JUDGMENT OF THE GENERAL COURT (Tenth Chamber)
30 March 2022 (*)
(EU trade mark – Opposition proceedings – Application for EU word mark COPALLI – Earlier national word mark COMPAL – Relative ground for refusal – Damage to reputation – Article 8(5) of Regulation (EU) 2017/1001 – Unfair advantage taken of the distinctive character or repute of the earlier mark)
In Case T‑445/21,
Copal Tree Brands, Inc., established in Oakland, California (United States), represented by B. Niemann Fadani, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by T. Frydendahl and D. Gája, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Sumol + Compal Marcas SA, established in Carnaxide (Portugal), represented by A. de Sampaio, lawyer,
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 25 May 2021 (Case R 1581/2020-2), relating to opposition proceedings between Sumol + Compal Marcas and Copal Tree Brands,
THE GENERAL COURT (Tenth Chamber),
composed of A. Kornezov (Rapporteur), President, E. Buttigieg and G. Hesse, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 27 July 2021,
having regard to the response of EUIPO lodged at the Court Registry on 13 October 2021,
having regard to the response of the intervener lodged at the Court Registry on 11 October 2021,
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 13 September 2018, the applicant, Copal Tree Brands, Inc., under its former business name, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to 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 word sign COPALLI.
3        The goods in respect of which registration was sought are in Class 33 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 to the following description: ‘Alcoholic beverages (except beers); distilled spirits; absinthe; alcoholic aperitifs; alcoholic bitters; alcoholic cocktail mixes; alcoholic cordials; alcoholic energy drinks; alcoholic essences; alcoholic extracts; alcoholic beverages of fruit; alcoholic fruit beverages; alcoholic fruit cocktail drinks; alcoholic jellies; alcoholic tea-based beverage; alcopops; anisette; aperitifs; arak; bitters; blended whisky; bourbon whiskey; brandy; ciders; cooking brandy; cooking wine; distilled beverages; fermented spirit; flavoured tonic liquors; fortified wines; fruit wine; gin; grape wine; liqueurs; preparations for making alcoholic beverages; pre-mixed alcoholic beverages; sake; sparkling wines; spirits and liquors; vodka; vermouth; whiskey; wine’.
4        The trade mark application was published in European Union Trade Marks Bulletin
No 2018/211 of 7 November 2018.
5        On 7 February 2019, the intervener, Sumol + Compal Marcas SA, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based, inter alia, on the Portuguese word mark COMPAL, filed on 25 May 1998 and registered on 17 September 1998 under No 330 552, covering goods in Class 32 corresponding to the following description: ‘Beers; non-alcoholic beverages; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
7        The grounds for the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation 2017/1001. The intervener adduced evidence, at the request of the applicant, in order to prove that the earlier mark had been put to genuine use and had acquired a reputation.
8        On 29 May 2020, the Opposition Division, having established the reputation of the earlier mark in the territory of Portugal for ‘fruit drinks and fruit juices’ in Class 32, upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001.
9        On 29 July 2020, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.
10      By decision of 25 May 2021 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        annul the decision of the Opposition Division;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
13      The intervener contends, in essence, that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001. That plea is divided into two parts, the first relating to the similarity of the marks at issue, and the second relating to the existence of a risk that the use without due cause of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark.
15      Article 8(5) of Regulation 2017/1001 provides that, 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 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 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.
16      It is apparent from the wording of Article 8(5) of Regulation 2017/1001 that the application of that provision is subject to the cumulative conditions that: first, the marks at issue must be identical or similar; second, the earlier mark cited in opposition must have a reputation; and, third, there must be a risk that 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 mark (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 54).
17      In the present case, the Board of Appeal noted that the relevant public was the general public in Portugal, which is not disputed by the applicant. Nor does the applicant dispute the second condition, referred to in paragraph 16 above, relating to the existence of a reputation of the earlier mark among the relevant public for ‘fruit drinks and fruit juices’ in Class 32. However, the applicant disputes the Board of Appeal’s assessments as to the first and third conditions, each of which must be examined consecutively below.
Similarity of the marks at issue
18      The existence of a similarity between an earlier mark and a mark applied for is a precondition for the application both of Article 8(1)(b) and of Article 8(5) of Regulation 2017/1001. That requirement presupposes, in the context both of Article 8(1)(b) and of Article 8(5), that there are, in particular, elements of visual, phonetic or conceptual similarity (see, to that effect, judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 51 and 52, and of 4 October 2017, Gappol Marzena Porczyńska v EUIPO – Gap (ITM) (GAPPOL), T‑411/15, not published, EU:T:2017:689, paragraph 148).
