ORDER OF THE GENERAL COURT (Sixth Chamber)
25 January 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark puma soundproofing – Earlier EU figurative mark PUMA – Relative ground for refusal – No injury to reputation – Article 8(5) of Regulation (EU) 2017/1001 – Action manifestly lacking any foundation in law)
In Case T‑266/23,
Puma SE, established in Herzogenaurach (Germany), represented by M. Schunke and P. Trieb, 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
Puma Srl, established in Settimo Milanese (Italy), represented by E. La Malfa, lawyer,
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira (Rapporteur), President, M. Kancheva and E. Tichy‑Fisslberger, Judges,
Registrar: V. Di Bucci,
makes the following
Order
1        By its action under Article 263 TFEU, the applicant, Puma SE, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 27 February 2023 (Case R 1399/2021-1) (‘the contested decision’).
Background to the dispute
2        On 12 December 2019, the intervener, Puma Srl, filed an application for registration of an EU trade mark with EUIPO for the following figurative sign:
3        The mark applied for designated goods in Classes 10 and 17 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, following the restriction made in the course of the proceedings before EUIPO, to the following description:
–        Class 10: ‘Diagnostic, examination, and monitoring equipment, namely equipment comprising soundproof cabins for audiometric tests performed by medical personnel; Sound excluding instruments for medical use, particularly soundproof booths’;
–        Class 17: ‘Acoustic screens for insulation; Bark coverings for sound insulation; Soundproofing materials; Quilted wadding articles for insulation; Acoustic insulation articles and materials; Insulation and barrier articles and materials; Insulation sheets; all the aforesaid goods intended for professional construction of silent cabins and soundproofing booths for medical use’.
4        On 20 February 2020, 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, in particular, on the EU figurative mark reproduced below, registered on 30 June 2014 under No 12 579 728, in respect of the goods in Class 25 corresponding to the following description: ‘Apparel, footwear, headgear’:
6        The ground relied on in support of the opposition was that set out in 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        On 28 June 2021, the Opposition Division upheld the opposition concerning the goods in Class 10 referred to in paragraph 3 above. However, it rejected the opposition as regards the goods in Class 17.
8        On 11 August 2021, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division in so far as it had rejected the opposition for the goods in Class 17.
9        On 11 January 2022, the intervener filed a cross-appeal against the decision of the Opposition Division in so far as it upheld the opposition for the goods in Class 10.
10      By the contested decision, the Board of Appeal, first, rejected the principal appeal and, secondly, upheld the cross-appeal and annulled the decision of the Opposition Division in so far as it had upheld the opposition in respect of the goods in Class 10. In essence, the Board of Appeal held that on account of the specificity of the goods concerned and the radically different market sectors, no link could be established between the signs at issue. Furthermore, even if consumers established a link between the signs, there was nothing to indicate that the mark applied for may take unfair advantage of the reputation of the earlier mark.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs in the event of a hearing.
13      The intervener contends, in essence, that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      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.
15      In the present case, the Court considers that it has been sufficiently informed by the documents in the file and decides, under Article 126 of the Rules of Procedure, to give judgment without taking further steps in the proceedings.
16      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001.
17      The applicant disputes, in essence, the findings of the Board of Appeal relating to the absence of any link between the marks at issue and to the lack of any injury to the distinctive character or the reputation of the earlier mark.
18      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 of that article, 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.
19      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. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, the earlier mark 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. 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 (see 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      As regards, specifically, the fourth of the conditions for the application of Article 8(5) of Regulation 2017/1001, that condition refers to three separate and alternative types of risk. The first type of risk referred to 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 refers to the dilution of the earlier mark by 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, to that effect, judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 36 to 42 and the case-law cited).
The relevant public
21      First of all, in paragraphs 39 and 40 of the contested decision, the Board of Appeal held that the relevant public of the goods in respect of which the contested mark was applied for consisted, having regard to the nature of those goods, of professionals in the medical field, as regards the goods in Class 10, and construction professionals of silent cabins and soundproofing booths for medical use, as regards the goods in Class 17. In paragraph 41 of the contested decision, it stated that the level of attention of that public was higher than average.
22      Next, in paragraphs 42 and 43 of the contested decision, the Board of Appeal held that the relevant public of the goods in respect of which the earlier mark was registered consisted, having regard to the nature of those goods, of the general public, with an average level of attention.
23      Lastly, it found that those publics overlapped in so far as professionals also form part of the general public.
24      Those findings of the Board of Appeal are not disputed by the applicant.
Reputation of the earlier trade mark
25      The Board of Appeal, reproducing the findings of the Opposition Division, held that, taken together, the evidence submitted by the applicant proved, at the date of the application for registration of the mark applied for, 12 December 2019, a very high degree of reputation enjoyed by the earlier trade mark throughout the European Union, for sport apparel, footwear and headgear.
