62016TJ0062
JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
26 September 2018 (
*1
)
(EU trade mark — Opposition proceedings — Application for EU figurative mark PUMA — Earlier international figurative trade marks PUMA — Relative ground for refusal — Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))
In Case T‑62/16,
Puma SE, established in Herzogenaurach (Germany), represented by P. González-Bueno Catalán de Ocón, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and D. Walicka, acting as Agents,
defendant,
the intervener before the General Court, authorised to replace the other party to the proceedings before the Board of Appeal of EUIPO, being
Doosan Machine Tools Co. Ltd, established in Seongsan-gu, Changwon-si (South Korea), represented by R. Böhm and S. Overhage, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 4 December 2015 (Case R 1052/2015-4), relating to opposition proceedings between Puma and Doosan Infracore Co. Ltd,
THE GENERAL COURT (Fourth Chamber),
composed of H. Kanninen, President, J. Schwarcz and C. Iliopoulos (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 15 February 2016,
having regard to the response of EUIPO lodged at the Court Registry on 10 May 2016,
having regard to the response of the intervener lodged at the Court Registry on 17 May 2016,
having regard to the order of 19 September 2016 authorising Doosan Machine Tools to replace Doosan Infracore,
having regard to the change in the composition of the Chambers of the General Court and the reassignment of the case to the Fourth Chamber,
further to the hearing on 20 September 2017,
gives the following
Judgment
Background to the dispute
1
On 27 November 2012, Doosan Infracore Co. Ltd, which was replaced by the intervener, Doosan Machine Tools Co. Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by 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)).
2
Registration as a mark was sought for the following figurative sign:
3
The goods in respect of which registration was sought are in Class 7 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, and correspond to the following description: ‘Lathes; CNC (computer numerical control) lathes; machining centres; turning centre; electric discharge machine’.
4
The trade mark application was published in Community Trade Marks Bulletin No 12/2013 of 17 January 2013.
5
On 16 April 2013, the applicant, Puma SE, lodged an opposition under Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the trade mark applied for in respect of all of the goods referred to in paragraph 3 above.
6
The opposition was based on the following earlier trade marks:
–
the earlier international figurative mark registered on 22 July 1991 under No 582886 and renewed until 22 July 2021 with effect in Germany, Austria, the Benelux, Bulgaria, Cyprus, Denmark, Spain, Estonia, France, Finland, Greece, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, the Czech Republic, Romania, the United Kingdom, Slovakia and Slovenia, reproduced below:
–
the earlier international figurative mark registered on 12 April 1978 under No 437626 and renewed until 12 April 2028 with effect in Germany, Austria, the Benelux, France, Spain, Hungary, Italy, Portugal, the Czech Republic, Romania, Slovakia and Slovenia, reproduced below:
7
The earlier international figurative mark No 582886 covers, inter alia, goods in Classes 7, 18, 25 and 28 corresponding, for each of those classes, to the following description:
–
Class 7: ‘Wood, leather and plastic working machines; sewing machines, paper machines, polishing machines (not for household use), presses (machines), stamping and punching machines, sharpening and sanding machines, cutters for industrial purposes, textile machines, packaging machines, grinding machines; machine tools; motors and engines (other than for land vehicles); transmission couplings and belts (other than those intended for land vehicles); mechanically-operated agricultural instruments and apparatus; agricultural machines’;
–
Class 18: ‘Goods of leather and/or imitation leather (included in this class); handbags and other cases not adapted to the goods for which they are intended as well as small leather goods, particularly purses, wallets, key cases; handbags, briefcases for documents, storage bags and shopping bags, school bags and satchels, bags for campers, backpacks, pouches, bags for matches (sports), transport and storage bags for permanent use and travelling bags of leather, synthetic materials and/or textile fabrics and cloths; travelling sets (leatherware); shoulder belts; animal skins and hides; trunks and suitcases; pocket key-holders of leather or leather substitutes; umbrellas, parasols and walking sticks; whips, saddlery; storage bags for bicycles’;
–
Class 25: ‘Clothing, footwear, headgear; parts and components of footwear, soles, insoles and adjustment soles, heels, boot uppers, non-slipping devices for footwear, studs and spikes; interlining (stiffening), ready-made pockets for clothing; corsetry articles; boots, boot liners and mules, slippers; finished articles for footwear, street, sports, leisure, training, jogging, gymnastic, bath and physiological footwear (included in this class), tennis shoes; leggings and gaiters, leggings and gaiters of leather, leg warmers, puttees, gaiters for shoes; training overalls, gym trunks and knitwear, football trunks and knitwear, tennis shirts and shorts, bath and beach clothing and outfits, bathing trunks, bikinis and bathing suits, including two-piece bathing suits, sports and leisure clothing and outfits (including knitted clothing and outfits and jerseys), also for physical training, jogging or endurance racing and gymnastics, sports trunks and pants, knitwear, pullovers, tee-shirts, sweatshirts, clothing and outfits for tennis and skiing; tracksuits and outfits for leisure, tracksuits and outfits adapted for all weather, stockings (hosiery), socks for football, gloves, including gloves of leather, also of imitation leather or of synthetic leather, knitted caps and caps, headbands and headbands as hairdressing accessories, sweatbands, sashes for wear, fichus, scarves, mufflers, neckties; belts, anoraks and parkas, reefer jackets and raincoats, coats, blouses, jackets and suit coats, skirts, panties, underpants and trousers, including denim trousers, pullovers and coordinated sets comprising several garments and undergarments; gloves for cross-country skiing or for ski touring and for cycling’;
–
Class 28: ‘Games, toys, including miniature shoes and miniature balls (as toys), balloons; articles for gymnastics and sports (included in this class); apparatus and machines for physical training, gymnastics and sports; ski, tennis and fishing equipment; skis, ski bindings, ski poles; ski edges, skins for skis; balls and balloons for games, including balls for sports and games; dumb-bells, bowls, discuses, javelins; tennis rackets and their parts and components, in particular handles and grips, strings, bands and tapes for handles and grips and lead-coated strips for tennis rackets, ping-pong or table tennis, badminton and squash rackets and bats, cricket bats and golf and hockey sticks and clubs; tennis balls and shuttlecocks; roller skates and skates, tables for table tennis; gymnastic clubs, hoops for sports, nets for sports, goal nets and nets for balls; sports gloves, particularly gloves for goalkeepers; dolls, dolls’ clothes, dolls’ shoes, caps and knitted caps for dolls, dolls’ belts, aprons for dolls; knee guards, elbow guards, ankle guards and leg guards for sports; chairs for referees of tennis matches; decorations for Christmas trees; bags for sports equipment and apparatus, which are adapted to the goods to be contained, golf bags, bags and cases for tennis rackets, for ping-pong and badminton rackets and bats, as well as for squash, cricket and hockey bats and sticks; footwear for sets for roller skating, also with reinforced soles’.
