JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
28 May 2020 (*)
(EU trade mark — Invalidity proceedings — EU figurative mark TASER — Earlier EU word marks TASER — Relative grounds for refusal — Detriment to reputation — Unfair advantage taken of the distinctive character or the repute of the earlier trade mark — Article 8(5) of Regulation (EU) 2017/1001)
In Case T‑342/19,
Martínez Albainox, SL, established in Albacete (Spain), represented by J. Carbonell Callicó, 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 being
Taser International, Inc., established in Scottsdale, Arizona (United States),
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 20 March 2019 (Case R 1576/2018-4), relating to invalidity proceedings between Taser International and Martínez Albainox,
THE GENERAL COURT (Ninth Chamber),
composed of M.J. Costeira, President, M. Kancheva and B. Berke (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 6 June 2019,
having regard to the response lodged at the Court Registry on 6 August 2019,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 4 April 2013, the applicant, Martínez Albainox, SL, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
2        Registration as a mark was sought for the following figurative sign:
3        The goods in respect of which registration of the mark was sought are in Classes 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
–        Class 18: ‘Goods of leather and imitations of leather; purses; umbrellas’;
–        Class 25: ‘Clothing, footwear, headgear’.
4        The mark was registered on 14 August 2013.
5        On 31 May 2016, Taser International, Inc. (‘the proprietor of the earlier mark’) filed with EUIPO an application for a declaration that the contested mark was invalid on the basis of the following marks:
–        the EU word mark TASER, which was registered on 3 March 2005 and renewed until 24 September 2023 under the number 3367661 in respect of goods and services in Classes 13, 41 and 45 of the Nice Agreement, corresponding, for each of those classes, to the following description:
–        Class 13: ‘Firearms; ammunition and projectiles, weapons, weapon apparatus and installations; actuators for use with weapons; actuators for use in weapon ejecting installations; actuators for use in weapon loading installations; apparatus for firing weapons; defence apparatus and installations; holsters for weapons; motorised weapons; guns; air guns; cartridges for guns; harpoon guns; non-lethal electronic weapons, and accessories therefore; apparatus and equipment relating to all the aforesaid goods’;
–        Class 41: ‘Provision of training; training services relating to health and safety; technical training relating to safety; information, advice and consultancy services relating to all the aforesaid’;
–        Class 45: ‘Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals, civil protection services; crime prevention advisory services; safety services, rental of safety apparatus and equipment; information, advice and consultancy services relating to all the aforesaid’;
–        the EU word mark TASER, which was registered on 29 August 2011 under the number 9818337 in respect of goods in Class 9 of the Nice Agreement corresponding to the following description: ‘Apparatus for recording video, video cameras, digital video recorders; recorded media having recorded video, audio, and photographic evidence of incidents and recorded actions and communications; motion picture films that include evidence of incidents in the fields of law enforcement, professional security, medical, and consumer security; hand-held devices that play-back video recordings and permit recording audio narration of played-back video recordings; body-worn recorder input/output boxes, namely boxes with electronic circuits that receive video and audio at inputs, provide video and audio at outputs as selected by a user, and provide an interface for user control of a body-worn video and audio recorder; electronic modules for installation as a component part on or in weapons, namely, modules including battery or data storage for operation of the weapon or recording operation of the weapon’.
6        The grounds relied on in support of the application for a declaration of invalidity were, first, those set out in Article 53(1)(a) of Regulation No 207/2009 (now Article 60(1)(a) of Regulation 2017/1001), read in conjunction with Article 8(1)(b) and (5) of Regulation No 207/2009 (now Article 8(1)(b) and (5) of Regulation 2017/1001), and, secondly, bad faith under Article 52(1)(b) of Regulation No 207/2009 (now Article 59(1)(b) of Regulation 2017/1001).
7        In support of its application for a declaration of invalidity, the proprietor of the earlier mark submitted evidence of the reputation of the earlier marks referred to in paragraph 5 above.
8        On 11 November 2016, the applicant requested that the proprietor of the earlier mark provide, in accordance with Article 57(2) of Regulation No 207/2009 (now Article 64(2) of Regulation 2017/1001), proof of use of the earlier mark registered under the number 3367661 (‘the earlier mark’), which has been referred to in the first indent of paragraph 5 above, in connection with all the goods and services on which the application for a declaration of invalidity was based.
9        On 7 March 2017, the proprietor of the earlier mark referred to the evidence that it had already provided and also furnished further evidence of genuine use of that earlier mark.