26      Those findings of the Board of Appeal are not disputed by the applicant.
The comparison of the signs at issue
27      The Board of Appeal held that the signs at issue had, from visual and phonetic standpoints, a high degree of similarity. It held that they were very similar from a conceptual standpoint.
28      Those findings of the Board of Appeal are not disputed by the applicant.
Whether there is a link in the mind of the relevant public between the marks at issue
29      The applicant submits, in essence, that Regulation 2017/1001 and the case-law do not require, for marks enjoying a high degree of reputation, proof of the existence of a mental link between the marks at issue, for the purpose of applying Article 8(5) of Regulation 2017/1001. That mental link should be assumed, even where the goods and services referred to by the marks at issue are different and relate to radically different market sectors. Thus, the fact that the goods and the publics concerned are different and that no direct link may be established between them does not prevent the existence of an association between the marks at issue, since the earlier mark enjoys a very substantial reputation among the public.
30      EUIPO and the intervener dispute the applicant’s arguments.
31      As a preliminary point, it must be borne in mind that the existence of a link between the marks at issue must be assessed globally, 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 a likelihood of confusion on the part of the public (see, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42).
32      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 2017/1001, 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 judgment of 7 December 2022, Puma v EUIPO – Vaillant (Puma), T‑623/21, not published, EU:T:2022:776, paragraph 68 and the case-law cited).
33      In essence, after finding that the goods at issue were intended for different publics and also concerned radically different market sectors, the Board of Appeal held that no link could be established between the marks at issue. It stated that the fact that the marks at issue were similar and that the earlier mark enjoyed a high degree of reputation did not suffice to establish the existence of a link. In that regard, it made clear that there must be a reason for which the consumers could establish a link between the marks at issue and that such a reason was absent in the present case, having regard to the entirely different market sectors.
34      Contrary to what the applicant submits, that finding of the Board of Appeal is free from error.
35      In the first place, it should be observed that the applicant’s line of argument is clearly based on the erroneous premiss that Regulation 2017/1001 and the case-law do not require proof of the existence of a mental link for marks enjoying a very high degree of reputation. According to the applicant, that mental link should be assumed, even where the goods and services referred to by the marks at issue are different and relate to radically different market sectors.
36      In that regard, it was recalled in paragraph 31 above that the existence of a link between the marks at issue must be assessed globally, taking into account all factors relevant to the circumstances of the case, such as the degree of similarity between the marks at issue, the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant 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.
37      More specifically, it is apparent from the case-law that the fact that the earlier mark enjoys a high degree of reputation for certain specific categories of goods or services does not necessarily imply that there is a link between the marks at issue (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 64).
38      In the second place, it should be observed that, contrary to what the applicant submits, it is clear that the lack of similarity between the goods covered by the marks at issue was not the ‘decisive’ criterion for the Board of Appeal’s finding. That contention of the applicant is based on a misinterpretation of the contested decision.
39      In the present case, in its analysis of the link between the marks at issue, first, the Board of Appeal noted that the existence of such a link had to be assessed taking into account all factors relevant to the circumstances of the case.
40      Secondly, it observed that the goods at issue were different. It stated, in that regard, that they were intended for different publics and concerned markets that had nothing in common, so that it was unlikely that they could be associated in the mind of consumers.
41      Thirdly, it stated that the evidence submitted by the applicant was inconclusive to establish a link between the goods at issue.
42      Fourthly, it held that, given the very different commercial context of the marks at issue, no cooperation seemed likely to take place between the manufacturers of the goods that those marks covered. In that regard, it observed that the applicant had not submitted any evidence capable of demonstrating the existence of such agreements.
43      Fifthly, it found that the fact that the signs at issue were similar and that the relevant public of the mark applied for were aware of the reputation of the earlier mark cannot automatically lead to the recognition of the existence of a link between the marks at issue.
44      Thus, it must be clearly stated that the Board of Appeal found that there was no link between the marks at issue, by taking into account not only the dissimilarity between the goods at issue and the markets concerned, but also the lack of evidence adduced by the applicant in order to establish a link between the goods at issue, the relevant public for whom the marks were intended and the fact that no cooperation seemed likely between the manufacturers of the goods that those marks covered.
45      In any event, the assessment of the existence of a link in the mind of the public, for the purposes of the application of Article 8(5) of Regulation 2017/1001, may take account, as is expressly stated in the case-law cited in paragraph 32 above, of the degree of closeness or dissimilarity of the goods or services covered by the marks at issue (see, to that effect, judgment of 7 December 2022, Puma, T‑623/21, not published, EU:T:2022:776, paragraph 77).
46      In the third place, contrary to what the applicant appears to believe, the fact that the marks at issue are similar to a high degree from visual and phonetic standpoints and very similar from a conceptual standpoint, that the earlier mark enjoys a very high degree of reputation and that it has acquired through use a very high degree of distinctiveness is clearly not necessarily sufficient for a link between the marks to be found to exist. As recalled in paragraph 31 above, such a link must be assessed in the light of the relationship between the various factors which are relevant in each case.
