JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
28 February 2024 (*)
(EU trade mark – Opposition proceedings – Application for the EU figurative mark BERTRAND PUMA La griffe boulangère – Earlier EU figurative mark PUMA – Relative ground for refusal – No damage to reputation – Article 8(5) of Regulation (EU) 2017/1001 – Link between the marks at issue)
In Case T‑184/23,
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 and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Société d’équipements de boulangerie pâtisserie, established in Portes-Lès-Valence (France),
THE GENERAL COURT (Sixth Chamber),
composed of M.J. Costeira (Rapporteur), President, M. Kancheva and E. Tichy‑Fisslberger, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 22 November 2023,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Puma SE, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 23 January 2023 (Case R 2420/2020-1) (‘the contested decision’).
Background to the dispute
2 On 2 April 2019, Société d’équipements de boulangerie pâtisserie filed an application for registration of an EU trade mark with EUIPO in respect of the following figurative sign:
3 The mark applied for covers goods in Classes 7, 9 and 11 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:
– Class 7: ‘Machine tools; motors (except for land vehicles); machine couplings (non-electric) and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; mechanical bread-making machines, machines for the breadmaking industry, in particular hydraulic dough dividing machines, dough shapers, belt conveyors for pastries, dough loaders, pumping chambers for bakeries, dough rounders, vegetable spinners, dough trays, mixers (machines), machines for rolling pasta’;
– Class 9: ‘Scientific apparatus and instruments (other than for medical purposes), nautical and surveying apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, weighing, measuring and proportioning apparatus and instruments, in particular for the baking industry; photographic, cinematographic, optical, signalling, life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or image; magnetic data carriers, recording discs; optical readers; cash registers, calculating machines, data processing equipment, computers; fire-extinguishing apparatus; hydraulic balances for dough’;
– Class 11: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, including for industrial bakeries, sanitary installations, cooling installations for water’.
4 On 7 August 2019, 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, inter alia, EU figurative mark No 12 579 694, which was registered in respect of goods in Class 25 corresponding to the following description: ‘Apparel, footwear, headgear’.
6 The grounds relied on in support of the opposition were, inter alia, those 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 By decision of 11 November 2020, the Opposition Division rejected the opposition in so far as it was based on Article 8(5) of Regulation 2017/1001.
8 On 17 December 2020, 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.
9 By the contested decision, the Board of Appeal upheld the Opposition Division’s decision and dismissed the appeal. It based its assessment on earlier trade mark No 12 579 694, on account of its similarity to the mark applied for. The Board of Appeal acknowledged that the earlier mark had a high reputation. It also found that the marks at issue were visually similar to at least a low degree and phonetically and conceptually similar to an average degree. However, according to the Board of Appeal, in the light of the very different nature of the goods at issue, of their manufacturers, of their economic sectors and of their respective publics, no link could be established between the signs at issue. Furthermore, it found that, even if consumers made a link between the signs at issue, there were no reasons to believe that the mark applied for could take unfair advantage of the reputation of the earlier mark.
Forms of order sought
10 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.
11 EUIPO contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
The issue of whether certain items of evidence submitted by the applicant are admissible
12 In support of its action, the applicant submitted to the Court, on 19 May 2023, an expert’s report relating to the interpretation of Article 8(5) of Regulation 2017/1001, which addressed factual and legal issues relating to the present proceedings (Annex A.5). The applicant contends that the belated submission of that expert’s report is explained by the date on which it was drawn up, namely 16 May 2023, which prevented it from annexing it to its application at the time when that application was lodged.
13 EUIPO submits that the expert’s report, which was not annexed to the application and has been submitted as Annex A.5, is inadmissible.
14 It must be borne in mind that the purpose of actions brought before the Court under Article 72(1) of Regulation 2017/1001 is to review the legality of decisions of the Boards of Appeal, as is apparent from paragraph 2 of that provision. Pursuant to Article 95 of Regulation 2017/1001, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 16 March 2022, Laboratorios Ern v EUIPO – Nordesta (APIAL), T‑315/21, not published, EU:T:2022:141, paragraph 18 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 55, and of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 53).
15 Consequently, it is not the Court’s function to review the facts in the light of evidence produced for the first time before it. To allow such evidence would be contrary to Article 188 of the Rules of Procedure of the General Court, according to which the parties’ pleadings may not change the subject matter of the proceedings before the Board of Appeal. The evidence submitted for the first time before the Court must therefore be declared inadmissible, without it being necessary to examine it (see judgment of 14 May 2009, Fiorucci v OHIM – Edwin (ELIO FIORUCCI), T‑165/06, EU:T:2009:157, paragraph 22 and the case-law cited).
