ORDER OF THE GENERAL COURT (Seventh Chamber)
29 January 2025 (*)
( EU trade mark – Opposition proceedings – Application for the EU word mark RE:PLAY – Earlier EU and national marks REPLAY and earlier international registrations of the mark REPLAY – Relative ground for refusal – Unfair advantage – Article 8(5) of Regulation (EU)
2017/1001 – Action manifestly lacking any foundation in law )
In Case T‑164/24,
Fashion Box SpA, established in Asolo (Italy), represented by A. Parassina and A. Giovannardi, lawyers,
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
Ghostthinker GmbH, established in Augsburg (Germany), represented by M. Zollner and D. Breuer, lawyers,
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk (Rapporteur), President, G. Hesse and B. Ricziová, Judges,
Registrar: V. Di Bucci,
having regard to the written part of the procedure,
makes the following
Order
1        By its action based on Article 263 TFEU, the applicant, Fashion Box SpA, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 25 January 2024 (Case R 0424/2023-1) (‘the contested decision’).
Background to the dispute
2        On 18 January 2021, the intervener, Ghostthinker GmbH, filed an application for registration of an EU trade mark with EUIPO in respect of the word sign RE:PLAY.
3        The mark applied for covered goods and services in Classes 9, 41 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 corresponding, for each of those classes, to the following description:
–        Class 9: ‘Mobile apps for communication, chats and exchange of messages; Application software for communication, conversations, chats and exchange of messages’;
–        Class 41: ‘Coaching; Audio, video and multimedia production; Providing online videos, not downloadable; Videotaping; Audio and video editing services’;
–        Class 42: ‘Hosting services, software as a service, and rental of software; Programming of software for Internet portals, chatrooms, chat lines and Internet forums; Development, programming and implementation of software for communication, conversations, chats and exchange of messages’.
4        On 18 May 2021, the applicant filed a notice of opposition to registration of the 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 marks and rights:
–        the EU mark REPLAY, registered on 31 January 2006 under number 520 080 for goods and services in Classes 3, 9, 14, 16, 18, 24, 25, 28, 35 and 42;
–        the Italian mark REPLAY, registered on 11 December 1991 under number 555 899 for goods in Classes 9 and 14;
–        international registration number 1145990 of 20 November 2012, designating Denmark, Germany, Greece, Spain, France, Cyprus, Portugal, Finland, Sweden and the Benelux, for the mark REPLAY for goods in Class 9;
–        international registration number 481202 of 24 November 1983, designating the Czech Republic, Germany, Spain, France, Croatia, Hungary, Austria, Portugal, Romania, Slovenia, Slovakia and the Benelux, for the mark REPLAY for goods in Class 25;
–        international registration number 578983 of 11 December 1991, designating Belgium, the Czech Republic, Germany, Spain, France, Luxembourg, Hungary, the Netherlands, Austria, Poland, Portugal, Romania, Slovakia and the Benelux, for the mark REPLAY for goods in Classes 3, 9, 14, 16, 18 and 24;
–        the Italian mark REPLAY, registered on 10 February 1993 under number 587 162 for goods in Class 25.
6        The grounds relied on in support of the opposition were those provided in 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).
7        Following the request made by the intervener, EUIPO invited the applicant to furnish proof that the earlier marks and rights relied on in support of the opposition have been put to genuine use. The applicant complied with that request within the prescribed period.
8        On 19 December 2022, the Opposition Division rejected the opposition in its entirety on the basis of Article 8(1)(b) and Article 8(5) of Regulation 2017/1001.
9        On 20 February 2023, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division, challenging the Opposition Division’s findings regarding the application of Article 8(5) of Regulation 2017/1001.
10      By the contested decision, the Board of Appeal dismissed the appeal on the ground that the conditions provided in Article 8(5) of Regulation 2017/1001 were not satisfied. First, the Board of Appeal found that there was no link between the marks and rights at issue, therefore it was unlikely that the mark applied for could take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks and rights. Second, for the sake of completeness, the Board of Appeal found that, even if the relevant public were to establish a link between the marks and rights at issue, the risk that the use of the mark applied for might take unfair advantage of, or dilute, the repute or the distinctive character of the earlier marks and rights was excluded.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to refuse registration of the mark applied for;
–        order the intervener to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event that a hearing is convened.