10      By decision of 26 June 2018, the Cancellation Division granted the application for a declaration of invalidity in its entirety and declared the contested mark invalid. In essence, it found that the earlier mark had been put to genuine use in connection with some of the goods and services in Classes 13 and 41. It also found the earlier mark had a strong reputation for those goods and services, that the signs at issue were highly similar visually and phonetically identical, that the relevant public would establish a link between the signs, that, although the public with regard to the goods in Class 13 was a specialist public, there was some overlap in the relevant public with regard to the goods covered by the contested mark and, lastly, that the proprietor of the contested mark was taking unfair advantage of that reputation.
11      On 14 August 2018, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Cancellation Division.
12      By decision of 20 March 2019 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, it carried out its analysis in relation to the earlier mark which has been referred to in the first indent of paragraph 5 above. Since it granted the application for a declaration of invalidity on the basis of that mark, the Board of Appeal did not analyse that application by reference to the second earlier mark.
13      In particular, first, as regards the examination of the application for a declaration of invalidity on the basis of Article 8(1)(b) of Regulation 2017/1001, in the first place, the Board of Appeal endorsed and upheld the Cancellation Division’s decision as regards the genuine nature of the use of the earlier mark, as proved by the evidence provided by the proprietor of the earlier mark, in connection with, inter alia, ‘non-lethal electronic weapons’. In the second place, as regards the comparison of the goods, the Board of Appeal pointed out that the goods in Classes 18 and 25 covered by the contested mark were dissimilar to the goods ‘non-lethal electronic weapons’ in Class 13 covered by the earlier mark. Consequently, the Board of Appeal found that, since one of the cumulative conditions for the application of Article 8(1)(b) of Regulation 2017/1001 had not been satisfied, the application for a declaration of invalidity, to the extent that it was based on that provision, had to be dismissed. Secondly, as regards the assessment of the application for a declaration of invalidity on the basis of Article 8(5) of Regulation 2017/1001, first, the Board of Appeal endorsed and upheld the Cancellation Division’s decision by finding that the earlier mark enjoyed a high degree of recognition amongst the relevant public and a solid reputation for ‘non-lethal electronic weapons’. Secondly, it found that the visual similarity between the marks at issue was high, that they were phonetically identical and that, from a conceptual standpoint, their comparison remained neutral as neither of the signs had a meaning, since the reference in dictionaries, under the word ‘taser’, to a specific kind of weapon constituted a secondary meaning which did not correspond to the notion of ‘concept’ with regard to the conceptual comparison of the signs. Thirdly, it found that, in addition to the strong reputation of the earlier mark and the high degree of similarity between the signs at issue, the goods covered by the contested mark were connected with the goods covered by the earlier mark, even though they were not similar, and that there was an overlap between their relevant publics. Consequently, the Board of Appeal concluded that there was, for the relevant public, a link between the marks at issue and a risk of unfair advantage being taken of the distinctive character and the repute of the earlier mark and that there was no due cause to use the contested mark. On those grounds, the Board of Appeal granted the application for a declaration of invalidity in its entirety.
Forms of order sought
14      The applicant claims that the Court should:
–        annul the contested decision, expressly declaring that the contested mark is valid for all the goods in Classes 18 and 25 in respect of which that mark has been registered;
–        order EUIPO and the proprietor of the earlier mark to pay the costs, including those incurred before the Board of Appeal.
15      EUIPO contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs.
Law
16      In support of the present action, the applicant relies on a single plea in law, alleging, in essence, infringement of Article 60(1)(a) of Regulation 2017/1001, read in conjunction with Article 8(5) thereof.
17      The applicant submits that the Board of Appeal erred in finding, in paragraph 45 of the contested decision, that it could be confirmed that there was a link between the marks at issue because there was an overlap between the relevant publics and the distribution channels. It maintains that the assumption that the reputed ‘non-lethal electronic weapons’ also include self-defence devices which are aimed at the general public is incorrect because, first, the earlier mark does not refer to ‘self defence devices’ and, secondly, in any case, the Board of Appeal stated, in paragraph 24 of the contested decision, that, for the purposes of the examination of the present invalidity proceedings, the earlier mark concerned was deemed to be registered in respect of ‘non-lethal electronic weapons’. It submits that, consequently, that assumption and the fact that such devices are aimed at the general public cannot be accepted.
18      Furthermore, it argues that the statement, in paragraph 45 of the contested decision, that the goods covered by the marks at issue may be provided in the same shops and therefore be directed at the same consumers, not only with regard to the professional public but, as is shown by the printouts from the website of the proprietor of the earlier mark and from the websites of third parties, also with regard to the general public, is incorrect. The applicant states that the non-lethal electronic weapons bearing the sign TASER are offered and sold within the European Union only by the proprietor of the earlier mark and only to law enforcement agencies.
