Judgment;Information — ECLI:EU:T:2023:150
Date: 2023-03-22
Language of the case: English
Court formation: Third Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded;Action for annulment - decision unnecessary
Origin: Germany

summary form, in paragraphs 33 and 34 of the contested decision, the conclusions reached by the Opposition Division. 66 EUIPO and the intervener dispute the applicant’s arguments. 67 In that regard, it must be borne in mind that, according to the case-law, where any similarity between the signs at issue is ruled out, Article 8(5) of Regulation 2017/1001 is, like Article 8(1)(b) of that regulation, manifestly inapplicable. It is only if there is some similarity, even faint, between the marks at issue that it is necessary to carry out an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the renown or reputation enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks on the part of the relevant public (see judgment of 24 September 2019, Volvo Trademark v EUIPO – Paalupaikka (V V-WHEELS), T‑356/18, EU:T:2019:690, paragraph 20 and the case-law cited). Consequently, it is sufficient to state that the Board of Appeal was right in finding that the application of Article 8(5) of Regulation 2017/1001 was subject to five cumulative conditions, the first of which requires the mark applied for to be identical or similar to the earlier mark and that, since the signs at issue were dissimilar, the application of that provision was excluded. 68 To the extent that the Board of Appeal assessed whether the earlier marks had a reputation, that assessment was made for the sake of completeness, as is clear from paragraph 32 of the contested decision. Consequently, the applicant’s criticism in that regard is ineffective. 69 The second plea, alleging infringement of Article 8(5) of Regulation 2017/1001, cannot therefore be upheld. The third plea, alleging infringement of the principles of legal certainty, of equal treatment and of sound administration 70 The applicant complains that the Board of Appeal did not carry out a comprehensive analysis of all the documentation and previous decisions of the Opposition Division and the Boards of Appeal of EUIPO on which the applicant had relied in support of its argument that the earlier marks had an exceptional reputation. 71 EUIPO and the intervener dispute the applicant’s arguments. 72 It is clear from paragraphs 62 and 67 above, respectively, that the Board of Appeal was right in finding that the application of Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 was excluded. Furthermore, it is clear from paragraph 68 above that it was only for the sake of completeness that the Board of Appeal examined the evidence seeking to prove that the earlier marks had a reputation for the purposes of Article 8(5) of Regulation 2017/1001. The applicant’s argument seeking to claim that, in the context of that assessment, the Board of Appeal did not duly take into account the previous decisions on which it had relied is therefore ineffective. 73 Consequently, the third plea, alleging infringement of the principles of legal certainty, of equal treatment and of sound administration, must be rejected. 74 In view of all of the foregoing considerations, since none of the pleas relied on by the applicant in support of the form of order which it seeks can be upheld, the action must be dismissed. Costs 75 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. 76 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener. On those grounds, THE GENERAL COURT (Third Chamber) hereby: 1. Declares that there is no longer any need to adjudicate on the action in so far it seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 October 2021 (Case R 910/2021-4) to the extent that it dismissed the appeal against the Opposition Division’s decision of 30 March 2021 in respect of goods other than ‘footwear’; 2. Dismisses the action as to the remainder; 3. Orders Puma SE to pay the costs. De Baere Steinfatt Kecsmár Delivered in open court in Luxembourg on 22 March 2023. E. Coulon M. van der Woude Registrar President * Language of the case: English.