JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
10 March 2021 (*)
(EU trade mark – Opposition proceedings – Application for the EU word mark PUMA-System – Earlier EU figurative marks PUMA – Relative ground for refusal – Detriment to reputation – Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))
In Case T‑71/20,
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 D. Gája and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
CAMäleon Produktionsautomatisierung GmbH, established in Dettenhausen (Germany),
ACTION brought against the decision of the First Board of Appeal of EUIPO of 27 November 2019 (Case R 404/2019-1), relating to opposition proceedings between Puma and CAMäleon Produktionsautomatisierung,
THE GENERAL COURT (Sixth Chamber),
composed of A. Marcoulli (Rapporteur), President, J. Schwarcz and C. Iliopoulos, Judges,
Registrar: J. Pichon, Administrator,
having regard to the application lodged at the Court Registry on 6 February 2020,
having regard to the response lodged at the Court Registry on 22 April 2020,
further to the hearing on 21 October 2020,
gives the following
Judgment
Background to the dispute
1        On 1 June 2017, CAMäleon Produktionsautomatisierung GmbH 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 word sign PUMA-System.
3        The goods and services in respect of which registration was sought are in Classes 7, 9, 16 and 42 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, for each of those classes, to the following description:
–        Class 7: ‘Machine tools for machining and cutting profiles; cross-cut saws and circular saws for wood and light alloys; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); packaging machines; automatic warehouses; robots; machines for treatment of PVC; power screwdriver; painting machines; machines for the production of door and window frames; machines for assembling shuttering components; machines for processing aluminium, plastic and steel profiles, in particular for the window, door and facade industry; table and mitre saws; double mitre saws; automatic saws; wedge-cutting and V-cutting saws; milling machines; copy milling cutters; end milling cutters and automatic notching machines; water slot milling cutters; corner crimping machines; rod machining centres; welding machines; roughcasting machines; welding and cleaning lines; bending machines, including bending furnaces and bending installations; screw systems for reinforcing profiles; drilling machines, drilling rigs; punching; stops for machines for processing aluminium, plastic and steel profiles; assembly stands and assembly tables; rotary tables; saw fences for use on table saws; metalworking machine tools’;
–        Class 9: ‘Computer hardware; computer software; computer hardware and software for the management of door and window frame production cycles and installations; magnetic and optical data carriers; computer programmes [programs], recorded; computers; computer peripheral devices; computer hardware and software for automation purposes; computer hardware and software for the management of machine tools; warehouse management systems; management systems for door and window frame production installations; communications systems for data relating to the production, assembly, storage, delivery of door and window frames; automatic handling systems for door and window frame production installations; cell phones; portable computers; printers for computers; programs for personal computers, mobile telephones and handheld computers; heatdetectors; level indicators; headphones; headsets; cables for personal computers, mobile telephones and palmtop computers; bar code readers; measuring instruments; programs for computers; computer-aided design (CAD) software; software for estimating, selling, designing and producing shuttering and curtain walls; software for programming and managing machine tools; software for checking (supervision) of industrial production and automation; computer programs for estimating, selling, designing and producing shuttering and curtain walls; computer programs for programming and managing machine tools; computer programs for checking (supervision) of industrial production and automation; software for the management of door and window frame production cycles and installations; computer programs for managing shuttering production cycles and installations; computers; peripherals adapted for use with computers; magnetic and optical data carriers; data-processing equipment and computers’;
–        Class 16: ‘Catalogues relating to computer software; computer software operating manuals; instruction manuals; instruction manuals for personal computers, mobile telephones and palmtop computers; instruction manuals for the certification of door and window frames; printed forms; printed matter for promoting and selling software for designing, producing and/or selling doors, windows and partitions; printed matter for promoting and selling software for managing machine tools and checking (supervision) of industrial production and automation; books; user manuals (handbooks) for computer programs for designing, producing and/or selling doors, windows and partitions; user manuals (handbooks) for computer programs for managing machine tools and checking (supervision) of industrial production and automation’;
–        Class 42: ‘Updating and maintenance of computer software and programs; configuring computer hardware using software; configuration of computer networks by software; configuration of computer software; computer hardware and software consultancy; creation, maintenance and adaptation of software; installation, maintenance, updating and upgrading of computer software; computer systems integration services; rental of computer hardware and computer software; design, development and implementation of software; computer software research; computer software technical support services; technical project studies in the field of computer hardware and software; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (CAD/CAM); development of computer software for computer aided design/computer aided manufacturing [CAD/CAM]; upgrading of computer software; development and testing of computing methods, algorithms and software; computer programming; testing, analysis and evaluation of the goods and services of others for certification purposes; computer programming in relation to applications for designing, producing and/or selling doors, windows and partitions; computer programming in relation to applications for managing machine tools and checking (supervision) of industrial production and automation; creating programmes for data processing.’
4        The trade mark application was published in European Union Trade Marks Bulletin
No 2017/138 of 24 July 2017.
5        On 24 October 2017, the applicant, Puma SE, filed a notice of opposition
pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
6        The opposition was based on, inter alia, the following earlier rights:
–        the EU figurative trade mark reproduced below, which was registered on 30 June 2014 under the number 12579728 in respect of goods in Classes 18, 25 and 28 corresponding, for each of those classes to, inter alia, the following description:
–        Class 18: ‘Leather and imitations of leather, and goods made of these materials, namely …
bags, …
all-purpose sports bags, … bags for sports, … gym bags, …’;
–        Class 25: ‘Apparel, footwear, headgear’;
–        Class 28: ‘Games and playthings, gymnastic and sporting equipment, gymnastic and sporting articles (included in class 28); skiing and tennis equipment; …’;
–        the EU figurative trade mark reproduced below, which was registered on 30 June 2014 under the number 12579694 in respect of goods in Classes 18, 25 and 28 corresponding, for each of those classes to, inter alia, the following description:
–        Class 18: ‘Leather and imitations of leather, and goods made from these materials, namely …
bags, … multipurpose sports bags, … bags for sports, … gym bags, …’;
–        Class 25: ‘Apparel, footwear, headgear’;
–        Class 28: ‘Games and playthings, gymnastic and sporting equipment, gymnastic and sporting articles (included in class 28); skiing and tennis equipment; …’;
7        In support of the opposition, the applicant relied on the reputation in the European Union of the two earlier EU trade marks referred to in paragraph 6 above (respectively ‘the first earlier mark’, ‘the second earlier mark’ and, together, ‘the earlier marks’) for all the goods covered by those marks.
8        On 17 December 2018, the Opposition Division rejected the opposition in its entirety, on the ground, in essence, that it was unlikely that the public would establish a link between the signs at issue.
9        On 15 February 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By decision of 27 November 2019 (‘the contested decision’), the First Board of Appeal of EUIPO annulled the decision of the Opposition Division to the extent that it had rejected the opposition in so far as the mark applied for covered ‘headphones’,
‘headsets’,
‘computer software’,
‘computer programmes [programs], recorded’,
‘cell phones’,
‘portable computers’,
‘programs for personal computers, mobile telephones and handheld computers’,
‘cables for personal computers, mobile telephones and palmtop computers’ and ‘programs for computers’ in Class 9. The Board of Appeal dismissed the appeal as to the remainder.
