Recent General Court Decisions: What They Teach About Protecting Brands in the European Union

Oppositions, invalidity actions, bad faith claims, genuine use disputes and appeals against EUIPO decisions are not procedural formalities. Recent cases show that trade mark disputes are often won or lost on details: evidence, dominant elements, actual use and procedural strategy.Contact a European Trade Mark Representative

An EU trade mark is a powerful asset. It can protect a brand across the entire European Union through a single registration. However, EU trade mark protection is also exposed to opposition, cancellation, invalidity actions, revocation for non-use and appeals before the EUIPO Boards of Appeal and the General Court.

For brand owners, startups, manufacturers, distributors and international companies entering the EU market, recent decisions of the General Court provide important practical lessons. They show when an opposition may succeed, when a mark may be revoked for non-use, when a filing may be considered bad faith, and when it may be worth challenging a decision of the EUIPO Board of Appeal before the General Court.

Oppositions

Conflicts are assessed globally: similarity of signs, similarity of goods and services, and distinctiveness of the earlier mark.

Proof of Use

Genuine use must be supported by objective evidence, not merely statements or internal documents.

Bad Faith

A filing made to block, appropriate or exploit another party’s brand may be vulnerable to invalidity.

EUIPO Appeals

A Board of Appeal decision may be challenged before the General Court, but the legal arguments must be carefully focused.

1. Likelihood of Confusion: One Letter Can Be Enough

In opposition proceedings, the central question is often whether consumers may believe that goods or services come from the same undertaking or from economically linked undertakings. The assessment is not mechanical. The General Court considers the overall impression of the signs, the relevant public, the similarity of the goods and services, visual, phonetic and conceptual similarity, and the distinctiveness of the earlier mark.

In the Elton v ELON case, the General Court confirmed the likelihood of confusion between the figurative sign Elton and the earlier Swedish word mark ELON. The additional letter “t” did not remove the strong visual and phonetic proximity, particularly where the goods were identical or similar.

The practical lesson is clear: before filing an EU trade mark application, it is not enough to search only for identical marks. Similar signs, spelling variants and phonetic equivalents may still create a serious opposition risk.

Practical Takeaway

A clearance search should cover identical and similar signs. A minor spelling difference may not be sufficient if the overall impression remains close.

2. A Dominant Figurative Element Can Matter More Than the Word Element

The V VENILO decision is particularly relevant for owners of figurative and composite marks. The General Court partly annulled the EUIPO Board of Appeal decision and emphasised that a dominant figurative element may be decisive for the consumer’s perception.

The earlier mark consisted of a letter V in a circle. The contested sign contained a prominent V-in-circle element together with the word VENILO. The Court accepted that, for a significant part of the public, the figurative V element could be dominant, while the word VENILO could play a secondary role.

This matters in practice. In composite marks, it is risky to assume that the word element will always dominate. A strong logo element, symbol, letter device or graphic composition may create similarity with an earlier figurative mark.

3. Matching Initials Are Not Always Enough: EF v EF – ERMELINDA FREITAS

The opposite outcome appears in the EF v EF – ERMELINDA FREITAS dispute. Although both signs involved the letters EF, the General Court confirmed that there was no likelihood of confusion. In the earlier sign, the initials EF were perceived together with the full name ERMELINDA FREITAS and did not independently dominate the overall impression.

The lesson for brand creation is important: the presence of the same short element, especially initials, does not automatically create a conflict. What matters is the overall impression. If the earlier mark contains additional distinctive wording, the risk of confusion may be lower.

4. Incorporating an Earlier Mark Into a Longer Sign Is Risky

In TELOTRÓN v TRON, the General Court confirmed a likelihood of confusion for part of the goods and services. The earlier mark TRON remained clearly recognisable within the later sign TELOTRÓN. The added beginning “TELO-” did not eliminate the similarity.

This is a frequent problem in trade mark practice. Applicants often assume that adding a prefix, suffix or extra wording is enough to avoid conflict. If the earlier mark remains independently recognisable within the new sign, an opposition may still succeed.

Clearance Question Before Filing

Does your new sign contain the whole of an earlier trade mark? If yes, obtain a legal risk assessment before investing in domains, packaging, advertising or market launch.