19      The applicant concludes that that evidence demonstrates that the earlier mark is used solely to distinguish ‘non-lethal electronic weapons’ which are aimed at a highly specialised public, namely professionals in the law enforcement authorities, who have a high level of attention, because the general public is not allowed to purchase those sorts of goods. By contrast, it submits that the goods covered by the contested mark are aimed at the general public, which does not consist of users who are also likely to use the goods covered by the earlier mark. It maintains that the relevant publics with regard to the goods covered by the marks at issue are different. Furthermore, it submits that, according to the case-law, in the case of goods that are aimed only at a specialist public, the likelihood of confusion must be assessed only by reference to that public. It maintains that there is therefore no likelihood of confusion and, since the publics are different, the relevant public could not make any connection between the marks at issue.
20      EUIPO disputes the applicant’s arguments.
21      Article 60(1)(a) of Regulation 2017/1001 provides that an EU trade mark is to be declared invalid on application to EUIPO where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 5 of that article are fulfilled.
22      Article 8(5) of Regulation 2017/1001 provides that the trade mark applied for must not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the 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.
23      It is clear from the wording of Article 8(5) of Regulation 2017/1001 and from the case-law that, for an earlier trade mark to be afforded the broader protection under that provision, 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, by analogy, judgment of 13 December 2018, Monster Energy v EUIPO — Bösel (MONSTER DIP), T‑274/17, EU:T:2018:928, paragraph 55 (not published) and the case-law cited).
24      In order to satisfy the condition relating to the similarity of the marks which is laid down by Article 8(5) of Regulation 2017/1001, it is not necessary to prove that there exists, on the part of the relevant public, a likelihood of confusion between the earlier mark with a reputation and the contested mark. It is sufficient for the degree of similarity between the earlier mark with a reputation and the contested mark to have the effect that the relevant public establishes a link between them, even though it does not confuse them (see, to that effect, judgment of 27 October 2016, Spa Monopole v EUIPO — YTL Hotels & Properties (SPA VILLAGE), T‑625/15, not published, EU:T:2016:631, paragraph 34 and the case-law cited).
25      According to the case-law, the fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark would call the earlier mark to mind is tantamount to the existence of such a link (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 60).
26      Whether such a link exists must be assessed globally, taking into account all factors relevant to the circumstances of the case, in particular the degree of similarity between the signs at issue; the nature of the goods or services for which the marks at issue are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant public; the strength of the earlier mark’s reputation and the existence of a likelihood of confusion on the part of the public (see judgment of 5 May 2015, Spa Monopole v OHIM — Orly International (SPARITUAL), T‑131/12, EU:T:2015:257, paragraph 48 and the case-law cited).
27      As regards the degree of similarity between the marks at issue, the more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public. Furthermore, the stronger the distinctive character of the earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, faced with an identical or similar later mark, the relevant public will make a link with that earlier mark (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 44 and 54).
28      Moreover, it is also settled case-law that, the stronger the earlier mark’s reputation, the easier it will be to accept that harm has been caused to it (see judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 69 and the case-law cited).
29      Furthermore, it must be pointed out that certain marks may have acquired such a reputation that it goes beyond the relevant public with regard to the goods or services in respect of which those marks were registered. In such a case, it is possible that the relevant public with regard to the goods or services for which the later mark is registered will make a connection between the marks at issue, even though that public is wholly distinct from the relevant public with regard to the goods or services for which the earlier mark was registered (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 51 and 52).
30      As regards the fourth condition referred to in paragraph 23 above, Article 8(5) of Regulation 2017/1001 refers to three distinct and alternative types of risk, namely that use of the trade mark applied for without due cause would (i) be detrimental to the distinctive character of the earlier mark, (ii) be detrimental to the repute of the earlier mark, or (iii) take unfair advantage of the distinctive character or 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 for there to 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, by analogy, judgment of 13 December 2018, MONSTER DIP, T‑274/17, EU:T:2018:928, paragraph 56 (not published) and the case-law cited).
31      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, paragraph 36).
32      It is in the light of those principles that the lawfulness of the contested decision must be assessed.
33      In the present case, it must be pointed out that the applicant does not dispute the Board of Appeal’s assessment that the earlier mark has a reputation or the finding that there has been genuine and intensive use of that mark in connection with ‘non-lethal electronic weapons’ in Class 13. The items of evidence which the applicant lists in its application have in actual fact been submitted in order to support its claim that the goods covered by the earlier mark are directed solely at the law enforcement authorities. Furthermore, it does not dispute the strength of the earlier mark’s reputation or the high degree of similarity between the signs at issue.
