JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
6 November 2024 (*)
( EU trade mark – Opposition proceedings – Application for an EU figurative mark representing an emblem – Earlier EU figurative marks representing a stripe – Relative ground for refusal – No similarity of the signs – No likelihood of confusion – Article 8(1)(b) of Regulation (EU) 2017/1001 – No damage to reputation – Article 8(5) of Regulation 2017/1001 )
In Case T‑544/23,
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 being
Yukai Zheng, residing in Zhongshan (China),
THE GENERAL COURT (Seventh Chamber),
composed of K. Kowalik-Bańczyk, President, E. Buttigieg and G. Hesse (Rapporteur), Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 16 May 2024,
gives the following
Judgment
1        By its action under Article 263 TFEU, the applicant, Puma SE, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 June 2023 (Case R 1956/2022-4) (‘the contested decision’).
Background to the dispute
2        On 17 December 2020, Mr Yukai Zheng filed an application with EUIPO for registration of an EU trade mark for the following figurative sign:
3        The mark applied for covered goods in Class 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, corresponding to the following description: ‘Overalls; Smocks; Sweaters; Shirts; Short-sleeve shirts; Clothing; Trousers; Outerclothing; Vests; Waistcoats; Coats; Skirts; Singlets; Dresses; Topcoats; Overcoats; Jackets [clothing]; Clothing of imitations of leather; Tee-shirts; Camisoles; Underclothing; Underwear; Children’s clothing; Underpants.’
4        On 29 April 2021, 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 on the following earlier marks:
–        the EU figurative mark registered on 31 January 2010 under number 8 461 469 designating goods in Class 25 corresponding to the following description: ‘Clothing; footwear; headgear’, reproduced below:
–        the EU figurative mark registered on 7 October 2014 under number 12 697 066 designating goods in Class 25 corresponding to the following description: ‘Apparel; footwear; headgear’, reproduced below:
6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
7        Following the request made by Mr Zheng, EUIPO asked the applicant to furnish proof that the earlier marks relied on in support of the opposition had been put to genuine use. The applicant did so within the prescribed period.
8        On 12 August 2022, the Opposition Division rejected the opposition on the basis of Article 8(1)(b) and Article 8(5) of Regulation 2017/1001.
9        On 6 October 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.
10      By the contested decision, the Board of Appeal dismissed the applicant’s appeal. In essence, it concluded that the marks at issue were dissimilar. It thus rejected the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001. After recalling that the conditions set out in Article 8(5) of Regulation 2017/1001 were cumulative and that one of them – in this instance the similarity of the marks at issue – was not satisfied, it also rejected the opposition on the basis of that provision.
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 that a hearing is convened.
Law
13      In support of its action, the applicant raises two pleas in law, alleging, first, infringement of Article 8(1)(b) of Regulation 2017/1001 and, second, infringement of Article 8(5) of that regulation.
First plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001
14      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
15      The risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
16      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM – easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
The relevant public, the relevant territory and the comparison of the goods
17      In the present case, the Board of Appeal found that, for the earlier marks, the relevant territory was that of the European Union. In addition, it noted that the likelihood of confusion had to be assessed in relation to the general public which is reasonably well informed and reasonably observant and circumspect.
18      As regards the comparison of the goods, the Board of Appeal, in the contested decision, endorsed the findings of the Opposition Division that the goods covered by the marks at issue were identical.
19      Those findings of the Board of Appeal are not disputed by the applicant.
The comparison of the signs
20      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
21      In the present case, before addressing the question of the visual, phonetic and conceptual similarity of the marks at issue, it is necessary to examine the assessment of the distinctive and dominant elements of those marks carried out by the Board of Appeal.
–       The distinctive and dominant elements of the signs
22      First of all, the Board of Appeal correctly held that the earlier marks consisted of a stripe, respectively, in white and in black. Those stripes have a flat base, are curved and ascend towards the right. In addition, they become immediately slimmer to form a narrower line and end with a straight line, giving the impression of the stripe being cut off.
23      Next, as regards the mark applied for, as the Board of Appeal noted, it will be perceived as a rounded triangular shape with an external rim, inner triangular curved figures forming a central white circle, where a stripe is depicted. That stripe has a curved base, elongates towards the right, becomes gradually slimmer and ends in an angular point.