5. Bad Faith: When a Trade Mark Filing Becomes a Strategic Attack

The 4011 B552 decision shows that an EU trade mark can be declared invalid if it was filed in bad faith. The Court considered the commercial relationship between the parties, knowledge of earlier rights, the similarity of the signs and the applicant’s subsequent conduct.

By contrast, in the BLACK case, the General Court rejected the invalidity action based on alleged bad faith. The allegation that the proprietor had no genuine intention to use the mark for alcoholic beverages was not enough. Bad faith must be proven by relevant and persuasive circumstances.

These cases show that bad faith is a powerful but evidence-heavy ground. It may be used against blocking, parasitic or opportunistic filings, but success depends on the quality of the evidence: prior business relationships, correspondence, knowledge of the earlier brand, timing, similarity and post-filing behaviour.

6. Non-Use: Registration Is Not Enough

The MOSTOSTAL decision is a reminder of a core risk in every trade mark portfolio. An EU trade mark may be revoked if it has not been put to genuine use for the registered goods or services for a continuous period of five years.

In that case, the evidence pointed mainly to use as a company name or internal group use, rather than genuine trade mark use for the relevant services. Genuine use must be outward-facing and capable of creating or preserving a market for the goods or services covered by the registration.

Trade mark owners should therefore keep organised evidence of use: invoices, catalogues, website screenshots, marketing materials, product packaging, photographs, distribution records, sales figures and evidence showing territory, time and scale of use.

7. Designs: Crocs and the Importance of Overall Impression

The attached Crocs decision concerns EU designs rather than trade marks. It is still relevant for brand protection because EUIPO practice often involves both trade marks and registered Community designs.

The General Court confirmed that the registered design lacked individual character. The decisive test was the overall impression on the informed user. Commercial success or references to non-EU proceedings cannot replace the autonomous EU design law analysis.

What These Decisions Mean for Brand Owners

Risk	What the Decisions Show	Recommended Action
Conflict with earlier marks	One letter difference or an added prefix may not avoid confusion.	Run a clearance search and legal similarity assessment before filing.
Figurative similarity	A dominant graphic element may matter more than additional wording.	Assess logo composition, shape, stylisation and overall impression.
Bad faith	Bad faith can invalidate a mark, but must be proven.	Collect correspondence, commercial history, knowledge of the earlier brand and timeline evidence.
Non-use	Formal ownership is not enough without genuine market use.	Maintain proof of use for each relevant product and service category.
Appeals against EUIPO	The General Court can review errors in Board of Appeal decisions.	Prepare targeted legal arguments identifying reviewable errors.

When Should You Contact a European Trade Mark Representative?

A European trade mark representative should ideally be involved before filing an EU trade mark application. Early advice can prevent oppositions, unnecessary costs, rebranding risks and conflicts with competitors.

Professional advice is particularly important if:

you are preparing a new brand, logo or product line for the EU market;
you have received an opposition against your EU trade mark application;
you want to oppose a competitor’s application;
your EU trade mark is facing revocation for non-use;
you are considering an invalidity action based on bad faith;
you lost before EUIPO and need to assess the next procedural step;
you need to decide whether to bring an action before the General Court.

Lost Before EUIPO?

A decision of the EUIPO Board of Appeal may not be the end of the case. In appropriate cases, it may be challenged before the General Court. Timing, legal grounds and prospects of success must be assessed quickly.

How Bauer IP Can Help

Bauer IP assists clients with EU trade mark protection, oppositions, invalidity and revocation proceedings, trade mark clearance, risk assessment and strategic representation before EUIPO.

Typical services include:

EU trade mark clearance searches;
filing EU trade mark applications;
representation in EUIPO opposition proceedings;
defence against third-party oppositions;
revocation actions for non-use;
invalidity actions based on bad faith;
analysis of dominant elements and likelihood of confusion;
strategy for appeals before the EUIPO Board of Appeal;
assessment of possible actions before the General Court.

Need to Protect Your Brand in the European Union?

We can help you choose the right EU trade mark strategy, assess conflict risk, respond to oppositions or plan the next step after an EUIPO decision.

Contact a European trade mark representative and discuss your case.Contact Bauer IP

This article provides general information only and does not constitute legal advice. The appropriate strategy depends on the specific trade mark, goods and services, earlier rights, evidence, procedural status and business objectives of the client.