19      In the present case, the Board of Appeal found, in paragraphs 34 to 36 of the contested decision, that the marks at issue are ‘visually similar to a certain degree, which is not low, and certainly not insignificant’. According to the Board of Appeal, almost the entire earlier mark, apart from the letter ‘m’, is reproduced in the mark applied for, and the marks at issue are identical in terms of their beginnings. The Board of Appeal found that, phonetically, the marks at issue are similar to an average degree in so far as their first two syllables – ‘com – pal’ and ‘co – pal’ respectively – are almost identical, given that the letter ‘m’ in the earlier mark is pronounced softly before the letter ‘p’. Thus, the difference appears only in the last syllable ‘li’ of the mark applied for, which is not such as to differentiate sufficiently the marks at issue. Lastly, according to the Board of Appeal, the conceptual comparison remains neutral, since neither of the marks at issue has any meaning for the relevant public.
20      As regards the visual aspect, the applicant submits that the Board of Appeal disregarded the case-law principle that trade marks should not be artificially dissected. Thus, according to the applicant, the word ‘compal’ is not easily recognisable within the word ‘copalli’. The applicant submits that the fact that the two marks begin with the letters ‘co’ is irrelevant, since those two letters will not be perceived independently within the overall impression given by those marks. Similarly, the fact that the marks at issue both contain the letters ‘p’, ‘a’ and ‘l’, albeit placed in different positions in the marks being compared, is not sufficient to warrant a finding that the marks in question are similar. In addition, the applicant submits that those marks are distinguished by the letter ‘m’, placed in the middle of the earlier mark and absent from the mark applied for, and by the letters ‘ll’ and ‘i’ in the mark applied for, absent from the earlier mark.
21      EUIPO and the intervener dispute the applicant’s arguments.
22      It must be stated at the outset that, contrary to the applicant’s assertions, there is nothing in the contested decision to suggest that the Board of Appeal dissected the marks at issue in an arbitrary manner. On the contrary, the Board of Appeal identified, in accordance with the case-law cited in paragraph 18 above, the elements of similarity and dissimilarity between them in order to assess, globally, whether they are visually similar and, if so, to establish the degree of such similarity. That approach is, moreover, consistent with the case-law according to which the assessment of the visual similarity of the marks in question, for the purpose of determining the overall impression given by those marks, may take into account, in particular, as regards word marks, their length, the letters they contain and the order in which those letters appear (see judgment of 2 June 2010, Procaps v OHIM – Biofarma (PROCAPS), T‑35/09, not published, EU:T:2010:220, paragraph 57 and the case-law cited).
23      In that regard, the Board of Appeal correctly established the elements of similarity between the marks at issue. First, almost all of the letters contained in each of the words ‘copalli’ and ‘compal’, namely ‘c’, ‘o’, ‘p’, ‘a’, ‘l’, are the same. Second, those letters appear in the same order in the two marks, which is of some importance in the assessment of the visual similarities between those signs (see judgment of 8 September 2021, Cara Therapeutics v EUIPO – Gebro Holding (KORSUVA), T‑584/20, not published, EU:T:2021:541, paragraph 27 and the case-law cited).
24      The Board of Appeal also correctly noted that the marks at issue differed inasmuch as the mark applied for ends with the group of letters ‘li’ and the earlier mark contains the letter ‘m’, which does not appear in the mark applied for. However, the Board of Appeal found, without making an error of assessment, that those differences were not sufficient to offset the similarities noted in paragraph 23 above. Those differences do not alter the fact that the marks at issue share five of their six and seven letters respectively; moreover, those five letters appear in the same order and the marks at issue are identical, in particular, in terms of their beginnings.
25      In addition, the applicant’s argument that the Board of Appeal incorrectly held that the earlier mark was ‘easily recognisable’ within the mark applied for does not affect that conclusion. Although the Board of Appeal used that expression somewhat imprecisely, it is apparent from an overall reading of paragraph 34 of the contested decision that the Board of Appeal’s finding as to the existence of a visual similarity between the marks at issue is essentially based on an overall examination of the elements of similarity and dissimilarity between them and not on the fact that the earlier mark is easily recognisable within the mark applied for.
