EUROPEAN UNION: Proximity of Goods Can Lead to Confusion

In the General Court (GC) decision in Case T-607/23, the applicant, Desimo Lda, appealed an opposition decision by the Fifth Board of Appeal (BoA) of the European Union Intellectual Property Office. The opposition had been submitted by Dulces y conservas Helios SA (opponent).

The applicant filed EU application No. 018026520 for ELIOS (fig.)

 in Classes 29–33 and 35 on February 21, 2019. The opponent opposed all filed classes based on Articles 8(1)(b) and 8(5). The opposition was based on the Spanish mark No. 3702131 for HELIOS (fig.)

registered in Classes 29 and 30 registered on August 30, 2018, and the EU registration No. 2933372 HELIOS (word mark) registered in Classes 29, 30, and 32 on December 14, 2004 (earlier marks).

The opposition division upheld the opposition in part. Both parties appealed to the BoA. The applicant appealed to the GC.

The applicant claimed that the BoA had erred in its assessment regarding Articles 8(1)(b) and 8(5), but the GC rejected this.

The opponent filed a cross-claim against some goods and services in Classes 31 and 35, for which the BoA rejected the filed opposition. The opponent questioned the BoA’s assessment of Article 8(5). The concepts of “similarity” and “proximity” between goods/services should not be confused when applying Article 8(5) according to the GC, as similarity is not required for Article 8(5), but proximity is a factor in determining if there is a risk of unfair advantage from an earlier mark’s reputation. Proximity refers to a simple connection between goods rather than strict similarity. Despite the lack of similarity between the goods/services involved, an association with the earlier marks is still possible.

The GC rejected the appeal for all goods except “sowing seeds,” “pet food,” and “cat litter” in Class 31, given that the use of ELIOS (fig.) for those other goods wouldn’t take unfair advantage of the earlier marks’ reputation.

The GC stressed the difference in the legal assessments between Articles 8(1)(b) and 8(5), the latter requiring proximity of goods/services and a link between the signs in issue, both of which must be established by the party claiming this legal basis.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2025 International Trademark Association