JUDGMENT OF THE GENERAL COURT (Third Chamber)
31 January 2024 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark ECE QUALITY OF LIFE – Earlier national figurative mark ECE – Relative grounds for refusal – Article 8(1)(b) and (5) of Regulation (EU) 2017/1001)
In Case T‑581/22,
ECE Group GmbH & Co. KG, established in Hamburg (Germany), represented by M. Kloth, R. Briske, M. Tillwich and P. Funke, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by R. Raponi and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
ECE Piknik Ürünleri Plastik ve Kömür Üretim Ithalat Ihracat Anonim Sirketi, established in Dilovasi (Türkiye),
THE GENERAL COURT (Third Chamber),
composed of F. Schalin (Rapporteur), President, P. Škvařilová-Pelzl and D. Kukovec, Judges,
Registrar: A. Juhász-Tóth, Administrator,
having regard to the written part of the procedure,
further to the hearing on 20 September 2023,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, ECE Group GmbH & Co. KG, seeks the alteration of the decision of the Second Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 July 2022 (Case R 1384/2021-2) (‘the contested decision’).
Background to the dispute
2        On 10 December 2019, the other party to the proceedings before the Board of Appeal of EUIPO, ECE Piknik Ürünleri Plastik ve Kömür Üretim Ithalat Ihracat Anonim Sirketi, filed with EUIPO an application for registration of an EU trade mark for the following figurative sign:
3        The trade mark applied for covered goods and services in Classes 4, 6, 8, 11, 16, 20, 21, 24, 28 and 35 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 corresponding, for each of those classes, to the following description:
–        Class 4: ‘Lighter fluid for charcoal; kindling; kindling wood; coal; liquid fuels; solid fuels’;
–        Class 6: ‘Aluminium foil’;
–        Class 8: ‘Tableware [knives, forks and spoons]; barbecue fans’;
–        Class 11: ‘Barbecues; barbecue grills; charcoal grills; grills [cooking appliances]; roasting spits’;
–        Class 16: ‘Plastic cling film, extensible, for palletization; oil-proof paper; plastic bags for oven cooking; freezer bags; food bag tape for freezer use; garbage bags of paper or of plastics; tablecloths of paper; cake toppers of paper; cake decorations of paper’;
–        Class 20: ‘Cake decorations of plastic; cake toppers of plastic’;
–        Class 21: ‘Serving tongs; barbecue tongs; salad tongs; meat tongs; bread tongs; pans; cups of paper or plastic; cardboard cups; cleaning swabs for household purposes; microfibre cloths for cleaning; mops; mop heads; scouring pads; scouring pads for household purposes; dishwashing gloves; gloves for household purposes; latex gloves for household purposes; fitted picnic baskets, including dishes; toothpicks; cake molds; drinking straws; swizzle sticks; paper plates; plastic plates; serving plates; bowls, not of precious metal; table plates, not of precious metal; drinking straws made of paper and plastic’;
–        Class 24: ‘Tablecloths, not of paper; microfibre towels’;
–        Class 28: ‘Christmas trees of artificial material, ornaments for Christmas trees, artificial snow for Christmas trees, rattles (playthings), novelties for parties, dances (party favors), paper party hats’;
–        Class 35: ‘The bringing together, for the benefit of others, of a variety of goods, namely, lighter fluid for charcoal, kindling, kindling wood, coal, liquid fuels, solid fuels, aluminium foil, tableware [knives, forks and spoons], barbecues, barbecue grills, charcoal grills, grills [cooking appliances], roasting spits, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of a variety of goods, namely, plastic cling film, extensible, for palletization, oil-proof paper, plastic bags for oven cooking, freezer bags, food bag tape for freezer use, drinking straws made of paper and plastic, garbage bags of paper or of plastics, tablecloths of paper, cake toppers of paper, cake decorations of paper, cake decorations of plastic, cake toppers of plastic, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of a variety of goods, namely, serving tongs, barbecue tongs, salad tongs, meat tongs, bread tongs, pans, cups of paper or plastic, cardboard cups, cleaning swabs for household purposes, microfibre cloths for cleaning, mops, mop heads, scouring pads, scouring pads for household purposes, dishwashing gloves, gloves for household purposes, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of a variety of goods, namely, latex gloves for household purposes, fitted picnic baskets, including dishes, toothpicks, cake molds, drinking straws, swizzle sticks, paper plates, plastic plates, serving plates, bowls, not of precious metal, table plates, not of precious metal, barbecue fans, tablecloths, not of paper, microfibre towels, Christmas trees of artificial material, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of a variety of goods, namely, ornaments for Christmas trees, artificial snow for Christmas trees, rattles (playthings), novelties for parties, dances (party favors), paper party hats, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues’.
