JUDGMENT OF THE GENERAL COURT (Second Chamber)
24 September 2025 (*)
( EU trade mark – Opposition proceedings – International registration designating the European Union – Word mark BTFY – Earlier EU word mark Butterfly – Earlier national trade names Butterfly and BTY – Relative grounds for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – No use in the course of trade of a sign of more than mere local significance – Article 8(4) of Regulation 2017/1001 – No damage to reputation – Article 8(5) of Regulation 2017/1001 )
In Case T‑326/24,
Tamasu Butterfly Europa GmbH, established in Krefeld (Germany), represented by C. Röhl, J. Haßold and P. Richnow, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Eberl, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Domu Brands Ltd, established in Salford (United Kingdom), represented by M. Pemsel, lawyer,
THE GENERAL COURT (Second Chamber),
composed, at the time of the deliberations, of A. Marcoulli, President, J. Schwarcz (Rapporteur) and W. Valasidis, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Tamasu Butterfly Europa GmbH, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 April 2024 (Case R 433/2023-1) (‘the contested decision’).
Background to the dispute
2 On 11 May 2020, the intervener, Domu Brands Ltd, obtained, from the International Bureau of the World Intellectual Property Organization (WIPO), international registration No 1 566 912 designating the European Union in respect of the word mark BTFY. That international registration was notified to EUIPO on 24 December 2020 pursuant to 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).
3 The mark applied for covered goods and services in, inter alia, Classes 18, 21, 24, 25, 28 and 35 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.
4 On 30 April 2021, the applicant, Tamasu Butterfly Europa GmbH, 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 rights:
– the EU word mark Butterfly, registered under number 17 932 135 on 12 December 2018 for goods in Classes 18, 21, 24, 25 and 28;
– the German trade name Butterfly, used in Germany and Europe in the sports and apparel industry;
– the German trade name BTY, used in Germany and Europe in the sports and apparel industry.
6 The grounds put forward in support of the opposition were those referred to in Article 8(1)(b), Article 8(4) and Article 8(5) of Regulation 2017/1001.
7 On 21 December 2022, the Opposition Division rejected the opposition in its entirety.
8 On 21 February 2023, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
9 By the contested decision, the Board of Appeal dismissed the appeal.
10 In the first place, as regards the opposition based on Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal found that the signs at issue were visually and phonetically dissimilar. In addition, it noted that the mark applied for had, prima facie, no meaning, with the result that no conceptual comparison between the signs at issue could be undertaken. The Board of Appeal thus found that those signs were dissimilar and that one of the preconditions for the application of Article 8(1)(b) of Regulation 2017/1001 had not been fulfilled. Therefore, it rejected the opposition based on that ground.
11 In the second place, the Board of Appeal rejected the opposition based on Article 8(4) of Regulation 2017/1001. First, it noted that the applicant had relied on the protection granted to trade names by German law and, more specifically, by the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Law on the protection of trade marks and other signs) of 25 October 1994 (BGBl. 1994 I, p. 3082; ‘the MarkenG’). Second, as regards the trade name BTY, the Board of Appeal found, inter alia, that the applicant had failed to prove its commercial use on a scale of more than mere local significance, and to show the use or existence of any such trade name in Germany. Third, as regards the trade name Butterfly, the Board of Appeal found that, having regard to the conclusion which it had reached concerning the opposition based on Article 8(1)(b) of Regulation 2017/1001, that trade name was dissimilar to the mark applied for and, therefore, that there could be no likelihood of confusion.
12 In the third place, the Board of Appeal found that one of the essential conditions for the application of Article 8(5) of Regulation 2017/1001, namely the identity or similarity of the signs at issue, was not satisfied in the present case and, therefore, rejected the opposition based on that provision.
Forms of order sought
13 The applicant claims, in essence, that the Court should:
– annul the contested decision and refer the case back to the Opposition Division;
– order EUIPO to pay the costs.
14 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.
15 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
16 The applicant relies on three pleas in law. The first plea in law alleges infringement of Article 8(1)(b) of Regulation 2017/1001, the second alleges infringement of Article 8(5) of that regulation and the third alleges infringement of Article 8(4) of that regulation.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
17 In support of the first plea, the applicant claims, in essence, that the Board of Appeal erred in finding that the signs at issue were dissimilar and in ruling out, on that ground, the existence of a likelihood of confusion without first having carried out a global assessment of all the relevant factors, including the enhanced distinctiveness of the earlier mark and the identity of the goods in question.