11      In essence, basing its analysis on the earlier marks, first of all, the Board of Appeal found that those marks had a very high reputation in relation to the goods covered in Class 25 as well as in relation to some of the goods covered in Classes 18 and 28. Next, it found that the earlier marks were inherently distinctive and that that distinctiveness was all the stronger because those marks were unique. It also pointed out that, with the exception of the visual similarity between the mark applied for and the second earlier mark, which it categorised as average in degree, the signs at issue were visually, phonetically and conceptually similar at least to an average degree. It also found, in the light of the evidence which the applicant had submitted in the context of the appeal, that, although there was no obvious link between the goods and services covered by the marks at issue, a proximity nevertheless had to be found to exist between the goods covered by the earlier marks and the goods in Class 9 covered by the mark applied for which have been referred to in paragraph 10 above. The Board of Appeal deduced from that that there could be a link between the marks at issue in so far as the mark applied for covered those goods. To that extent, taking into account in particular the high reputation of the earlier marks, it found that the use without due cause of the mark applied for would take unfair advantage of the distinctive character and the repute of the earlier marks. By contrast, in so far as the mark applied for covered the other goods and services, it found that the applicant had not explained why the relevant publics at which the marks at issue were respectively aimed, which belonged to two completely different target groups, would make a connection between those marks, which were not identical and covered goods which did not have any point of connection. According to the Board of Appeal, the reputation of the earlier marks and the similarity between the signs at issue were insufficient, on their own, to establish that one of the types of injury referred to in Article 8(5) of Regulation No 207/2009 existed.
Forms of order sought
12      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
13      EUIPO contends that the Court should:
–        uphold the action to the extent that the Board of Appeal rejected the opposition in so far as the mark applied for covers ‘computer hardware’, ‘computers’ and ‘data-processing equipment and computers’ in Class 9;
–        dismiss the action as to the remainder;
–        order the applicant to pay the costs.
Law
14      Given the date on which the application for registration at issue was filed, namely 1 July 2017, which is decisive for the purposes of identifying the substantive law applicable, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.
15      Consequently, in the present case, so far as concerns the substantive rules, the references made by the applicant and by EUIPO in their arguments to Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 must be understood as referring to Article 8(1)(b) and Article 8(5) of Regulation No 207/2009, as amended, the wording of which is identical.
16      The Court also points out that, in actions concerning an EU trade mark brought against a decision of a Board of Appeal, nothing precludes EUIPO from endorsing the applicant’s heads of claim, while putting forward all the arguments that it considers appropriate, in view of its task relating to the administration of European Union trade mark law and on account of the functional independence which the Boards of Appeal are granted in the exercise of their duties (see judgment of 6 June 2018, Glaxo Group v EUIPO – Celon Pharma (SALMEX), T‑803/16, not published, EU:T:2018:330, paragraph 20 and the case-law cited).
17      In the present case, it must therefore be held that, by its first head of claim, EUIPO is endorsing the form of order sought by the applicant as regards some of the goods covered by the mark applied for.
18      In support of the action, which, as was confirmed at the hearing, seeks the partial annulment of the contested decision in so far it upheld the Opposition Division’s decision, the applicant puts forward, in essence, a single plea in law alleging infringement of Article 8(5) of Regulation No 207/2009 in connection with infringement of the principle of sound administration, an inadequate statement of reasons for the contested decision, infringement of Article 8(1)(b) of Regulation No 207/2009 and infringement of Article 94(1) and Article 95(1) of Regulation 2017/1001.
19      In essence, the single plea consists of three parts, alleging that the contested decision is vitiated by irregularities as regards, first, the comparison of the goods and services at issue, secondly, the comparison of the signs at issue and, thirdly, the issue of whether there would be unfair advantage taken of the distinctive character or the repute of the earlier marks or detriment to their distinctive character or repute.
20      It must be pointed out at the outset that Article 8(5) of Regulation No 207/2009, as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), provides that, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2 of that article, the trade mark applied for must not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, 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.
21      As regards the risk referred to by Article 8(5) of Regulation No 207/2009, it must be pointed out that, although it is true that the primary function of a mark is that of an indication of origin, the fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys. To that effect each mark has an inherent economic value which is independent of and separate from that of the goods or services for which it is registered. The messages which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. 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 (judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35).
22      It is apparent from the wording of Article 8(5) of Regulation No 207/2009 that the application of that provision is subject to the cumulative conditions that, first, the marks at issue must be identical or similar; secondly, the earlier mark cited in opposition must have a reputation; and, thirdly, there must be 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 mark (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 54 and the case-law cited).
23      It is in the light of those preliminary considerations that the three parts of the single plea alleging infringement of Article 8(5) of Regulation No 207/2009 must be examined, beginning with the second part.
The second part, relating to the comparison of the signs at issue
24      The applicant submits that the Board of Appeal erred in concluding that the signs at issue were similar to an average degree or to at least an average degree. It claims, first, that the expression ‘similar to at least an average degree’ does not constitute a precise, accurate and unequivocal notion and that the lack of a clear determination of the degree of similarity between the signs at issue constitutes an infringement of Article 8(1)(b) of Regulation No 207/2009 and of EUIPO’s Guidelines. Secondly, in essence, the applicant submits that there is an inconsistency between the Board of Appeal’s findings and its conclusion regarding the degree of similarity between the signs at issue, in particular as regards the assessment of the conceptual similarity between those signs, and that there is no information as to the reasons why the Board of Appeal departed from the Opposition Division’s findings, a lack of justification which, in its view, constitutes an infringement of the principles of sound administration and of equal treatment and an inadequate statement of reasons. Thirdly, the applicant claims that the assessment of the degree of similarity between the signs at issue is substantively incorrect and that the contested decision infringes Article 95(1) of Regulation 2017/1001 since the Board of Appeal called into question the degree of similarity between the signs which had been found to exist by the Opposition Division although it had not been disputed by the applicant.
25      EUIPO submits that the claim alleging infringement of Article 8(1)(b) of Regulation No 207/2009 is ineffective. It also contends that the Board of Appeal’s conclusion as regards the degree of similarity between the signs at issue is correct and states that, although the expression ‘at least to an average degree’ is not entirely precise, first, it does not preclude a high degree of similarity between the signs and, secondly, a more precise conclusion was not necessary since the partial rejection of the opposition was not based on the assessment carried out in that regard. It submits, for the same reason, that the claim alleging infringement of Article 95 of Regulation 2017/1001 is unfounded and also points out, in that regard, that the Board of Appeal had to re-examine the Opposition Division’s assessment regarding the degree of similarity between the signs at issue even though the applicant had not disputed that assessment.
26      It must be pointed out at the outset that the existence of a similarity between the earlier mark and the mark applied for is a precondition for the application both of Article 8(1)(b) of Regulation No 207/2009 and of Article 8(5) of that regulation (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 51) and
it is not apparent either from the wording of paragraphs 1(b) and 5 of Article 8 of Regulation No 207/2009 or from the case-law that the concept of similarity has a different meaning in each of those paragraphs (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 39).