8
The earlier international figurative mark No 437626 covers goods in Classes 18, 25 and 28 corresponding, for each of those classes, to the following description:
–
Class 18: ‘Leather and imitations of leather, namely bags, trunks and suitcases, carrying bags, travel bags, especially for sports equipment and sportswear’;
–
Class 25: ‘Clothing, including boots, shoes, slippers and booties, especially clothing and sports, leisure and exercise shoes’;
–
Class 28: ‘Games, toys; apparatus for physical exercise, gymnastics equipment and sport, including sport balls’.
9
The grounds relied on in support of the opposition were, as regards the earlier international figurative mark No 582886, those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001) and Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001) and, as regards the earlier international figurative mark No 437626, that set out in Article 8(5) of Regulation No 207/2009.
10
On 31 March 2015, the Opposition Division rejected the opposition in its entirety. First, it rejected the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009 on the ground that, with the exception of the goods in Class 7 and some of the goods in Classes 18, 25 and 28 for which use of the earlier international figurative mark No 582886 had not been proved by the applicant, the other goods covered by that mark were not similar to those covered by the mark applied for. Secondly, it rejected the opposition on the basis of Article 8(5) of Regulation No 207/2009 on the ground that one of the conditions for application of that article was not satisfied, in that the applicant had not proved the alleged reputation of the earlier marks.
11
On 28 May 2015, the applicant filed a notice of appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001) against the decision of the Opposition Division.
12
By decision of 4 December 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. First, it rejected the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009 on account of the lack of similarity between the goods covered respectively by each of the marks at issue. Secondly, it rejected the opposition based on Article 8(5) of Regulation No 207/2009 on the ground that, despite the very high similarity of the marks at issue, the relevant public would not establish any link whatsoever between them given the entirely different nature of the goods covered and the sections of the public targeted respectively by each of those marks and their low degree of distinctiveness. Finally, it found that the applicant had not proved that, in the present case, the use of the mark applied for would take unfair advantage of the distinctive character or the reputation of the earlier marks, or would be detrimental to them.
Forms of order sought
13
The applicant claims that the Court should:
–
annul the contested decision;
–
order EUIPO and the intervener to pay the costs of the proceedings.
14
EUIPO contends that the Court should:
–
dismiss the application;
–
order the applicant to pay the costs.
15
The intervener contends that the Court should:
–
confirm the contested decision and dismiss the action;
–
order the applicant to pay the costs.
Law
16
Under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the European Union and, 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.
17
Although it is true that the primary function of a mark is that of an indication of origin, every mark also has an inherent economic value which is independent of and separate from that of the goods and services for which it has been registered. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are not similar to those for which the earlier mark has been registered (judgments of 22 March 2007, Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35, and of 8 December 2011, Aktieselskabet af 21. november 2001 v OHIM — Parfums Givenchy (only givenchy), T‑586/10, not published, EU:T:2011:722, paragraph 58).
18
It follows from the wording of Article 8(5) of Regulation No 207/2009 that the application of that provision is subject to three conditions: first, the identity of or similarity between the marks at issue; secondly, the existence of a reputation of the earlier trade mark relied on in support of the opposition; and, thirdly, the existence of a risk that 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. Those conditions are cumulative, and failure to satisfy one of them is sufficient to render the provision inapplicable (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 34 and the case-law cited).
19
With regard, first, to the detriment to the distinctive character of the earlier mark by the use without due cause of the mark applied for, that detriment can occur where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the ‘dilution’ or ‘gradual whittling away’ of the earlier mark through the dispersion of its identity and its hold upon the public mind (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 37 and the case-law cited).
20
Secondly, with regard to the detriment to the reputation of the earlier mark by the use without due cause of the mark applied for, it must be pointed out that such detriment is made out where the goods or services covered by the mark applied for may appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished. The risk of that detriment can, inter alia, occur where those goods or services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of its being identical or similar to the mark applied for (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 39 and the case-law cited).