26      Lastly, contrary to what the applicant suggests, at no point in the contested decision did the Board of Appeal state that the letters ‘co’ at the beginning of the marks at issue constituted the distinctive or dominant element of those marks. In that regard, the Board of Appeal merely noted, in accordance with the case-law cited in paragraph 22 above, in the context of identifying the elements of similarity between the marks at issue, that those marks were identical in terms of their beginnings.
27      Accordingly, the Board of Appeal was entitled to find, taking into account the elements of similarity and dissimilarity between the marks at issue, and without making an error of assessment, that they displayed, in essence, an average degree of visual similarity.
28      As regards the phonetic aspect of the comparison of the marks at issue, according to the applicant, the differences between those marks are manifest and decisive. The applicant submits that the two marks are pronounced using a different rhythm and intonation, namely by pronouncing the syllables ‘cop’ and ‘alli’ or ‘co’, ‘pa’ and ‘lli’ in the case of the mark applied for and the syllables ‘com’ and ‘pal’ in the case of the earlier mark. In addition, according to the applicant, the ‘alli’ or ‘palli’ parts of the mark applied for are clearly phonetically different from the ‘pal’ part of the earlier mark. Lastly, the applicant submits that the letter ‘m’ in the earlier mark is a bilabial nasal consonant which is therefore clearly pronounced in the earlier mark, whereas in the mark applied for emphasis is placed on the letter ‘p’ and the group of letters ‘lli’, all of which creates a perceptible phonetic difference between the marks in question.
29      EUIPO and the intervener dispute the applicant’s arguments.
30      It follows from the case-law that, where the signs to be compared are invented terms that do not correspond to any existing word in an EU language, the likely pronunciation thereof by the relevant public should be taken into account (see, to that effect, judgment of 28 November 2019, Soundio v EUIPO – Telefónica Germany (Vibble), T‑665/18, not published, EU:T:2019:825, paragraph 54 and the case-law cited). That is the case here, given that the words ‘copalli’ and ‘compal’ do not have any meaning for the relevant public; a fact which is not disputed by the applicant.
31      In the present case, the Board of Appeal correctly found that a probable syllabic division of the pronunciation of the marks at issue consisted in the sequence ‘co – pal – li’ for the mark applied for and ‘com – pal’ for the earlier mark. In that case, the pronunciation of the first two syllables of the marks at issue is very similar, especially since the letter ‘m’, placed before a consonant, will be pronounced in Portuguese as a nasal sound and, therefore, contrary to the applicant’s assertions, will be only slightly vocalised and, in any event, will be vocalised in a less noticeable manner than the consonant ‘p’ which follows it.
32      It is true that, as the applicant argues, the mark applied for contains a third syllable. However, although the pronunciation of the syllable ‘li’ may reduce the impression of phonetic similarity between the marks in question, it is not capable of offsetting the similarities found, given that it will be pronounced last and that, in addition, it shares the pronunciation of the sound ‘l’ which is also present at the end of the earlier mark.
33      As regards the applicant’s argument that the marks at issue will be pronounced according to the syllabic structure described in paragraph 28 above and not according to that adopted by the Board of Appeal, it should be noted, first, that the applicant does not put forward any argument capable of demonstrating that the pronunciation adopted by the Board of Appeal is not likely to be used by the relevant public within the meaning of the case-law referred to in paragraph 30 above. Second, and in any event, the alternative pronunciation of the mark applied for suggested by the applicant – ‘co – pa – lli’ – is very close to that adopted by the Board of Appeal, in so far as the mark applied for would still be pronounced as three syllables and, as in the pronunciation adopted by the Board of Appeal, the second and third syllables are linked by the pronunciation of the sound ‘l’, which is also present in the final part of the earlier mark.
34      Accordingly, having regard to their elements of similarity and dissimilarity, the Board of Appeal correctly concluded that the marks at issue are phonetically similar to an average degree.
35      As for the conceptual comparison, the applicant does not dispute the Board of Appeal’s finding that it is neutral, since neither of the marks at issue has any meaning in Portuguese.
36      It follows that the first part of the single plea in law must be rejected as unfounded.
The existence of a risk that the use without due cause of the mark applied for would take unfair advantage of the repute of the earlier mark
37      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 mark and the mark applied for, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them even though it does not necessarily confuse them. The existence of a link between the mark applied for and the earlier mark with a reputation, which must be assessed globally, account being taken of all factors relevant to the circumstances of the case, is therefore an essential precondition for the application of that provision (see judgment of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 26 and the case-law cited).
