that, as the Board of Appeal stated, in essence, in the contested decision, a downloadable electronic publication, such as a periodical, can feature any subject matter and is intended to be read by the public to which it is distributed. Accordingly, the fact that a certain good or service features in a downloadable electronic publication does not, on that ground alone, make such a publication similar to that good or service, or indispensable or important for its use. As the Board of Appeal pointed out in the contested decision, the fact that a good or service features in a downloadable electronic publication usually has only an ancillary function – of a promotional or informative nature – in relation to that good or service.

49 Such a finding is, moreover, consistent with the case-law according to which, where certain goods or services serve only to support or supplement other goods or services, they are not considered to be complementary within the meaning of the case-law which has been referred to in paragraph 26 above. That applies, in particular, to goods used for advertising or promotion, which are not complementary to the goods advertised or promoted, but can be regarded instead as ancillary to those goods (see, to that effect, judgment of 8 June 2022, Deutschtec v EUIPO – Group A (HOLUX) , T‑738/20, not published, EU:T:2022:343, paragraph 62).

50 However, such reasoning cannot lead to the conclusion that publications are ancillary to any other good or service featured therein, regardless of their objective characteristics and qualities.

51 First, in the present case, as the applicant points out, the purpose of an encoded loyalty card is, for the undertaking issuing it, to retain customers and, for customers who are cardholders, to enjoy the benefits of a loyalty program. Printed or downloadable electronic publications are also likely to have the purpose of retaining customers for the undertaking issuing them and an information purpose enabling customers to enjoy the benefits of a loyalty program for the public to which they are distributed. The goods concerned may be used together in the context of a loyalty program. The same is true of the service of ‘providing online publications’, which is intended to give the relevant public access to such publications. Accordingly, contrary to the finding of the Board of Appeal in paragraph 22 of the contested decision, the purpose of ‘encoded loyalty cards’ and publications, and the purpose of the service of providing them online, are not different, but may overlap. In addition, they may come from the same undertakings and reach the relevant public through the same physical or virtual distribution channels.

52 Secondly, the applicant submits that publications are complementary to encoded loyalty cards on the ground, first, that virtual encoded loyalty cards are sent via downloadable electronic publications and, secondly, that publications are necessary for the use of those cards.

53 As the applicant acknowledged at the hearing, an encoded loyalty card, which is personal, cannot be sent to a given customer via a publication, which is aimed at the general public. Although it is possible, admittedly, that an encoded loyalty card could reach a given customer at the same time as a publication, such a publication is not the means by which the card is sent to the customer, but is instead supplementary to the sending process. Encoded loyalty cards are sent to customers who have been issued with those cards via a personal communication.

54 However, although encoded loyalty cards are not sent via publications, the fact remains that – as the applicant claims – the use of such a card by its holder is closely linked to the information he or she receives from the undertaking which issued him or her the card. That information, conveyed via printed or downloadable electronic publications, such as bulletins or magazines, enables the holder of an encoded loyalty card to know the advantages associated with the use of that card and ultimately leads him or her to use it in order to benefit from such advantages.

55 Accordingly, contrary to the finding of the Board of Appeal in paragraph 22 of the contested decision, such publications are not merely ancillary to encoded loyalty cards as the applicant claims; they are important for enabling the relevant public to use those cards, as is the service of providing online publications, to the extent that that public could think that responsibility for the production or provision of those goods and services lies with the same undertaking. It follows that publications and the service of providing them online are complementary to encoded loyalty cards.

56 It follows from the foregoing that the Board of Appeal made an error of assessment in finding, in the contested decision, that printed or downloadable electronic publications and the service of providing them online, covered by the earlier marks, were dissimilar to ‘encoded loyalty cards’ in Class 9 covered by the mark applied for, when in fact those goods and services are complementary and share the same public, purpose, origin and distribution channel.

– ‘Software [and downloadable mobile applications] for the management of loyalty programs’ in Class 9

57 The applicant submits that software and downloadable mobile applications for the management of loyalty programs are aimed at the general public and that those goods are complementary to downloadable electronic publications. According to the applicant, they have the same nature and method of use, irrespective of the purpose for which they are intended.