It is true that those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 207/2009 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) may be the consequence of a lower degree of similarity between the earlier and later marks, provided that it is sufficient for the relevant public to make a connection between those marks, that is to say, to establish a link between them (see judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 53 and the case-law cited).
27      Furthermore, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark.
On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43 and the case-law cited). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).
28      In the present case, in the contested decision, the Board of Appeal pointed out that the first earlier mark consisted solely of the word element ‘puma’, which it considered to be distinctive and dominant because its slight stylisation would, at most, be considered to be decorative. As regards the second earlier mark, the Board of Appeal stated that it consisted of the word element ‘puma’, which it considered to be distinctive, and of a figurative element representing a jumping feline animal, which it did not consider to be dominant. As for the mark applied for, the Board of Appeal took the view that the first word element, ‘puma’, was dominant in the light of its position in the sign and its distinctiveness, whereas the second word element, ‘system’, had a low degree of distinctiveness. It concluded that the public would focus its attention mainly, if not exclusively, on the term ‘puma’.
29      Next, the Board of Appeal found that, from a visual standpoint, the signs at issue coincided in their dominant elements. It concluded that the mark applied for and the first earlier mark were visually similar at least to an average degree and that, in view of the presence of the jumping feline animal in the second earlier mark, that similarity was merely average in degree as regards that second earlier mark. From a phonetic standpoint, the Board of Appeal pointed out, in addition to the coincidence of the word element ‘puma’ in the signs, that the word element ‘system’ in the mark applied for might not be pronounced. It concluded that there was at least an average degree of similarity. The same degree of conceptual similarity was found to exist after the Board of Appeal had pointed out that the signs at issue had the distinctive concept of a puma in common.
30      First, the applicant alleges infringement Article 95(1) of Regulation 2017/1001, which provides that ‘in proceedings before it [EUIPO] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought’.
31      In that regard, it must be pointed out that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (see judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 97 and the case-law cited).
In the present case, the Board of Appeal carried out a new examination of the merits of the opposition, in terms of both law and fact, and the scope of its examination was not restricted by the arguments put forward in support of the appeal. Accordingly, it analysed the various criteria laid down in Article 8(5) of Regulation No 207/2009 in order to establish whether those criteria had been satisfied. As the degree of similarity between the signs at issue is one of those criteria, the Board of Appeal was right in carrying out its own analysis as regards that degree of similarity.
32      Furthermore, the applicant can be regarded as claiming that the Board of Appeal should have given it the opportunity to submit its observations before adopting, in the contested decision, a different position from that of the Opposition Division, which had found the signs at issue to be highly similar visually and phonetically and at least highly similar conceptually. However, it must be pointed out that, according to the applicant itself, the expression ‘similar at least to an average degree’ includes, inter alia, a high degree and a very high degree of similarity. Consequently, although the Board of Appeal used a formulation which was less precise than that of the Opposition Division, it did not, in essence, call the Opposition Division’s findings into question.
33      In any event, it must be pointed out that the second sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. That provision sets out the right to be heard in proceedings before EUIPO.
34      That right extends to all the factual and legal material which forms the basis of the decision, but not to the final position which the authority intends to adopt.
That right does not in addition require that, before taking a final position on the assessment of the evidence submitted by a party, the Board of Appeal of EUIPO must offer that party a further opportunity to comment on that evidence (see judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 94 and the case-law cited).
35      In the present case, the applicant relied on Article 8(5) of Regulation No 207/2009 in support of its opposition and it does not dispute that it had an opportunity to submit, in that regard, all of the arguments and evidence which it considered to be relevant. Consequently, the Board of Appeal was not bound to hear the applicant again regarding the degree of similarity between the marks at issue before giving its own assessment in that regard in the contested decision (see, to that effect, judgment of 8 May 2018, Luxottica Group v EUIPO – Chen (BeyBeni), T‑721/16, not published, EU:T:2018:264, paragraphs 23 to 25). The contested decision did not therefore infringe the applicant’s right to be heard or its rights of defence.
36      Secondly, since, as has been stated in paragraph 32 above, the Board of Appeal did not, in essence, call the Opposition Division’s findings into question, the applicant is not justified in submitting that there is a lack of reasoning in the contested decision regarding the reasons for a difference in assessment.
37      Thirdly, the applicant disputes the Board of Appeal’s lack of a clear conclusion regarding the degree of similarity between the signs at issue. It submits that the concept of similar ‘to at least an average degree’ is equivocal because it could encompass any degree of similarity ranging from above average to extraordinarily high, or even the identity of the signs.
38      In so far as the applicant claims that such a lack of precision infringed Article 8(1)(b) of Regulation No 207/2009, that argument must, as EUIPO submits, be rejected as ineffective because the Board of Appeal examined the opposition, which was based solely on Article 8(5) of Regulation No 207/2009, exclusively in the light of that provision. The applicant also submits that that lack of precision constitutes a failure to comply with EUIPO’s Guidelines, according to which EUIPO must use wording which is as clear as possible, avoiding expressions which are capable of covering two degrees of similarity. In that regard, in the first place, even if that instruction, which relates to the likelihood of confusion, were applicable in the context of an opposition based on Article 8(5) of Regulation No 207/2009, it must be pointed out that those guidelines are not binding legal acts for the purpose of interpreting provisions of European Union law (judgment of 19 December 2012, Leno Merken, C‑149/11, EU:C:2012:816, paragraph 48). In the second place, it is apparent from the contested decision, in particular from paragraph 102 of that decision, that, in order to reject the opposition in part, the Board of Appeal relied on the lack of identity between the signs at issue. EUIPO is therefore justified in claiming that, in that context, a more precise conclusion as regards the similarity between the signs, in particular an express acknowledgement of a higher degree of similarity, would not have had any bearing on the outcome in the contested decision.
39      Fourthly, in so far as the applicant disputes the merits of the Board of Appeal’s conclusion regarding the degree of similarity between the signs at issue, it must be pointed out that it is calling into question not the Board of Appeal’s findings, but its conclusion as regards the degree of similarity which was found to exist, a conclusion which is, in the applicant’s submission, contradictory and manifestly incorrect in the light of the ‘extreme similarity’ which, in its view, exists between the signs at issue.
40      In that regard, taking into account the low degree of distinctiveness of the word element ‘System’ in the mark applied for and the non-dominant nature of the figurative element representing a feline in the second earlier mark, which the Board of Appeal correctly established, the presence, in the signs at issue, of the term in common ‘puma’, which is written in a slightly stylised way in the earlier marks, justifies the finding that the mark applied for is visually similar to a high degree to the first earlier mark and to an average degree to the second earlier mark. As regards the phonetic comparison, since it cannot be ruled out that the word element ‘system’ in the mark applied for will not be pronounced, it must be held that the signs at issue are phonetically similar to a high degree. Lastly, it must be held that, on account of the term ‘puma’ which they have in common, the signs are conceptually similar to a very high degree, if not identical.