38      Among the factors to be taken into account in the global assessment of such a link are 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; and the existence of a likelihood of confusion on the part of the public (see judgment of 28 February 2019, Groupe Léa Nature v EUIPO, C‑505/17 P, not published, EU:C:2019:157, paragraph 83 and the case-law cited).
39      In the present case, the Board of Appeal found, in paragraphs 41 to 43 of the contested decision, that, in the light of all the relevant factors mentioned above, the relevant public will establish a link between the marks at issue. In particular, the Board of Appeal observed that a very large number of non-alcoholic beverages in Class 32 and alcoholic beverages in Class 33 are generally consumed or marketed together, with the result that there is a proximity between those types of goods. The Board of Appeal concluded, in paragraphs 50 to 55 of the contested decision, that, in the light of the very strong reputation of the earlier mark for ‘fruit drinks and fruit juices’, the proximity between those goods and the goods covered by the mark applied for, the degree of similarity between the marks at issue, and the inherent distinctive character of the earlier mark, there was a strong probability that the use without due cause of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark.
40      The applicant argues that the goods covered by the earlier mark, for which the reputation of that mark in Portugal has been established, namely ‘fruit drinks and fruit juices’ in Class 32, are different from the goods in Class 33 covered by the mark applied for, since the latter type of goods are alcoholic beverages. According to the applicant, the goods in question have a distinct nature and purpose, based on the presence or absence of alcohol in their composition. In addition, the applicant submits that those goods are generally manufactured by different undertakings, are distributed through different channels, are sold in different aisles in sales outlets, and target different publics. Furthermore, the sale of alcoholic beverages is restricted to certain age groups and, given the effects which alcohol consumption has on health, the relevant public will choose those goods with particular care. Lastly, non-alcoholic fruit drinks and alcoholic beverages are neither interchangeable nor complementary.
41      In addition, the applicant maintains that, in any event, the differences between the goods in question and between the marks at issue do not make it possible to establish a link between those marks in the mind of the relevant public, despite the strong reputation enjoyed by the earlier mark. Accordingly, there is no risk of an ‘unfair advantage’.
42      EUIPO and the intervener dispute the applicant’s arguments.
43      In order better to identify the risk referred to in Article 8(5) of Regulation 2017/1001, it must be pointed out that, while the primary function of a mark is unquestionably that of an ‘indication of origin’ (recital 11 of Regulation 2017/1001), the fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as, for example, luxury, lifestyle, exclusivity, adventure, youth. To that effect, the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages in question which are conveyed by, inter alia, a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor. Consequently, Article 8(5) of Regulation 2017/1001 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (see judgment of 29 November 2018, Louis Vuitton Malletier v EUIPO – Fulia Trading (LV BET ZAKŁADY BUKMACHERSKIE), T‑373/17, not published, EU:T:2018:50, paragraph 20 and the case-law cited).
44      Article 8(5) of Regulation 2017/1001 thus expressly refers to the situation where the goods are not similar, with the result that the dissimilarity between the respective goods covered by each of the marks at issue is not a sufficient factor for excluding the existence of a link between those marks (see judgment of 26 September 2018, PUMA v EUIPO – Doosan Machine Tools (PUMA), T‑62/16, EU:T:2018:604, paragraphs 99 and 100 and the case-law cited).
45      In the present case, it should be noted that the Board of Appeal found the existence of a ‘proximity’ between the goods in question and not a similarity between them. The Board of Appeal expressly found that fruit drinks and certain alcoholic beverages are different types of goods. However, the Board of Appeal also noted that, despite their differences, those goods could nevertheless be bought and consumed together by the same consumers. In particular, as the Board of Appeal correctly observed, a very large number of alcoholic and non-alcoholic drinks are generally mixed, consumed, or indeed marketed together, either in the same establishments or as pre-mixed alcoholic drinks. Furthermore, the average consumer often purchases both alcoholic and non-alcoholic beverages in the same sales outlets, since those goods are often displayed on neighbouring shelves. Lastly, it is well known that alcoholic drinks are frequently consumed with fruit juices, either as a cocktail or separately, during a meal or event. On that basis, the Board of Appeal correctly concluded that there was a ‘proximity’ between the goods in question.
46      As regards the differences between those goods, highlighted by the applicant, although they may be taken into account in order to demonstrate the lack of similarity between the goods in question according to the case-law relating to Article 8(1) of Regulation 2017/1001, the elements listed in paragraph 45 above are, nonetheless, and despite those differences, capable of establishing the existence of proximity between those goods for the purposes of the application of Article 8(5) of that regulation.
