JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
21 December 2022 (*)
(EU trade mark – Opposition proceedings – Application for EU figurative mark PUMA – Earlier international figurative mark 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‑4/22,
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, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
DN Solutions Co. Ltd,
formerly Doosan Machine Tools Co. Ltd, established in Seongsan-gu, Changwon-si (South Korea), represented by R. Böhm and C. Brecht, lawyers,
THE GENERAL COURT (Sixth Chamber),
composed, at the time of the deliberations, of A. Marcoulli (Rapporteur), President, S. Frimodt Nielsen and J. Schwarcz, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 24 October 2022,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Puma SE, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 28 October 2021 (Case R 1677/2020-1) (‘the contested decision’).
Background to the dispute
2        On 27 November 2012, the intervener, DN Solutions Co. Ltd, filed with EUIPO an application for registration of an EU trade mark for the following figurative sign:
3        The mark applied for covered goods in Class 7 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Lathes; CNC (computer numerical control) lathes; machining centers; turning center; electric discharge machine’.
4        On 16 April 2013, the applicant filed a notice of opposition to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
5        The opposition was based, inter alia, on earlier international registration No 437626 of the figurative mark reproduced below, registered on 12 April 1978 and regularly renewed, with effect in Benelux, the Czech Republic, Germany, Spain, France, Croatia, Italy, Hungary, Austria, Portugal, Romania, Slovenia and Slovakia, for goods in Classes 18, 25 and 28, corresponding, for each of those classes, to the following description:
–        Class 18: ‘Leather and imitation of leather, namely bags, trunks and suitcases, carrying bags, travel bags, especially for sports equipment and sportswear’;
–        Class 25: ‘Clothing, including boots, shoes, slippers and booties, especially clothing and sports, leisure and exercise shoes’;
–        Class 28: ‘Games, toys, apparatus for physical exercise, gymnastics equipment and sport, including sport balls’;
6        The ground relied on in support of the opposition was, as regards international registration No 437626, that set out in Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (now 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)).
7        By decision of 31 March 2015, the Opposition Division rejected the opposition, in particular in so far as it was based on Article 8(5) of Regulation No 207/2009, on the ground that the applicant had not demonstrated the alleged reputation of the earlier marks. The appeal brought against that decision was dismissed by decision of the Board of Appeal of 4 December 2015 on the ground that, even assuming that that reputation had been proved, first, the relevant public would not establish any link between the marks at issue notwithstanding their very high level of similarity and, secondly, the applicant had not proved that use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks. The applicant brought an action against the latter decision, which was upheld by judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA) (T‑62/16, EU:T:2018:604). The General Court concluded that the Board of Appeal had not properly taken account of the degree of reputation relied on by the applicant or properly assessed the degree of inherent distinctive character of the earlier marks in its examination of whether there was a link between the marks at issue in the mind of the relevant public.
8        By decision of 16 June 2020, the Opposition Division, to which the case was remitted, upheld the opposition on the basis of Article 8(5) of Regulation No 207/2009.
9        On 13 August 2020, the intervener filed a notice of appeal with EUIPO against the decision of the Opposition Division of 16 June 2020.
10      By the contested decision, the Board of Appeal upheld the appeal. In essence, it found that, despite the very high degree of reputation of international registration No 437626 (‘the earlier mark’) in so far as it covered ‘clothing, including boots, shoes, slippers and booties, especially clothing and sports, leisure and exercise shoes’ in Class 25, its inherent distinctive character, its uniqueness and the fact that the signs at issue were almost identical, the applicant had not demonstrated that the public would establish a link between the marks at issue in the light of the specific nature both of the goods covered by the mark applied for and of the public at which they are aimed. The Board of Appeal inferred from this that one of the conditions for the application of Article 8(5) of Regulation No 207/2009 was not satisfied. It added that there was no need to analyse the second earlier right cited in opposition since its reputation was based on the same documents as those provided by the applicant relating to the earlier mark.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO and the intervener to pay the costs.
12      EUIPO contends that the Court should:
–        annul the contested decision in so far as it interprets it as having found that there was no link between the signs exclusively on the basis of the pronounced dissimilarity between the goods;
–        otherwise, dismiss the action and order the applicant to pay the costs.