41      Accordingly, the degrees of similarity described in paragraph 40 above must be taken into account in analysing the complaint relating to the examination of the types of injury referred to in Article 8(5) of Regulation No 207/2009.
The first part, relating to the comparison of the goods and services covered by the marks at issue
42      The applicant submits that the assessments which the Board of Appeal made in the context of the comparison of the goods and services covered by the marks at issue are incorrect. That part of the plea is subdivided into two complaints. The first complaint alleges infringement of the principle of sound administration on account of the inconsistency of the examination carried out by the Board of Appeal,
since it rejected the opposition with regard to goods and services covered by the mark applied for which were, however, identical, similar or closely related to the goods in respect of which the opposition was upheld. Accordingly, first, the applicant submits, as regards the goods in Class 9 covered by the mark applied for, that the opposition was upheld in so far as it covered certain goods and, at the same time, rejected in so far as it covered categories of goods including those goods. However, it argues that, according to the case-law, any goods covered by the mark applied for which are included in a more general category which is also covered by that mark must be treated in the same way as the goods in that category, otherwise the rejection of the application for registration of the mark would be rendered ineffectual. Inconsistency also, in its view, results from the fact that the opposition was rejected in so far as the mark applied for covered certain goods which are, however, included in more general categories of goods covered by that mark in respect of which the opposition was upheld. Secondly, as regards the goods and services in Classes 16 and 42 covered by the mark applied for, the applicant submits that the opposition was rejected with regard to goods and services which have a clear and direct relationship with the goods in respect of which the opposition was upheld.
43      The second complaint alleges that the statement of reasons for the contested decision is inadequate in so far as it does not contain any justification, or at least any clear and comprehensive reasoning, regarding the rejection of the opposition in so far as the mark applied for covers certain goods in Class 9, the goods in Class 16 and the services in Class 42.
44      EUIPO submits that the Board of Appeal erred in upholding the opposition in respect of some of the goods but rejecting it in respect of other goods corresponding to a broader category to which the former goods belong. By contrast, it takes the view that the upholding of the opposition in so far as the mark applied for covers a broad category of goods does not imply that the opposition should have been upheld in so far as that mark covers all of the goods and services included in that category or all of the goods and services which are to some degree similar to the goods in respect of which the opposition was upheld. EUIPO also submits that the contested decision contains adequate reasoning regarding the reasons why the opposition was partially rejected.
45      According to settled case-law, the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the later mark, on account of which the relevant public makes a connection between those two marks. In other words, the relevant public establishes a link between them even though it does not confuse them (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 50 and the case-law cited).
46      It is also settled case-law that whether such a link exists must be assessed globally, taking into account all factors relevant to the circumstances of the case, such as the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 52 and the case-law cited). In particular, although the existence of a similarity between the goods and services covered by the marks at issue does not constitute a condition for the application of the relative ground for refusal laid down in Article 8(5) of Regulation No 207/2009, the nature and the degree of closeness of the goods or services concerned constitute factors that are relevant in order to assess whether a link between those marks exists (see, to that effect, judgment of 28 February 2019, Lotte v EUIPO – Générale Biscuit-Glico France (PEPERO original), T‑459/18, not published, EU:T:2019:119, paragraph 182).
47      In the present case, in the context of its analysis of the link between the marks at issue, the Board of Appeal examined, in paragraphs 83 to 90 of the contested decision, the proximity between the goods and services which were respectively covered by those marks. First of all, it pointed out that there was no obvious connection between the goods and services covered by the mark applied for and the goods for which the reputation of the earlier marks had been proved. Next, it stated that the applicant had submitted before it evidence proving that it had used the earlier marks both in relation to headphones and headsets and in relation to programs for personal computers, mobile telephones and handheld computers. Furthermore, it found that headphones and similar entertainment equipment, in so far as they made it possible to listen to music or entertainment programmes during sports training and therefore to optimise sports results and make practising a sport more pleasant, were closely linked to sports shoes and clothing due to their strong complementarity with those goods. In addition, it found that such a link also existed as regards applications for mobile telephones and computers, since they could, inter alia, make it possible to set up a personalised sports training plan. Lastly, it found, in essence, that both the abovementioned headphones and applications could be regarded as a typical extension of the range of a sports clothing company. On the basis of all of those considerations, the Board of Appeal concluded that there was a close proximity between the goods covered by the earlier marks and some of the goods in Class 9 covered by the mark applied for.
48      Taking into account, in particular, that close proximity between the abovementioned goods, the similarity of the signs at issue and the strong reputation of the earlier marks, the Board of Appeal found that an association between the earlier marks and the mark applied for was possible in so far as the mark applied for covered ‘headphones’ and ‘headsets’ and goods
that were closely linked to software applications for mobile telephones and computers, namely, ‘computer software’, ‘computer programmes [programs], recorded’, ‘cell phones’, ‘portable computers’, ‘programs for personal computers, mobile telephones and handheld computers’, ‘cables for personal computers, mobile telephones and palmtop computers’ and ‘programs for computers’.
The first complaint, alleging infringement of the principle of sound administration
49      First, as regards the goods in Class 9 covered by the mark applied for, the applicant alleges infringement of the principle of sound administration on account of the inconsistency of the contested decision, inasmuch as, although it upheld the opposition in so far as the mark applied for covers the goods referred to in paragraph 48 above, that decision rejected it in so far as that mark covers categories of goods which include those goods.
50      In that regard, and as EUIPO admits in paragraph 21 of the response, the Board of Appeal was indeed inconsistent in upholding the opposition in so far as the mark applied for covers the goods referred to in paragraph 48 above (in particular ‘portable computers’ and ‘computer software’) and rejecting the opposition in respect of ‘computer hardware’, ‘computers’, and ‘data-processing equipment and computers’, since the goods ‘computer hardware’, ‘computers’, and ‘data-processing equipment and computers’ include those in respect of which the opposition was upheld. As is agreed on by the parties, the upholding of the opposition in so far as the mark applied for covers certain goods would be rendered ineffectual if that mark enjoyed protection in respect of a broader category of which those goods are part.
51      Furthermore, as EUIPO conceded at the hearing, the applicant is justified in claiming that the same reasoning must be applied with regard to ‘computer peripheral devices’ and ‘peripherals adapted for use with computers’. Those goods include the headphones and headsets in respect of which the opposition was upheld.
52      By contrast, the fact that the opposition was upheld in respect of goods such as ‘computer software’ and ‘programs for computers’ and that, as has been stated in paragraph 50 above, the opposition is also well founded in so far as the mark applied for covers ‘computer hardware’ does not imply that the opposition is also well founded with regard to ‘printers for computers’, ‘computer hardware and software for automation purposes’ and ‘computer-aided design software’. It is on account of the complementarity, which has been referred to in paragraph 47 above, between sports clothing and shoes, on the one hand, and headphones, headsets and software applications, on the other hand, which are frequently used when practising a sport, that the Board of Appeal accepted that there was a link between those goods. However, similar reasoning cannot be applied with regard to ‘printers for computers’, ‘computer hardware and software for automation purposes’ and ‘computer-aided design software’ as it has not been proved that there is any complementarity between those goods covered by the mark applied for and sports items.