13      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
The applicant’s second head of claim
14      As regards its second head of claim, it should be noted that the applicant asks the Court to order EUIPO to refuse registration of the mark applied for. In that regard, it is sufficient to recall that, when exercising judicial review of legality under Article 263 TFEU, the Court has no jurisdiction to issue directions to the institutions, bodies, offices and agencies of the European Union (see order of 26 October 1995, Pevasa and Inpesca v Commission, C‑199/94 P and C‑200/94 P, EU:C:1995:360, paragraph 24 and the case-law cited; see also, to that effect, judgment of 25 September 2018, Sweden v Commission, T‑260/16, EU:T:2018:597, paragraph 104 and the case-law cited). It follows that the second head of claim must be rejected on the ground of lack of jurisdiction.
Substance
15      Under Article 126 of the Rules of Procedure of the General Court, where an action is manifestly inadmissible or manifestly lacking any foundation in law, the Court may, on a proposal from the Judge-Rapporteur, at any time decide to give a decision by reasoned order without taking further steps in the proceedings.
16      In the present case, the Court considers that it has sufficient information from the documents in the file and decides, pursuant to that article, to give judgment without taking further steps in the proceedings, even though one of the parties has requested that a hearing be held (see order of 28 June 2022, Compass Tex v EUIPO (Trusted Handwork), T‑704/21, not published, EU:T:2022:410, paragraph 11 and the case-law cited).
17      In support of its application for the annulment of the contested decision, the applicant relies on two pleas in law, the first alleging infringement of Article 8(5) of Regulation 2017/1001 and the second alleging failure to comply with the principles of equal treatment and sound administration.
The first plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001
18      In the context of the first plea in law, the applicant submits that the Board of Appeal erred in finding in the contested decision that the conditions provided in Article 8(5) of Regulation 2017/1001 were not satisfied.
19      In that regard, it should be recalled that, 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.
20      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation 2017/1001, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, 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, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and 35; 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).
21      The existence of a link between the marks at issue must be appreciated globally, taking into account all the factors relevant in the individual case (see, as regards Article 5(2) of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), judgments of 23 October 2003, Adidas-Salomon and Adidas Benelux, C‑408/01, EU:C:2003:582, paragraph 30 and of 10 April 2008, adidas and adidas Benelux, C‑102/07, EU:C:2008:217, paragraph 42). 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 or applied for, 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, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42 and the case-law cited). As regards the likelihood of confusion, it should be noted that it is not a condition for the application of Article 8(5) of Regulation 2017/1001. It is only one factor among others and can be taken into account only where the goods or services concerned are identical or similar.
22      As regards, more particularly, the fourth of the conditions for the application of Article 8(5) of Regulation 2017/1001, it refers to three separate and alternative types of risk, namely that the use without due cause of the mark applied for, first, is detrimental to the distinctive character of the earlier mark, second, is detrimental to the repute of the earlier mark, or third, takes unfair advantage of the distinctive character or the repute of the earlier mark. The first type of risk referred to in that provision arises where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the dilution of the earlier mark through the dispersion of its identity and its hold upon the public mind. The second type of risk occurs where the goods or services covered by the mark applied for may be perceived by the public in such a way that the earlier mark’s power of attraction is diminished. The third type of risk concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation. It should, however, be emphasised that in none of those cases is it necessary that there be a likelihood of confusion between the marks at issue; the relevant public only has to be able to establish a link between them and does not necessarily have to confuse them (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).
23      The existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect. However, 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 or applied for, 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).
24      It is in the light of those considerations that the arguments relied on by the applicant in support of its first plea in law must be examined.
25      In that regard, the applicant disputes, in essence, the Board of Appeal’s assessment as regards, first, the repute of the earlier marks and rights, second, the similarity between the goods and services in question and, third, the existence in the mind of the relevant public of a link between the marks and rights at issue which might lead to the risks referred to in Article 8(5) of Regulation 2017/1001.
26      By contrast, the applicant does not dispute, in essence, the other assessments made by the Board of Appeal in the contested decision relating to the conditions for the application of Article 8(5) of Regulation 2017/1001.