21
Thirdly, the concept of the unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous trade mark or an attempt to trade upon its reputation. In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with the reputation (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 40 and the case-law cited).
22
In addition, in accordance with the case-law, Article 8(5) of Regulation No 207/2009 implies that the three types of injury referred to therein, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them even though it does not confuse them (see, to that effect, judgment of 14 December 2012, Bimbo v OHIM — Grupo Bimbo (GRUPO BIMBO), T‑357/11, not published, EU:T:2012:696, paragraph 29 and the case-law cited). The existence of such a link in the mind of the relevant public between the mark applied for and the earlier mark is therefore an implied essential precondition for the application of Article 8(5) of Regulation No 207/2009 (see, to that effect, judgments of 10 May 2007, Antartica v OHIM — Nasdaq Stock Market (nasdaq), T‑47/06, not published, EU:T:2007:131, paragraph 53 and the case-law cited, and of 11 December 2014, Coca-Cola v OHIM — Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 26 and the case-law cited).
23
In the absence of such an association on the part of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark (see, to that effect, order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 27 and the case-law cited).
24
Finally, it is clear from the case-law that the existence of a link between the marks at issue on the part of the relevant public must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include: the degree of similarity between the marks at issue; the nature of the goods or services covered by those marks, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; its degree of distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42; order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 26, and judgment of 6 July 2012, Jackson International v OHIM — Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 21).
25
It is in the light of those preliminary considerations that it is necessary to examine the arguments relied on by the applicant in support of its single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009.
26
In paragraph 32 of the contested decision, the Board of Appeal found that it was very unlikely that the relevant public would establish a link between the marks at issue due to the entirely different nature of the goods covered by each of those marks, the lack of any possible connection between the goods at issue and the totally distinct sections of the public which were the target of those goods. According to the Board of Appeal, the above elements eclipsed all the other factors which may contribute to the establishment of a link, such as the high similarity of the marks at issue or the alleged high degree of reputation of the earlier marks. In addition, in paragraph 35 of the contested decision, it stated that the fact that the professional public may also comprise people who have an interest in clothing and sports does not alter that finding, because, given the differences between the goods at issue, those professionals will not make a link to their private world of sports and leisure if they encountered the mark applied for when using the goods in Class 7, covered by that mark. Furthermore, in paragraph 36 of the contested decision, the Board of Appeal considered, in essence, that the low degree of inherent distinctiveness of the earlier marks also justified its conclusion regarding the lack of a link between the marks at issue. Finally in paragraph 37 of the contested decision, it concluded that, since the relevant public did not establish a link between the marks at issue, use of the mark applied for could not take unfair advantage of or be detrimental to the repute or distinctive character of the earlier marks.
27
The applicant maintains that the Board of Appeal erred in its analysis carried out on the basis of Article 8(5) of Regulation No 207/2009, both as regards the finding that the relevant public would not make a link with the earlier marks and as regards the considerations that the mark applied for would not take unfair advantage of the repute or distinctive character of the earlier marks. In particular, it claims that the Board of Appeal’s assessment that the relevant public would not establish any link between the marks at issue is incorrect in that it is based on the fact that the goods and the sections of the public concerned by each of those marks respectively are different. The applicant maintains, in essence, that it is immaterial that the goods in question are dissimilar, as long as the marks at issue are very similar and the earlier marks enjoy an exceptional repute. Thus, according to the applicant, the Board of Appeal did not place the necessary emphasis on the other factors to be taken into consideration for the purposes of establishing the existence of a link between the marks at issue, that is, the very high similarity of those marks, and the strength of reputation and the degree of distinctiveness of the earlier marks. In view of the above factors and the overlap between the sections of the public respectively concerned by each of the marks at issue, it submits that the mark applied for will immediately bring to mind the earlier marks in the minds of all consumers, including professionals.
28
EUIPO and the intervener dispute the arguments raised by the applicant.
29
EUIPO contends that, for the purposes of the assessment of the existence of a link between the marks at issue, the Board of Appeal did in fact take other factors into account, such as the earlier marks’ low degree of inherent distinctiveness and the reputation claimed by the applicant, that is to say, a substantial reputation.
30
In addition, EUIPO and the intervener claim that the Board of Appeal’s assessment relating to the absence of a link between the marks at issue is fully justified having regard to the entirely different goods and sections of the public which are respectively covered by each of those marks.
The relevant public
31
It must be stated that the definition of the relevant public is a necessary prerequisite for the purposes of applying Article 8(5) of Regulation No 207/2009, just as it is for the purposes of applying Article 8(1) of that regulation. More specifically, it is with regard to that public that the Court must assess whether there is any similarity between the marks at issue, any reputation of the earlier marks, any link between the marks at issue and finally any detriment to the reputation or to the distinctive character of the earlier marks or any unfair advantage being taken of the reputation or the distinctive character of those marks.
32
In accordance with the case-law, the public to be taken into account for the purposes of assessing whether one of the injuries referred to in Article 8(5) of Regulation No 207/2009 exists will vary according to the type of injury alleged by the proprietor of the earlier mark. Thus, the relevant public with regard to whom the assessment of whether any unfair advantage has been taken of the distinctive character or the repute of the earlier mark must be made consists of average consumers of the goods or services for which the later mark is requested, who are reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 12 March 2009, Antartica v OHIM, C‑320/07 P, not published, EU:C:2009:146, paragraphs 46 to 48). By contrast, the public with regard to whom the assessment of whether there is any detriment to the distinctive character or the repute of the earlier mark must be made consists of average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 35).