47      The same conclusion arises, mutatis mutandis, from the judgment of 28 April 2021, Asolo v EUIPO – Red Bull (FLÜGEL) (T‑509/19, not published, EU:T:2021:225), in which the Court held, in paragraphs 108 to 115, that, although non-alcoholic energy drinks in Class 32 and alcoholic beverages in Class 33 were not similar goods for the purposes of the application of Article 8(1) of Regulation 2017/1001, there was nevertheless proximity between them for the purposes of the application of Article 8(5) of that regulation, on account, in essence, of the elements noted in paragraph 45 above.
48      The concepts of ‘similarity’ and ‘proximity’ between the goods in question should not be confused. The similarity between the goods covered by the marks at issue does not constitute a condition for the application of Article 8(5) of Regulation 2017/1001, whereas it does constitute one of the cumulative conditions for the application of Article 8(1) of that regulation. However, in the context of the application of Article 8(5) of Regulation 2017/1001, the proximity between the goods claimed is only one of the factors which must be taken into consideration in order to establish whether there is a risk that the use without due cause of the mark applied for would take advantage of the repute of the earlier mark. The concept of ‘proximity’ between the goods, for the purposes of the application of Article 8(5) of that regulation, must be understood as the existence of a simple connection between those goods (see, to that effect, judgment of 4 October 2018, Asolo v EUIPO – Red Bull (FLÜGEL), T‑150/17, EU:T:2018:641, paragraph 79).
49      Lastly, as regards the decisions of EUIPO relied on by the applicant, it is sufficient to recall that, in its review of legality, the Court is not bound by EUIPO’s decision-making practice (judgments of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65, and of 22 April 2008, Casa Editorial el Tiempo v OHIM – Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, not published, EU:T:2008:121, paragraph 48).
50      Accordingly, the existence of a simple connection and, therefore, of proximity between the goods in question, based on all the elements summarised in paragraph 45 above, constitutes a factor which the Board of Appeal was correct to take into consideration for the purpose of assessing the third condition laid down in Article 8(5), namely the existence of a risk that the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.
51      In order to determine whether the use of the later mark takes unfair advantage of the distinctive character or the repute of the earlier mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the earlier mark’s reputation and the degree of distinctive character of that mark, the degree of similarity between the marks at issue, and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the earlier mark, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused thereto. It is also clear from the case-law that, the more immediately and strongly that mark is brought to mind by the later mark, the greater the likelihood that the current or future use of the later mark is taking, or will take, unfair advantage of the distinctive character or the repute of the earlier mark or is, or will be, detrimental to them (judgment of 18 June 2009, L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraph 44).
52      In the present case, the Board of Appeal took account of all the relevant factors. First of all, it found that the earlier mark had a very strong reputation for ‘fruit drinks and fruit juices’ among the relevant public. Next, it noted that, in view of the proximity between those beverages and the applicant’s goods, a substantial part of the relevant public could consume the applicant’s goods, thinking that they were connected with the earlier mark, thus misappropriating its attractive powers and advertising value. Lastly, it concluded that, taking into account the extent of the exposure of the relevant public to the earlier mark, the degree of inherent distinctive character of that mark and the similarity of the marks at issue, there was a strong probability that the use without due cause of the mark applied for would lead to a situation of free-riding.
53      Given that all the arguments put forward by the applicant concerning the similarity of the marks at issue and the proximity between the goods in question have been rejected, and that the applicant does not dispute either the Board of Appeal’s assessment of the other relevant factors or the fact that there is no ‘due cause’ for the use of the mark applied for, the Board of Appeal’s conclusion that there is a risk that the use without due cause of the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark is not vitiated by any error of assessment.
54      Accordingly, the second part of the single plea in law must be rejected as unfounded.
55      As a result, the single plea in law alleging infringement of Article 8(5) of Regulation 2017/1001 must be rejected and, consequently, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the applicant’s head of claim asking the Court to annul the Opposition Division’s decision of 29 May 2020.
Costs
56      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.
57      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
On those grounds,
THE GENERAL COURT (Tenth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Copal Tree Brands, Inc. to pay the costs.
Kornezov
Buttigieg
Hesse
Delivered in open court in Luxembourg on 30 March 2022.
E. Coulon
H. Kanninen
Registrar
President
*      Language of the case: English.