13      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      Given the date on which the application for registration at issue was filed, namely 27 November 2012, which is decisive for the purpose of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 before it was amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Regulation No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21) (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).
15      Consequently, in the present case, so far as concerns the substantive rules, the references made by the Board of Appeal in the contested decision and by the parties to Article 8(5) of Regulation 2017/1001 must be understood as referring to Article 8(5) of Regulation No 207/2009, which is essentially identical in content.
16      The applicant puts forward a single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009.
17      Under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, including a trade mark registered under international arrangements having effect in one or more Member States, the trade mark applied for is not to be registered where it is identical or similar to the earlier trade mark and is to be registered for goods or services which are dissimilar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the Member State or Member States 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.
18      Although the primary function of a mark is that of an indication of origin, every mark also has an inherent economic value which is independent of and separate from that of the goods and services for which it has been registered. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are dissimilar 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).
19      It is clear from the wording of Article 8(5) of Regulation No 207/2009 that the application of that provision presupposes that a number of conditions are satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, in the case of an earlier trade mark registered under international arrangements having effect in one or more Member States, it must have a reputation in the Member State or States in question. Fourthly, the 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. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 34; see also judgment 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).
20      In the present case, the applicant submits, in essence, that the Board of Appeal misapplied Article 8(5) of Regulation No 207/2009. The single plea in law comprises three complaints, alleging, first, errors made in the definition of the relevant public, secondly, errors of assessment vitiating the finding that there was no link in the mind of the relevant public between the mark applied for and the earlier mark and, thirdly, the existence of injury to the distinctive character of the earlier mark and of unfair advantage taken by the mark applied for. The arguments raised in support of those complaints seek to call into question the Board of Appeal’s assessment of the fourth condition for the application of Article 8(5) of Regulation No 207/2009 referred to in paragraph 19 above.
21      However, the applicant does not dispute the assessments made by the Board of Appeal as regards the other conditions for the application of Article 8(5) of Regulation No 207/2009 referred to in paragraph 19 above.
22      In particular, first, the applicant does not dispute the Board of Appeal’s findings concerning the comparison of the signs at issue. In that regard, the Board of Appeal found that they were phonetically identical, conceptually identical since they would be understood as a reference to the feline animal of the same name, and visually highly similar, if not almost identical, since they consisted of one and the same word element written in highly similar, stylised bold letters. The intervener, for its part, contends that, visually, only a ‘certain similarity’ can be found in view of the fact that the signs differ in their font, in particular in terms of the unclosed upper-case letter ‘P’ and the curve of the upper-case letter ‘M’ of the mark applied for. However, as the Board of Appeal noted in paragraph 63 of the contested decision, they differ very slightly in their stylisation. In that context, and given that the relevant public only rarely has the chance to make a direct comparison between the different marks but must rely on the ‘imperfect picture’ of them that it has retained (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26), the Board of Appeal found correctly that that such differences will have minimal impact, if any, on the visual comparison. There is therefore no reason to call into question the Board of Appeal’s finding as regards the comparison of the signs at issue.
23      Secondly, as regards the reputation of the earlier mark, the Board of Appeal took the view, in paragraphs 50 and 55 of the contested decision, that that reputation was very high for ‘clothing, including boots, shoes, slippers and booties, especially clothing and sports, leisure and exercise shoes’ in Class 25. Whilst stating, in paragraph 74 of the contested decision, that the applicant had not submitted any evidence that the recognition of the earlier mark would go beyond the general public based on its reputation, the Board of Appeal accepted that the target public for the goods covered by the mark applied for would also be aware of the earlier mark in the light of its exceptional level of recognition. There is no need to call into question the degree of reputation thus found by the Board of Appeal, which, as was confirmed at the hearing, is not disputed by the parties.