34      The applicant confines itself, by contrast, to disputing the findings which the Board of Appeal made in paragraph 45 of the contested decision regarding the existence of a link that the relevant public might make between the marks at issue and according to which the goods covered by the earlier mark are aimed at the general public and are marketed via the same distribution channels as those of the goods covered by the contested mark. It maintains, in essence, that the relevant publics with regard to the marks at issue differ and that there is no likelihood of confusion between those marks. Furthermore, the applicant submits that the relevant public will not establish any link between the marks at issue and that consequently it cannot be held that any advantage would be taken of the earlier mark’s repute.
35      In that regard, it must be borne in mind that the Board of Appeal found, in paragraph 45 of the contested decision, that, in the present case, the existence of a link between the marks at issue had to be confirmed, because, in addition to the strong reputation of the earlier mark and the high degree of similarity between the signs at issue, the goods covered by the contested mark were connected with the goods covered by the earlier mark, even though they were not similar, and that there was an overlap between their relevant publics. In particular, upholding the Cancellation Division’s findings, the Board of Appeal observed that the goods in Class 25 covered by the contested mark included goods such as uniforms, camouflage suits or army boots and that the goods in Class 18 covered by the contested mark included camouflage umbrellas for hunting or bags and purses in a military style, with regard to which the relevant publics and distribution channels overlapped with those of the goods in Class 13 covered by the earlier mark. The Board of Appeal added that the goods covered by the earlier mark were directed at a professional public such as law enforcement agencies and private security firms and that, as was shown by the evidence submitted, the reputed ‘non-lethal electronic weapons’ also included self-defence devices which were aimed at the general public. It stated that those goods might be provided in the same shops and therefore be directed at the same consumers, not only with regard to the professional public, but, as the printouts from the website of the other party to the proceedings before EUIPO and from the websites of third parties showed, also with regard to the general public. The Board of Appeal concluded that, although the goods at issue were dissimilar for the purposes of Article 8(1)(b) of Regulation 2017/1001, they were connected in such a way that the required link pursuant to Article 8(5) of that regulation was established.
36      It must be pointed out that, although it is clear that part of the relevant public with regard to the goods in Class 13 covered by the earlier mark is a specialist public, which consists in essence of law enforcement authorities and private security services in the European Union and has a high level of attention, the fact remains that, since those goods also include ‘self-defence devices’, the goods in Class 13 covered by the earlier mark are equally aimed at the general public, as is the case with regard to the goods in Class 25 covered by the contested mark, which include goods such as uniforms, camouflage suits or army boots, and the goods in Class 18 covered by the contested mark, which include camouflage umbrellas for hunting or military-style bags and purses, which are also aimed both at that specialist public and at the general public. It follows that the relevant public consists both of that specialist public and of the general public. Those goods may be distributed in the same shops. In view of the partial overlap between the relevant publics and the distribution channels with regard to the abovementioned goods covered by the earlier mark and the contested mark, the Board of Appeal was right in finding, in paragraph 45 of the contested decision, that it was possible that a link, for the purposes of Article 8(5) of Regulation 2017/1001, might be established.
37      As is apparent from the case-law referred to in paragraph 24 above, the fact that it is possible to establish a link between the marks at issue does not necessarily mean that there is a likelihood of confusion. Consequently, the relevant public to which reference must be made does not have to be the public consisting of consumers likely to use both the goods covered by the earlier mark and the goods covered by the contested mark, as is the case in the context of the application of Article 8(1)(b) of Regulation 2017/1001, but the public which might call the earlier mark to mind when it is confronted with the goods covered by the contested mark. Unless that public is totally distinct from the public with regard to the goods covered by the earlier mark and unless that earlier mark has not acquired such a reputation that it goes beyond the relevant public with regard to the goods that it covers, such a possibility of the earlier mark being called to mind cannot be ruled out.
38      In the present case, it is apparent from the findings made in paragraph 36 above that, although the general public does not have access to the non-lethal electronic weapons covered by the earlier mark, they are widely known to it, with the result that it might make a connection between the earlier mark and the contested mark when it is confronted with the goods covered by the contested mark. Furthermore, the specialist public with regard to the goods covered by the earlier mark might also use the goods covered by the contested mark. Consequently, the applicant’s claim that the relevant publics with regard to the goods at issue are totally distinct cannot be upheld.