27      Thus, the applicant does not challenge the definition of the relevant public made by the Board of Appeal in paragraphs 38 to 42 of the contested decision. First, in respect of the goods and services covered by the mark applied for, the Board of Appeal found that some of the services in Class 42 targeted the professional public, displaying a high level of attentiveness, whereas the other goods and services were targeted at the public at large, displaying an average to high level of attentiveness. Second, it found that the goods covered by the earlier marks and rights were aimed at the public at large, with an average level of attentiveness.
28      Similarly, the applicant does not put forward any specific argument disputing the Board of Appeal’s findings, in paragraphs 43 to 50 of the contested decision, on the comparison of the marks and rights at issue and on the distinctive character of the term ‘replay’. In that regard, first, the Board of Appeal found that those marks and rights were visually similar to a high degree and that they were aurally and conceptually identical. Second, the Board of Appeal found that, if the term ‘replay’ were fanciful in connection with the goods covered by the earlier marks and rights, as regards the goods and services covered by the mark applied for, that term would be understood by the majority of the relevant public as alluding to the fact that those goods and services have the characteristic of providing a way to watch or to listen again to certain images and/or sounds.
–       Reputation of the earlier marks and rights
29      In paragraphs 31 to 36 of the contested decision, the Board of Appeal found that the applicant had demonstrated that the earlier marks and rights enjoyed a significant reputation, at least in France and Italy, for ‘clothing, footwear’ in Class 25.
30      The applicant disputes that assessment, claiming that the Board of Appeal should have conferred a ‘broader scope’ of protection on the earlier marks and rights. First, after having recognised the reputation of those marks and rights in France and Italy, the Board of Appeal should have examined all the evidence provided by the applicant in order to also recognise the reputation of those marks and rights in the rest of the European Union. Second, the Board of Appeal arbitrarily applied a de minimis rule when examining the extent of the use and reputation of those marks and rights, which had the effect of limiting their reputation to France and Italy and, consequently, the scope of the protection granted to them. According to the applicant, there is no such quantitative threshold for the reputation of a mark.
31      EUIPO and the intervener dispute the applicant’s arguments.
32      In that regard, it should be noted, first, that the Board of Appeal did not rule out the possibility that earlier marks and rights might enjoy a reputation in Member States of the European Union other than France and Italy. That is apparent from its conclusion, set out in paragraphs 31 and 36 of the contested decision, that those marks and rights enjoy a significant reputation ‘at least’ in France and Italy. The Board of Appeal merely considered
that it was unnecessary to extend that finding to other Member States, since, as EUIPO and the intervener point out, it found, in paragraph 112 of the contested decision, that the outcome of the dispute would be the same, even assuming that the earlier marks and rights enjoy a reputation in Member States other than France and Italy.
33      Second, the applicant does not put forward any argument setting out why, contrary to what the Board of Appeal found, the existence of a reputation beyond France and Italy would have changed the assessment of the link between the marks and rights at issue and, more generally, of whether the conditions for the application of Article 8(5) of Regulation 2017/1001 were satisfied. In particular, as EUIPO submits, the applicant did not claim, either before the Board of Appeal or before the Court, that the earlier marks and rights had a reputation in those other Member States which was greater than their already significant reputation in France and Italy.
34      It follows from the foregoing that the applicant has not put forward any argument capable of challenging the Board of Appeal’s assessment of the repute of the earlier marks and rights.
–       The comparison of the goods and services covered by the marks and rights at issue
35      In paragraphs 51 to 54 of the contested decision, the Board of Appeal found that the goods and services covered by the mark applied for, listed in paragraph 3 above, and the goods for which the earlier marks and rights enjoy a reputation, namely ‘clothing, footwear’ in Class 25, were dissimilar. In that regard, it found that the goods and services in question belong to different economic sectors, that they have a different nature, function, methods of use and purpose, that they typically do not share the same sales outlets and distribution networks and that they normally come from different undertakings. Those goods and services are neither complementary nor in competition with each other. The Board of Appeal, in essence, reiterated those findings in paragraphs 60 to 64 of the contested decision when examining the potential link between the marks and the rights at issue in the mind of the relevant public.
36      The applicant disputes that assessment, claiming, first, that the comparison of the goods and services in question was not necessary in the light of the repute of the earlier marks and rights and their broader scope of protection. Second, in any event, there is indeed a similarity between the goods and services in question, since all of those goods and services target the public at large, in particular that part of the public interested in sport, and are likely to be distributed through the same channels and to be used together. In that regard, the applicant also points out that many undertakings develop their brands in different fields related to fashion.