4        On 16 June 2020, the applicant filed a notice of opposition, under Article 8(1)(b) and Article 8(5) of 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), to registration of the trade mark applied for in respect of the goods and services referred to in paragraph 3 above.
5        The opposition was based on the following earlier national figurative mark:
6        The earlier mark was filed on 10 August 2007 and registered under number 30752071 on 10 December 2007. It covers services in Classes 35, 36, 37 and 42 and corresponding, for each of those classes, to the following description:
–        Class 35: ‘Planning of real estate property and establishments from a business point of view, particularly of retail and service establishments such as shopping centers, of health facilities and care facilities such as hospitals, old people’s homes and nursing homes, of traffic stations such as railway stations and airports, parking facilities such as multi-storey car parks, of office buildings and administrative buildings and of logistics facilities such as goods distribution centers; marketing research; advertising; business management; business administration; office functions; business investigations; economic forecasting; marketing studies; modelling for advertising or sales promotion; news clipping services; opinion polling; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; procurement services for others [purchasing goods and services for other businesses]; public relations; sponsorship search; publicity material rental; rental of advertising space; rental of advertising time on communication media; shop window dressing’;
–        Class 36: ‘Financial planning, rental and administration of real estate property and establishments, particularly of retail and service establishments such as shopping centers, of health facilities and care facilities such as hospitals, old people’s homes and nursing homes, of traffic stations such as railway stations and airports, parking facilities such as multi-storey car parks, of office buildings and administrative buildings and of logistics facilities such as goods distribution centers (included in this class); insurance underwriting; financial affairs; monetary affairs; real estate affairs; financial consultancy; financial information; financial sponsorship; insurance consultancy; insurance information’;
–        Class 37: ‘Construction of real estate property and establishments, particularly of retail and service establishments such as shopping centers, of health facilities and care facilities such as hospitals, old people’s homes and nursing homes, of traffic stations such as railway stations and airports, parking facilities such as multi-storey car parks, of office buildings and administrative buildings and of logistics facilities such as goods distribution centers; construction; repair work carried out to the aforesaid real estate and establishments, installation services’;
–        Class 42: ‘Technical planning of real estate property and establishments, particularly of retail and service establishments such as shopping centers, of health facilities and care facilities such as hospitals, old people’s homes and nursing homes, of traffic stations such as railway stations and airports, parking facilities such as multi-storey car parks, of office buildings and administrative buildings and of logistics facilities such as goods distribution centers; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; cloud seeding; conversion of data or documents from physical to electronic media; rental of computer software; rental of web servers’.
7        On 10 June 2021, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001 and that the evidence submitted by the applicant did not demonstrate that the earlier mark had acquired a reputation within the meaning of Article 8(5) of Regulation 2017/1001.
8        On 9 August 2021, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision.
9        By the contested decision, the Second Board of Appeal of EUIPO dismissed the appeal.
10      First, as regards the assessment of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, the Board of Appeal found that the goods and services covered by the marks at issue were dissimilar, and therefore the opposition was unfounded with regard to that provision.
11      Secondly, as regards the assessment of the risk of unfair advantage being taken of or detriment being caused to the distinctive character or the repute of the earlier trade mark under Article 8(5) of Regulation 2017/1001, the Board of Appeal found that the applicant had demonstrated that the earlier mark enjoyed a reputation, which had to be regarded as of a ‘normal’ level, in Germany for certain real estate services and business administration services relating to shopping centres. Moreover, the Board of Appeal considered that there was a similarity between the marks at issue. However, it found that the applicant had not demonstrated that a link could be established between the marks at issue by the public concerned and that the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the earlier mark, and therefore the opposition was unfounded with regard to that provision.
Forms of order sought
12      The applicant claims that the Court should:
–        alter the contested decision so that the opposition is upheld in its entirety and the mark applied for is refused in its entirety;
–        order EUIPO to pay the costs.
13      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs incurred by EUIPO in the event that an oral hearing is convened.