18 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.
19 The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
The relevant territory and the relevant public
20 In accordance with Article 8(1)(b) of Regulation 2017/1001, whether there is a likelihood of confusion must be assessed in respect 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).
21 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).
22 In the present case, the Board of Appeal found that the relevant territory was that of the European Union and that the relevant public consisted, in essence, of the general public and professionals with an average level of attention.
23 The applicant complains that the Board of Appeal found, in essence, that the general public and the professional public had the same level of attention. According to the applicant, the professional public is somewhat more observant.
24 The intervener contends, in that regard, that the fact that professionals may have a higher level of attention is irrelevant, since it is the public with the lowest level of attention which is decisive for the application of Article 8(1)(b) of Regulation 2017/1001.
25 First, there is no need to call into question the Board of Appeal’s assessments relating to the identification of the relevant territory and the relevant public and the level of attention of the general public, which, moreover, are not disputed by the applicant.
26 Second, it must be stated that the applicant’s argument that, in the present case, the professional public has, in essence, a somewhat higher level of attention than the general public is not substantiated in any way and that there is nothing in the file to invalidate the Board of Appeal’s assessments relating to the level of attention of the professional public in relation to the goods and services at issue in Classes 18, 21, 24, 25, 28 and 35.
27 In any event, assuming that the level of attention of the professional public were higher than that of the general public, which is not established in the present case, it would then be necessary to note that, where the relevant public consists of two categories of consumers, each of which has a different level of attention, the public with the lowest level of attention must be taken into consideration (see judgment of 20 May 2014, Argo Group International Holdings v OHIM – Arisa Assurances (ARIS), T‑247/12, EU:T:2014:258, paragraph 29 and the case-law cited).
28 Therefore, the applicant’s argument must be rejected.
The comparison of the signs
29 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).
30 In the present case, the earlier mark, Butterfly, must be compared to the mark applied for, BTFY.
– The visual comparison
31 In paragraph 21 of the contested decision, the Board of Appeal found, in essence, that separating the groups of letters ‘ut’, ‘er’ and the letter ‘l’ from the term ‘butterfly’, which forms the earlier mark, disregarded, in practice, the fact that that mark, as a whole, consisted of a nine-letter word and constituted an artificial dissection which the general public with an average level of attention was unlikely to perform. Therefore, the Board of Appeal found that the earlier mark was visually dissimilar to the mark applied for, which was a short sign consisting of four consonants.
32 The applicant submits that the Board of Appeal erred in law in finding that there was a visual dissimilarity between the signs at issue. In that regard, it complains, first of all, that the Board of Appeal, in essence, overlooked the fact that the term ‘btfy’, of which the mark applied for consists, is an abbreviation of the term ‘butterfly’, which it resembles greatly. Thus, the average consumer would automatically add the missing letters and would perceive that mark as an abbreviation of ‘butterfly’. Next, the applicant claims that the first letter ‘b’ and the last letter ‘y’ of the signs at issue are identical and that they have a greater visual impact than the middle part of those signs. In addition, it notes that the two middle letters which make up the mark applied for are also present in the earlier mark. Lastly, the applicant submits that, by finding that the term ‘btfy’ had, prima facie, no meaning, the Board of Appeal confirmed that, beyond that initial impression, that term had a meaning which could only be ‘butterfly’. According to the applicant, it is not the first impression that matters but rather the overall impression given by the signs at issue.
33 EUIPO and the intervener dispute the applicant’s arguments.
34 In the present case, first, it must be pointed out that the earlier mark consists of nine letters (‘b’, ‘u’, ‘t’, ‘t’, ‘e’, ‘r’, ‘f’, ‘l’ and ‘y’), whereas the mark applied for is a short sign consisting of only four letters (‘b’, ‘t’, ‘f’ and ‘y’). The mark applied for is therefore less than half of the length of the earlier mark. Second, although the letters which make up the mark applied for appear in the earlier mark, that earlier mark is the term ‘butterfly’, in which the four letters which make up the mark applied for form a whole together with the remaining five letters (‘u’, ‘t’, ‘e’, ‘r’ and ‘l’). Third, it is true that the signs at issue both contain the two consonants ‘t’ and ‘f’, but in different positions, which appear, respectively, in the third and seventh positions in the earlier mark and in the second and third positions in the mark applied for. Moreover, unlike the mark applied for, the earlier mark contains the double consonant ‘t’. In the light of the foregoing and of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on his or her imperfect recollection of them (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26), it must be held that the four letters of which the mark applied for consists will probably not be perceived separately in the earlier mark. It follows that, taken as a whole, the earlier mark gives a different visual impression from that given by the mark applied for.
