JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
22 October 2025 (*)
( EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark CMS Italy – Earlier international figurative marks representing a feline bounding to the left – Relative ground for refusal – Injury to reputation – Article 8(5) of Regulation (EC) No 207/2009 – Strength of reputation – Obligation on EUIPO expressly to take into account the best-case scenario for the losing party before it – Duty of diligence )
In Case T‑491/24,
Puma SE, established in Herzogenaurach (Germany), represented by M. Schunke and P. Trieb, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and V. Ruzek, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
CMS Costruzione macchine speciali SpA, established in Alonte (Italy),
THE GENERAL COURT (Sixth Chamber),
composed, at the time of the deliberations, of M.J. Costeira, President, M. Kancheva (Rapporteur) and P. Zilgalvis, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
having regard to the written questions put by the Court to the applicant and to EUIPO and their answers lodged at the Registry of the General Court on 14 and 21 May 2025 respectively,
further to the hearing on 19 June 2025,
gives the following
Judgment
1 By its action under Article 263 TFEU, the applicant, Puma SE, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 July 2024 (Case R 2215/2019‑5) (‘the contested decision’).
Background to the dispute
2 On 21 December 2012, the other party to the proceedings before the Board of Appeal of EUIPO, CMS Costruzione macchine speciali SpA, designated the European Union, with a priority date of 14 December 2012, in connection with the application for protection of international registration No 1 150 538.
3 The mark in respect of which that designation was made is the following figurative mark:
4 The mark applied for designated the goods and services in Classes 7, 11 and 37 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 corresponding, for each of those classes, to the following description:
– Class 7: ‘Apparatus and industrial machine tools for making all types of heat exchanger’;
– Class 11: ‘Systems and equipment for heating, air conditioning, refrigeration, heat exchange, ventilation, steam generating, drying’;
– Class 37: ‘Installation, maintenance and repair of systems, equipment and industrial machine tools for making all types of heat exchanger’.
5 On 21 November 2013, the applicant filed a notice of opposition pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) to registration of the mark applied for in respect of the goods and services referred to in paragraph 4 above.
6 The opposition was based, inter alia, on the following earlier trade marks (‘the earlier marks’):
– the international figurative mark reproduced below, which was registered on 17 June 1992 under number 593 987 (‘earlier mark No 1’) and duly renewed, with effect in Austria, Benelux, Bulgaria, Croatia, Cyprus, the Czech Republic, Estonia, Finland, France, Greece, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and the United Kingdom, covering, inter alia, the following goods in Classes 18, 25 and 28:
– Class 18: ‘Leather goods or imitation leather goods included in this class; handbags and other cases that are not adapted to the goods which they are intended to contain, as well as small articles made from leather, particularly purses, pocket wallets and cases for keys; handbags, portfolios, storage and shopping bags, school bags, bags for campers, rucksacks, pouches, match bags, transport and storage bags, and travel bags made from leather and imitation leather, synthetic materials, base-metal alloys and textile fabrics; travelling sets (leatherware); shoulder belts (straps); animal skins; trunks and suitcases; umbrellas, parasols and walking sticks; whips, saddlery’;
– Class 25: ‘Clothing, footwear, headgear; parts and components of footwear, soles, false soles and corrective soles, heels, boot uppers; non-slipping devices for boots, studs and spikes; ready-made interlining and pockets for clothes; corsetry items; boots, slippers and mules; finished items of footwear, street shoes, sports shoes, leisure footwear, shoes for physical training, running shoes, gymnastic, bathing and physiological slippers included in this class, tennis shoes; gaiters and spats, gaiters and spats of leather, leggings, puttees, spats for shoes; clothes for physical training, trunks and jerseys for gymnastics, trunks and jerseys for football, shirts and shorts for tennis, swimwear and beach clothing, swimming pants and underpants and swimming costumes, included two-piece swimwear, clothing for sports and leisure, including knitwear and jerseys, as well as for physical training, jogging, endurance running and gymnastics, trunks and trousers for sports, jerseys, jumpers, tee-shirts, sweat-shirts, clothing for tennis and skiing; tracksuits and leisure clothing, all-weather tracksuits and clothing, stockings (hosiery), football socks, gloves, including leather gloves, as well as imitation or synthetic leather, hats and caps, hair bands, head bands and sweat bands, scarves, shawls, headscarves, mufflers; belts, anoraks and parkas, raincoats, overcoats, overalls, jackets, skirts, breeches and trousers, pullovers and matching combinations composed of several items of clothing and underclothing; underclothing’;