Law
Admissibility of the action
14      It must be held that, although the applicant’s first head of claim formally relates to the alteration of the contested decision and the refusal of the mark applied for in respect of the goods and services in question, it is apparent from the application that, by the present action, the applicant necessarily seeks, not only the alteration of the contested decision but, also its annulment. That conclusion follows from the submission of the applicant’s pleas, according to which the Board of Appeal wrongly found that it was not appropriate to refuse to register the mark applied for in accordance with Article 8(1)(b) and Article 8(5) of Regulation 2017/1001 (see, to that effect, judgment of 27 February 2014, Advance Magazine Publishers v OHIM – Nanso Group (TEEN VOGUE), T‑509/12, EU:T:2014:89, paragraphs 15 and 16 and the case-law cited). The appeal thus defined is therefore admissible.
Substance
15      The applicant relies on two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, secondly, infringement of Article 8(5) of that regulation.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
16      The applicant claims, in essence, that the Board of Appeal wrongly found that the goods and services covered by the marks at issue were dissimilar and, accordingly, that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.
17      EUIPO disputes the applicant’s arguments.
18      As a preliminary point, it must be borne in mind that, under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
19      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
20      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
21      According to the case-law, in assessing the similarity of the goods or services in question, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 14 May 2013, Sanco v OHIM – Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 21 and the case-law cited).
22      It is in the light of the foregoing that the first plea must be examined.
–       The comparison between the goods covered by the mark applied for and the services covered by the earlier mark
23      The applicant complains, in essence, that the Board of Appeal found that there was no complementary connection between the goods covered by the mark applied for and the services covered by the earlier mark. In the applicant’s view, shopping centre management services are necessary or important for offering the goods covered by the mark applied for. It also claims that the goods and services in question target the same public, contrary to what the Board of Appeal found. According to the applicant, the general public benefits from shopping centre management services when purchasing the goods in question. Similarly, retailers, in their professional capacity, are intended purchasers of the goods at issue to the extent that they purchase those goods in the course of their activities.
24      The applicant also maintains that the similarity between the goods covered by the mark applied for and the services relating to shopping centres covered by the earlier mark and included in Class 35 is demonstrated by the fact that the exact word elements ‘ece quality of life’ and, in particular, the expression ‘quality of life’ could easily serve as a possible claim for the applicant’s shopping centre activities under its main mark ECE.
25      EUIPO disputes the applicant’s arguments.
26      The Board of Appeal considered, in paragraph 30 of the contested decision, that the goods in question mainly consisted of kitchenware and connected items, and also Christmas trees and their decorations, toys and novelties for parties. It therefore observed that not only were the goods of a different nature to the Class 35 services covered by the earlier mark, relating to shopping centre management, but they were not complementary either, in the sense that they were neither important nor indispensable to each other.
27      The Board of Appeal also found, in paragraph 33 of the contested decision, that the goods covered by the mark applied for were mainly used for culinary or decorative purposes and that, accordingly, they did not have the same intended purpose as the Class 35 services covered by the earlier mark relating to shopping centre management.
Moreover, it found that the goods covered by the mark applied for were manufactured by different undertakings to those which provided the services covered by the earlier mark relating to shopping centre management. Likewise, it considered that they were not in competition either and could not be offered through the same distribution channels.
28      Having regard to the above factors, the Board of Appeal found, in paragraph 34 of the contested decision, that the goods covered by the earlier mark were even less similar to the services in Classes 36, 37 and 42 covered by the earlier mark and relating to financial, insurance and real estate services; construction and building repair services; scientific and technological services and the research and design services relating thereto; industrial analysis and research services and the design and development of computers and computer programmes, also in relation to real estate.
29      There is no need to call into question the assessments of the Board of Appeal according to which the goods covered by the mark applied for are of a different nature to those of the services covered by the earlier mark. Likewise, there is also no need to call into question the findings that the goods, which are mainly used for culinary and decorative purposes, do not have the same intended purpose as the above services, that they are manufactured by different undertakings to those which provide the services and that they are also not in competition and cannot be offered through the same distribution channels. Those points are not, moreover, disputed by the applicant.
30      As regards the relevant public, it should be noted that the Board of Appeal found in paragraph 33 of the contested decision that, although the goods in question mainly target the general public, the services covered by the earlier mark generally target a public of professionals. It must be held that that assessment is also free from error. It is true that, as the applicant submits, retailers purchase the goods in question to resell them, however they are not the end users of those goods. The intended purchasers of those goods are the consumers of the general public. If the applicant’s reasoning were to be followed, all goods sold by retailers would target professionals so that no goods would be intended solely for the general public. The arguments that goods covered by the mark applied for target professionals and the general public must therefore be rejected.