58 EUIPO and the intervener dispute the applicant’s arguments.

59 In the first place, contrary to what the applicant claims, it cannot be held that ‘software [and downloadable mobile applications] for the management of loyalty programs’ are aimed at the general public. That software and those downloadable mobile applications are very specifically designed to manage loyalty programs. The management of a loyalty program refers to the management of such a program by the undertaking offering it and not to the use, by the final consumer, of his or her customer account or loyalty card. The Board of Appeal therefore did not make an error of assessment in considering that ‘software [and downloadable mobile applications] for the management of loyalty programs’ were aimed at a professional public.

60 In the second place, the applicant’s other arguments are also insufficient to call into question the validity of the Board of Appeal’s assessment as to the lack of similarity between ‘downloadable electronic publications’ and ‘software [and downloadable mobile applications] for the management of loyalty programs’.

61 First, as the Board of Appeal noted in paragraph 23 of the contested decision, those goods have a different purpose and nature. The software and downloadable mobile applications at issue are tools for use on computer devices to perform specific professional functions, namely the management of loyalty programs, whereas downloadable electronic publications are texts intended to be distributed to the public, including to a professional public, and to be read by that public on computer devices for informational purposes. Although those goods are therefore certainly all used on computer devices, they nevertheless have a different nature, purpose and method of use.

62 Secondly, in the present case, there is nothing to suggest that downloadable electronic publications are complementary to software and downloadable mobile applications for the management of loyalty programs. Although downloadable electronic publications may certainly present or accompany such software and professional downloadable mobile applications, they have only an ancillary function in relation to them, in accordance with the considerations set out in paragraphs 48 and 49 above. The purchase and use of that software and those applications by the professional public at which they are aimed is in no way linked to the purchase and use of downloadable electronic publications, which are neither indispensable nor important for that purpose.

63 Furthermore, in so far as the applicant relies on the decision of the First Board of Appeal of EUIPO of 24 February 2023 (Case R 1682/2022‑1), it is sufficient to note that that decision concerned the comparison between different lists of goods and services. That Board of Appeal did not draw a comparison between ‘downloadable electronic publications’ in Class 9 and ‘software [and downloadable mobile applications] for the management of loyalty programs’ in Class 9, such as that at issue in the present case, but did draw a comparison between such publications ‘excluding the ones in connection with customer loyalty programs’ in Class 9 and services consisting of ‘promotional activities aimed at obtaining customer and personnel loyalty’ and ‘management of a loyalty program in the field of air transport’ in Class 35. Consequently, that decision of the Board of Appeal is irrelevant in the present case.

64 In any event, in that regard, it should be borne in mind that the decisions concerning registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation 2017/1001 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of a previous decision-making practice (see, to that effect, judgment of 26 April 2007, Alcon v OHIM , C‑412/05 P, EU:C:2007:252, paragraph 65).

65 In the light of the findings made in paragraphs 59 to 62 above, the decision of the First Board of Appeal referred to in paragraph 63 above cannot have any effect on the legality of the contested decision.

66 It follows from the foregoing that the applicant’s arguments are not capable of calling into question the Board of Appeal’s assessment that ‘software [and downloadable mobile applications] for the management of loyalty programs’ in Class 9 covered by the mark applied for are different to the goods and services covered by the earlier marks.

The services in Class 35 covered by the mark applied for

67 In paragraphs 25, 26 and 29 of the contested decision, the Board of Appeal compared the services in Class 35 covered by the mark applied for with the goods and services covered by the earlier marks and concluded that they were also different. First of all, the Board of Appeal noted that any service could involve communication with customers via printed, downloadable electronic or online publications, and considered that that ancillary fact did not make such a service similar to those publications. Next, the Board of Appeal found that the services in Class 35 had an entirely different nature and purpose from those of the goods and services covered by the earlier marks and that they were aimed at a professional public. Consequently, according to the Board of Appeal, the goods and services at issue did not share the same relevant publics and distribution channels. Lastly, the Board of Appeal found that it had not been demonstrated, and it was not commonly known, that the suppliers of the goods and services at issue overlapped.