The definition of the relevant public
24      The definition of the relevant public is a necessary prerequisite for the purposes of applying Article 8(5) of Regulation No 207/2009, just as it is for the purposes of applying Article 8(1) of that regulation. More specifically, it is with regard to that public that the Court must assess whether there is, inter alia, any link between the marks at issue and any detriment to the reputation or to the distinctive character of the earlier marks or any unfair advantage being taken of the reputation or the distinctive character of those marks (judgment of 26 September 2018, PUMA, T‑62/16, EU:T:2018:604, paragraph 31).
25      The applicant submits that the Board of Appeal defined incorrectly the relevant public with regard to which the assessment had to be made of the existence of the types of injury referred to in Article 8(5) of Regulation No 207/2009 by failing to make any mention of the relevant public with regard to the goods covered by the earlier mark. It also argues that the distinction drawn by the Board of Appeal between the professional public and the general public is artificial.
26      EUIPO and the intervener dispute the applicant’s arguments.
27      In the present case, in paragraphs 33 and 34 of the contested decision, in a section entitled ‘the relevant public’, the Board of Appeal, in essence, noted the case-law according to which the existence of injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 35 and 36). The Board of Appeal also stated that the goods covered by the mark applied for targeted business or technical professionals.
28      It is true that, in the section of the contested decision that deals with the relevant public, the Board of Appeal did not identify that public with regard to the goods covered by the earlier mark. Nevertheless, that identification is included in paragraph 73 of the contested decision, in which the Board of Appeal noted that the goods covered by the earlier mark were aimed at the general public. In that regard, it is apparent from paragraphs 73 to 77 of the contested decision that the Board of Appeal assessed whether there was a link between the marks at issue by taking into account both the public targeted by the goods covered by the mark applied for and the public targeted by the goods covered by the earlier mark and concluding that they were completely different.
29      It follows that the argument that the Board of Appeal failed to define the relevant public with regard to the goods covered by the earlier mark has no factual basis.
30      Furthermore, without calling into question the public thus identified by the Board of Appeal, the applicant submits, in essence, that the distinction between the professional public and the general public is artificial since the former necessarily forms part of the latter and is aware of the earlier mark based on its reputation. In other words, the relevant publics necessarily overlap.
31      In the present case, it is common ground that the goods covered by the earlier mark for which reputation has been established are aimed at the general public. It is also common ground that, as the Board of Appeal noted on several occasions in the contested decision, the mark applied for targets a public consisting of technical or industry professionals. In that context, the Board of Appeal concluded, in paragraph 77 of the contested decision, that the target publics of the marks at issue were completely different.
32      In that regard, it should be recalled that the public concerned by a given mark consists of average consumers of the goods or services for which that mark is registered or, as the case may be, applied for, who are reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 34). Consequently, the public in the territory of a given mark cannot merely be defined as consisting of a part of the population of that territory, rather it involves defining the relevant consumer of the goods or services covered by that mark.
33      It follows that the fact that the professional public of the goods covered by the mark applied for is part of the population in general, as composed of natural persons, does not mean that it also forms part, on that ground alone, of the public for which the goods covered by the earlier mark are intended. The same applies to the fact, which is not disputed, that the professional public will be aware of the earlier mark.
34      Accordingly, the first complaint must be rejected.
The existence of a link in the mind of the relevant public between the mark applied for and the earlier mark
35      As regards the fourth condition defined in Article 8(5) of Regulation No 207/2009 (see paragraph 19 above), the types of injury referred to in that article, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant public makes a connection between those two marks. In other words, the public concerned 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).
36      The existence of such a link in the mind of the relevant public between the mark applied for and the earlier mark is therefore an implied essential precondition for the application of Article 8(5) of Regulation No 207/2009 (see judgments of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 26 and the case-law cited, and of 11 November 2020, Totalizator Sportowy v EUIPO – Lottoland Holdings (Lottoland), T‑820/19, not published, EU:T:2020:538, paragraph 26 and the case-law cited).
37      The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the mark applied for would call the earlier mark to mind is tantamount to the existence of a link between those marks (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 60).
38      The existence of such a link must be assessed globally, taking into account all factors relevant to the circumstances of the case, including 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 the 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).