31      The applicant’s arguments that the general public is the intended recipient of the Class 35 services covered by the earlier mark relating to shopping centre management must also be rejected. The services included in Class 35 target the professional public seeking to obtain a professional service in the field of marketing, design, public relations and business management in order to strengthen their market position. The same applies to the remainder of the services covered by the earlier mark and included in Classes 36, 37 and 42, which are intended to support businesses by providing assistance in relation to real estate, insurance, financial or technical matters.
32      It should, moreover, be noted, as the Board of Appeal did in paragraph 142 of the contested decision, that the consumers of goods and services covered by the mark applied for do not know which undertakings are responsible for the internal management of a shopping centre as a whole. As EUIPO observes, end users are generally not familiar with the undertakings connected with the administration, leasing or assignment of real estate in shopping centres or with the undertakings responsible for planning and designing the construction of shopping centres.
33      That finding cannot be called into question by the fact that the general public would encounter the earlier mark when engaging the Class 35 services covered by that mark to make purchases online. As EUIPO rightly submits, that type of service does not appear on the list of services covered by that mark. However, EUIPO must base its analysis on the description, as it appears in the registration document, of the goods and services covered by the earlier mark relied on in support of the opposition and not on the goods and services for which the trade mark is actually used (judgment of 14 February 2019, Giove Gas v EUIPO – Primagaz (KALON AL CENTRO DELLA FAMIGLIA), T‑34/18, not published, EU:T:2019:94, paragraph 30).
34      As regards the applicant’s arguments relating to the complementarity of the goods covered by the mark applied for and the Class 35 services covered by the earlier mark relating to shopping centre management, it must be observed that, according to the case-law, goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, goods or services intended for different publics cannot be complementary (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).
35      It follows from the foregoing that, since the goods and services in question target different publics, as was found in paragraphs 30 and 31 above, they cannot, by definition, be complementary.
36      It should also be noted, contrary to the applicant’s assertion, that the expression ‘quality of life’, included in the sign applied for, cannot underline the similarity between the goods covered by the mark applied for and the Class 35 services covered by the earlier mark. As EUIPO rightly submits, the goods and services in question must be compared as they appear in the register by applying the criteria of the case-law cited in paragraph 21 above. In that regard, it must be held that no factor specifically concerning the signs at issue is relevant for the purposes of that comparison.
37      Accordingly, the applicant’s arguments alleging complementarity between the goods covered by the mark applied for and the services covered by the earlier mark,
and also the overlap between the general public and professionals, must be rejected as unfounded.
–       The similarity between the services covered by the mark applied for and the services covered by the earlier mark
38      The applicant claims that, due to the deliberately broad description of the services included in Class 35 and covered by the mark applied for, they are, in actual fact, either identical or similar to the services for which the earlier mark is registered.
39      Moreover, the services covered by the mark applied for also cover classic retail services which could be considered as complementary to shopping centre management. Shopping centre management prepares the basis for retail services and is therefore indispensable and important for providing those services. Consequently, there is also a likelihood of confusion ‘due to the at least average to high degree of similarity of the services in this regard’.
40      Lastly, the applicant maintains that, as regards the goods in question, the similarity between the services covered by the mark applied for and the services relating to shopping centres included in Class 35 and covered by the earlier mark is demonstrated by the fact that the exact word elements ‘ece quality of life’ and, in particular, ‘quality of life’ could also easily serve as a possible claim for the applicant’s shopping centre activities under its main mark ECE.
41      EUIPO disputes the applicant’s arguments.
42      The Board of Appeal considered, in paragraph 48 of the contested decision, that the services covered by the mark applied for, which consisted of retail services, namely the bringing together, for the benefit of others, of a variety of goods relating to the goods in Classes 4, 6, 8, 11, 16, 20, 21, 24 and 28, were dissimilar from the services covered by the earlier mark covering the same class. That concerned, according to the Board of Appeal, in particular, but not exclusively, services of ‘advertising; business management; business administration; office functions; public relations’ and ‘planning of real estate property and establishments from a business point of view, particularly of retail and service establishments such as shopping centers’, covered by the earlier mark in Class 35. In that board’s view, the services covered by the mark applied for and the services covered by the earlier mark target different publics. Similarly, those services satisfy different needs, require different skills and are provided by different undertakings.