68 Although the applicant acknowledges that the goods and services at issue do not have the same nature or purpose, it submits that downloadable electronic publications are complementary to the organisation and control of promotional incentive schemes because they are necessary for the provision of such services and they have the same providers, distribution channels and publics. In that regard, the applicant submits, in essence, that the goods and services at issue are all aimed at the general public. It also states that the services of the administration of frequent flyer programs and of the management of consumer loyalty programs cannot function or be offered without downloadable electronic publications or the distribution of online publications.

69 EUIPO and the intervener dispute the applicant’s arguments.

70 In the first place, as regards the public at which the services in Class 35 covered by the mark applied for are aimed, it must be pointed out, first, that ‘advertising’ services are used by professionals and not by the general public (see, to that effect and by analogy, judgment of 13 March 2018, Kiosked v EUIPO – VRT (K) , T‑824/16, EU:T:2018:133, paragraph 39). Those services allow professionals to advertise the goods and services which they market, whereas end consumers forming part of the general public do not use advertising services.

71 The same applies, secondly, to the services of ‘organisation, operation and … control in relation to the following goods: promotional incentive schemes’ and for the services of ‘administration of frequent flyer programs’ and ‘administration of consumer loyalty programs’, which are provided to professionals for the organisation, operation, control and administration of their promotional and loyalty activities, including in the air transport sector specifically in relation to frequent flyers. End consumers from the general public do not seek out service providers to organise, operate, control and administer promotional incentive schemes and loyalty programs.

72 Consequently, as the Board of Appeal noted in the contested decision and contrary to what is argued by the applicant, the services in Class 35 covered by the mark applied for are aimed at a professional public.

73 However, as has already been noted in paragraph 47 above, publications and the service of providing them online covered by the earlier marks are aimed both at a professional public and at the general public. Accordingly, the relevant public targeted by the goods and services at issue is not entirely different, contrary to what the Board of Appeal found in paragraph 26 of the contested decision. The professional public is the target audience both for the services in Class 35 covered by the mark applied for and for the goods and services covered by the earlier marks.

74 However, that finding is not, in itself, such as to call into question the Board of Appeal’s finding as to the lack of similarity of those goods and services. In accordance with the case-law, goods and services which are aimed at the same consumers are not necessarily identical or similar (see, to that effect, judgment of 7 June 2023, Laboratorios Ern v EUIPO – BRM Extremities (BIOPLAN) , T‑543/22, not published, EU:T:2023:320, paragraph 37 and the case-law cited).

75 In the second place, as regards the comparison of the goods and services at issue, first, the applicant does not dispute that those goods and services differ in their nature and purpose. Although it maintains that they have the same suppliers and distribution channels, such a claim cannot be accepted. In the present case, there is nothing to suggest that the supplier of professional services of ‘organisation, operation and … control in relation to the following goods: promotional incentive schemes’, ‘administration of frequent flyer programs’ and ‘administration of consumer loyalty programs’ also market printed or downloadable electronic publications or that it is possible to obtain such publications through the same commercial channel as that through which those professional services are supplied.

76 Secondly, as the Board of Appeal observed, in essence, in paragraph 26 of the contested decision, the fact that the provision of the professional services covered by the mark applied for may be accompanied by publications aimed at business customers of those services is merely an ancillary fact, since, in accordance with the considerations set out in paragraphs 48 and 49 above, publications serve solely to present, promote or supplement those services. Moreover, there is nothing to suggest that publications or the fact of providing them online are indispensable or important for the provision of those professional services of organising, operating, controlling and administering to the business customers to whom they are aimed or for the use of those services by those customers.

77 Furthermore, in so far as the applicant relies on the decision of the First Board of Appeal of EUIPO referred to in paragraph 63 above, it is sufficient to note that although that Board of Appeal found therein that goods consisting of ‘[downloadable electronic publications] …, excluding the ones in connection with customer loyalty programs’ in Class 9 were complementary to services consisting of ‘promotional activities aimed at obtaining customer and personnel loyalty’ and of ‘management of a loyalty program in the field of air transport’ in Class 35, that decision was not the subject of an action before the Courts of the European Union.

78 In accordance with the case-law cited in paragraph 64 above, in view of the findings made in paragraphs 75 and 76 above, that decision of the First Board of Appeal, referred to in paragraph 63 above, cannot have any effect on the legality of the contested decision.