39      It is in the light of those preliminary considerations that the second complaint must be examined.
40      In the present case, the applicant submits that the Board of Appeal erred in finding that there was no link between the marks at issue by relying predominantly on the difference between the goods at issue, without taking sufficient account of other relevant factors. In the applicant’s view, given that the relevant public overlaps, that the signs at issue are almost identical and that the earlier mark has an extraordinary reputation and a very high degree of distinctive character, it is inevitable that the target specialist consumers of the mark applied for will establish a link between the marks at issue. The applicant adds that there is no categorical difference between the business sectors to which the goods covered by those marks belong. In the applicant’s view, the public is used to seeing the same marks applied both to goods in Class 25 and to machinery. Moreover, the intervener also markets goods in Class 25.
41      EUIPO submits that the conclusion that there was no link between the marks at issue could be regarded as being based only on the difference between the goods that they cover. In those circumstances, it would have to be found that there was an error of law which would justify the annulment of the contested decision. Alternatively, EUIPO maintains that the conclusion referred to above could be correct taking into account the facts that, first, the similarity in the stylisation of the marks is not of particular importance and, secondly, since the marks at issue have a specific meaning, the mark applied for could be associated with the animal rather than with the earlier mark.
42      The intervener disputes the applicant’s arguments.
43      In the present case, in its analysis of the link between the marks at issue, the Board of Appeal, first of all, noted that the existence of such a link had to be assessed taking into account all factors relevant to the circumstances of the case.
44      Next, the Board of Appeal compared the signs and found that they were visually almost identical and phonetically and conceptually identical.
45      Lastly, the Board of Appeal compared the goods covered by the signs at issue. It concluded that they were totally dissimilar and did not have any points of contact, that they targeted essentially different publics and that they were distributed in completely different sales outlets. It stated that the applicant had not provided any evidence to prove in what respect, in that context, the target publics would mentally make a connection between the marks at issue. The Board of Appeal observed, in that regard, that the examples provided by the applicant of an extension of the range of goods were inconclusive and that the applicant had not provided any proof of any type of licensing for the manufacture of goods under the earlier mark in totally different market sectors. It noted that the fact that the relevant public of the mark applied for would be aware of the earlier mark cannot automatically lead to a finding that there is a link between the marks at issue. It concluded that, in the light of the specific nature both of the goods covered by the mark applied for and of the public at which they are aimed, and notwithstanding the strength of the earlier mark’s reputation and the similarity or identity of the signs at issue, it was highly unlikely that the relevant public would associate the marks at issue with one another.
46      Thus, it must be found that the Board of Appeal concluded that there was no link between the marks at issue in the mind of the public by taking into account not only the dissimilarity between the goods covered, but also the degree of similarity between the signs at issue, the strength of the earlier mark’s reputation, the lack of evidence adduced by the applicant and the relevant public at which the marks at issue were aimed.
47      It follows, in the first place, that, contrary to what EUIPO submits, the conclusion that there was no link between the marks at issue is not based solely on the dissimilarity between the goods covered by those marks. The fact that the analysis set out in paragraph 45 above is included in a section entitled ‘comparison of the goods’ cannot be decisive in that regard. Furthermore, an overall reading of that section of the contested decision and a combined reading of paragraphs 79 and 80 thereof permit it to be understood that the Board of Appeal referred to paragraph 86 of the judgment of 10 March 2021, Puma v EUIPO – CAMäleon (PUMA-System) (T‑71/20, not published, EU:T:2021:121), in so far as the Court had found that there was no link between the marks at issue, which is a condition for the application of Article 8(5) of Regulation No 207/2009. The reference, in paragraph 79 of the contested decision, to the absence of a link between the goods at issue can therefore only be understood as being the result of a clerical error.
48      Accordingly, the contested decision is not vitiated by an error of law in that regard.
49      In the second place, it should be examined whether, as the applicant submits, the Board of Appeal made an error of assessment by favouring, in its analysis, the factor relating to the dissimilarity of the goods in question in order to conclude that there was no link between the marks at issue.
50      In that regard, first, the signs at issue are almost identical. Thus, in addition to their phonetic and conceptual identity, the signs are visually almost identical, the stylisation of the mark applied for being very similar to that of the earlier mark (see paragraph 22 above).