33
In paragraph 32 of the contested decision, the Board of Appeal found that the public to whom the goods covered by the marks at issue were respectively directed were entirely different. In paragraph 33 of the contested decision, it considered that the target public for the goods in Class 7 covered by the mark applied for comprised ‘a highly specialised public of technical professionals in an industry which [had] absolutely nothing to do with the production of clothing and sports articles for which the earlier [marks were] claimed to be reputed’. In addition, in paragraph 34 of the contested decision, it stated that it was the public at large who were targeted by the earlier marks, which comprised average consumers who required the goods covered by those marks ‘in order to get dressed and prepared for sports and leisure’. Furthermore, in paragraph 32 of the contested decision, the Board of Appeal considered that it was very unlikely that the relevant public would establish a link between the marks at issue. In that regard, it stated in paragraph 35 of the contested decision that ‘the fact that the conflicting goods belong[ed] to such distinct markets [would] prevent … the consumer confronted with the … mark [applied for] in relation to the contested machinery [from calling] to mind the earlier mark[s] for clothing and sports articles. The fact that the professional public targeted by the contested goods [could] also comprise people who have an interest in clothing and sports, [did] not alter this. The conflicting goods are so far apart … that these professionals [would] not make a link to their private world of sports and leisure in case they … encounter[ed] the … mark [applied for] in the context of their professional life when using the contested goods in Class 7’.
34
In the first place, the applicant submits, in essence, that the Board of Appeal, in paragraphs 31 and 32 of the contested decision, did not define the ‘relevant public’ with regard to whom the assessment had to be made of the existence, first, of detriment to the repute or distinctive character of the earlier marks and, secondly, of unfair advantage being taken of the distinctive character or repute of those marks.
35
EUIPO disputes the applicant’s complaint. It argues that the Board of Appeal took into account ‘both the public at large comprising the average consumer who requires the goods for which the reputation of the earlier mark[s] was assumed and the specialised public targeted by the [mark applied for]’. The intervener expresses no view in that regard.
36
First of all, it is clear from paragraphs 32 to 35 of the contested decision (see paragraph 33 above) that the Board of Appeal clearly defined the relevant sections of the public which were the target of the goods covered, respectively, by each of the marks at issue, by focusing on their characteristics which are entirely different.
37
Next it is clear from paragraph 35 of the contested decision that the Board of Appeal examined the existence of a link between the marks at issue, both with regard to the public targeted by the goods covered by the mark applied for and the public targeted by the goods covered by the earlier marks.
38
Finally, it must be recalled that the existence of a link in the mind of the relevant public between the marks at issue is an implied essential precondition for the application of Article 8(5) of Regulation No 207/2009 (see, to that effect, judgments of 10 May 2007, nasdaq, T‑47/06, not published, EU:T:2007:131, paragraph 53 and the case-law cited, and of 11 December 2014, Master, T‑480/12, EU:T:2014:1062, paragraph 26 and the case-law cited). Thus, since the Board of Appeal, in paragraph 37 of the contested decision, concluded that the prerequisite for one of the injuries referred to in Article 8(5) of Regulation No 207/2009 had not been satisfied, that is to say, the existence of a link between the marks at issue, it was not required to examine whether any unfair use of the distinctive character or the repute of the earlier marks, or any detriment to the reputation or to the distinctive character of those marks had been established in the present case. Furthermore, it was only for the sake of completeness that the Board of Appeal stated in paragraphs 37 and 40 of the contested decision that the applicant had not produced any prima facie evidence or any coherent line of argument to demonstrate that the mark applied for took unfair advantage of the repute or the distinctive character of the earlier marks or was detrimental to them.
39
Moreover, it is not apparent from the contested decision that the Board of Appeal failed to take account of the correct relevant public in the examination of one of the injuries in Article 8(5) of Regulation No 207/2009.
40
The applicant’s complaint must therefore be rejected.
41
In the second place, the applicant criticises the Board of Appeal for having found that the sections of the public which were targets of the goods covered by each of the marks at issue were different, whereas in its opinion they overlap. It submits that any section of the public, no matter how professional, is composed of consumers concerned by the goods designated by the earlier marks.
42
EUIPO and the intervener claim, on the contrary, that the relevant sections of the public do not overlap.
43
In that regard, it should be recalled that the public concerned by a given mark consists of average consumers of the goods or services for which that mark is registered or, as the case may be, applied for, who are reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 34).
44
In paragraph 33 of the contested decision the Board of Appeal rightly considered that, given their nature, the goods designated by the mark applied for were directed at a professional public, that is to say, at a particular category of consumers faced with those products in the context of their professional activity. In addition, in paragraph 34 of the contested decision, the Board of Appeal did not err when it found that the goods designated by the earlier marks were directed at the general public. Therefore, it was correct in concluding, in paragraph 32 of the contested decision, in essence, that the respective sections of the public for the goods covered by each of the marks at issue were different (see, by analogy, judgments of 19 May 2015, Swatch v OHIM — Panavision Europe (SWATCHBALL), T‑71/14, not published, EU:T:2015:293, paragraph 31, and of 29 October 2015, Éditions Quo Vadis v OHIM — Gómez Hernández (QUO VADIS), T‑517/13, not published, EU:T:2015:816, paragraph 32).