53      That finding cannot be called into question either by the fact that those goods covered by the mark applied for are included in the broader category of ‘computer hardware’ or, as regards some of them, of ‘computer software’, or by the fact that ‘computer-aided design software’ is used to design all kinds of goods, including sports items. In that regard, it must also be pointed out that, contrary to the position set out in paragraph 50 above, the registration of the mark applied for in respect of the subcategories of ‘printers for computers’, ‘computer hardware and software for automation purposes’ and ‘computer-aided design software’ would not render ineffectual the upholding of the opposition in respect of the broader categories of goods constituted by ‘computer hardware’ or ‘computer software’. As EUIPO states in paragraph 23 of the response, registration of a mark may be refused in so far as it covers general categories of goods but permitted in so far as it covers specific goods falling within that category.
54      Secondly, the applicant submits that the contested decision is inconsistent on the ground that some of the goods in Class 16 and all of the services in Class 42 covered by the mark applied for have a clear and direct relationship with the goods in respect of which the opposition was upheld.
55      In that regard, it is sufficient to state that the opposition was upheld in respect of the goods referred to in paragraph 10 above on account of their complementarity with sports clothing and shoes. However, the applicant does not explain in what way, first, the ‘catalogues relating to computer software’, ‘computer software operating manuals’, ‘instruction manuals’ and ‘instruction manuals for personal computers, mobile telephones and palmtop computers’ in Class 16 covered by mark applied for, which are referred to in paragraph 30 of the application, and, secondly, the services in Class 42 covered by that mark are complementary to sports clothing and shoes. Consequently, the applicant is not justified in claiming that the contested decision is inconsistent in that regard.
56      It follows that the contested decision must be annulled to the extent that the Board of Appeal rejected the opposition in so far as the mark applied for covers ‘computer hardware’, ‘computers’, ‘data-processing equipment and computers’, ‘computer peripheral devices’ and ‘peripherals adapted for use with computers’.
The second complaint, alleging that the statement of reasons for the contested decision is inadequate
57      It must borne in mind that the first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based. That obligation to state reasons, which also derives from Article 296 TFEU, has been the subject of settled case-law according to which the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable, first, the persons concerned to exercise effectively their right to request judicial review of the contested decision and, secondly, the Courts of the European Union to exercise their power to review the legality of the decision.
However, in stating the reasons for the decisions which they are called on to make, the Boards of Appeal are not obliged to take a view 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 judgment of 21 February 2018, Laboratoire Nuxe v EUIPO – Camille and Tariot (NYouX), T‑179/17, not published, EU:T:2018:89, paragraph 20 and the case-law cited).
58      It must be stated at the outset that it is not necessary to examine the present complaint in so far as it concerns the goods covered by the mark applied for which have been referred to in paragraph 56 above, since it is clear from that paragraph that the contested decision must be annulled in so far as the opposition was rejected in respect of those goods.
59      As regards the goods and services other than those which have been referred to in paragraph 56 above, it is apparent from paragraphs 84 to 94 of the contested decision that the Board of Appeal clearly set out the reasons why it had found that, although no obvious connection could be established between the goods and services covered by the marks at issue, a proximity could nevertheless be found to exist, in the light of the evidence submitted before the Board of Appeal, between the sports clothing and shoes covered by the earlier marks and some of the goods covered by the mark applied for, on account of their complementarity. That statement of reasons discloses clearly and unequivocally the reasoning of the Board of Appeal which led it to reject the opposition in respect of all the goods and services covered by the mark applied for with regard to which no complementarity with sports clothing and shoes could, in its opinion, be established.
60      It follows that the second complaint which the applicant has submitted regarding the comparison of the goods and services, as restricted in accordance with paragraph 58 above, is unfounded.
The third part, relating to the issue of whether there would be unfair advantage taken of the distinctive character or the repute of the earlier marks or detriment to their distinctive character or repute
61      The third part of the plea consists of two complaints, alleging, in essence, that the contested decision is vitiated by irregularities regarding, so far as concerns the first complaint, the assessment of whether there is a link between the marks at issue and, so far as concerns the second complaint, the assessment of the types of injury referred to in Article 8(5) of Regulation No 207/2009.
62      By the first complaint, the applicant submits that the combination of, first, the extraordinary reputation of the earlier marks, secondly, the high degree of inherent distinctiveness reinforced through use of the earlier marks and, thirdly, the conceptual identity of the signs at issue and the high degree of visual and phonetic similarity between them, which
the Board of Appeal erred in not taking into account, is sufficient to show that there is a link between the marks at issue in the mind of the relevant public. According to the applicant, the similarity between the signs and the extraordinary reputation of the earlier marks do not make it necessary for there to be a link between the goods and services at issue. It submits that, consequently, the fact that the goods and services covered respectively by the marks at issue are dissimilar and that no direct connection can be established between them does not preclude there being an association between the marks at issue, which the Opposition Division of EUIPO, moreover, acknowledged in its decisions of 20 February 2018 (Case B 2811340, Puma v Timba Habor, ‘the decision in Puma v Timba Habor’) and of 30 April 2019 (Case B 2991274, Puma v PW International Business Alliance). In that regard, the applicant complains that the Board of Appeal infringed the principle of sound administration by departing without any justification from the position which the Opposition Division had adopted in its decision in Puma v Timba Habor. The applicant also refers to a number of examples of undertakings that have an extraordinary reputation in a specific sector which have invested in very different sectors in order to expand the use of their brands, in particular by having recourse to licence agreements with companies operating outside of their traditional sectors. Moreover, the applicant states that it has entered into such agreements. It concludes that it cannot be ruled out that, in spite of the differences between the goods and services covered by the marks at issue, the mark applied for might bring the earlier marks to mind as regards all of the goods and services that it covers, in particular on account of the partial overlap between the relevant publics at which the marks at issue are aimed.
63      By the second complaint, first of all, the applicant submits that the registration of the mark applied for would have the inevitable effect of reducing the distinctive character of the earlier marks, which it maintains have an exclusive character, since the public would cease to link them with a given range of goods originating from a single source. Next, it argues that the mark applied for would take unfair advantage of the repute of the earlier marks given the image of excellence, reliability and quality which is associated with those marks and which would be easily transferable to the goods and services covered by the mark applied for, a mark which would also benefit from being made easier for the public to recognise and remember because of the presence of the identical element ‘puma’. Lastly, the applicant submits that the use of the mark applied for is without due cause.
64      EUIPO disputes the applicant’s arguments. It contends that the exceptionally high reputation of a mark does not exempt the proprietor of that mark from his or her obligation to prove that there is a link between the marks at issue and that the strength of an earlier mark’s reputation is, like the degree of closeness or dissimilarity between the goods and services at issue, only one factor to be taken into account in ascertaining whether there is such a link.