47      In the present case, it is common ground that the goods at issue differ enormously and that they relate to radically different market sectors. It should be pointed out, as it was by the Board of Appeal, that the market for the goods covered by the mark applied for, which concerns, first, the market for soundproof cabins for audiometric tests or sound excluding instruments and, secondly, the market for acoustic insulation materials for the professional construction of silent cabins and soundproofing booths for medical use, has nothing in common with the market for goods covered by the earlier mark, which is that of sports products. The goods covered by the mark applied for belong to a specific and limited market which is entirely different from that to which the goods covered by the earlier mark belong. They are mainly intended for professional use in the medical field, 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.
48      Furthermore, as the Board of Appeal correctly found in paragraph 65 of the contested decision, the goods at issue are sold in completely different sales outlets.
49      Similarly, as stated in paragraphs 21 and 22 above, the goods at issue target different publics, namely, first, a professional public in the medical sector and a professional public involved in the construction of silent cabins and soundproofing booths for medical use as regards the mark applied for and, secondly, the general public as regards the earlier mark.
50      Moreover, taking account of the specificity of the goods referred to by the mark applied for and of the fact that the market concerned is radically different to that in respect of the goods covered by the earlier mark, the assumption of cooperation between the manufacturers of the goods that those marks cover seems very unlikely, contrary to what the applicant submits. After all, it should be pointed out that the applicant did not submit any evidence showing the entering into of licensing agreements and of cooperation. The applicant’s claims, whereby, first, cooperation between undertakings from completely different industries has been common practice for many years and, secondly, marks well known by the general public may give rise to any form of cooperation, are general and made without taking account of the specificity of the market to which the goods referred to by the mark applied for belong. They are purely hypothetical. They are accordingly not of such a kind as to diminish the fact that the goods at issue belong to completely different business sectors.
51      It should also be observed that, on account of the enormous dissimilarity of the goods and markets concerned, the fact that the relevant publics overlap to a certain extent, as stated in paragraph 23 above, does not affect the finding made by the Board of Appeal relating to the absence of any link between the marks at issue. It is apparent from the case-law that, even if the relevant sections of the public as regards the goods or services for which the marks at issue are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 49).
52      In the light of all the foregoing, it must be held that the Board of Appeal was clearly entitled to take the view that, in the particular circumstances of the present case, in the light of both the specificity of the goods covered by the mark applied for and the sector to which they belonged, and of the specificity of the public at which they were aimed, and notwithstanding the strength of the earlier mark’s reputation, its highly distinctive character and the substantial degree of similarity between the signs at issue, a connection would not be made between the marks at issue.
Existence of injury to the distinctive character or reputation of the earlier mark
53      The applicant submits, in essence, that, if, on account of the absence of any link between the respective goods and services, the proprietors of marks enjoying a very high degree of reputation were unable to object to applications for registration of similar marks, the value of their marks would be gradually eroded and those proprietors would be deprived of control over a potential dilution of the capacity of their marks to identify the commercial origin of the goods or services concerned.
54      The intervener disputes the applicant’s arguments.
55      According to the case-law, Article 8(5) of Regulation 2017/1001 implies that the three types of injury referred to therein, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those marks, in other words establishes a link between them even though it does not confuse them (see judgment of 7 December 2022, Puma, T‑623/21, not published, EU:T:2022:776, paragraph 119 and the case-law cited).
56      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 precondition, which is essential for the application of Article 8(5) of Regulation 2017/1001 (see judgment of 7 December 2022, Puma, T‑623/21, not published, EU:T:2022:776, paragraph 119 and the case-law cited).
57      In the present case, the Board of Appeal rightly held that there was no link in the mind of the relevant public between the marks at issue. In the absence of such a link, the use of the mark applied for, as is clear from the case-law cited, is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
58      As a consequence, the applicant’s submission that the use of the mark applied for would take unfair advantage 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 is manifestly not well founded.
59      Since one of the four cumulative conditions laid down in Article 8(5) of Regulation 2017/1001 in order for protection to be given to the earlier mark is not satisfied, it should clearly be concluded, without it being necessary to rule on the objection of inadmissibility raised by the intervener with respect to Annex A 5, that the Board of Appeal was fully entitled to reject the opposition of the applicant.
60      In the light of all of the foregoing, the action must be dismissed as manifestly lacking any foundation in law.
Costs
61      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.
62      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 intervener.
63      By contrast, since EUIPO has requested that the applicant be ordered to pay the costs only in the event that a hearing is convened, it should be held, in the absence of a hearing, that EUIPO is to bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby orders:
1.      The action is dismissed.
2.      Puma SE shall bear its own costs and pay those incurred by Puma Srl.
3.      The European Union Intellectual Property Office (EUIPO) shall bear its own costs.
Luxembourg, 25 January 2024.
V. Di Bucci
M.J. Costeira
Registrar
President
*      Language of the case: English.