– Class 28: ‘Games, toys, including miniature footwear and miniature balls (used as toys); apparatus and gear for physical training, gymnastics and sport included in this class; equipment for skiing, tennis and fishing; skis, ski bindings and ski poles; edges of skis and coverings for skis; balls for games and play balloons, including balls and balloons for sports and games; dumb-bells, shots, discuses, javelins; tennis rackets, bats for table tennis or ping-pong, badminton and squash, cricket bats, golf clubs and hockey sticks; tennis balls and tennis ball throwing apparatus; roller skates and skates, combination shoes for roller-skating, also with reinforced soles; tables for table tennis; clubs for gymnastics, barrel hoops for sports, nets for sports, goal nets and balls nets; sports gloves (games accessories); dolls, dolls clothes, dolls shoes, caps and bonnets for dolls, belts for dolls, aprons for dolls; knee-pads, elbow-pads, ankle-protectors and leggings for sports; decorations for Christmas trees’;
– the international figurative mark reproduced below, which was registered on 30 September 1983 under number 480 105 (‘earlier mark No 2’) and duly renewed, with effect in Austria, Benelux, Croatia, the Czech Republic, France, Hungary, Italy, Portugal, Romania, Slovakia and Slovenia, covering the following goods in Classes 18, 25 and 28:
– Class 18: ‘Bags to wear over the shoulder and travel bags, trunks and suitcases, especially for apparatus and sportswear’;
– Class 25: ‘Clothing, boots, shoes and slippers’;
– Class 28: ‘Games, toys; equipment for physical exercise, equipment for gymnastics and sports (not included in other classes), including sports balls’.
7 The ground relied on in support of the opposition was that set out in Article 8(5) of Regulation No 207/2009. The opposition, which was directed against all the goods and services referred to in paragraph 4 above, was based on all the goods covered by earlier mark No 2 and on some of the goods covered by earlier mark No 1, namely those in Classes 18, 25 and 28. Reputation was claimed in respect of all the goods on which the opposition was based and in respect of all the countries in which the earlier marks enjoyed protection. Eighteen documents, including previous decisions of the Opposition Division, were submitted as an annex to the opposition in order to prove that reputation.
8 By decision of 28 November 2014, the Opposition Division rejected the opposition on the ground that the reputation of the earlier marks had not been established.
9 On 26 January 2015, the applicant filed a notice of appeal with EUIPO against the Opposition Division’s decision. It submitted, for the first time before the Board of Appeal, 3 CDs of annexes containing 12 documents or groups of documents in order to prove that the earlier marks had a reputation.
10 By decision of 29 January 2016 (‘the first decision’), the Second Board of Appeal of EUIPO dismissed the appeal, on the ground that the applicant had not proved that the earlier marks had a reputation.
11 By order of 22 May 2019, Puma v EUIPO – CMS (CMS Italy) (T‑161/16, EU:T:2019:350), the Court annulled the first decision. Taking into account the findings made in the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509), concerning another trade mark application, the Court held, first, that the Board of Appeal had erred in failing to take into account the previous decisions of EUIPO that the applicant had submitted before the Opposition Division in order to prove that the earlier marks relied on had a reputation and, secondly, that it had erred in rejecting, on the ground of its inadmissibility, the evidence submitted in the appeal proceedings.
12 By decision of 24 September 2020 (‘the second decision’), the Fourth Board of Appeal again dismissed the applicant’s appeal against the Opposition Division’s decision rejecting the opposition.
13 By judgment of 5 October 2022, Puma v EUIPO – CMS (CMS Italy) (T‑711/20, not published, ‘the annulling judgment’, EU:T:2022:604), the Court annulled the second decision. After confirming the comparison of the marks at issue (the annulling judgment, paragraphs 33 to 80), it found that the Board of Appeal had erred in finding that it was not necessary to examine the opposition based on earlier mark No 2, on the sole ground that it had a lower degree of similarity with the mark applied for as compared with earlier mark No 1. In that regard, the Court pointed out that the degree of similarity between the signs was only one of the factors relevant to the assessment of the existence of a link under Article 8(5) of Regulation No 207/2009 and that, consequently, the lesser degree of similarity of earlier mark No 2 could be offset, in particular, by a higher degree of reputation (the annulling judgment, paragraphs 97 to 112). Furthermore, as regards earlier mark No 1, the Court found that the Board of Appeal had erred in finding that it was not necessary to re-examine the evidence of reputation that had been submitted before the Opposition Division, other than the previous decisions of the Opposition Division (the annulling judgment, paragraphs 114 to 136). Consequently, the Court annulled the second decision as regards the opposition based on earlier marks No 1 and No 2, in the absence of an overall assessment of the existence and strength of the reputation of those marks (the annulling judgment, paragraphs 137 to 144).