According to EUIPO, although the case-law admits, in some cases, that the probability of a risk of injury to an exceptionally reputed mark may be obvious, each situation must be assessed on a case-by-case basis. It contends that, in the present case, the lack of a link between the marks at issue results from the very different nature of the goods and services at issue and from the fact that, in a field which is far removed from that of sports items, the word ‘puma’ creates an association primarily with the concept of a feline animal. Lastly, EUIPO submits that the Court’s assessment in the judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA) (T‑62/16, EU:T:2018:604), where the marks at issue were highly similar, is not capable of being applied to the present case.
65      It must be borne in mind (see paragraph 45 above) that the types of injury referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the later mark, on account of which the relevant public makes a connection between those two marks. The existence of such a link in the mind of the public constitutes a condition which is necessary but not, in itself, sufficient to establish the existence of one of the types of injury against which Article 8(5) of Regulation No 207/2009 ensures that trade marks with a reputation are protected.
66      It must also be borne in mind (see paragraph 46 above) that whether such a connection exists must be assessed globally, taking into account all factors relevant to the circumstances of the case, such as the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public.
67      The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark would call the earlier mark to mind is tantamount to the existence of a link between those marks (see judgment of 5 June 2018, Prada v EUIPO – The Rich Prada International (THE RICH PRADA), T‑111/16, not published, EU:T:2018:328, paragraph 34 and the case-law cited).
68      Furthermore, in order to benefit from the protection introduced by Article 8(5) of Regulation No 207/2009, the proprietor of the earlier mark must prove that use of the mark for which registration is sought would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. The proprietor of the earlier trade mark is not required, for that purpose, to demonstrate actual and present injury to its mark for the purposes of Article 8(5). When it is foreseeable that such injury will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for this actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (see judgment of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 93 and the case-law cited).
69      It is in the light of those principles that it is necessary to examine, first of all, the first complaint, alleging that the contested decision is vitiated by an error in the application of Article 8(5) of Regulation No 207/2009 so far as concerns the question of whether there is a link between the marks at issue.
70      In the first place, it should be borne in mind that, according to the case-law cited in paragraph 46 above, whether a link between the marks at issue exists must be assessed globally, taking into account all factors relevant to the circumstances of the case. Accordingly, it has been held that, even if the relevant publics for the goods or services respectively covered by the marks at issue are the same or overlap to some extent, those goods or services may be so dissimilar that the later mark will be unlikely to bring the earlier mark to the mind of the relevant public, with the result that the nature of the goods or services covered by the marks at issue must be taken into consideration for the purposes of assessing whether there is a link between those marks (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 53 and the case-law cited). At the same time, even if there is no link between the goods and services covered by the marks at issue, the strength of an earlier mark’s reputation, which may go beyond the relevant public for the goods or services which it covers, may justify a finding that there is a link between the marks at issue even though their respective relevant publics are wholly distinct (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 51 to 53).
71      It follows that, contrary to what the applicant claims, the fact that a mark that is applied for and an earlier mark are similar and that the earlier mark has an exceptional reputation cannot automatically be sufficient for a link between those marks to be found to exist. Although it cannot be ruled out that, in some cases, there may be a link between the marks at issue even though those marks cover goods or services between which there is no link, such a link must be assessed in the light of the relationship between the various factors which are relevant in each case. In that regard, no guidance other than the importance of the factor relating to the strength of the earlier mark’s reputation in the global assessment of the link between the marks at issue can be derived from paragraphs 110 to 112 of the judgment of 29 November 2018, Louis Vuitton Malletier v EUIPO – Bee-Fee Group (LV POWER ENERGY DRINK) (T‑372/17, not published, EU:T:2018:851), on which the applicant relies.
72      In the second place, in the present case, in the context of the global examination of whether there is a link between the marks at issue, as regards, first, the strength of the earlier marks’ reputation, it must be pointed out that the applicant submitted during the administrative proceedings that the reputation of the earlier marks is exceptional. In that regard, the Board of Appeal found in paragraph 54 of the contested decision that they had a ‘very high’ reputation in relation to ‘clothing’, ‘headwear’ and ‘footgear’ in Class 25 as well as to, inter alia, ‘gymnastic and sporting equipment, gymnastic and sporting articles’ included in Class 28 and ‘sports bags’ in Class 18. Furthermore, in paragraph 91 of the contested decision, it described the earlier marks as ‘iconic’ both in Germany and in the rest of the European Union and found that the mark PUMA, which was identified by 97% of the French consumers asked in one of the studies submitted by the applicant, had become a household name for sports footwear and clothing, at least in Germany. In addition, in paragraph 100 of the contested decision, the Board of Appeal stated that the earlier marks ‘ha[d] become some of the most recognised in the EU’. In so doing, it must be regarded as having acknowledged that the earlier marks have a reputation which goes beyond the relevant public for the goods in respect of which those marks have been registered.
73      Secondly, it is clear from the findings made in paragraph 40 above that the signs at issue are, at least as regards the first earlier mark, similar to a high degree. The more similar the marks at issue are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (see judgment of 19 May 2015, Swatch v OHIM – Panavision Europe (SWATCHBALL), T‑71/14, not published, EU:T:2015:293, paragraph 19 and the case-law cited).
74      Thirdly, in paragraph 57 of the contested decision, the Board of Appeal acknowledged that the earlier marks are inherently distinctive, since the term ‘puma’ refers to a feline which has no link with the goods covered by those marks. It found, in paragraph 59 of that decision, that that distinctiveness was all the stronger because, to its knowledge, the mark PUMA was not used by anyone other than its proprietor, and that it was thus unique. According to the case-law, the stronger the distinctive character of the earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, faced with an identical or similar later mark, the relevant public will make a link with that earlier mark (see judgment of 5 June 2018, THE RICH PRADA, T‑111/16, not published, EU:T:2018:328, paragraph 31 and the case-law cited).
75      Fourthly, as regards the nature of the goods and services covered by the marks at issue, save for the goods referred to in paragraphs 10 and 56 above, the Board of Appeal was right in finding that there was no link between them. As regards the relevant public, as the Board of Appeal pointed out in paragraphs 102 and 19 respectively of the contested decision, the goods covered by the earlier marks are aimed at the general public and some of the goods and services covered by the mark applied for are aimed at a public consisting of professionals in the industrial sector whereas others are aimed both at a public consisting of professionals and at the general public. It follows that, with regard to some of the goods and services at issue, the relevant publics partially overlap.
76      In the third place, it is clear from the contested decision that the Board of Appeal carried out a comparison of the goods and services covered by the marks at issue. First of all, it pointed out, in paragraph 83 of that decision, that there was no obvious connection between them, illustrating its finding with various examples of goods covered by the mark applied for which are aimed at professionals in industry and are in Classes 7, 9 and 16. Next, it stated in paragraph 94 of that decision that, with the exception of the goods covered by the mark applied for which have been referred to in paragraph 10 above, there was no link for the purposes of Article 8(5) of Regulation No 207/2009. Lastly, in paragraphs 102 and 103 of the contested decision, in the context of the examination relating to the types of injury referred to in that provision, the Board of Appeal pointed out that the majority of the goods covered by the mark applied for, on the one hand, and the goods covered by the earlier marks for which those marks had a reputation, on the other hand, did not belong to the same or a related market, that the mark applied for covered specialised machines for the processing and treatment of wood and metal aimed at specialists in industry and the respective software for those machines, whereas the goods covered by the earlier marks for which those marks had a reputation were aimed at end consumers in the general public, and that the applicant had failed to explain why those two completely different target groups would make a connection between the marks at issue although the goods they covered did not have any point of connection and the signs at issue were not identical.