37      EUIPO and the intervener dispute those arguments.
38      In the first place, it should be noted that the types of injury referred to in Article 8(5) of Regulation 2017/1001, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (as regards Article 4(4)(a) of Directive 89/104, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 30 and the case-law cited). According to the case-law, the degree of closeness or dissimilarity of the goods or services in question is one of the factors relevant to
assessing whether there is a link between the marks at issue (see the case-law cited in paragraph 21 above). Those goods or services might be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. Accordingly, the nature of the goods or services for which the marks at issue are registered or applied for must be taken into consideration for the purposes of assessing whether there is a link between those marks (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 49 and 50).
39      Thus, an analysis of the comparison of the goods and services in question is necessary when assessing whether there is a link between the marks and rights at issue, contrary to the applicant’s assertions. That is precisely the approach that was followed by the Board of Appeal in the contested decision. The Board of Appeal carried out the comparison of the goods and services in question in paragraphs 51 to 54 of that decision in order to then take account of the findings from that analysis when assessing, in paragraphs 55 to 84 of that decision, whether there was a link between those marks and rights, as is apparent in particular from paragraphs 60 to 64 of the contested decision.
40      Furthermore, it must be stated that the applicant does not explain in the application why, contrary to the principles of case-law set out in paragraph 38 above, the mere fact that the earlier marks and rights enjoy a significant reputation, at least in France and Italy, and benefit from a broader scope of protection, would make the comparison between the goods and services in question superfluous when assessing whether there is a link between the marks and rights at issue. In that regard, the applicant’s argument is in no way supported by the reference in the application to the Opposition Division’s decision of 30 November 2023 relating to opposition No B 3 180 538, since, on page 20 of that decision, the Opposition Division did indeed carry out the comparison of the goods in question in the context of its assessment of whether there was a link between the marks at issue in the case in question.
41      Consequently, contrary to what the applicant claims, the Board of Appeal cannot be criticised for having carried out in the contested decision a comparison between the goods and services covered by the mark applied for and the goods for which the earlier marks and rights enjoyed a reputation.
42      In the second place, as regards the Board of Appeal’s finding, disputed by the applicant, that the goods and services in question are dissimilar, it must be borne in mind, first of all, that the assessment of the similarity of the goods or services in question, in the context of opposition proceedings on the basis, inter alia, of Article 8(5) of Regulation 2017/1001, requires that all the relevant factors relating to those goods or services should be taken into account, such as their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary and their distribution channels (see, to that effect, 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).
43      In the present case, it must be observed that the applicant does not dispute the majority of the Board of Appeal’s findings on the differences between the goods and services covered by the mark applied for and the goods for which the earlier marks and rights enjoyed a reputation. In particular, it does not challenge the fact that the goods and services in question concern different economic sectors, namely, as regards the mark applied for, IT products and services, coaching and content creations and distribution/transmission services, and, as regards the earlier marks and rights, fashion and apparel goods. Nor does it dispute that those goods and services are different in nature, purpose and method of use.
44      By contrast, the applicant maintains that the goods and services in question share certain characteristics and consequently they are nevertheless similar.
45      In that regard, first, as regards the applicant’s argument concerning the identity of the relevant public, it must be pointed out, first, that that argument does not take account of the fact that, according to the Board of Appeal’s assessment in paragraph 41 of the contested decision, which was not disputed by the applicant, the relevant public for all the services in Class 42 covered by the mark applied for, with the exception of ‘hosting services, software as a service, and rental of software’, consists of the professional public. That means that those services are not aimed at the public at large, unlike the goods in question covered by the earlier marks and rights. For the other goods and services covered by the mark applied for, which do indeed target the public at large according to the Board of Appeal’s assessment in the contested decision (see paragraph 27 above), it must be stated that such a point of similarity is not in itself sufficient to conclude that the goods and services in question are similar in the light of the very wide range of the goods aimed at the public at large. While the applicant adds that those goods and services are aimed in particular at the part of the public at large which is interested in sport, it supports that argument by pointing out that several of the intervener’s customers are undertakings active in the sports sector. However, even assuming that there might be a segment within the public at large relevant to the present analysis, which has not been demonstrated, clearly the mere reference to the activities of certain undertakings cannot in any way establish the existence of a particular segment of the public at large, and consequently the applicant’s argument cannot succeed.