24      Lastly, the Board of Appeal concluded that the signs at issue contained no element that could be considered more distinctive than others.
25      The applicant contests the assessments made by the Board of Appeal in the context of the examination of the distinctive and dominant elements of the marks at issue.
26      The applicant argues, in essence, that the outer frame and the inner triangular curved figures of the mark applied for would be perceived as representing one frame, and more specifically, an emblem. According to the applicant, that frame would be understood only as a decorative element and not as a mark of origin. As a result, the stripe inside is highlighted in a particularly dominant way and is therefore distinctive.
27      EUIPO disputes the applicant’s arguments.
28      In that regard, first, it must be held, as the Board of Appeal found, that, taking into account the overall impression created by the mark applied for, that mark will be perceived as an inseparable whole in so far as no element enjoys a distinctive or dominant position. The size of the inner triangular curved figures is at least equivalent to, if not larger than, the central element.
29      Second, since the mark applied for is formed of a collection of commonplace shapes, the graphical representation of its central part does not stand out to such an extent that it specifically attracts the consumer’s attention. The consumer will see only a decorative arrangement, but will not pay particular attention to it or analyse it in detail.
30      Furthermore, contrary to the applicant’s submission, it would be excessive to take the view that all signs containing a frame would be perceived as ‘emblem brands’ and that, consequently, for all those signs and, in particular, in the case of the mark applied for, the interior graphical elements are dominant and alone have a distinctive character. That finding is not called into question by the few examples of third-party marks that the applicant produced before the Court. Those marks are different from the mark applied for and are not in themselves sufficient to establish that there is a general habit in the clothing sector of the relevant public focusing all of its attention on the central elements of emblem marks and systematically disregarding the frame of those emblem marks.
31      As to the examples of the NIKE and Reebok marks, it must be emphasised that those are trade marks owned by undertakings which may, if they were now to demonstrate the distinctive character of their mark, claim distinctive character acquired through use. In that regard, the Court has previously held that the fact that certain signs were recognised as trade marks by consumers did not necessarily mean that they were devoid of intrinsic distinctive character. It is in fact possible for a mark to acquire distinctive character through use over time (see judgment of 9 November 2016, Birkenstock Sales v EUIPO (Representation of a pattern of wavy, crisscrossing lines), T‑579/14, EU:T:2016:650, paragraph 150 and the case-law cited).
32      In the light of the foregoing, and without it being necessary to rule on the admissibility of the arguments and evidence submitted to the Court by the applicant for the first time, the Board of Appeal did not err in its assessment of the distinctive and dominant elements of the marks at issue.
–       The visual similarity
33      The Board of Appeal concluded, in paragraph 34 of the contested decision, that the marks at issue were visually dissimilar.
34      The applicant disputes that finding by arguing, in essence, that the only element of the earlier marks and the dominant element of the mark applied for consist of a stripe curving and ascending towards the right, becoming immediately slimmer. The differences between the marks are only of minor importance and would not be perceived by the average consumer who does not examine the details. The applicant adds that the frame of the emblem is less visible than the central element and that it may even be negligible. According to the applicant, the second earlier mark is almost completely included in the mark applied for.
35      EUIPO disputes those arguments.
36      As noted in paragraph 23 above, the mark applied for is formed of several elements. In addition to an outer frame, it contains various geometric elements, including the stripe inside that frame.
37      In that regard, as recalled in paragraph 20 above, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. Despite the fact that that mark may resemble an emblem, there is no reason to doubt that it will be perceived as a whole by the relevant public. Lastly, as has already been held, the mark applied for does not have any element which is more distinctive or dominant than others.
38      Accordingly, in view of the fact that the various elements of the mark applied for are perceived as a whole and create an overall impression, and of the fact that the marks at issue, taken together, exhibit notable differences, sufficient to create different impressions among the relevant public, it cannot be reasonably argued that those marks are visually similar, even to a low degree.
39      Furthermore, the applicant’s argument that the second earlier mark is almost completely included in the mark applied for cannot succeed, since the stripes of those marks are not identical.