35 Such a visual dissimilarity cannot be refuted by the applicant’s argument that the first and last elements of the signs at issue are identical and have a greater visual impact than the middle part of those signs. First, it is settled case-law that the assessment of the similarity of the signs at issue must take account of the overall impression created by those signs, since the average consumer normally perceives a mark as a whole and does not proceed to analyse 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; see also, to that effect, judgment of 12 November 2009, Spa Monopole v OHIM – De Francesco Import (SpagO), T‑438/07, EU:T:2009:434, paragraphs 23 and 24). Second, the fact that the first and last letters ‘b’ and ‘y’ are the same in those signs does not lead to the conclusion that they are visually similar, since, assessed as a whole, those signs are substantially dissimilar (see, to that effect, judgment of 26 November 2014, Aldi Einkauf v OHIM – Alifoods (Alifoods), T‑240/13, EU:T:2014:994, paragraph 59 (not published)).
36 Lastly, the applicant’s line of argument that, in essence, the relevant public understands the meaning of the term ‘butterfly’ and will perceive the term ‘btfy’ as an abbreviation of the first term, which is relevant only in the context of the conceptual comparison between the signs at issue, must be rejected as ineffective.
37 In the light of the foregoing, the Board of Appeal did not make an error of assessment in finding that the signs at issue were visually dissimilar.
– The phonetic comparison
38 In paragraph 22 of the contested decision, the Board of Appeal found that the signs at issue were phonetically dissimilar. In essence, according to the Board of Appeal, the mark applied for has four syllables ‘bi’, ‘ti’, ‘ef’, ‘wai’, corresponding to the four letters of which it consists, the pronunciation of which differs from that of the three syllables 
of which the earlier mark consists.
39 The applicant complains that the Board of Appeal, in essence, failed to take into account, first, the cognitive ability of the relevant public instinctively to supplement the missing letters in a term in order to recognise it and, second, the fact that the public is aware that unpronounceable words constitute abbreviations of other words. Thus, according to the applicant, the relevant public will recognise the word ‘butterfly’ in the term ‘btfy’ and, therefore, will pronounce the signs at issue identically.
40 EUIPO and the intervener dispute the applicant’s arguments.
41 It is apparent from the case-law that a large proportion of abbreviations or acronyms are pronounced letter by letter (see, to that effect, judgments of 26 April 2023, Volkswagen v EUIPO – XTG (XTG), T‑154/22, not published, EU:T:2023:218, paragraph 48, and of 20 March 2024, Braunschweiger Versorgungs v EUIPO – B.F. Energy (BF energy), T‑245/23, not published, EU:T:2024:190, paragraph 59).
42 The Board of Appeal was therefore right to find that the mark applied for would be pronounced letter by letter and, therefore, in four syllables. Moreover, it should be noted that, in its written pleadings before the Court, the applicant stated that the public was aware that unpronounceable words were often abbreviations of other words, thus acknowledging, implicitly but necessarily, that the mark applied for was, as such, an unpronounceable word.
43 The Board of Appeal also did not make an error of assessment in finding that the signs at issue did not contain common syllables and that their pronunciation was therefore dissimilar.
44 Lastly, the applicant’s line of argument referred to in paragraph 39 above, according to which, in essence, the relevant public will perceive the term ‘btfy’ as an abbreviation of the term ‘butterfly’, which is relevant only in the context of the conceptual comparison between the signs at issue, must be rejected as ineffective.
45 In the light of the foregoing, the Board of Appeal did not make an error of assessment in finding that the signs at issue were phonetically dissimilar.
– The conceptual comparison
46 In paragraphs 23 and 27 of the contested decision, the Board of Appeal found that, for the English-speaking part of the relevant public, the earlier mark designated an insect with large colourful wings and a thin body and that the mark applied for had, prima facie, no meaning. The Board of Appeal concluded that no conceptual comparison could be made between the signs at issue. In addition, it found, in essence, that the applicant did not show that the term ‘btfy’ would be perceived, as such and with no explanatory context, as conveying the concept of ‘butterfly’.