45
It is also important to note that the Board of Appeal made it clear in paragraph 35 of the contested decision that the fact that the professional public which was the target of the goods designated by the mark applied for may also comprise people who have an interest in clothes and sport did not alter the finding that such a public would not establish any link between its private world of sports and leisure and the mark applied for when using the goods designated by that mark in its professional life.
46
In doing so, and contrary to what the applicant claims, it is not apparent from the contested decision that, in its analysis, the Board of Appeal did not take account of the possibility of any overlap of the relevant sections of the public concerned. Moreover, although it is conceivable that in certain circumstances the sections of the public who are the target of the goods designated by the marks at issue may overlap (see, to that effect, judgment of 29 March 2012, You-Q v OHIM — Apple Corps (BEATLE), T‑369/10, not published, EU:T:2012:177, paragraph 53), and that a specialised public may be familiar with the earlier mark covering goods or services aimed at the general public, that is not sufficient to demonstrate that that specialised public will establish a link between the marks at issue (see, to that effect, judgment of 19 May 2015, SWATCHBALL, T‑71/14, not published, EU:T:2015:293, paragraph 32).
47
The applicant’s complaint must therefore be rejected.
48
In the third place, the Court rejects the applicant’s claim made at the hearing that, first, ‘in the case of “dilution”, the relevant public [would] consist of average consumers of the goods and services in respect of which the application was made’ and, secondly, ‘in the case … [of] “free-riding”, the relevant public [would] consist of average consumers of the goods and services in respect of which the earlier mark has a reputation’.
49
The above claim misconstrues the case-law recalled in paragraph 32 above, according to which, first, the relevant public with regard to whom it is necessary to assess the existence of the alleged unfair advantage being taken of the distinctive character or of the repute of the earlier marks consists of average consumers of the goods designated by the mark applied for and, secondly, the relevant public with regard to whom it is necessary to assess the existence of detriment to the repute or to the distinctive character of the earlier mark consists of average consumers of the goods in respect of which that mark is registered.
50
In the light of the foregoing, the Court rejects all of the applicant’s complaints and confirms the definition of the relevant sections of the public which are, respectively, the target of the goods covered by each of the marks at issue, set out in paragraph 33 above and which is free from error.
Similarity of the marks at issue
51
In paragraphs 26 and 42 of the contested decision the Board of Appeal concluded, in essence, that the marks at issue were highly similar.
52
The applicant does not dispute that assessment.
53
The intervener, whilst acknowledging the existence of a certain degree of similarity between the marks at issue, submits that their respective fonts show clear differences.
54
In that regard, suffice it to state that the Board of Appeal rightly considered that the marks at issue all featured the word element ‘puma’, written in a similar font and were therefore highly similar (see paragraphs 26, 42 and 43 of the contested decision).
55
In addition, the Board of Appeal was correct in considering, in essence, that the similarity between the marks at issue was not called into question by the presence in the earlier international figurative mark No 582886 of the figurative element of a feline which could be a puma jumping from the right to the left above the last part of the word ‘puma’ (see paragraph 26 of the contested decision).
56
Therefore, the Court confirms the Board of Appeal’s assessment relating to the high degree of similarity of the marks at issue.
Reputation of the earlier marks
57
The reputation of a mark must be assessed by reference to the perception of the relevant public which consists of average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (see judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 34 and the case-law cited).
58
It should be borne in mind that Article 8(5) of Regulation No 207/2009 does not define ‘reputation’. However, it is clear from settled case-law relating to the interpretation of Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the substantive content of which is, in essence, identical to that of Article 8(5) of Regulation No 207/2009, that, in order to satisfy the requirement of reputation, the earlier trade mark must be known to a significant part of the public concerned by the goods or services covered by that trade mark (see, to that effect, judgments of 6 February 2007, Aktieselskabet af 21. november 2001 v OHIM–TDK Kabushiki Kaisha (TDK), T‑477/04, EU:T:2007:35, paragraph 48, and of 28 October 2016, Unicorn v EUIPO — Mercilink Equipment Leasing (UNICORN-čerpací stanice), T‑123/15, not published, EU:T:2016:642, paragraph 37 and the case-law cited).
59
In the present case, it must be recalled that the Opposition Division rejected the opposition in so far as it was based on Article 8(5) of Regulation No 207/2009, holding that the evidence produced by the applicant did not demonstrate that the earlier marks had acquired a reputation.
60
For its part, the Board of Appeal did not assess that evidence and relied on the premiss that the reputation claimed by the applicant existed. It considered, in essence, that the opposition based on Article 8(5) of Regulation No 207/2009 had to be rejected in any event on the ground that there was no link between the marks at issue in the mind of the relevant public.
61
The applicant complains that the Board of Appeal ‘omitted any clear and unambiguous conclusion’ regarding the reputation of the earlier marks. In particular, it submits, in essence, that the Board of Appeal did not take into consideration the exceptional reputation of the earlier marks.
62
At the hearing, the applicant reiterated that, in its opinion, the Board of Appeal had not correctly taken into consideration the degree of reputation of the earlier marks, observing that it was impossible to watch a sporting event without encountering those marks which sponsored, in particular, the top European football teams and were associated with the best known athletes.
