On January 2012, Mr. Mariano Esquitino Madrid, filed an application for registration of the following EU trademark for goods in classes 3, 14 and 18. On December 2016, Chocolates Lacasa Internacional, S.A., applied to the EUIPO for invalidity of the said EUTM on the basis of, among others, its EU word mark “Conguitos” registered in class 30.

The Cancellation Division rejected the invalidity application on February 2021. Chocolates Lacasa filed an appeal before the EUIPO against the previous decision, which was also dismissed. The Board of Appeal considered that, despite the high degree of similarity between the signs and the reputation of the earlier mark for “chocolate-covered peanuts” in class 30, it was not possible to prove an exceptional reputation to such an extent as to lead consumers to link or confuse the conflicting marks in respect of such different goods. Finally, it emphasized that neither was it considered to have been proved that unfair advantage was taken of the reputation of the earlier mark, nor bad faith in the application of the holder of the disputed mark.

Chocolates Lacasa decided to appeal to the General Court against the contested decision.


In this case, the appeal was dismissed, confirming the contested decision of the Board of Appeal in which the request for nullity of Chocolates Lacasa Internacional, S.A. was rejected.

The applicant for annulment invoked two grounds, based on the infringement of Articles 53.1 a), read in conjunction with paragraph 5 of the same article, and 52.1 b) EUTMR.

As regards the first plea, Chocolates Lacasa criticized the Board of Appeal for having considered that the relevant public would not establish any mental link between the conflicting marks despite the distinctive character and reputation of its mark in Spain. The Court agreed with the Board of Appeal in the contested decision, on the grounds that not only were the goods not similar, which would not prevent the application of art. 8.5 EUTMR, but that they were of a very different nature, with no point of contact between them, which meant that after an overall assessment of the conflicting marks, and taking into consideration that the earlier mark did not enjoy of an “exceptional” reputation, it could not be established that the relevant public would establish a mental link between them.

In the second plea in relation to art. 52.1 b) EUTMR, the Court began by recalling that the good faith of the applicant for registration is presumed. It pointed out that, although in this case the applicant for the disputed mark admits knowledge of the earlier mark, this is not sufficient, since an unfair intention must be proved, which the appellant did not do. On the other hand, Mr. Esquitino added in support of its allegations that, in the 1990s, he applied for the registration of a trademark with identical denomination, and that he has been marketing footwear and, later, children’s clothing.

The appeal must be dismissed and, consequently, the Board of Appeal correctly rejected the request for annulment. Chocolates Lacasa Internacional, S.A. is ordered to pay the costs of the proceedings.

[Case T‑ 339/22, ECLI:EU:T:2023:308, 07/06/2023]