According to the case-law, Article 8(5) of Regulation No 207/2009 on the European Union trade mark implies that the three types of injury referred to therein, should they occur, are the consequence of a certain degree of similarity between the earlier and the later marks, 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 confuse them. 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 essential precondition for the application of Article 8(5) of Regulation No 207/2009.

In the absence of such an association in the mind of the public, the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark.

It is apparent from the case-law that the question whether a link between the conflicting marks exists in the mind of the relevant public must be appreciated 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 those marks, 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 its distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public.

It should be recalled that the strength of the reputation and the degree of distinctive character, inherent or acquired by use, of the earlier marks may have a significant effect on the assessment of whether there is a link between the marks at issue.

In accordance with the case-law, certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, the relevant section of the public as regards the goods or services for which the later mark is registered might make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

Thus, where the public concerned by the goods designated by the earlier mark and the public concerned by the goods designated by the mark applied for are distinct, it may be necessary to take account of the strength of the reputation of the earlier mark in order to determine whether that reputation extends beyond the public concerned by that mark.

Therefore, even if there is no direct link between the goods designated by the marks at issue, which are dissimilar, the finding of an association with the earlier marks may, nevertheless, still have been possible taking into account the degree of reputation. Thus, even if the sections of the public which are respectively the target of the goods and services covered by each of those marks do not overlap, given that the goods concerned are different, it is possible that a connection between the marks at issue may be established, considering also the high degree of similarity between them.

(see paras 22-24, 86-89)