63
EUIPO contests the argument raised by the applicant. It claims that the Board of Appeal did take account of the reputation relied on. In addition, in response to a question put by the Court at the hearing, EUIPO, first, submitted that the Board of Appeal had definitively concluded that the earlier marks had a reputation and, secondly, referred to what it had stated in that respect in paragraphs 33 and 34 of its response drawn up in the present proceedings.
64
It should be noted at the outset that in paragraph 34 of EUIPO’s reply it is stated that in the analysis for the purposes of Article 8(5) of Regulation No 207/2009 ‘the Board [of Appeal] assumed that claimed reputation exists and therefore carried out said analysis [from] the premisses that the earlier marks enjoy considerable renown, i.e. high reputation’.
65
The intervener claims, in essence, that the Board of Appeal did not reach a conclusion regarding the reputation of the earlier marks. In addition, at the hearing, it stated that it was not certain that the Board of Appeal adopted a definitive position in that regard.
66
It is clear from settled case-law that, while it is one of the cumulative conditions for the application of Article 8(5) of Regulation No 207/2009, the reputation of the earlier trade mark or marks and, in particular, the strength of that reputation are among the factors to be taken into account in the assessment both of whether there is an association on the part of the public between the earlier trade marks and the mark applied for and of whether there is a risk that one of the three types of injury referred to in that provision may occur (see, to that effect and by analogy, judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 42, and of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 39 and the case-law cited).
67
Assessing whether the earlier trade mark or marks has or have a reputation is therefore an essential step in examining whether Article 8(5) of Regulation No 207/2009 is applicable. Consequently, the application of that provision necessarily requires a definitive conclusion regarding whether or not such a reputation exists, which, in principle, means that no analysis regarding the possible application of that provision can be carried out on the basis of a vague hypothesis, that is to say, a hypothesis which is not based on the acknowledgement of a reputation with a specific level of strength (judgment of 2 October 2015, The Tea Board v OHIM — Delta Lingerie (Darjeeling collection de lingerie), T‑625/13, not published, EU:T:2015:742, paragraph 82).
68
In the present case the Board of Appeal did not rely on such a vague hypothesis. It is clear from the wording of paragraphs 27 and 32 of the contested decision that, for the purposes of its analysis, it proceeded from the assumption that the earlier marks have a high degree of reputation.
69
First, it must be held that, by choosing to proceed from such an assumption, the Board of Appeal did not specifically examine whether the applicant had sufficiently established the reputation of the earlier marks or the strength of such a reputation. Indeed, it expressly acknowledged that there was no such examination by stating in paragraph 27 of the contested decision that it had not assessed the evidence on that point and that it was content merely to assume that the reputation claimed existed. In that context, EUIPO cannot criticise the applicant for not establishing before the Board of Appeal the existence of a reputation which extends beyond the public concerned by the earlier marks.
70
Secondly, it must be pointed out that, contrary to what EUIPO contends, although the Board of Appeal indicated that it chose to base its analysis on the assumption that the reputation claimed by the applicant exists, it failed to take due account of the strength of that reputation. It is clear from the court file that during the proceedings before EUIPO the applicant relied, in particular in paragraph 2 et seq. of its observations of 7 March 2014, submitted in support of its opposition, on the existence of a prestigious mark with a considerable reputation. It did not merely make reference to a high degree of reputation, contrary to what the Board of Appeal declared. The applicant had claimed that the reputation of the earlier marks went beyond the public which was the target of the goods designated by those marks and therefore, in essence, that it could extend to the professional public targeted by the mark applied for (see, inter alia, paragraph 2.3 of the applicant’s observations in support of its opposition of 7 March 2014).
71
The basic assumption on which the Board of Appeal chose to base its assessment of whether the injury referred to in Article 8(5) of Regulation No 207/2009 exists is therefore erroneous.
The distinctive character of the earlier marks
72
In paragraph 36 of the contested decision, the Board of Appeal found, in essence, that the earlier marks had a weak inherent distinctive character.
73
The applicant claims, on the contrary, that the earlier marks have a very high degree of distinctiveness, both acquired through use and inherent.
74
As a preliminary point, it is clear from the case-law that the distinctive character of a mark must be assessed by reference to the perception of the relevant public which consists of average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (see judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 34 and the case-law cited).
75
First, with regard to the inherent distinctive character of the earlier marks, it must be recalled that, in accordance with the case-law, the level of distinctiveness of a mark must be assessed solely by reference to the goods in respect of which that mark was registered (see, to that effect, judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 22; see also, by analogy, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 34 and the case-law cited). In addition, it is clear from the case-law that, for the purposes of assessing the distinctive character of a mark having regard to the goods which it designates, it is of no relevance that the same mark may be perceived as descriptive in respect of other goods (see, to that effect, judgment of 12 February 2004, Koninklijke KPN Nederland, C‑363/99, EU:C:2004:86, paragraph 77).
76
It follows that any reference to the descriptive character of a mark in respect of goods or services other than those designated by that mark does not justify a dilution of its distinctive character.
77
In the present case, the Board of Appeal did not establish that the goods designated by the earlier marks — use of which has been demonstrated by the applicant — may possess the qualities of strength and power or that the term ‘puma’ therefore alluded to the characteristics of those goods. In paragraph 36 of the contested decision, it merely indicated that the word element ‘puma’ designated a large feline known for its strength and its power, and therefore alluded to all kinds of goods which possess those characteristics (see paragraph 36 of the contested decision).