46      Second, as regards the applicant’s argument concerning the connected and complementary characteristics of the goods and services in question, it must be recalled 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 (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited). The applicant has not adduced any evidence capable of demonstrating the existence of such a link between the goods and services in question, which belong to different sectors and have a different nature and purpose. The mere unsubstantiated assertion by the applicant that those goods and services can be used together and distributed through the same channels is not sufficient to establish a connection or complementarity between those goods and services.
47      Third, as regards the applicant’s argument that many undertakings develop their brands in different fields related to fashion, the applicant does not explain how that alleged general phenomenon would lead to the goods and services covered by the mark applied for being considered to be similar to the clothing and footwear for which the earlier marks and rights enjoy a reputation.
48      Although, in support of that argument, the applicant refers summarily to the finding, in paragraph 62 of the contested decision, that undertakings in the fashion and apparel sector use the internet to sell and advertise their goods, it must be stated that not only does that relate to a separate argument, but that fact in no way means that those goods are similar to the goods and services covered by the mark applied for. The mere fact that, on the one hand, undertakings market the goods for which the earlier marks and rights enjoy a reputation by using the internet and, on the other hand, the goods and services covered by the mark applied for operate with internet technology does not mean that the goods and services in question covered by the marks and rights at issue share one of the factors considered by the case-law to be relevant to the assessment of the similarity between those goods or services (see, in that regard, paragraph 42 above). Furthermore, as the Board of Appeal pointed out in paragraphs 73 and 74 of the contested decision, the use of the internet to market goods is a commercial practice used by countless economic sectors and cannot reasonably be accepted in order to establish a link with the goods and services covered by the mark applied for.
49      It follows from the foregoing that, taking into account all the relevant factors in the present case, in accordance with the case-law cited in paragraph 42 above, it must be held that the Board of Appeal was fully entitled to conclude that the goods and services in question covered by the marks and rights at issue were dissimilar.
–       The existence of a link between the marks and the rights at issue
50      In paragraphs 55 to 82 of the contested decision, the Board of Appeal found that the relevant public would not establish a link between the marks and rights at issue and therefore it was unlikely that the mark applied for could take unfair advantage of the distinctive character or the repute of the earlier marks and rights. In that regard, the Board of Appeal pointed out that, even if the earlier marks and rights enjoyed a significant reputation, the marks and rights at issue were visually similar to a high degree and phonetically and conceptually identical, and there is a partial overlap in the relevant public, that public would not make a connection between those marks and rights at issue. That is explained by the specific nature and characteristics of the goods and services covered by the mark applied for and by the significantly different market sectors to which the goods and services in question belong, as well as by the fact that the term ‘replay’ refers to a precise and existing concept.
51      The applicant disputes that assessment, asserting that there is a link between the marks and rights at issue. According to the applicant, the identity of those marks and rights, the similarity between the goods and services in question and the reputation of the earlier marks and rights mean that the consumer is led to believe that a product or service covered by the mark applied for originates from that mark. The consequence of that link is that the use of the mark applied for could take unfair advantage of the positive image of the earlier marks and rights and could risk diluting their ability to identify the goods for which they are registered as originating from the applicant.
52      EUIPO and the intervener dispute the applicant’s arguments.
53      In that regard, it must be borne in mind, as stated in paragraph 21 above, that the assessment of whether there is a link between the marks at issue is based on a global appreciation of the relevant factors, such as the degree of similarity between the marks at issue, the nature of the goods or services for which those marks were registered or applied for, 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 a likelihood of confusion on the part of the public (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42 and the case-law cited).
54      In the present case, it must be noted that in the contested decision the Board of Appeal took account of a series of factors in order to conclude that there was no link between the marks and rights at issue. Those factors include the degree of repute of the earlier marks and rights, the relevant public, the degree of similarity between the marks and rights at issue, the degree of distinctiveness of the term ‘replay’ for the goods and services in question and the degree of similarity between those goods and services. The assessment of those factors has either not been disputed by the applicant or has not been invalidated by the arguments raised by the applicant, as is apparent from the examination of its arguments in the context of the present plea in law and in particular those disputing the differences between the goods and services in question.