Substance
16 In support of its action, the applicant puts forward a single plea in law alleging infringement of Article 8(5) of Regulation 2017/1001. In essence, it complains that the Board of Appeal made errors in the assessment of the similarity of the marks at issue, the issue of whether there was a link between those marks and the issue of whether unfair advantage was taken of the distinctive character or the repute of the earlier mark.
17 Article 8(5) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, 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.
18 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 must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it 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 judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 34 and the case-law cited, and 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).
19 As regards the fourth condition defined in Article 8(5) of Regulation 2017/1001, the types of injury referred to in that provision, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, on account of which the relevant public makes a connection between those two marks. In other words, the relevant public establishes a link between them even though it does not confuse them (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 50 and the case-law cited). The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the mark applied for would call the earlier mark to mind is tantamount to the existence of a link between those marks (see, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 60).
20 The existence of such a link is therefore an implied essential condition for the application of Article 8(5) of Regulation 2017/1001 (see judgment of 11 November 2020, Totalizator Sportowy v EUIPO – Lottoland Holdings (Lottoland), T‑820/19, not published, EU:T:2020:538, paragraph 26 and the case-law cited).
The relevant public
21 The Board of Appeal found that the goods in Class 25 covered by the earlier mark were aimed at the general public, which displayed an average level of attention, whereas those in Classes 7 and 11 covered by the mark applied for were mainly of interest to professionals in the baking industry, who displayed a higher than average level of attention. It took the view that the publics thus defined overlapped, since professionals could be part of the general public at which the earlier mark was aimed.
22 It is necessary to uphold those assessments of the Board of Appeal, which are not, moreover, disputed by the applicant, which merely submits, incorrectly, that the Board of Appeal failed to take into account the fact that the relevant publics could overlap.
The reputation of the earlier mark
23 The Board of Appeal’s assessments relating to the very high reputation of earlier trade mark No 12 579 694 in the field of sports apparel, footwear and headgear throughout the European Union, which are, moreover, supported by the applicant, must be upheld.
The comparison of the signs at issue
24 The applicant claims that the Board of Appeal made errors in the assessment of the visual, phonetic and conceptual similarities between the signs at issue, which led it to underestimate the degree of their overall similarity.
25 EUIPO disputes the applicant’s claims.
26 It must be pointed out at the outset that the existence of a similarity between an earlier mark and a mark applied for is a condition for the application both of Article 8(1)(b) and of Article 8(5) of Regulation 2017/1001. That condition presupposes 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).
27 However, those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation 2017/1001 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant public, the existence of such a likelihood of confusion is not necessary for the protection conferred by Article 8(5) of that regulation. Accordingly, the types of injury referred to in Article 8(5) of Regulation 2017/1001 may be the consequence of a lower degree of similarity between the earlier mark and the mark applied for, provided that it is sufficient for the relevant public to make a connection between those marks, that is to say, to establish a link between them. However, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under Article 8(1)(b) or under Article 8(5) of Regulation 2017/1001 (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 53 and 54).
28 It follows that the comparison of the signs at issue must, so far as concerns the visual, phonetic and conceptual similarity, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements (see judgment of 25 January 2012, Viaguara v OHIM – Pfizer (VIAGUARA), T‑332/10, not published, EU:T:2012:26, paragraph 32 and the case-law cited).
29 In the present case, the marks to be compared are as follows:
– the mark applied for is the following figurative sign:
– earlier trade mark No 12 579 694 is the following figurative sign:
30 As regards the analysis of the mark applied for, it must be pointed out that the Board of Appeal was right in finding, a finding which is not disputed by the applicant, that, in the light of their size and position, the word elements ‘bertrand’ and ‘puma’ and the figurative representation of a feline constituted the dominant elements in the sign applied for.
– The visual comparison between the signs at issue
31 On account of the coincidence in the word element ‘puma’ and the graphic representation of the animal in question, and notwithstanding the presence of additional elements in the sign applied for, the Board of Appeal found that the signs at issue were characterised by at least a low degree of visual similarity. When it was questioned in that regard at the hearing, EUIPO stated that the degree of visual similarity could have been categorised as average.
32 The applicant submits that, in the light of the association made in the minds of the relevant public between the word element ‘puma’ and the graphic representation of a bounding feline, which inevitably refers to the distinctive features of the earlier mark, an association which the Board of Appeal failed to take into account, the degree of visual similarity in the present case is at least above average, or even that the signs are identical.