78
In accordance with the case-law cited in paragraph 75 above, the Court finds that the Board of Appeal erred in its assessment relating to the low degree of distinctive character of the earlier marks.
79
For the sake of completeness, the Court rejects the applicant’s argument that the very high distinctive character of the earlier marks stems from the unique font of their word element ‘puma’ which is made up of three upper case letters and one lower case letter.
80
The figurative elements of the earlier marks, such as the font and the letter ‘m’ in lower case, are barely perceptible and therefore could not, in themselves, confer a highly distinctive character on those marks (see, to that effect and by analogy, judgments of 15 March 2006, Athinaiki Oikogeniaki Artopoiia v OHIM–Ferrero (FERRÓ), T‑35/04, EU:T:2006:82, paragraph 56, and of 27 October 2016, Caffè Nero Group v EUIPO (CAFFÈ NERO), T‑37/16, not published, EU:T:2016:634, paragraph 42).
81
Secondly, before the Opposition Division and the Board of Appeal, the applicant relied on the distinctive character which the earlier marks acquired through their use.
82
In that regard, it must be stated that the contested decision does not contain any assessment of the alleged distinctive character which the earlier marks acquired as a result of their use.
83
However, in stating the reasons for the decisions which they are called upon to make, the Boards of Appeal are not obliged to rule on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see, to that effect, judgment of 3 March 2016, Ugly v OHIM — Group Lottuss (COYOTE UGLY), T‑778/14, not published, EU:T:2016:122, paragraph 67 and the case-law cited).
84
Since the Board of Appeal concluded that the earlier marks had an inherent distinctive character, albeit a weak one, it cannot be accused of not taking a position on the possible distinctive character which those marks acquired through their use. For the purposes of assessing whether there is a link between the marks at issue, the case-law does not require that the degree of inherent distinctiveness of an earlier mark and the degree of distinctiveness acquired by use be taken into consideration, but only one of the two (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 42; order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 26, and judgment of 6 July 2012, ROYAL SHAKESPEARE, T‑60/10, not published, EU:T:2012:348, paragraph 21).
85
It follows from the considerations set out in paragraphs 68 to 71, 77 and 78 above that the Board of Appeal, first, did not properly take account of the degree of reputation relied on by the applicant and, secondly, did not properly assess the degree of inherent distinctive character of the earlier marks in its examination of whether there was a link between the marks at issue in the mind of the relevant public.
86
It should be recalled that the strength of the reputation and the degree of distinctive character, inherent or acquired by use, of the earlier marks may have a significant effect on the assessment of whether there is a link between the marks at issue.
87
In accordance with the case-law, certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, the relevant section of the public as regards the goods or services for which the later mark is registered might make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 51 and 52).
88
Thus, where the public concerned by the goods designated by the earlier mark and the public concerned by the goods designated by the mark applied for are distinct, it may be necessary to take account of the strength of the reputation of the earlier mark in order to determine whether that reputation extends beyond the public concerned by that mark (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 51 to 53).
89
Therefore, in the present case, even if there is no direct link between the goods designated by the marks at issue, which are dissimilar as the Board of Appeal found in paragraph 32 of the contested decision, the finding of an association with the earlier marks could, nevertheless, still have been possible if the Board of Appeal had properly taken account of the degree of reputation relied on by the applicant. Thus, even if the sections of the public which are respectively the target of the goods and services covered by each of those marks do not overlap, given that the goods concerned are different, it is possible that a connection between the marks at issue may be established, considering also the high degree of similarity between them (see, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 51 to 53).
90
Furthermore, in accordance with the case-law, the stronger the distinctive character of an earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, confronted with a later identical or similar mark, the relevant public will call that earlier mark to mind (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 54).
91
Having regard to the foregoing, the Board of Appeal’s conclusion that there was no link between the marks at issue in the mind of the relevant public, which does not follow from a proper assessment of all the relevant factors of the present case, is vitiated by error.
92
The above finding cannot be called into question by the arguments relied on by EUIPO.
93
First, EUIPO contends, in the same vein as the Board of Appeal (see paragraph 35 of the contested decision), that the goods in question are so far apart from each other that the professionals targeted by the mark applied for would not establish a link with their private world of sports and leisure if they encountered the mark applied for when using the goods covered by the mark applied for in the context of their professional life.
94
Suffice it to recall in that respect that the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they materialise, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (see judgment of 14 December 2012, GRUPO BIMBO, T‑357/11, EU:T:2012:696, paragraph 29 and the case-law cited).
95
Thus, the link which the public concerned by the mark applied for might make between, on the one hand, that mark and, on the other, their private world of sport and leisure is ineffective for the purposes of assessing whether the mark applied for evokes the earlier mark in the mind of the relevant public (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 60).
96
EUIPO’s argument must therefore be rejected.
97
Secondly, EUIPO contends that, in the order of 17 September 2015, Arnoldo Mondadori Editore v OHIM (C‑548/14 P, not published, EU:C:2015:624), the Court of Justice ruled that a link between two marks was excluded in the absence of any possible connection between goods and services belonging to very different economic sectors. According to EUIPO, the same reasoning was adopted by the General Court in the judgments of 19 May 2015, SWATCHBALL (T‑71/14, not published, EU:T:2015:293), and of 29 October 2015, Éditions Quo Vadis v OHIM — Gómez Hernández (QUO VADIS) (T‑517/13, not published, EU:T:2015:816).