47 The applicant claims, in essence, that the Board of Appeal erred in finding that the signs at issue were conceptually dissimilar. In that regard, it complains that the Board of Appeal found that the mark applied for had no meaning. According to the applicant, in essence, the relevant public perceives the term ‘btfy’ as being an abbreviation of ‘butterfly’ and attributes the same meaning to it.
48 EUIPO and the intervener dispute the applicant’s arguments.
49 As a preliminary point, it is apparent from settled case-law that, in order to conclude that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, it is not necessary to find that that likelihood of confusion exists for the whole of the relevant public (judgment of 5 May 2021, Capella v EUIPO – Cobi.bike (GOBI), T‑286/20, not published, EU:T:2021:239, paragraph 38; see also, to that effect, judgment of 19 December 2019, Japan Tobacco v EUIPO – I.J. Tobacco Industry (I.J. TOBACCO INDUSTRY), T‑743/18, not published, EU:T:2019:872, paragraph 35). A finding that there is a likelihood of confusion for a non-negligible part of the relevant public is sufficient to uphold an opposition brought against an application for registration of a mark (see judgments of 20 November 2017, Stada Arzneimittel v EUIPO – Urgo recherche innovation et développement (Immunostad), T‑403/16, not published, EU:T:2017:824, paragraph 50 and the case-law cited, and of 5 May 2021, GOBI, T‑286/20, not published, EU:T:2021:239, paragraph 38 and the case-law cited).
50 In the present case, it should be noted that, for the purposes of the conceptual comparison, the Board of Appeal based its examination on the perception of the English-speaking part of the relevant public, which understands the meaning of the term ‘butterfly’, and, consequently, on an assumption favourable to the applicant.
51 Furthermore, it must be stated that the Board of Appeal’s assessment concerning the meaning of the term ‘butterfly’ for the English-speaking part of the relevant public is not disputed by the parties and is free from error. By contrast, the parties disagree as to the meaning of the mark applied for. On the one hand, EUIPO and the intervener submit, as did the Board of Appeal, that the term ‘btfy’ has, prima facie, no meaning for the English-speaking part of the relevant public. On the other hand, the applicant claims that that part of the public will perceive that term as an abbreviation of ‘butterfly’ and will therefore attribute the same meaning to it.
52 In that regard, it must be held to be common knowledge that the word ‘btfy’ is not an English word. In principle, that term will therefore have no meaning for the English-speaking part of the relevant public.
53 Nevertheless, it is necessary to assess whether the arguments put forward by the applicant establish that the English-speaking part of the relevant public will perceive the term ‘btfy’ as an abbreviation of the word ‘butterfly’ and, therefore, attribute the same meaning to it.
54 First, the applicant claims, in essence, that the average consumer is aware that unpronounceable words are abbreviations of other words and that he or she will instinctively supplement the missing letters of a term in order to recognise it.
55 It submits that, having regard to the long-known linguistic and advertising phenomenon consisting of the omission of vowels (‘disemvowelling’), the relevant public is aware that marks which do not contain any vowels are the abbreviated form of another term.
56 In that regard, it is apparent from the evidence submitted by the applicant that the omission of vowels is used, inter alia, for the purposes of registering a word as a trade mark. However, contrary to what is claimed, in essence, by the applicant, the mark applied for is not the result of the omission of the vowels of the word ‘butterfly’. By removing all the vowels from the word ‘butterfly’, the remaining term is ‘bttrfl’ or ‘bttrfly’ and not ‘btfy’. In any event, even if the term ‘btfy’ were the result of the omission of the vowels of the word ‘butterfly’, that would not be sufficient to establish that the relevant public with an average level of attention perceives the term ‘btfy’ as being an abbreviation of the word ‘butterfly’.
57 Therefore, the applicant’s argument has no factual basis and must be rejected.
58 Moreover, the applicant claims, in essence, that the average consumer tends not to notice whether a word is misspelled or whether letters are missing, given that he or she must rely on his or her imperfect memory of the word.