55      Consequently, the applicant has not shown that the Board of Appeal erred in finding that there was no link between the marks and rights at issue.
56      Therefore, the Board of Appeal was fully entitled to conclude that one of the cumulative conditions provided in Article 8(5) of Regulation 2017/1001, namely the fourth condition (see paragraph 20 above), was not satisfied.
57      Furthermore, it must be observed that the applicant’s line of argument concerning the injury which use of the mark applied for could cause to it and to the repute and distinctive character of the earlier marks and rights, summarised in paragraph 51 above, is based exclusively on the existence of a link between the marks and rights at issue, whereas the applicant does not raise any specific arguments disputing the Board of Appeal’s assessment in paragraphs 85 to 110 of the contested decision relating to the risk of such injury. In the light of the conclusion set out in paragraph 55 above, confirming that there is no link between those marks and rights at issue and therefore that Article 8(5) of Regulation 2017/1001 does not apply, that line of argument must be rejected as being manifestly unfounded.
58      It follows from the foregoing that the applicant’s first plea in law must be rejected as being manifestly unfounded.
The second plea in law, alleging failure to comply with the principles of equal treatment and sound administration
59      In the context of the second plea in law, the applicant alleges failure to comply with the principles of equal treatment and sound administration, in that the Board of Appeal adopted in the contested decision different reasoning from that of the Opposition Division in its decision of 30 November 2023, relating to opposition No 3 180 538 filed by the applicant and involving both the EU trade mark REPLAY and the same ground of opposition as in the present case. According to the applicant, the circumstances of that case were almost identical to those of the present case and therefore the Board of Appeal had no justification for departing from the Opposition Division’s decision in that case and, moreover, did not provide any, in breach of its obligation to state reasons.
60      EUIPO and the intervener dispute the applicant’s arguments.
61      In that regard, EUIPO is under a duty to exercise its powers in accordance with the general principles of EU law, including the principles of equal treatment and of sound administration (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraph 73). In the light of those principles, EUIPO must take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way or not. The way in which those principles are applied must be consistent with respect for the principle of legality (judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 74 and 75).
62      In the present case, it is sufficient to note, as EUIPO and the intervener did, that the circumstances of the present case differ from those at issue in the decision of 30 November 2023, relating to opposition No 3 180 538. In particular, in that decision, on page 20, the Opposition Division found that there was a link between the figurative sign in respect of which registration was sought and the earlier mark REPLAY, taking into account the fact that the goods covered by those marks were identical. However, in the present case, in the contested decision and as is apparent from the examination of the first plea in law, the Board of Appeal was right in finding that the goods and services covered by the mark applied for were different from the goods for which the earlier marks and rights enjoyed a reputation. As explained in paragraph 54 above, that assessment led the Board of Appeal to conclude that there was no link between the marks and rights at issue and, consequently, that Article 8(5) of Regulation 2017/1001 did not apply.
63      In the light of the abovementioned differences between the decisions in question, the applicant cannot reasonably allege that the Board of Appeal failed to comply with the principles of equal treatment and sound administration. It also follows that the Board of Appeal was not required, in the contested decision, to justify its assessment in the light of the Opposition Division’s decision relied on by the applicant, with the result that the applicant’s claim relating to a breach of the obligation to state reasons must also be rejected as being manifestly unfounded.
64      It follows from the foregoing that the applicant’s second plea in law must be rejected as being manifestly unfounded and, consequently, the action must be dismissed in its entirety as manifestly lacking any foundation in law.
Costs
65      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
66      Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by the intervener, in accordance with the form of order sought by the latter. By contrast, since EUIPO has applied for the applicant to be ordered to pay the costs only in the event that a hearing is convened, EUIPO must, as a hearing has not been organised, be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby orders:
1.      The action is dismissed as manifestly lacking any foundation in law.
2.      Fashion Box SpA shall bear its own costs and pay those incurred by Ghostthinker GmbH.
3.      The European Union Intellectual Property Office (EUIPO) shall bear its own costs.
Luxembourg, 29 January 2025.
V. Di Bucci
K. Kowalik-Bańczyk
Registrar
President
*      Language of the case: English.