33 EUIPO disputes the applicant’s arguments, emphasising the visual differences between the signs at issue.
34 It must be pointed out at the outset that, in paragraph 38 of the contested decision, the Board of Appeal expressly found that there was a coincidence in the word element ‘puma’ and the corresponding image of the feline, which appeared in both signs, in order to conclude that there was at least a low degree of visual similarity between the marks at issue. It follows that the applicant’s claims that the similarity of those two elements was not at all taken into account have no factual basis.
35 Furthermore, as regards the degree of visual similarity between the signs at issue, it must be pointed out that some of the visual differences noted in paragraphs 36 and 37 of the contested decision, namely the two curved lines and the word element ‘la griffe boulangère’ in the mark applied for, relate to elements which, on account of their size and positioning, are not dominant.
36 Such differences are not sufficient, in the context of an overall visual assessment of the marks at issue, to outweigh the similarities which have been found to exist between the dominant elements in those marks. Those similarities will immediately be noticed and easily remembered by the reasonably observant average consumer (see, to that effect, judgment of 15 March 2012, Mustang v OHIM – Decathlon (Wavy line), T‑379/08, not published, EU:T:2012:125, paragraph 46 and the case-law cited). Although the visual impression of a mark consists of the overall impression it creates, some of its elements create a greater or lesser visual impact (see, to that effect, judgment of 13 February 2007, Ontex v OHIM – Curon Medical (CURON), T‑353/04, not published, EU:T:2007:47, paragraph 68).
37 As regards the other visual differences, relating to the details of the stylisation and to the differing orientation of the image of the feline, it must be stated that those differences are not capable of substantially weakening the degree of visual similarity which characterises the signs at issue. Although they are facing in opposite directions, there is a certain symmetry between the representations of the animal in question and there are only minor differences between those representations, which do not affect the overall impression. Furthermore, in the light of settled case-law, the differences in colour between the signs at issue are not, in that regard, decisive (see judgment of 24 October 2017, Keturi kambariai v EUIPO – Coffee In (coffee inn), T‑202/16, not published, EU:T:2017:750, paragraph 101 and the case-law cited).
38 The only major visual difference thus arises from the presence in the sign applied for of the word element ‘bertrand’, the co-dominant nature of which within the sign applied for is not disputed. That difference, on its own, precludes the degree of visual similarity from being capable of being categorised as high or above average in the present case.
39 It follows that there is a certain degree of visual similarity between the signs at issue. However, contrary to what the Board of Appeal found, it cannot be held that the signs at issue are visually similar to at least a low degree. In the light of the foregoing considerations, the signs at issue are characterised by an average degree of visual similarity.
– The phonetic comparison between the signs at issue
40 The Board of Appeal found that the signs at issue, which would be pronounced as ‘puma’ and ‘bertrand puma’ respectively, were characterised by an average degree of phonetic similarity, as the element ‘la griffe boulangère’ would be omitted on account of its secondary nature.
41 The applicant submits that the signs at issue are characterised by an above average degree of phonetic similarity.
42 In the present case, it must be stated that the signs at issue have the word ‘puma’ in common, that the mark applied for contains, in addition, the word ‘bertrand’ and that the element ‘la griffe boulangère’ in the mark applied for is secondary in nature. Consequently, the Board of Appeal was fully entitled to find that the signs at issue were phonetically similar to an average degree. Furthermore, the applicant does not put forward any specific line of argument in its written pleadings which would be capable of supporting its claim that the degree of phonetic similarity should have been considered to be above average.
– The conceptual comparison between the signs at issue
43 The Board of Appeal observed that the signs at issue both referred to the same animal, both because of the presence of the word element in common and of its graphic representation, and that the sign applied for differed in an additional word element, namely ‘bertrand’, which was likely to be perceived as referring to the identity of someone called ‘bertrand puma’. The Board of Appeal concluded that there was an average degree of conceptual similarity.
44 The applicant concedes that the word element ‘bertrand’ will be interpreted by a large part of the relevant public as a first name. However, it submits that, in view of the representation of a bounding feline, the word element ‘puma’ will be associated exclusively with the animal in question, with the result that the component ‘bertrand’ will seem more like an isolated element, which is framed by the reference to a predatory feline.