59 It is apparent from the case-law that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on his or her imperfect recollection of them (see judgment of 9 July 2003, GIORGIO BEVERLY HILLS, T‑162/01, EU:T:2003:199, paragraph 33 and the case-law cited). In the present case, it cannot be held that the relevant public will remember the mark applied for as being ‘butterfly’, since the signs at issue are visually and phonetically dissimilar (see paragraphs 37 and 45 above), the mark applied for is not the result of the omission of the vowels of the earlier mark (see paragraph 56 above) and there is no evidence to support the assertion that it is a misspelled version of the earlier mark.
60 Therefore, the applicant’s argument is unfounded and must be rejected.
61 Second, the applicant claims to have provided numerous items of evidence before the adjudicating bodies of EUIPO in order to show that the term ‘btfy’ was used as an abbreviation of ‘butterfly’.
62 First of all, in so far as the applicant makes, in that regard, a general and vague reference to the examples in EUIPO’s file illustrating that the mark Butterfly is abbreviated to ‘btfy’, it must be borne in mind that it is not for the Court to seek and identify in the annexes to the application, or in EUIPO’s administrative file, the relevant evidence to which the parties’ pleadings refer (see judgments of 11 September 2014, MasterCard and Others v Commission, C‑382/12 P, EU:C:2014:2201, paragraph 41 and the case-law cited, and of 17 April 2008, Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), T‑389/03, not published, EU:T:2008:114, paragraph 19 and the case-law cited). In addition, although specific points in the text of the application may be supported and supplemented by references to specific passages in the documents attached thereto, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument, which must appear in the application (judgment of 19 October 2006, Bitburger Brauerei v OHIM – Anheuser-Busch (BUD, American Bud and Anheuser Busch Bud), T‑350/04 to T‑352/04, EU:T:2006:330, paragraph 33; see also, to that effect, judgment of 11 September 2014, MasterCard and Others v Commission, C‑382/12 P, EU:C:2014:2201, paragraph 41). Such a general and vague reference is therefore inadmissible.
63 Next, as regards Annex B1 to the statement setting out the grounds of appeal before the Board of Appeal, relied on by the applicant, which consists of the result of a search carried out on one of the major internet search engines on the basis of the keywords ‘btfy’ and ‘butterfly’, it must be stated, as the Board of Appeal found, that that document contains a list of some instances where the terms ‘btfy’ or ‘bfly’ appear together with the term ‘butterfly’, without it being possible to determine whether ‘btfy’ has actually been used as an abbreviation of ‘butterfly’. In any event, it must be held that the abovementioned Annex B1 attests only to a limited number of websites using the terms ‘btfy’ and ‘butterfly’ together, which is not sufficient to demonstrate that a non-negligible part of the relevant public will perceive the term ‘btfy’ as the abbreviation of ‘butterfly’.
64 In addition, as regards the extract from the website ‘allacronyms.com’, included in Annex 3 to the statement setting out the grounds in support of the opposition, which lists the term ‘btfy’ as an abbreviation of the term ‘butterfly’, it must be held, as the Board of Appeal found, that that extract does not contain any explanation relating to the sources and methodology used, thus preventing the reliability of the information contained therein from being assessed. Moreover, that extract refers to several possible abbreviations of the term ‘butterfly’, including ‘btfy’, and does not show that that abbreviation is generally accepted and used, at the very least, by a non-negligible part of the relevant public.
65 Lastly, the applicant refers to Annex 4 to the statement of grounds in support of the opposition and to Annex 10 to the response to the intervener’s observations on the opposition, which consist, respectively, of screenshots of websites and discussion forums specialising in table tennis. In that regard, it must be stated that the references to the term ‘btfy’ in those documents are limited and that they were made in the particular context of the applicant’s goods to designate the goods sold under the earlier mark. Thus, those few references cannot attest to widespread use of the term ‘btfy’ as an abbreviation of ‘butterfly’.
66 Therefore, the evidence submitted by the applicant before the adjudicating bodies of EUIPO, referred to in the application, does not demonstrate that ‘btfy’ is an abbreviation of ‘butterfly’.
67 Third, as regards the applicant’s argument that, in the present case, the professional public is capable of understanding ‘btfy’ as ‘butterfly’, since it is somewhat more observant than the general public, it must be borne in mind that that difference in the level of attention has not been demonstrated by the applicant and that, in any event, there is nothing in the file to support it (see paragraph 26 above).