98
First, it should be recalled that Article 8(5) of Regulation No 207/2009 expressly envisages a situation in which an opposition is filed against an application for registration of an EU mark for goods or services which are not similar to those designated by an earlier mark.
99
The Court of Justice thus stated that Article 8(5) of Regulation No 207/2009 expressly covered cases where the goods or services were not similar (see, to that effect, judgment of 7 May 2009, Waterford Wedgwood v Assembled Investments (Proprietary), C‑398/07 P, not published, EU:C:2009:288, paragraph 34).
100
The dissimilarity between the goods designated respectively by the marks at issue is therefore not a sufficient factor for excluding the existence of a link between those marks, bearing in mind also that the existence of such a link must be assessed globally, that is to say, by taking into account all of the relevant factors of the case (see paragraph 24 above).
101
Secondly, the factual circumstances of the case differ from those at issue in the order and the judgments relied on by EUIPO. In the case giving rise to the order of 17 September 2015, Arnoldo Mondadori Editore v OHIM (C‑548/14 P, not published, EU:C:2015:624), the earlier mark did not have a high reputation, whereas, in the present case, the earlier marks were deemed to have at least a significant reputation. Similarly, in the case giving rise to the judgment of 29 October 2015, QUO VADIS (T‑517/13, not published, EU:T:2015:816), the reputation of the earlier mark was normal. In addition, in the judgment of 19 May 2015, SWATCHBALL, (T‑71/14, not published, EU:T:2015:293), the General Court excluded the existence of a link between the marks at issue despite a particularly strong reputation, on the ground that it was highly unlikely that the relevant public would encounter the goods covered by each of those marks in the same shops or think of the goods covered by one mark when presented with the goods covered by the other mark (judgment of 19 May 2015, SWATCHBALL, T‑71/14, not published, EU:T:2015:293, paragraph 32). However, that ground, which is in fact intended to prevent unfair advantage being taken of the reputation or the distinctive character of an earlier mark, could not affect the examination of whether there is a link between the marks at issue in the mind of the relevant public.
102
EUIPO’s argument must therefore be rejected.
103
Finally, it must be recalled that the existence of a link in the mind of the relevant public between the marks at issue is an essential precondition for the application of Article 8(5) of Regulation No 207/2009 (see judgments of 10 May 2007, nasdaq, T‑47/06, not published, EU:T:2007:131, paragraph 53 and the case-law cited, and of 11 December 2014, Master, T‑480/12, EU:T:2014:1062, paragraph 26 and the case-law cited).
104
Thus, in view of the errors committed by the Board of Appeal in its assessment of whether there is a link between the marks at issue, recalled in paragraph 85 above, the contested decision must be annulled without it being necessary to examine the other complaints raised by the applicant.
105
It will be for the Board of Appeal to re-examine the arguments which the applicant makes in its appeal against the decision of the Opposition Division, based on the existence of a link between the marks at issue. To that end, it will initially have to reach a definitive conclusion, first, with regard to the existence of the reputation of the earlier trade marks and, as the case may be, how strong that reputation is, and, secondly, with regard to the degree of distinctive character of the earlier marks.
106
If it reaches a definitive conclusion that, in the present case, there is a link between the marks at issue, it will be for the Board of Appeal to examine whether the applicant has sufficiently established the existence of one of the injuries referred to in Article 8(5) of Regulation No 207/2009. To that end, it will have to take account of the degree of reputation and of the distinctive character of the earlier marks. The stronger the earlier mark’s distinctive character and reputation are, the easier it will be to accept that harm has been caused to the earlier mark for the purposes of Article 8(5) of Regulation No 207/2009 (see judgment of 29 March 2012, BEATLE, T‑369/10, not published, EU:T:2012:177, paragraph 65 and the case-law cited). In addition, it will have to bear in mind that, in the case of an opposition based on a mark with an exceptionally high reputation, it is possible that the probability of a non-hypothetical future risk of detriment or of unfair advantage being taken by the mark applied for is so obvious that the opposing party does not need to put forward or adduce evidence of any other fact to that end (see judgments of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 48, and of 27 October 2016, Spa Monopole v EUIPO — YTL Hotels & Properties (SPA VILLAGE), T‑625/15, not published, EU:T:2016:631, paragraph 63).
107
In the light of all of the foregoing, the action must be upheld and the contested decision must therefore be annulled.
Costs
108
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. Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those of the applicant in accordance with the form of order sought by the applicant.
109
In addition, under Article 138(3) of the Rules of Procedure, the Court may order an intervener to bear its own costs. The intervener which intervened in support of EUIPO is to bear its own costs.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1.
Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 December 2015 (Case R 1052/2015-4);
2.
Orders EUIPO to bear its own costs and to pay those incurred by Puma SE;
3.
Orders Doosan Machine Tools Co. Ltd to bear its own costs.
Kanninen
Schwarcz
Iliopoulos
Delivered in open court in Luxembourg on 26 September 2018.
E. Coulon
Registrar
H. Kanninen
President
Table of contents
Background to the dispute
Forms of order sought
Law
The relevant public
Similarity of the marks at issue
Reputation of the earlier marks
The distinctive character of the earlier marks
Costs
(
*1
)	Language of the case: English.