77      It is apparent from those statements in the contested decision that, in the context of its assessment of whether there was a link between the marks at issue, the Board of Appeal carried out an incomplete examination of the goods and services covered by the mark applied for. It focused its analysis on the highly specialised goods aimed at professionals in industry which are covered by the mark applied for, disregarding the fact, which had, however, been pointed out in paragraph 19 of the contested decision, that that mark also covered a number of goods and services in Classes 9, 16 and 42 which were not exclusively aimed at such a public, but also concerned the general public. That is the case as regards, first, the ‘magnetic and optical data carriers’, ‘printers for computers’, ‘heatdetectors’ and ‘measuring instruments’ in Class 9, secondly, the ‘catalogues relating to computer software’, ‘computer software operating manuals’, ‘instruction manuals’, ‘instruction manuals for personal computers, mobile telephones and palmtop computers’ and ‘books’ in Class 16 and, thirdly, the ‘updating and maintenance of computer software and programs’, ‘configuring computer hardware using software’, ‘configuration of computer networks by software’, ‘configuration of computer software’, ‘computer hardware and software consultancy’ and ‘computer software technical support services’ in Class 42. The same is also true as regards the ‘power screwdriver’ in Class 7, as EUIPO conceded at the hearing.
78      It must be stated that, in so far as the mark applied for covers goods and services that are aimed at, inter alia, the general public, the Board of Appeal ultimately ruled out the existence of a link between the marks at issue on the sole ground that there was no link between the goods and services covered by the marks at issue, pointing out, in paragraph 102 of the contested decision, that the goods and services covered by the mark applied for, on the one hand, and sports footwear and clothing, on the other hand, did not belong to the same or a related market.
79      In that regard, it must be pointed out that the Opposition Division had taken into account the fact that, although some of the goods and services covered by the mark applied for were also aimed at the general public, they were sold in specialist IT shops. Even if the Board of Appeal had intended implicitly to adopt the Opposition Division’s reasoning in that regard, that reasoning would have to be rejected as irrelevant in the light of the evidence provided by the applicant which proves that it has used the earlier marks in connection with headphones, headsets and programs for personal computers, mobile telephones and handheld computers, all of which goods are capable of being sold in specialist IT shops.
80      In view of those findings, it must be held that the Board of Appeal vitiated its examination relating to the question of whether there was a link between the marks at issue by errors of assessment by focusing its reasoning, as regards the goods and services covered by the mark applied for, on the specialised goods and services aimed at professionals in industry, without taking into account the fact that the mark applied for also covered goods and services aimed at, inter alia, the general public and that, consequently, the relevant public for those latter goods and services and the relevant public for the goods covered by the earlier marks partially overlapped. It ruled out, in that context, the existence of a link between the marks at issue without, before reaching its conclusion, carrying out a global examination which took other relevant factors into account.
81      It is true that, as EUIPO submits in the response, the fact, which was pointed out by the Opposition Division, that the mark PUMA consists of a common noun which primarily designates an animal may also prove to be relevant in the context of a global examination relating to the question of whether there is a link between the marks at issue. However, as has been stated in paragraph 80 above, such an examination was not carried out in the present case.
82      Furthermore, it is apparent from paragraphs 102 and 103 of the contested decision that the applicant’s arguments seeking to establish that there was a risk of the unfair advantage or detriment referred to in Article 8(5) of Regulation No 207/2009 in so far as the mark applied for covered goods and services other than those referred to in paragraph 10 above were rejected, in essence, on the ground that the applicant had failed to explain why, in view of the specific goods covered by the mark applied for, the relevant public would make a connection between the marks at issue. In that regard, it is relevant to point out that the Board of Appeal did not examine the applicant’s arguments, unconnected with the goods and services covered by the mark applied for, alleging that, in the light of the exclusive character of the earlier marks, the use of the mark applied for would dilute the earlier marks’ ability to identify a single undertaking and would deprive them of their attractiveness.
83      It follows that, in the light of the errors which the Board of Appeal made in the context of the assessment of whether there was a link between the marks at issue and in the absence of any specific examination carried out by the Board of Appeal as to whether the types of injury referred in Article 8(5) of Regulation No 207/2009 existed, the contested decision must be annulled to the extent that it rejected the opposition with regard to the goods and services referred to in paragraph 77 above. It will therefore be incumbent on the Board of Appeal to rule on the application of Article 8(5) of Regulation No 207/2009 as regards those goods and services when it takes the necessary measures to comply with the present judgment.
84      By contrast, it must be borne in mind that, in order to rule out the existence of a link between the earlier marks and the mark applied for in so far as the mark applied for covered goods aimed at a specialist public, the Board of Appeal pointed out that, whereas the earlier marks were aimed at the general public, the mark applied for covered very specific goods, which were aimed at specialists in industry. It also pointed out that the applicant had not provided any evidence proving in what respect those two completely different target publics would make a connection between the marks at issue although there was no point of connection between the goods concerned and the signs at issue were not identical. The Board of Appeal thus found in essence that, in the light of the specific nature both of those goods covered by the mark applied for and of the relevant public for those goods, and notwithstanding the strength of the earlier marks’ reputation and the similarity of those signs, the applicant had not proved that a link between the marks at issue could be established.
85      In that regard, it is true that, in the light of the strength of the earlier marks’ reputation, it may be accepted that the public at which the goods and services covered by the mark applied for are aimed, including professionals in industry, will also be aware of the earlier marks. However, that cannot suffice to show that that relevant public will establish a link between the marks at issue (see, to that effect, judgment of 26 September 2018, PUMA, T‑62/16, EU:T:2018:604, paragraph 46 and the case-law cited).
86      The mark applied for covers highly specialised goods and services, namely machines for the processing and treatment of wood and metal and the respective software and services. In view of the specific nature of those goods and services, the specific nature of the public at which they are aimed and the lack of arguments on the part of the applicant regarding those specific goods and services, and in view of the fact that the signs at issue are not identical, the Board of Appeal was entitled to find, without erring, that, notwithstanding the strength of the earlier marks’ reputation and the degree of similarity between the signs at issue, the relevant public would not make a connection between the marks at issue.
87      None of the other arguments which the applicant has put forward is capable of calling that finding into question.
88      Accordingly, first, the argument, which is developed in paragraphs 66 to 69 of the application, alleging, in essence, that the public is accustomed to trade marks with a reputation being used in sectors which are very different from their traditional sector, as is, in its view, shown by a number of examples, has no bearing on the fact that, when faced with goods and services aimed at professionals in industry which bear the mark applied for, the relevant public will not make any connection with the earlier marks. It must be pointed out, in that regard, that none of the examples given by the applicant regarding the extension of the use of a mark with a reputation and the entering into of licensing agreements with undertakings working in sectors which are radically different from the sector of origin of such a mark applies to the present case, namely a mark covering goods or services aimed at the general public which would have extended its activities to goods or services aimed at a public of professionals in industry. It follows that the argument must be rejected as unfounded, without it being necessary to rule on whether it is admissible.