43      First, it should be noted that the description of the Class 35 services covered by the mark applied for, namely ‘the bringing together, for the benefit of others, of a variety of goods’, is not as broad as the applicant claims. As the Board of Appeal rightly observed in paragraph 46 of the contested decision, the applicant omits the fact that the inclusion of the term ‘namely’ restricts the scope of the protection of those services, which are indeed provided in respect of the specific goods listed in that class. The specification of the services in question included in Class 35 is therefore sufficiently precise that they do not overlap with the services covered by the earlier mark. The applicant, moreover, puts forward no specific arguments to dispute that finding of the Board of Appeal, but merely repeats before the Court the same arguments it made during the administrative proceedings.
44      Secondly, it must be held that the relevant services included in Class 35 mainly include retail services relating to the goods in question as described above. Those services are intended for end users who want to purchase the final product, as the Board of Appeal rightly found in paragraph 45 of the contested decision. By contrast, the Class 35 services covered by the earlier mark target professionals. As the Board of Appeal noted, those services of ‘advertising; business management; business administration; office functions; public relations’ and ‘planning of real estate property and establishments from a business point of view, particularly of retail and service establishments such as shopping centers’ target the professional public seeking to obtain a professional service in the field of marketing, design, public relations and business management in order to strengthen their market position. The same applies to the remainder of the services included in Classes 35, 36, 37 and 42 and covered by the earlier mark, which consist, in essence, of supporting businesses by providing assistance in relation to real estate, insurance and financial or technical matters. Accordingly, the Board of Appeal correctly found that the services covered by the marks in question targeted different publics.
45      Thirdly, it must be held that the Board of Appeal rightly found, in paragraph 45 of the contested decision, that, while the services covered by the mark applied for are sales services intended for the general public who want to purchase certain goods, the advertising and business management services covered by the earlier mark generally satisfy different needs, require different skills and are provided by different undertakings specialised in that field, which are intended to help other undertakings manage and improve their activities by increasing their visibility or by securing better returns. Accordingly, the providers of the services covered by the earlier mark and of the service provided by the mark applied for are different.
46      The same applies as regards the other services covered by the earlier mark which are intended to support businesses by providing assistance in the fields of real estate, insurance, finance or technical matters. Consequently, those services also have a different intended purpose to the services covered by the mark applied for and are offered by different undertakings.
47      Fourthly, since the services target different publics, they cannot, by definition, be complementary as is apparent from the case-law cited in paragraph 34 above. Therefore, the Board of Appeal was correct to find, in paragraph 47 of the contested decision, that those services were not complementary.
48      Fifthly, as regards the applicant’s argument that the similarity of the services being compared are enhanced by the presence of the expression ‘quality of life’ in the contested sign, it must be observed that that argument is irrelevant, as is apparent from paragraph 36 above.
49      Since the Board of Appeal did not err in finding that the goods and services covered by the marks at issue were not similar,
it was able to conclude correctly, on the basis of that finding alone, that the existence of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, was ruled out.
The second plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001
50      The applicant does not dispute the findings of the Board of Appeal relating to the reputation and the similarity of the marks at issue. However, it claims that EIUPO wrongly held that no link could be established between the signs by the relevant public and that there was no detriment within the meaning of Article 8(5) of Regulation 2017/1001 (see paragraph 145 of the contested decision). In view of the earlier mark’s reputation, it is ‘clear’ that, in the context of purchases made in the applicant’s shopping centres, a customer – whether a consumer or a professional tenant of retail shops – would associate goods bearing the mark ECE with the applicant.
51      In the applicant’s view, ECE Piknik Ürünleri Plastik ve Kömür Üretim Ithalat Ihracat seeks to ride on the coat-tails of the earlier mark to benefit from its power of attraction, its reputation and its prestige, and to exploit the marketing effort the applicant has expended without paying any financial compensation. This results in unfair advantage being taken of the distinctive character or repute of the earlier mark.
52      EUIPO disputes the applicant’s arguments.
53      Under Article 8(5) of Regulation 2017/1001, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to 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.
54      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation 2017/1001, four cumulative conditions must, therefore, be satisfied (see, to that effect, judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34
and 35, and of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited). In the present case, the fourth condition is at issue, that is to say that use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark.