40      First, the stripes which make up the earlier marks have a flat base, whereas the base of the stripe of the mark applied for is curving. Second, the base of the earlier marks is slightly broader than that of the mark applied for. Third, the very tip of the stripe which makes up the first earlier mark appears flat and that of the stripe which makes up the second earlier mark is cut diagonally. As regards the mark applied for, the tip of the stripe inside the frame is pointed. Fourth, the shape of the stripe of the mark applied for resembles that of an elongated triangle, which is not the case for the stripes making up the earlier marks.
41      Therefore, the Board of Appeal was justified in finding, in paragraph 35 of the contested decision, that the stripe inside the mark applied for showed notable differences compared with the earlier marks.
42      It follows from all of the foregoing that the Board of Appeal was correct to conclude that the marks at issue were visually dissimilar.
–       The phonetic similarity
43      The Board of Appeal found that it was not possible to compare the marks at issue phonetically, given that purely figurative marks cannot be pronounced, which the applicant does not dispute.
–       The conceptual similarity
44      The Board of Appeal stated that the marks at issue could not be compared conceptually, given the fact that they contained no discernible semantic content and do not represented specific geometric figures.
45      The applicant maintains that the marks at issue are conceptually similar to a high degree, in so far as the monochromatic stripe which curves and ascends towards the right constitutes the dominant or only element.
46      EUIPO disputes that argument.
47      In that regard, it must be held, as observed by EUIPO, that the marks at issue are figurative marks without word elements and that none of the graphic forms has conceptual content. Moreover, in response to an oral question put by the Court at the hearing concerning the conceptual content of the earlier marks, the applicant merely mentioned that those marks shared the idea of a stripe ascending from left to right, which becomes slimmer towards the end.
48      It follows that the Board of Appeal was right to hold, contrary to the applicant’s submission, that the monochromatic stripe which curves and ascends towards the right did not convey any particular concept and that a conceptual comparison was not possible in the present case.
49      In the light of all the foregoing considerations, the Board of Appeal did not make an error of assessment in finding that there was no similarity between the marks at issue.
50      Accordingly, in the light of the case-law cited in paragraph 16 above, given that one of the conditions necessary for a finding of a likelihood of confusion has not been satisfied, the Board of Appeal was fully entitled to conclude that there was no likelihood of confusion.
51      In the light of the foregoing, the first plea, alleging infringement of Article 8(1)(b) of Regulation 2017/1001, must be dismissed, without it being necessary to rule on the applicant’s arguments relating, in particular, to the inherent distinctive character of the earlier marks and to the global assessment of the likelihood of confusion.
Second plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001
52      The applicant contends that the Board of Appeal failed to recognise that its marks enjoy a reputation and that the relevant public will make a connection between the marks at issue. It argues that the use of the mark applied for takes unfair advantage of the distinctive character or the repute of the earlier marks.
53      EUIPO disputes the applicant’s arguments.
54      In that regard, it must be borne in mind that, in accordance with case-law, where any similarity between the signs at issue is ruled out, Article 8(5) of Regulation 2017/1001 is, like Article 8(1)(b) of that regulation, manifestly inapplicable. It is only if there is some similarity, even faint, between the marks at issue that it is necessary to carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks by the relevant public (see judgment of 24 September 2019, Volvo Trademark v EUIPO – Paalupaikka (V V-WHEELS), T‑356/18, EU:T:2019:690, paragraph 20 and the case-law cited). Therefore, it is sufficient to note that the Board of Appeal was correct to find that, in the present case, since one of the cumulative conditions imposed by Article 8(5) of Regulation 2017/1001 was not satisfied, namely that which requires that the mark applied for be identical or similar to the earlier mark, that provision was not applicable.
55      Consequently, the second plea, alleging infringement of Article 8(5) of Regulation 2017/1001, must be dismissed.
56      In the light of all the foregoing considerations, since neither of the pleas relied on by the applicant in support of the form of order sought can be upheld, the action must be dismissed.
Costs
57      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.
58      Since the applicant has been unsuccessful and a hearing has been held, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Puma SE to pay the costs.
Kowalik-Bańczyk
Buttigieg
Hesse
Delivered in open court in Luxembourg on 6 November 2024.
V. Di Bucci
S. Papasavvas
Registrar
President
*      Language of the case: English.