68 Therefore, the applicant’s argument must be rejected.
69 In the light of all of the foregoing, it must be held that the Board of Appeal did not make an error of assessment in finding that the evidence submitted by the applicant before EUIPO was not sufficient to demonstrate that that term was perceived, as such and with no explanatory context, as conveying the concept of the word ‘butterfly’.
70 However, it should be recalled that where one of the marks at issue has a meaning from the perspective of the relevant public and the other has no meaning, it must be held that the marks at issue are conceptually dissimilar (see judgments 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 86 and the case-law cited, and of 18 September 2024, Rodríguez Ruiz v EUIPO – Scherer (LEMOON), T‑1099/23, not published, EU:T:2024:630, paragraph 55 and the case-law cited). Thus, in the present case, since the earlier mark has a clear meaning for the English-speaking part of the relevant public, whereas the mark applied for has no meaning, the signs at issue are conceptually dissimilar.
71 It follows that the Board of Appeal erred in finding, in paragraph 27 of the contested decision, that no conceptual comparison could be carried out. However, it must be held that that error of assessment did not affect the conclusion that the signs at issue were dissimilar, which the Board of Appeal reached in paragraph 28 of the contested decision.
72 Indeed, in view of the lack of visual and phonetic similarity between the signs at issue, the abovementioned conclusion is well founded both where those signs are conceptually dissimilar and where a conceptual comparison cannot be carried out.
73 In the light of the foregoing, it must be borne in mind that, for the purposes 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, and that 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).
74 Since the signs at issue are dissimilar, the Board of Appeal was right to find that one of the conditions necessary for the application of Article 8(1)(b) of Regulation 2017/1001 was not fulfilled and that the opposition based on that ground had to be rejected.
75 It follows that the applicant’s complaint that the Board of Appeal did not carry out a global assessment of all the relevant factors for the purposes of the examination of the likelihood of confusion, in particular the enhanced distinctiveness of the earlier mark and the identity of the goods at issue, must be rejected as ineffective in the present case.
76 In the light of all of the foregoing, the first plea in law must be rejected.
The second plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001
77 In paragraph 52 of the contested decision, the Board of Appeal found that, since the signs at issue were dissimilar, one of the essential conditions for the application of Article 8(5) of Regulation 2017/1001 was not satisfied in the present case and, therefore, rejected the opposition based on that provision.
78 The applicant claims that that finding is incorrect and that there is at least a low degree of similarity between the signs at issue. In that regard, it submits that the degree of similarity required for the purposes of applying Article 8(5) of Regulation 2017/1001 is less than that required for the purposes of applying Article 8(1)(b) of that regulation.
79 EUIPO and the intervener dispute the applicant’s arguments.
80 Article 8(5) of Regulation 2017/1001 provides that, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or the 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.
81 In addition, according to settled case-law, the concept of similarity between the marks at issue and the criteria to be taken into consideration when assessing the similarity between the marks at issue are the same in the case of a refusal to register a mark applied for because of a likelihood of confusion, pursuant to Article 8(1)(b) of Regulation 2017/1001, and in the case of refusal because of damage to the reputation of an earlier mark, pursuant to Article 8(5) of Regulation 2017/1001 (see judgment of 12 November 2014, Volvo Trademark v OHIM – Hebei Aulion Heavy Industries (LOVOL), T‑524/11, EU:T:2014:944, paragraph 21 and the case-law cited; judgment of 12 July 2023, Multiópticas v EUIPO – Nike Innovate (Representation of two black geometrical shapes), T‑487/22, not published, EU:T:2023:391, paragraph 24).
82 In the present case, it is apparent from paragraphs 71 and 72 above that the Board of Appeal did not make an error of assessment in finding that the signs at issue were dissimilar.
83 Therefore, the Board of Appeal was right to find that one of the essential conditions for the application of Article 8(5) of Regulation 2017/1001 was not satisfied in the present case and that the opposition, based on that provision, had to be rejected.
84 That conclusion is not called into question by the applicant’s argument that, in essence, Article 8(5) of Regulation 2017/1001 requires a lesser degree of similarity than that required under Article 8(1)(b) of that regulation.
85 Indeed, in accordance with the case-law cited in paragraph 81 above, the Board of Appeal did not err in law, since it ruled out any similarity between the signs at issue under Article 8(1)(b) of Regulation 2017/1001, in also ruling out the existence of such a similarity under Article 8(5) of that regulation.