89      Secondly, the applicant is not justified in claiming that the approaches adopted by the Opposition Division of EUIPO in the decision in Puma v Timba Habor and in the decision of 30 April 2019 (Case B 2991274, Puma v PW International Business Alliance) should have been applied in the present case. In those decisions, the goods covered respectively by each of the marks at issue were aimed at the general public and used the same distributions channels, which constitutes a major difference by comparison with the present case.
90      It follows that the Board of Appeal was right in finding that, in so far as the mark applied for covered goods and services aimed at professionals in industry, one of the conditions for the application of Article 8(5) of Regulation No 207/2009, namely the existence of a link between the marks at issue, was not satisfied. Since, as is clear from paragraph 65 above, the existence of such a link is a condition which is necessary for the third condition which is laid down in Article 8(5) of Regulation No 207/2009 and has been referred to in paragraph 22 above to be satisfied, there is no need to rule, regarding the abovementioned goods and services, on the second complaint in the present part, relating to the existence of the types of injury referred to in that provision.
91      In the fourth place, in so far as the applicant alleges infringement of the principle of sound administration on the ground that the Board of Appeal did not provide any information regarding the reasons why it departed from the findings which the Opposition Division of EUIPO
had made in its decision in Puma v Timba Habor, it must be borne in mind that EUIPO must, in the light of the principles of equal treatment and sound administration, take into account previous decisions which it has already adopted in respect of similar applications. It must consider with especial care whether it should decide in the same way or not, since those principles must be applied in a manner which is consistent with respect for the principle of legality, which means that the examination of any trade mark application must be stringent and full and must be undertaken in each individual case (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 60 and 61 and the case-law cited). The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of each particular case (see judgments of 16 January 2019, Poland v Stock Polska sp. z o.o. and EUIPO, C‑162/17 P, not published, EU:C:2019:27, paragraph 60 and the case-law cited, and of 6 December 2018, Vans v EUIPO – Deichmann (V), T‑817/16, not published, EU:T:2018:880, paragraph 132 and the case-law cited).
92      It follows from those principles that it is incumbent on the Boards of Appeal, in cases where they decide to take a different view from that adopted in previous decisions concerning similar applications which have been relied on before them, to provide an explicit statement of their reasoning for departing from those decisions (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 66). However, it is necessary to distinguish between, on the one hand, reliance on such previous decisions as evidence of a factual situation which does not strictly relate to the mark in respect of which registration is sought,
such as that
relating to the reputation of the earlier mark on which the opposition to registration of a mark is based, as was the case in the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509), and, on the other hand, reliance on a decision-making practice of EUIPO, which implies that legal provisions are applied in the same way to comparable factual situations (judgment of 29 January 2020, Volkswagen v EUIPO (CROSS), T‑42/19, not published, EU:T:2020:15, paragraph 69).
93      In the present case, the applicant relied on the decision in Puma v Timba Habor both before the Opposition Division and before the Board of Appeal. The Board of Appeal referred to that decision at the stage of the examination of the earlier marks’ reputation and their distinctiveness, but did not expressly explain why it took the view that the conclusion reached in that decision as regards the existence of a link between the marks at issue in that case was not capable of being applied to the present case.
94      However, in spite of the fact that it is regrettable from a formal point of view that it did not do so, the Board of Appeal was not, as has been stated in paragraph 57 above, obliged to respond expressly and exhaustively to all of the arguments put forward by the applicant, provided that it set out the facts and legal considerations having decisive importance in the context of the contested decision. That was the case here, since the Board of Appeal set out the decisive reasons for its conclusion regarding the lack of a link between the earlier marks and the mark applied for in so far as the mark applied for covers goods aimed at specialists in industry. Moreover, it must be stated that, in the decision of the Opposition Division of 17 December 2018 which was the subject of the appeal that was brought before the Board of Appeal and is part of the context in which the contested decision was adopted, the Opposition Division had stated, in essence, that the previous decisions cited by the applicant, in which the existence of a link between the marks at issue had been acknowledged, were irrelevant in the present case since they concerned marks relating to other commercial sectors.
95      Consequently, the applicant’s argument regarding the existence of an infringement of the principle of sound administration and of the obligation to state reasons must be rejected.
96      It follows from all of the foregoing considerations that the contested decision must be annulled to the extent that it rejected the opposition in so far as the mark applied for covers the following goods and services:
–        ‘power screwdriver’ in Class 7;
–        ‘computer hardware’, ‘computers’, ‘data-processing equipment and computers’, ‘computer peripheral devices’, ‘peripherals adapted for use with computers’, ‘magnetic and optical data carriers’, ‘printers for computers’, ‘heatdetectors’ and ‘measuring instruments’ in Class 9;
–        ‘catalogues relating to computer software’, ‘computer software operating manuals’, ‘instruction manuals’, ‘instruction manuals for personal computers, mobile telephones and palmtop computers’ and ‘books’ in Class 16;
–        ‘updating and maintenance of computer software and programs’, ‘configuring computer hardware using software’, ‘configuration of computer networks by software’, ‘configuration of computer software’, ‘computer hardware and software consultancy’ and ‘computer software technical support services’ in Class 42.
Costs
97      Under Article 134(2) of the Rules of Procedure, where there is more than one unsuccessful party the Court is to decide how the costs are to be shared. In the present case, since the applicant and EUIPO have been partially unsuccessful, they must each be ordered to bear their own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 November 2019 (Case R 404/2019-1) to the extent that the Board of Appeal dismissed the appeal brought by Puma SE in so far as the application for registration of the word sign PUMA-System as an EU trade mark covers the goods and services in Classes 7, 9, 16 and 42 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, corresponding, for each of those classes, to the following description:
–        Class 7: ‘power screwdriver’;
–        Class 9: ‘computer hardware’, ‘computers’, ‘data-processing equipment and computers’, ‘computer peripheral devices’, ‘peripherals adapted for use with computers’, ‘magnetic and optical data carriers’, ‘printers for computers’, ‘heatdetectors’ and ‘measuring instruments’;
–        Class 16: ‘catalogues relating to computer software’, ‘computer software operating manuals’, ‘instruction manuals’, ‘instruction manuals for personal computers, mobile telephones and palmtop computers’ and ‘books’;
–        Class 42: ‘updating and maintenance of computer software and programs’, ‘configuring computer hardware using software’, ‘configuration of computer networks by software’, ‘configuration of computer software’, ‘computer hardware and software consultancy’ and ‘computer software technical support services’;
2.      Dismisses the action as to the remainder;
3.      Orders Puma and EUIPO each to bear their own costs.
Marcoulli
Schwarcz
Iliopoulos
Delivered in open court in Luxembourg on 10 March 2021.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.