55      It should, in that regard, be noted that, in the absence of an association in the mind 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).
56      The existence of a link between the marks at issue must be appreciated from an overall standpoint, taking into account all factors relevant to the circumstances of the case. Those factors include the degree of similarity between the marks at issue, the nature of the goods or services for which the marks at issue were registered, 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, the degree of the earlier mark’s distinctive character, whether inherent or acquired through use and the existence of the likelihood of confusion on the part of the public (see judgment of 28 May 2020, Galletas Gullón v EUIPO – Intercontinental Great Brands (gullón TWINS COOKIE SANDWICH), T‑677/18, not published, EU:T:2020:229, paragraph 102 and the case-law cited).
57      The Board of Appeal found, in paragraphs 128 to 145 of the contested decision, that the conditions requiring a link and detriment had not been established by the applicant. That board observed that the applicant had failed to explain how a link could be established between the signs by the public concerned and that it had also failed to submit a coherent line of argument as to the existence of any of the three types of detriment provided for in Article 8(5) of Regulation 2017/1001.
58      It should be noted, as regards the establishment of a link between the marks at issue, that the applicant put forward no arguments calling into question the finding that such a link could not be established in the present case. It is not sufficient to allege, without providing further details, that it is ‘clear’ that the relevant public would establish a link between the marks at issue.
59      Consequently, as is clear from the case-law cited in paragraph 55 above, since the existence of a link between the marks at issue is a necessary, but not sufficient, requirement for the fourth condition laid down by Article 8(5) of Regulation 2017/1001 to be satisfied, there is, in the absence of such a link, no need to examine whether one of the three types of detriment referred to in Article 8(5) of Regulation 2017/1001 exists.
60      It should, however, be noted that, in any case, apart from general statements, the applicant does not explain how any of the three types of detriment provided for in Article 8(5) of Regulation 2017/1001 could occur in the present case. The applicant merely states that ECE Piknik Ürünleri Plastik ve Kömür Üretim Ithalat Ihracat seeks, through the mark applied for, to ride on the ‘coat-tails of [the earlier] mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of [its] own in that regard, the marketing effort expended by the proprietor of the mark in order to create and maintain the image of that mark [and that, consequently,] the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or repute of that mark’. Since those arguments cannot call into question the findings of the Board of Appeal, they must be rejected as unfounded.
61      That finding cannot be called into question by the fact that the applicant claimed, during the hearing and in the context of the second plea, that the mark applied for would be detrimental to the earlier mark, which is renowned for its commitment to sustainable development. In essence, that reputation cannot be reconciled with the disposable goods covered by the mark applied for.
62      It must be borne in mind that, under Article 188 of the Rules of Procedure of the General Court, the pleadings of the parties may not change the subject matter of the proceedings before the Board of Appeal. It is for the Court, in the present case, to review the legality of the decision taken by the Board of Appeal. Consequently, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before that board (judgment of 29 January 2013, Müller v OHIM – Loncar (Sunless), T‑662/11, not published, EU:T:2013:43, paragraph 16).
63      It should be noted that the applicant has neither implicitly nor explicitly claimed either before the Board of Appeal or even in the application to the Court that the earlier mark would suffer detriment due to being known for its commitment to sustainable development. Those assertions were, in fact, made for the first time during the hearing.
64      Therefore, the subject matter of the proceedings before the Board of Appeal did not concern possible detriment due to the earlier mark being known for its commitment to sustainable development while the mark applied for covers disposable goods. Accordingly, the applicant’s arguments referred to in paragraph 61 above change the subject matter and the terms of the proceedings as presented before the Board of Appeal and so must be rejected as inadmissible.
65      Consequently, in the absence of any details or arguments explaining in what way the findings of the Board of Appeal, according to which the applicant had not put forward sufficient arguments and evidence to substantiate its claims, were incorrect, the applicant’s arguments must be rejected as inadmissible in part and unfounded in part.
66      It follows that the second plea must be rejected as unfounded and the action must therefore be dismissed in its entirety.
Costs
67      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
68      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO, without it being necessary to rule on the admissibility of the applicant’s first head of claim, seeking to alter the contested decision.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders ECE Group GmbH & Co. KG to pay the costs.
Schalin
Škvařilová-Pelzl
Kukovec
Delivered in open court in Luxembourg on 31 January 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.