14 By the contested decision, the Fifth Board of Appeal again dismissed the applicant’s appeal. In the first place, after noting that it was required to carry out a new overall assessment of the existence and strength of the reputation of the earlier marks, it decided to accept the additional evidence produced in the appeal proceedings and found that, in the annulling judgment, the Court had confirmed the comparison of the marks at issue. In the second place, after assessing all the evidence of the reputation of the earlier marks, including the previous decisions of the Opposition Division and the additional evidence submitted before it, the Board of Appeal found that the joint examination of the evidence produced by the applicant showed that the earlier marks had ‘at least’ an average degree of reputation for sporting shoes and sports clothing, at least in the Czech Republic, Germany, Italy, Spain and the United Kingdom. In the third place, it rejected the opposition on the ground that the existence of a link between the marks at issue had not been established, despite the ‘at least’ average degree of reputation of the earlier marks. In the fourth place, ‘for the sake of completeness’, it also rejected the opposition on the ground that the applicant had not demonstrated that the other conditions, namely taking unfair advantage of, or detriment to, the distinctive character or the reputation of the earlier marks, were satisfied.
Forms of order sought
15 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.
16 EUIPO contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs in the event that a hearing is convened.
Law
17 In support of its action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009. That single plea is divided, in essence, into four parts relating, first, to the similarity of the marks at issue, secondly, to the strength of the reputation of the earlier marks, thirdly, to the existence of a link between the marks at issue and, fourthly, to the existence of injury to the reputation of the earlier marks.
18 Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are 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 and, 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.
19 For an earlier registered trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, the following three conditions must be satisfied: first, the marks at issue must be identical or similar; secondly, the earlier trade mark relied on in support of the opposition must have a reputation; and, thirdly, 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 trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (see the annulling judgment, paragraph 31 and the case-law cited).
20 In the present case, the Court considers it appropriate to begin by examining the second part of the single plea, relating to the strength of the reputation of the earlier marks.
21 By the second part of the single plea, the applicant disputes the Board of Appeal’s assessment that the strength of the reputation of the earlier marks is at least average. That part comprises, in essence, three complaints. By the first complaint, the applicant complains that the Board of Appeal disregarded the fundamental importance of the degree of reputation of the earlier marks for the application of Article 8(5) of Regulation No 207/2009. The Board of Appeal’s failure to address the degree of that reputation constitutes ‘a violation of the law’. By the second complaint, it claims that the earlier marks enjoy a very high degree of reputation, which is demonstrated by the large amount of evidence submitted. By the third complaint, it criticises the Board of Appeal for failing to acknowledge that the earlier marks had a high degree of distinctive character, on the ground that their normal or average degree of inherent distinctiveness is considerably increased by their extensive use.
22 EUIPO disputes the applicant’s arguments. It redefines the applicant’s first complaint as meaning that the Board of Appeal should have established the exact degree of reputation enjoyed by the earlier marks. It observes that, while the existence of reputation enjoyed by the earlier marks constitutes a necessary prerequisite of Article 8(5) of Regulation No 207/2009, there is, however, no requirement to establish the specific degree of that reputation in all cases. Accordingly, it should be possible to carry out that assessment under that article on the basis of the lowest possible degree of reputation (that is, ‘at least’), the highest possible degree of reputation (that is, ‘at most’, ‘at best’) or even a certain reputation. Consequently, it considers that, in the present case, in concluding that the earlier marks enjoy ‘at least an average degree of reputation’ for sporting shoes and sports clothing, which constitute two separate categories of goods, the Board of Appeal did not commit any error of assessment.
23 In paragraphs 44 to 61 of the contested decision, the Board of Appeal duly assessed all the evidence of the reputation of the earlier marks, including the previous decisions of the Opposition Division. In particular, the Board of Appeal found that the annexes produced before it showed that the applicant had made considerable marketing efforts over the years and had sponsored various athletes and sporting teams. Thus, numerous documents contained photographs of known athletes wearing sports clothing and sporting shoes bearing the earlier trade marks (or one of them).
24 In paragraph 62 of the contested decision, the Board of Appeal found that the joint examination of the evidence submitted by the applicant showed that the earlier marks had ‘at least an average degree of reputation’ for sporting shoes and sports clothing. In its view, taken as a whole, the documents were not sufficient to prove reputation for other goods, since they did not demonstrate sufficient knowledge of the mark among the relevant public, which could have been proved by market studies. Overall, the evidence submitted showed that the earlier marks enjoyed a long-standing extensive use and ‘at least an average level of reputation’ for sporting shoes and sports clothing. In paragraph 63 of that decision, the Board of Appeal concluded that, as a whole, the evidence submitted by the applicant showed that the earlier marks had ‘at least an average degree of reputation’, at least in the Czech Republic, Germany, Italy, Spain and the United Kingdom.