79 It follows from all the foregoing that the applicant’s arguments are not capable of calling into question the Board of Appeal’s assessment that the services in Class 35 covered by the mark applied for are different to the goods and services covered by the earlier marks.

The services in Class 36 covered by the mark applied for

80 In paragraphs 27 and 29 of the contested decision, the Board of Appeal found that the services in Class 36 covered by the mark applied for were different to the goods and services covered by the earlier marks. According to the Board of Appeal, the goods and services at issue differ in their nature, purpose and method of use. In addition, the services in Class 36 are aimed at a professional public. Lastly, it cannot be held that the distribution channels and the providers of the goods and services at issue overlap.

81 The applicant submits, first, that the services in Class 36 covered by the mark applied for are aimed at the general public and, secondly, that tokens of value are distributed to consumers by means of the goods and services covered by the earlier marks, in particular via downloadable electronic publications, which are therefore indispensable in order to provide those services and for consumers to be able to make effective use of them. In essence, the publications covered by the earlier marks are necessary in order to offer and use the service for the issuance of tokens of value. Information plays an essential role in maintaining the interest and loyalty of consumers. The applicant adds that the services in Class 36 covered by the mark applied for overlap with the goods and services covered by the earlier marks as regards their nature and method of use, the latter serving as the vehicle for providing the consumer with those services in Class 36, even though their suppliers may be different. The goods and services at issue are therefore complementary.

82 EUIPO contends that the services at issue are aimed at professionals, whereas publications are generally aimed at end customers. Those goods and services have different distribution channels and are provided by different undertakings. They also differ in nature, purpose and method of use.

83 The intervener submits that publications do not provide tokens of value, which are sent by email or by any other means of communication. Furthermore, the fact that a product may be sent to a consumer through a publication does not create any complementarity.

84 In the first place, it should be noted that the concept of the ‘issuance of tokens of value for use in respect of loyalty schemes’ refers to a service consisting, as is apparent from the common meaning of the word ‘issuance’, of putting tokens of value into circulation. In addition, it should be noted that they are specifically tokens of value ‘for use in respect of loyalty schemes’.

85 In the second place, as regards the public at which those services are aimed, it may be the case, admittedly, as the Board of Appeal pointed out in the contested decision, that undertakings wish to secure the services of a third-party provider for the issuance of tokens of value in respect of their loyalty schemes. However, it should be noted that tokens of value are intended to be used by the customers of those undertakings and that the service of putting those tokens into circulation is specifically intended to reach those customers. It is, in particular, common, including in the air transport sector to which the applicant refers, for the customer of an undertaking to be able to convert directly, for example in his or her customer account on that undertaking’s website, the points accumulated through his or her participation in a loyalty scheme into tokens of value for the purchase of new goods and services from that undertaking. Accordingly, such a service for the issuance of tokens of value in respect of a loyalty scheme is also directly aimed at end customers forming part of the general public.

86 Consequently, contrary to what the Board of Appeal found in paragraph 27 of the contested decision, the service for the issuance of those tokens of value is aimed not only at a professional public, but also at the general public.

87 As has already been noted in paragraphs 47 and 73 above, the same is true of publications and the service of providing them online covered by the earlier marks, with the result that the goods and services at issue are aimed at the same relevant public.

88 However, that finding is not, in itself, such as to call into question the Board of Appeal’s finding as to the lack of similarity of those goods and services. In accordance with the case-law cited in paragraph 74 above, goods and services which are aimed at the same consumers are not necessarily identical or similar.

89 In the third place, it should be noted that, although the applicant claims that publications are indispensable for the sending of tokens of value, first, where the token of value is personal, it cannot be distributed through a publication, which is intended to be disseminated to the general public, but – as the intervener submits, in essence – is the subject of a personal communication to the customer in question. It is apparent, in particular, from the applicant’s examples from the air transport sector that, in that sector, customers do not receive tokens of value through publications, but via a virtual platform on which they manage their loyalty account and can exchange accumulated points for tokens of value. Furthermore, it is also possible that, where tokens of value are not personalised, they are made available via printed or downloadable electronic publications, in particular in the form of coupons in newsletters or magazines. Publishing – including the provision of online publications – may therefore be the means by which, for the relevant public, the issuance of certain tokens of value for use in respect of a loyalty scheme takes place.