86 In the light of the foregoing, the second plea in law must be rejected.
The third plea in law, alleging infringement of Article 8(4) of Regulation 2017/1001
87 The applicant complains that the Board of Appeal, in essence, infringed Article 8(4) of Regulation 2017/1001 in that it held, first, that the mark applied for and the trade name Butterfly were dissimilar and, second, that the condition of use in the course of trade of more than mere local significance, laid down in that article, was not satisfied as regards the trade name BTY.
88 Under Article 8(4) of Regulation 2017/1001, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for is not to be registered where and to the extent that, pursuant to EU legislation or the law of the Member State governing that sign, first, rights to that sign were acquired prior to the date of application for registration of the EU trade mark, or, where appropriate, the date of the priority claimed for the application for registration of the EU trade mark and, second, that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.
89 Accordingly, under Article 8(4) of Regulation 2017/1001, the proprietor of a sign other than a registered trade mark may oppose the registration of an EU trade mark if that sign satisfies all of four conditions: (i) the sign must be used in the course of trade; (ii) it must be of more than mere local significance; (iii) the right to that sign must have been acquired in accordance with EU law or the law of the Member State in which the sign was used prior to the date of application for registration of the EU trade mark; and (iv) the sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark (see judgment of 12 October 2017, Moravia Consulting v EUIPO – Citizen Systems Europe (SDC‑554S), T‑316/16, EU:T:2017:717, paragraph 38 and the case-law cited).
90 The first two conditions, namely those concerning the use of the sign or mark relied on and its significance, which must be more than merely local, are apparent from the very wording of Article 8(4) of Regulation 2017/1001 and must therefore be interpreted in the light of EU law. That regulation thus sets out uniform standards, relating to the use of signs and their significance, which are consistent with the principles underlying the system established by that regulation (see judgment of 24 October 2018, Bacardi v EUIPO – Palírna U zeleného stromu (42 BELOW), T‑435/12, EU:T:2018:715, paragraph 44 and the case-law cited).
91 By contrast, it is apparent from the phrase ‘where and to the extent that, pursuant to the law of the Member State governing that sign’ that the other two conditions, set out subsequently in Article 8(4)(a) and (b) of Regulation 2017/1001, constitute conditions laid down by the regulation which, unlike the conditions above, must be assessed in the light of the criteria set by the law governing the sign relied on. That reference to the law governing the sign relied on is justified, given that Regulation 2017/1001 allows signs which fall outside of the EU trade mark system to be relied on against an EU trade mark. Therefore, only the law which governs the sign relied on can determine whether that sign predates the EU trade mark and whether it can justify a prohibition of the use of a subsequent trade mark (see judgment of 24 October 2018, 42 BELOW, T‑435/12, EU:T:2018:715, paragraph 45 and the case-law cited).
The trade name Butterfly
92 The Board of Appeal held that, even assuming that the term ‘butterfly’ was indeed used to refer to the applicant’s German company name, that is to say, Tamasu Butterfly Europa GmbH, the opposition based on Article 8(4) of Regulation 2017/1001 had to be rejected. In that regard, the Board of Appeal took the view that the provisions of German law relied on by the applicant granted protection against unauthorised use in a manner likely to create confusion with the protected trade name. The Board of Appeal pointed out, however, that any likelihood of confusion between the signs ‘butterfly’ and ‘btfy’, which were dissimilar, had to be ruled out.
93 The applicant disputes those assessments, referring to the arguments put forward in the context of the first plea in law seeking to show a similarity between the signs at issue.
94 EUIPO and the intervener dispute the applicant’s arguments.
95 As a preliminary point, it must be borne in mind that the question of the extent to which a sign protected in a Member State confers the right to prohibit the use of a subsequent trade mark must be examined in the light of the applicable national law. In this connection, account must be taken, in particular, of the national legislation relied on and the judicial decisions delivered in the Member State concerned. On that basis, the opposing party must establish that the sign in question comes within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited (see judgments of 10 July 2014, Peek & Cloppenburg v OHIM, C‑325/13 P and C‑326/13 P, not published, EU:C:2014:2059, paragraph 47 and the case-law cited, and of 18 July 2017, Alfonso Egüed v EUIPO – Jackson Family Farms (BYRON), T‑45/16, EU:T:2017:518, paragraph 31 and the case-law cited).