25 According to settled case-law, a trade mark has a reputation within the meaning of EU law where it is known by a significant part of the public concerned by the goods or services covered by that trade mark, within a substantial part of the relevant territory. The existence of repute must be assessed by taking into consideration all the relevant factors of the case, that is to say, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 55 and 56 and the case-law cited).
26 As regards the first complaint, it must be held that, by that complaint, the applicant submits, in essence, that the Board of Appeal erred in law by failing to establish the precise degree of reputation enjoyed by the earlier marks or, at the very least, by failing expressly to take into account the best-case scenario for the applicant.
27 At the outset, it must be borne in mind that the strength of the reputation is a relevant factor for the overall assessment of whether there is a link between the marks at issue (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42).
28 Moreover, as regards the strength of the reputation and the degree of distinctive character of the earlier mark, it is clear from the case-law that the stronger that mark’s distinctive character and reputation the easier it will be to accept that injury has been caused to it (see judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 69 and the case-law cited).
29 Furthermore, it should be borne in mind that, while it is one of the cumulative conditions for the application of Article 8(5) of Regulation No 207/2009, the reputation of the earlier trade mark, including the strength of that reputation, is one of the factors to be taken into account in the assessment both of whether there is an association on the part of the public between the earlier trade mark and the contested mark and of whether there is a risk that one of the three types of injury referred to in that provision may occur (see judgment of 28 September 2016, Lacamanda Group v EUIPO – Woolley (HENLEY), T‑362/15, not published, EU:T:2016:576, paragraph 21 and the case-law cited).
30 Accordingly, assessing whether the earlier trade mark has a reputation is an essential step in examining whether Article 8(5) of Regulation No 207/2009 is applicable. Consequently, the application of that provision necessarily requires a definitive conclusion regarding whether or not such a reputation exists, which, in principle, means that no analysis regarding the possible application of that provision can be carried out on the basis of a vague hypothesis, that is to say, a hypothesis which is not based on the acknowledgement of a reputation with a specific level of strength (see judgment of 28 September 2016, HENLEY, T‑362/15, not published, EU:T:2016:576, paragraph 22 and the case-law cited; see also, by analogy, judgment of 22 January 2025, Rain Carbon Germany v EUIPO – Novaresine (NOVARESINE INNOVATION GOES GREEN), T‑1188/23, not published, EU:T:2025:49, paragraphs 91 and 92).
31 In that regard, it must be held that, where, as in the present case, EUIPO examines the application of Article 8(5) of Regulation No 207/2009, it is not sufficient for it to find that the earlier mark has ‘at least an average’ degree of reputation, but it is required either to determine precisely the degree of strength of that reputation (average, high or even very high), which is a relevant factor for the overall assessment of the link, or, at the very least, expressly to take into account the best-case scenario for the losing party before it, in this case the applicant. It must be pointed out that the concept of ‘losing party’, in this context, refers to the party whose arguments concerning the strength of the reputation are rejected by EUIPO.
32 Admittedly, it must therefore be pointed out, as observed by EUIPO, that the latter is not required to define a precise degree of reputation in all cases. Thus, in certain appropriate cases (see paragraphs 34 and 35 below), it is open to EUIPO, in order to assess the strength of the reputation, to use expressions such as ‘at least’ or ‘at most’.
33 However, it must be pointed out that, in cases where EUIPO chooses to use expressions such as ‘at least’ or ‘at most’ to assess the strength of the reputation, it must expressly take into account the best-case scenario for the losing party before it, before being able to reason a fortiori for the other less favourable scenarios for that losing party.
34 Thus, in cases where EUIPO concludes that there is no link or no injury to the reputation of the earlier mark at issue, it is open to it to classify the degree of reputation as ‘at most’ high, to take into account the maximum degree, namely the high degree, and to reason a fortiori for the scenarios less favourable to the losing party, which is the opponent, namely an average (or low) degree. By contrast, in such cases, EUIPO is not permitted to classify the degree of reputation as ‘at least’ average without expressly taking into account the best-case scenario for the ‘losing party’, in this case the opponent, such as a high, or even very high, degree of reputation. The failure expressly to take into account the best-case scenario for the opponent is likely to vitiate the overall assessment of the existence of the link, in respect of which the strength of the reputation of the earlier mark is a relevant factor, or the overall assessment of whether there is injury to reputation.