45 EUIPO disputes the applicant’s line of argument.
46 According to settled case-law, a conceptual similarity arises from the fact that two marks use images with analogous semantic content, in the sense that those images convey the same idea or the same concept (see judgment of 8 November 2017, Oakley v EUIPO – Xuebo Ye (Representation of a discontinuous ellipse), T‑754/16, not published, EU:T:2017:786, paragraph 62 and the case-law cited).
47 It is also apparent from the case-law that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole (judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41).
48 In the light of the principles referred to above, the applicant’s line of argument, which is based on an exclusive association between the graphic representation of a feline and the word element ‘puma’ in the sign applied for, cannot succeed.
49 That line of argument leads to the element ‘bertrand’ being denied any relevance from a conceptual standpoint, even though the co-dominance of that element, due to its size and its central position within the sign applied for, is not disputed.
50 Furthermore, the argument relating to the lack of any conceptual association between the word elements ‘bertrand’ and ‘puma’ does not in any way take into account the visual aspect of the sign applied for, since the identical stylisation of those elements militates in favour of their being read as a whole.
51 It must therefore be held that the presence of the element ‘bertrand’ within the mark applied for lessens, to a certain extent, the similarity resulting from the semantic content which is common to the signs at issue, with the result that the degree of conceptual similarity between them must be categorised as average.
52 Consequently, notwithstanding the incorrect assessment of the visual similarity set out in the contested decision, the Board of Appeal was fully entitled to conclude that the signs at issue were similar overall.
The link between the marks at issue
53 The Board of Appeal pointed out, in essence, that the goods at issue were different, were aimed at different publics, although those publics overlapped in part, and concerned different markets, which precluded any possibility of association between the marks at issue. Furthermore, the Board of Appeal observed that the applicant had not established that it had entered into any collaboration in the sectors concerned, which could have militated in favour of a mental connection being made between the marks at issue. In those circumstances, notwithstanding the overall similarity of the signs at issue and the indisputable reputation of the earlier mark, the Board of Appeal found that the condition for the application of Article 8(5) of Regulation 2017/1001, relating to the existence of a link between the marks, was not satisfied.
54 The applicant disputes the Board of Appeal’s assessment and, in particular, the taking into account, in the context of the application of Article 8(5) of Regulation 2017/1001, of the differences between the goods concerned. According to the applicant, marks with a very high reputation, as is the case with the earlier mark, enjoy enhanced protection under that provision, and a mental connection must in their case be assumed. In the light of the exceptional reputation and the very high degree of distinctiveness of the earlier mark, it follows, according to the applicant, that it cannot be required to provide evidence of any link or any similarity between the goods concerned.
55 It must be pointed out at the outset that 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 (see, by analogy, judgment of 23 October 2003, Adidas-Salomon and Adidas Benelux, C‑408/01, EU:C:2003:582, paragraph 30). Those factors include: 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; the relevant public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character and the existence of a likelihood of confusion on the part of the relevant public (see, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 to 42 and the case-law cited).
56 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).
57 In the first place, it should be noted that the applicant’s line of argument is based on the incorrect premiss that Regulation 2017/1001 and the case-law do not, with regard to marks which have a very high reputation, require proof of the existence of a mental link. According to the applicant, that mental link must be assumed, even where the goods and services covered by the marks at issue are different and concern radically different markets.
58 However, it is apparent from the case-law that the mere fact that the earlier mark has 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). There is no provision of Regulation 2017/1001 which provides, in that regard, for any presumption with regard to trade marks that have an exceptional reputation, which the EU legislature has not made subject to special treatment.
59 Contrary to what the applicant claims, such a presumption cannot be deduced from the reasoning of the judgment of 27 November 2008, Intel Corporation (C‑252/07, EU:C:2008:655). In particular, the reasoning set out in paragraph 52 of that judgment, relating to the case of a mark which has acquired a reputation that goes beyond the relevant public, does not call into question the finding in paragraph 49 of that judgment that the goods or services at issue may be so dissimilar that the later mark will be unlikely to bring the earlier mark to the minds of the relevant public.
60 It follows that the link which may be established in the minds of the relevant public with a mark which has an exceptional reputation cannot be presumed.
61 In the second place, it must be pointed out that, in order to conclude that there was no link between the marks at issue, the Board of Appeal did not confine itself to noting the obvious differences between the goods concerned. On the contrary, in paragraph 43 of the contested decision, it pointed out the need to assess all factors relevant to the circumstances of the case.