51      Secondly, it is common ground that the earlier mark, in so far as it covers the goods referred to in paragraph 23 above, has a very high degree of reputation and that that reputation goes beyond the public concerned by the goods covered.
52      Thirdly, the Board of Appeal found that the earlier mark had inherent distinctiveness, that its distinctive character acquired through use in respect of certain goods was high in Germany and France and that it was a unique mark. There is no need to call into question the enhanced distinctiveness of the earlier mark, which, moreover, is not disputed.
53      Fourthly, it is common ground that the goods covered by the marks at issue are completely different and belong to radically distinct business sectors. Thus, the goods covered by the mark applied for are machine tools, that is to say, machines for shaping wood, metal, or other material by means of a rotating drive which turns the piece being worked on against changeable cutting tools. They are mainly intended for professional or even industrial use, whereas the goods covered by the earlier mark for which reputation has been established are clothing and shoes that are intended for practising sports or are used as fashion accessories. In addition, as the Board of Appeal correctly observed, the goods at issue are sold in completely different sales outlets. Similarly, they target different publics, namely a professional public in the technical or industrial sector as regards the mark applied for and the general public as regards the earlier mark.
54      It is in the light of all those factors that it should be determined whether the Board of Appeal made an error of assessment in finding that there was no link between the marks at issue.
55      In that regard, it must be borne in mind that, according to the case-law, 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 if there is no link between the goods and services covered by those marks and even though the 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). At the same time, the goods or services covered by the marks at issue may be so dissimilar that the mark applied for is unlikely to bring the earlier mark to the mind of the relevant public even if the relevant section of the public as regards those goods or services is the same or overlaps (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).
56      It cannot therefore be ruled out that, in some cases, there may be a link between those marks in the light of the relationship between the various factors which are relevant in each case, even though those marks cover goods or services between which there is no link (judgment of 10 March 2021, PUMA-System, T‑71/20, not published, EU:T:2021:121, paragraph 71).
57      It should also be borne in mind that the fact that the public at which the goods covered by the mark applied for are aimed will be aware of the earlier mark cannot suffice to show that that public will establish a link between the marks at issue (see judgment of 10 March 2021, PUMA-System, T‑71/20, not published, EU:T:2021:121, paragraph 85 and the case-law cited).
58      In the present case, first, the applicant submits that the boundary between the two business sectors concerned, namely that of machinery, on the one hand, and that of clothing, on the other, should be placed in context in the light of the practice of marks with a reputation of marketing goods which are very different from their traditional sector, including as promotional items. There are thus no watertight commercial fields. The applicant states that it could thus diversify its range of products by extending it to machinery and submits that the intervener itself markets goods in Class 25.
59      The argument that there is no airtight distinction between the different business sectors and the evidence submitted in support of that argument must be examined in the light of the circumstances of the present case, in particular of the goods covered by the marks at issue.
60      In that regard, first of all, it must be pointed out 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 aimed at the general public which would have extended its activities to goods or services aimed at a public of professionals in industry. In that context, the applicant’s assertion that it could diversify its production by extending it to machinery, even assuming that that claim refers to machinery such as that covered by the mark applied for, is purely hypothetical.
61      Next, the view must be taken, as the Board of Appeal did, that, on account of the fact that the goods covered by the mark applied for belong to a specific and limited market, the possibility of a collaboration with a mark with a reputation for sportswear and sports shoes appears highly unlikely. Moreover, that appears even less conceivable since, as the intervener observes, the goods covered by the mark applied for are located in industry buildings and are not on display to the public.
62      As regards the claim, disputed by the intervener, that the intervener markets goods in Class 25, that claim is based on evidence contained in paragraphs 52 and 53 of the application that was not adduced during the administrative proceedings before EUIPO, as the applicant admitted at the hearing. As it is not the Court’s function to review the facts in the light of documents adduced for the first time before it, to allow such evidence would be contrary to Article 188 of the Rules of Procedure of the Court, according to which the parties’ pleadings may not alter the subject matter of the proceedings before the Board of Appeal (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited). Accordingly, the evidence in question must be declared inadmissible and there is no need to examine it.