90 In addition, in accordance with the considerations already set out in paragraph 54 above, it should be noted that the use of a service for the issuance of tokens of value in respect of a loyalty scheme by a customer participating in that scheme is closely linked to the information which that customer receives from the undertaking which created such a scheme. That information, conveyed via printed or downloadable electronic publications, such as bulletins or magazines, informs the customer enrolled in a loyalty scheme of the opportunities to obtain and use those tokens of value and ultimately prompt him or her to request the issuance of those tokens, in order, inter alia, to purchase new goods or services from that undertaking.

91 It is therefore apparent from the considerations set out in paragraphs 89 and 90 above that publications and the service of providing them online are important for the provision and use of the service of ‘issuance of tokens of value for use in respect of loyalty schemes’ by the relevant public, with the result that that public may think that the same undertaking is responsible for the production and supply of those goods and services. It follows that publications and the service of providing them online are complementary to the service for the issuance of tokens of value for use in frequent flyer programs.

92 In addition, it should be noted that the purpose of a service for the issuance of tokens of value intended for use in a loyalty scheme is, for the undertaking issuing it, to retain customers and, for customers who use it, to enjoy the benefits of a loyalty program. Accordingly, for the same reasons as those set out in paragraph 51 above, and contrary to what the Board of Appeal found in paragraph 27 of the contested decision, the purposes of such a service are not different, but may overlap with those of publications and with that of the service of providing those online publications. Those goods and services may be used together in the context of a loyalty program. The undertakings responsible for those goods and services – publications, providing online publications, issuance of tokens of value in respect of a loyalty scheme – may therefore be the same, as may the channels through which they reach the public at which they are aimed.

93 It follows from the foregoing that the Board of Appeal made an error of assessment in finding, in the contested decision, that printed or downloadable electronic publications, as well as the service of providing them online, covered by the earlier marks, were dissimilar to the service of ‘issuance of tokens of value for use in respect of loyalty schemes’ in Class 36 covered by the mark applied for, whereas those goods and services are complementary and share the same public, purpose, origin and distribution channel.

94 Furthermore, first, in so far as the applicant relies, in support of its line of argument on the similarity between the goods and services at issue, on what the intervener allegedly argued in the context of proceedings in the United Kingdom concerning the identity or similarity of those goods and services, it is sufficient to note that such an argument is irrelevant, as is Annex 7 to the application, which seeks to support it, since the intervener’s position in that other case is not the subject of the present dispute (see, to that effect, judgment of 16 October 2014, Novartis v OHIM – Tenimenti Angelini (LINEX) , T‑444/12, not published, EU:T:2014:886, paragraph 57).

95 Secondly, again in support of its argument concerning the similarity between the goods and services at issue, the applicant produced before the Court, as an annex to its request for a hearing submitted pursuant to Article 106 of the Rules of Procedure, a decision of the Board of Appeal of the Ufficio Italiano Brevetti e Marchi (Patent and Trade Mark Office, Italy) delivered in proceedings between itself and the intervener. Furthermore, the intervener, as an annex to the observations which it submitted on that document pursuant to Article 85(4) of the Rules of Procedure, produced the claim which it had brought before the Italian courts against that national decision.

96 However, in that regard, it is sufficient to note that, according to settled case-law, the EU trade mark regime is autonomous and the legality of decisions of the Boards of Appeal is to be assessed solely on the basis of Regulation 2017/1001, with the result that EUIPO, or – if an action is brought before it – the General Court, is not required to reach the same conclusions as those arrived at by national authorities or courts in similar circumstances (see judgment of 15 December 2015, LTJ Diffusion v OHIM – Arthur et Aston (ARTHUR & ASTON) , T‑83/14, EU:T:2015:974, paragraph 37 and the case-law cited).

97 Consequently, irrespective of the admissibility of that evidence under Article 85 of the Rules of Procedure on which the parties were heard, both the national decision produced by the applicant and the claim against that decision produced by the intervener are irrelevant in the present case.