39      In any event, in the first place, even if the relevant publics with regard to the goods at issue were distinct, according to the case-law cited in paragraph 29 above, in a situation where a mark has acquired such a reputation that it goes beyond the relevant public with regard to the goods in respect of which that mark was registered, it is possible that the relevant public with regard to the goods for which the contested mark is registered will make a connection between the marks at issue even though that public is wholly distinct from the relevant public with regard to the goods for which the earlier mark was registered.
40      It must be stated that the Board of Appeal found, in paragraph 34 of the contested decision, that the press articles which had been submitted showed that the earlier mark was widely known among the general public as the general press had also devoted numerous articles to it.
41      Furthermore, it is apparent from paragraph 42 of the contested decision that the word ‘taser’ appears in dictionaries as a proprietary name for a specific kind of weapon, namely that of the proprietor of the earlier mark.
42      Those findings on the part of the Board of Appeal, which have not, moreover, been disputed by the applicant, make it possible to establish that, as EUIPO points out, the earlier mark has a reputation that extends beyond the relevant public with regard to the goods covered by that mark, namely the specialist public which uses the ‘non-lethal electronic weapons’ in Class 13 (see, to that effect, judgment of 10 May 2007, Antartica v OHIM — Nasdaq Stock Market (nasdaq), T‑47/06, not published, EU:T:2007:131, paragraph 58).
43      It follows that, even if the Board of Appeal had erred in finding that the publics with regard to the goods covered by the marks at issue overlapped or that those goods were marketed via the same distribution channels, such an error could not call into question the Board of Appeal’s finding regarding the existence of a link, which is set out in paragraph 45 of the contested decision and has been referred to in paragraph 35 above.
44      Since the outcome of the Board of Appeal’s assessment would have been the same, any such error, even if it were to be established, could not result in the annulment of the contested decision (see, to that effect, judgment of 15 January 2003, Mystery Drinks v OHIM — Karlsberg Brauerei (MYSTERY), T‑99/01, EU:T:2003:7, paragraph 36).
45      In the second place, it must be borne in mind that, pursuant to the case-law cited in paragraph 26 above, the question of whether a link between the marks at issue exists must be assessed globally, taking into account all factors relevant to the circumstances of the case, in particular the degree of similarity between the signs at issue; the nature of the goods or services for which the marks at issue are registered, including the degree of closeness or dissimilarity between those goods or services, and the relevant public; the strength of the earlier mark’s reputation and the existence of a likelihood of confusion on the part of the public.
46      In that regard, the Board of Appeal found, first — a finding which the applicant has not disputed — in paragraphs 36 to 42 of the contested decision, that the marks at issue were similar to a high degree, secondly, in paragraph 45 of the contested decision, a finding which must be upheld on the grounds set out in paragraph 36 above, that, although the goods at issue were not similar, there was a certain degree of proximity between them because some of the goods covered by the contested mark could also be used by the specialist public with regard to the goods covered by the mark with a reputation, and thirdly, in paragraph 34 of the contested decision, that, in essence, the reputation of the earlier mark was such that it went beyond the relevant public with regard to the goods that it covered.
47      Accordingly, and in the light also of the case-law referred to in paragraphs 27 and 28 above, it must be held that the Board of Appeal did not make any error of assessment in finding, in the context of its global assessment of all those factors, that the public makes a link between the marks at issue.
48      Lastly, the applicant’s unsubstantiated argument that the specialist public will not establish any link between the marks at issue and that, consequently, it cannot be held that any advantage will be taken of the earlier mark’s repute cannot succeed. First, as is apparent from the case-law referred to in paragraph 31 above, the relevant public to which reference must be made in assessing whether there is injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark is that consisting of average consumers of the goods or services covered by the later mark, who are reasonably well informed and reasonably observant and circumspect, in the present case, the general public. Secondly, it is clear from paragraphs 36 to 46 above that the possibility of such a link being established in the present case cannot be ruled out.
49      In view of all of the foregoing, the applicant’s single plea in law must be rejected and the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s first head of claim in so far as it seeks an express declaration by the Court that the contested mark is valid for all the goods in Classes 18 and 25.
Costs
50      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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO, without it being necessary to rule on the admissibility of the applicant’s second head of claim, in so far as it seeks to have the proprietor of the earlier mark ordered to pay the costs, since the proprietor of the earlier mark did not intervene before the Court.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Martínez Albainox, SL to pay the costs.
Costeira
Kancheva
Berke
Delivered in open court in Luxembourg on 28 May 2020.
E. Coulon
M. van der Woude
Registrar
President
*      Language of the case: English.