63      Lastly, the applicant submits that, because of the general practice of marketing certain goods in Class 25 as promotional items, it is completely plausible, if not inevitable, that, when faced with t-shirts, sweat-shirts or caps bearing the earlier mark, customers of the mark applied for would believe that they are faced with a product of the intervener. Nevertheless, such a claim is based on the general assertion that any undertaking, irrespective, inter alia, of its sector and its reputation, is likely to market merchandising goods in Class 25. That assertion is made regardless of the specific nature of the market to which the goods covered by the mark applied for belong. It is thus purely hypothetical.
64      It follows that the arguments put forward by the applicant are not such as to diminish the fact that the goods covered by the marks at issue belong to completely different business sectors.
65      Secondly, it is true that the signs at issue are almost identical, the distinctive character of the earlier mark is high and its reputation goes beyond the relevant public for the goods covered. However, those factors cannot necessarily be sufficient for a link between the marks at issue to be found to exist, such a link having to be assessed in the light of the relationship between all of the factors which are relevant in each case.
66      In that regard, as has been noted in paragraph 53 above, the goods covered by the mark applied for are machine tools that belong to a specific sector which is entirely different from that to which the goods covered by the earlier mark belong. In addition, those machine tools are aimed at a specific public which is radically different from that of the goods covered by the earlier mark. The applicant has not demonstrated that the affixing of the mark applied for, PUMA, in the specific commercial context of the goods covered by that mark, would bring the earlier mark to mind. In that regard, it must be acknowledged that, as argued, in essence, by EUIPO and the intervener in the present proceedings, the standard of proof required in this case is higher, since the earlier mark is composed not of a fanciful name but of a common noun which primarily designates an animal.
67      In the light of all the foregoing, it must be held that the Board of Appeal was entitled to take the view that, in the particular circumstances of the present case, in the light both of the specific nature of the goods covered by the mark applied for and of the sector to which they belong, and of the specific nature of the public at which they are aimed, and notwithstanding the strength of the earlier mark’s reputation, its highly distinctive character and the degree of similarity between the signs at issue, a connection would not be made between the marks at issue.
68      Accordingly, the second complaint must be rejected.
The existence of injury to the distinctive character of the earlier mark and of unfair advantage taken by the mark applied for
69      The applicant submits that the registration of the mark applied for – which is almost identical to the earlier mark, which is unique in the sense that the word ‘puma’, written in a specific typeface, has never been used by anyone other than the applicant – will cause the dilution of those marks through blurring. It also submits that the mark applied for is a copy both of the term and of the typeface of the earlier mark with a reputation, which constitutes a clear case of parasitism. It submits that the image and the values of the earlier mark will most probably be transferred to the goods covered by the mark applied for. It adds that the intervener did not rely on any due cause for the use of the mark applied for.
70      According to the case-law cited in paragraphs 35 and 36 above, Article 8(5) of Regulation No 207/2009 implies that the three types of injury referred to therein, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant public makes a connection between those marks, that is to say, establishes a link between them even though it does not confuse them. The existence of such a link in the mind of the relevant public between the mark applied for and the earlier mark is therefore an implied essential precondition for the application of Article 8(5) of Regulation No 207/2009.
71      In the present case, the Board of Appeal was fully entitled to find that there was no link in the mind of the relevant public between the marks at issue. In the absence of such a link, in accordance with the case-law cited in paragraphs 35 and 36 above, the use of the mark applied for is therefore unlikely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
72      Consequently, the applicant is not justified, in any event, in submitting that the use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
73      Since one of the four cumulative conditions laid down in Article 8(5) of Regulation No 207/2009 in order for protection to be given to the earlier mark is not satisfied, it should be concluded, without it being necessary to examine the applicant’s arguments alleging the existence of one of the types of injury referred to in that provision, that the Board of Appeal rejected correctly the opposition filed by the applicant.
74      In the light of all the foregoing, the action must be dismissed.
Costs
75      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.
76      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Puma SE to pay the costs.
Marcoulli
Frimodt Nielsen
Schwarcz
Delivered in open court in Luxembourg on 21 December 2022.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.