96 In the present case, in support of its opposition based on the trade name Butterfly, the applicant relied on the protection conferred on trade names by Paragraph 15(2) of the MarkenG, which prohibits third parties from using, without authorisation, in the course of trade, the trade name or a similar sign in a manner likely to cause confusion with the protected name.
97 In that regard, it should be noted that the trade name Butterfly is identical to the earlier mark, relied on in support of the opposition based on Article 8(1)(b) of Regulation 2017/1001.
98 However, it has been established in paragraphs 71 and 72 above that the Board of Appeal did not make an error of assessment in finding that the mark applied for and the earlier mark were dissimilar.
99 It follows that the Board of Appeal did not make an error of assessment in concluding, in the light of its previous findings, that the trade name Butterfly and the mark applied for were also dissimilar and, therefore, that there could be no likelihood of confusion for the purposes of Paragraph 15(2) of the MarkenG.
100 Thus, since one of the conditions for the application of Article 8(4) of Regulation 2017/1001, namely the power conferred on its proprietor by national law to prohibit the use of a subsequent trade mark, was not satisfied, the Board of Appeal did not err in law in rejecting the opposition based on the trade name Butterfly.
The trade name BTY
101 In paragraph 44 of the contested decision, the Board of Appeal found that the applicant had failed to prove the commercial use of the trade name BTY on a scale of more than mere local significance and the use, or even the existence, of any such trade name in Germany. In that regard, the Board of Appeal found that, unlike the term ‘butterfly’, the term ‘bty’ was not an identifying or distinctive component of the company name Tamasu Butterfly Europa GmbH and that it could not be held to enjoy protection as an independent component of that name for the sports and apparel industry.
102 The applicant complains that the Board of Appeal failed to take account of the fact that BTY enjoyed protection as a company catchword under German national law, even if that term was not used independently and had no reputation. What matters, in its view, is that the letters of which BTY consists are included in the company name Tamasu Butterfly Europa GmbH, that BTY has distinctive character as a name and that that term appears to be likely to make an impression on the public as a catchword-like reference to the undertaking. Thus, in essence, the applicant submits that, in the present case, there is no need to require compliance with the condition of use of more than mere local significance laid down in Article 8(4) of Regulation 2017/1001, which would lead to an infringement of German national law.
103 EUIPO and the intervener dispute the applicant’s arguments.
104 In that regard, it is sufficient to recall that the four conditions laid down by Article 8(4) of Regulation 2017/1001 are cumulative (see paragraph 89 above) and that, in accordance with the case-law referred to in paragraph 90 above, the first two conditions laid down in Article 8(4) of that regulation, namely those relating to the use and significance of the sign or mark relied on, must be interpreted in the light of EU law.
105 Furthermore, in accordance with Article 7(2)(d) 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), where the opposition is based on an earlier right within the meaning of Article 8(4) of Regulation 2017/1001, the opposing party must provide evidence showing use of that right in the course of trade of more than mere local significance, as well as evidence of its acquisition, continued existence and scope of protection including, where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.
106 It follows that, in the present case, the applicant was required to prove that the trade name BTY had been used in the course of trade of more than mere local significance.
107 Therefore, even if German law does not require such proof in order to confer protection on a trade name, that would be irrelevant for the purposes of the application of Article 8(4) of Regulation 2017/1001.
108 Lastly, it should be noted that the applicant does not dispute the Board of Appeal’s finding that it had not shown use of any such trade name in Germany, which, moreover, is not invalidated by the evidence in EUIPO’s file.
109 Thus, since one of the conditions for the application of Article 8(4) of Regulation 2017/1001 was not satisfied, the Board of Appeal was fully entitled to reject the opposition based on the trade name BTY.
110 In the light of all of the foregoing, the third plea in law must be rejected.
111 Since none of the pleas in law raised by the applicant has been upheld, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s request that the present case be referred back to the Opposition Division.
Costs
112 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.
113 Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay the costs incurred by the intervener, in accordance with the form of order sought by the intervener. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that an oral hearing is convened, EUIPO must, since no hearing has been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Tamasu Butterfly Europa GmbH to bear its own costs and to pay the costs incurred by Domu Brands Ltd;
3. Orders the European Union Intellectual Property Office (EUIPO) to bear its own costs.
Schwarcz | Marcoulli | Valasidis |
Delivered in open court in Luxembourg on 24 September 2025.
V. Di Bucci | | S. Papasavvas |