62 In that regard, first, the Board of Appeal noted that the earlier mark had a very high degree of reputation among the general public in respect of sports apparel, footwear and headgear, whereas the goods covered by the mark applied for were aimed mainly at professionals in the baking industry. Although the professional public may thus be aware of the earlier mark, the Board of Appeal was right in pointing out that that fact cannot suffice to show that that public will establish a link between the marks at issue (see, to that effect, judgment of 21 December 2022, Puma v EUIPO – DN Solutions (PUMA), T‑4/22, not published, EU:T:2022:850, paragraph 57).
63 Secondly, in response to the applicant’s claims seeking to show that there is a high degree of similarity between the marks at issue, the Board of Appeal carried out a detailed comparison of the signs at issue, and correctly concluded from that, as has been held in paragraph 52 above, that they were similar overall.
64 Thirdly, the Board of Appeal found that the goods concerned in the present case were radically different, to such an extent that the mark applied for would, notwithstanding its high reputation, be incapable of evoking the earlier mark in the minds of the relevant public. In that regard, the Board of Appeal observed that the sector of machinery for professional baking and that of sporting articles and clothing did not have anything in common, since the goods in question were manufactured and marketed independently of each other and were not used together. It concluded that it was unlikely that the marks at issue could be related in the minds of the relevant public.
65 Fourthly, the Board of Appeal stated that the evidence submitted by the applicant was not conclusive for the purpose of establishing that there was a link between the goods at issue.
66 Fifthly, it took the view that, in the light of the very different commercial backgrounds of the marks at issue, no collaboration between the manufacturers of the goods covered by those marks appeared to be likely to take place and observed that the applicant had not produced any evidence capable of establishing the existence of such agreements.
67 Thus, it must be held 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 between the markets concerned, but also by taking into account the lack of any evidence submitted by the applicant in order to establish the existence of a link between the goods at issue, the relevant public at which the marks were aimed and the fact that no collaboration between the manufacturers of the goods covered by those marks appeared to be likely to take place.
68 In the third place, it is common ground that the goods at issue are extremely different and concern radically different markets. It must be pointed out, as observed by the Board of Appeal, that the market for the goods covered by the mark applied for, namely that of machines for baking, does not have anything in common with the market for the goods covered by the earlier mark, which is the market for sporting articles. The goods covered by the mark applied for belong to a specific and limited market which is in every respect different from that to which the goods covered by the earlier mark belong. The former are intended mainly for professional use, whereas the latter are intended for practising sports or are used as fashion accessories.
69 Furthermore, as the Board of Appeal correctly pointed out in paragraph 49 of the contested decision, the goods covered by the marks at issue are sold in completely different sales outlets.
70 Likewise, as has been stated in paragraphs 21 to 22 above, the goods covered by the marks at issue are aimed at different publics. Those covered by the mark applied for are aimed at a professional public, whereas those covered by the earlier mark are aimed at the general public.
71 In addition, it must be pointed out that, in the light of the specific nature of the goods covered by the mark applied for and the radically different markets, the possibility of collaboration with the earlier mark seems very unlikely, contrary to what the applicant submits. Moreover, it must be observed that the applicant has not submitted any evidence showing that licence and collaboration agreements to that effect have been entered into.
72 Furthermore, in the light of the extremely dissimilar nature of the goods and of the markets concerned, the fact that the relevant publics overlap to a certain extent, as has been stated in paragraphs 21 to 22 above, does not affect the Board of Appeal’s finding that there is no link between the marks at issue. It is apparent from the case-law that, even if the relevant publics as regards the goods or services covered by the marks at issue are the same or overlap to some extent, those goods or services may be so dissimilar that the later mark will be unlikely to bring the earlier mark to the minds of the relevant public (see, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 49).
73 In view of all of the foregoing, it must be held that the Board of Appeal was right in finding that, in the particular circumstances of the present case, in the light both of the specific nature of the goods covered by the mark applied for and of the sector to which they belong and of the specific nature of the publics at which they are aimed, no connection between the marks at issue would be made, notwithstanding the strength of the earlier mark’s reputation, its highly distinctive character and the overall similarity of the signs at issue.
The 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
74 In the light of the lack of any link between the marks at issue, it is not necessary to rule on whether there is 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 (see, to that effect, judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA), T‑62/16, EU:T:2018:604, paragraph 38).
75 In view of all of the foregoing, the action must be dismissed.
Costs
76 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.
77 As a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Puma SE to pay the costs.
Costeira | Kancheva | Tichy-Fisslberger |
Delivered in open court in Luxembourg on 28 February 2024.
V. Di Bucci | | M. van der Woude |