98 The first part of the single plea must therefore be upheld in part, in so far as it relates to the similarity between ‘encoded loyalty cards’ in Class 9 and the service of ‘issuance of tokens of value for use in respect of loyalty schemes’ in Class 36 covered by the mark applied for, and printed or downloadable electronic publications and the service of providing them online, covered by the earlier marks and, to that extent, in accordance with paragraph 17 above, it must result in the partial annulment of the contested decision.

The second part, concerning the likelihood of confusion

99 The applicant submits that, since the goods and services at issue are similar to an average to low degree and it is common ground that the signs at issue are identical, there is a likelihood of confusion on the part of the relevant public.

100 In that regard, it is sufficient to recall, as is apparent from paragraph 17 above, that 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, and that those conditions are cumulative.

101 As regards, first, ‘encoded loyalty cards’ in Class 9 and the ‘issuance of tokens of value for use in respect of loyalty schemes’ in Class 36 covered by the mark applied for, as is apparent from paragraphs 56 and 93 above, the Board of Appeal made an error of assessment in finding that they were different to the goods and services covered by the earlier marks and, as is apparent from paragraph 98 above, that error is, in itself, such as to result in the partial annulment of the contested decision in that regard. It is therefore not necessary to examine the second part of the single plea in so far as it relates to those goods and services.

102 Furthermore, it should be noted that, in the contested decision, the Board of Appeal did not carry out either a comparison of the marks at issue or, on that basis, an overall examination of the likelihood of confusion. In its review of the legality of the contested decision, the Court cannot itself carry out such examinations.

103 As regards, secondly, the other goods and services at issue referred to in paragraphs 66 and 79 above, in respect of which the Board of Appeal correctly found that they were different, it is sufficient to note that, in accordance with paragraph 100 above, the Board of Appeal was entitled to exclude, in paragraph 32 of the contested decision, the application of the ground for refusal laid down in Article 8(1)(b) of Regulation 2017/1001 alleging a likelihood of confusion. The second part of the single ground of appeal must therefore be rejected as unfounded in that regard.

104 In the light of all the foregoing considerations, the contested decision must be annulled in part in so far as it rejected the application of the ground for refusal laid down in Article 8(1)(b) of Regulation 2017/1001 by excluding any similarity between ‘encoded loyalty cards’ in Class 9 and the ‘issuance of tokens of value for use in respect of loyalty schemes’ in Class 36 covered by the mark applied for, and printed or downloadable electronic publications and the service of providing them online, covered by the earlier marks, and the remainder of the action must be dismissed.

Costs

105 Under Article 134(3) of the Rules of Procedure, the parties are to bear their own costs where each party succeeds on some and fails on other heads.

106 Since the action has been partly upheld, each party must be ordered to bear their own costs.

107 As regards the submissions of the applicant and the intervener relating to the costs incurred before the Opposition Division, it must be pointed out that, under Article 190(2) of the Rules of Procedure, the costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division. Consequently, the claim regarding the costs relating to the proceedings before the Opposition Division, which do not constitute recoverable costs, is inadmissible (see, to that effect, judgment of 16 May 2017, Airhole Facemasks v EUIPO – sindustrysurf (AIR HOLE FACE MASKS YOU IDIOT) , T‑107/16, EU:T:2017:335, paragraph 53).

108 As regards the submissions of the applicant and the intervener relating to the costs incurred before the Board of Appeal, it is sufficient to note that it will be for the Board of Appeal to decide, in the light of the present judgment, on the costs relating to the proceedings before it (see, to that effect, judgment of 29 May 2018, Uribe-Etxebarría Jiménez v EUIPO – Núcleo de comunicaciones y control (SHERPA) , T‑577/15, EU:T:2018:305, paragraph 94).

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1. Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 2 June 2025 (Case R 1377/2024 ‑ 1) in so far as it concerns ‘encoded loyalty cards; … none relating to land vehicles or the automotive industry’ in Class 9 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and the ‘issuance of tokens of value for use in respect of loyalty schemes; none relating to land vehicles or the automotive industry’ in Class 36;

2. Dismisses the action as to the remainder;

3. Orders Volotea, SL, EUIPO and Italia Trasporto Aereo SpA (ITA Airways) to bear their own respective costs.

Delivered in open court in Luxembourg on 21 October 2026.

* Language of the case: English.