35 Conversely, in cases where EUIPO concludes that there is a link between the marks at issue or injury to the reputation of the earlier mark at issue, it is open to it to classify the degree of reputation as ‘at least’ average, to take into account the minimum degree of reputation, namely the average degree, and to reason a fortiori for scenarios less favourable to the losing party, in this case the proprietor of the contested mark, namely a high, or even very high, degree. By contrast, in such cases, EUIPO is not permitted to classify the degree of reputation as ‘at most’ high without expressly taking into account the best-case scenario for the proprietor, such as an average (or low) degree of reputation. The failure to take into account the best-case scenario for the proprietor is likely to vitiate the overall assessment of the existence of the link, in respect of which the strength of the reputation of the earlier mark is a relevant factor, or the overall assessment of whether there is injury to reputation.
36 More generally, it must be held that, where, in the context of any assessment, EUIPO chooses to use expressions such as ‘at least’ or ‘at most’, it must expressly take into account the best-case scenario for the losing party before it, namely the party whose arguments concerning the assessment in question it rejects.
37 The obligation expressly to take into account the best-case scenario for the losing party before EUIPO constitutes, for the latter, a particular statement of the duty of diligence, under which the relevant institution is required to examine carefully and impartially all the relevant legal and factual aspects of the case in question (see the annulling judgment, paragraph 127 and the case-law cited).
38 In the present case, it must be stated that the Board of Appeal did not expressly take into account the best-case scenario for the losing party, in this case the applicant (which, moreover, specifically relied on such a scenario), namely that of a ‘very high’ degree of reputation, in the overall assessment of the link between the marks at issue.
39 The present case can thus be distinguished from the case that gave rise to the judgment of 2 October 2015, The Tea Board v OHIM – Delta Lingerie (Darjeeling) (T‑627/13, not published, EU:T:2015:740, paragraph 83). In that case, relied on by EUIPO at the hearing, the Board of Appeal expressly relied not on a vague hypothesis, but on the hypothetical premiss that the earlier marks at issue enjoyed a reputation with a very specific strength, that is to say, an exceptionally high strength, which corresponded to that which the applicant, the losing party in that case, sought to demonstrate before the competent adjudicating bodies of EUIPO.
40 The finding made in paragraph 38 above cannot be invalidated by EUIPO’s other arguments.
41 First, EUIPO submits that, while the existence of reputation enjoyed by the earlier marks constitutes a necessary prerequisite of Article 8(5) of Regulation No 207/2009, there is, however, no requirement to establish the precise degree of that reputation in all cases. Accordingly, it should be possible to carry out that assessment under that article on the basis of the lowest possible degree of reputation (that is, ‘at least’) (judgments of 19 June 2008, Mülhens v OHIM – Spa Monopole (MINERAL SPA), T‑93/06, not published, EU:T:2008:215, paragraphs 34 to 36, and of 6 July 2022, ALO jewelry CZ v EUIPO – Cartier International (ALOve), T‑288/21, not published, EU:T:2022:420, paragraphs 26 and 72), the highest degree of reputation (that is, ‘at most’, ‘at best’) (the annulling judgment, paragraph 16) or even a certain reputation (judgment of 9 September 2020, Novomatic v EUIPO – Brouwerij Haacht (PRIMUS), T‑669/19, not published, EU:T:2020:408, paragraph 77).
42 In that regard, it should be noted that, admittedly, in the judgment of 19 June 2008, MINERAL SPA (T‑93/06, not published, EU:T:2008:215, paragraphs 34 to 36), the Court did in fact find that there was an ‘at the very least, very significant’ reputation and found that that was sufficient to determine precisely the degree of reputation of the earlier mark. However, unlike the Board of Appeal in the present case, the Court then found that there was injury to reputation by holding that there was (at the very least) a ‘very significant’ degree of reputation and thus by expressly relying on the best-case scenario for the losing party, the proprietor of the contested mark. Similarly, it is true that, in the judgment of 6 July 2022, ALOve (T‑288/21, not published, EU:T:2022:420, paragraphs 26 and 72), the Court did in fact find that the earlier mark enjoyed a reputation of an ‘at least average’ degree. However, unlike the Board of Appeal in the present case, the Court then concluded that there was injury to reputation by finding an (at least) average degree of reputation and thus relying on the best-case scenario for the losing party, which is the proprietor of the contested mark. Furthermore, while it is true that, in the ‘Background to the dispute’ section of the annulling judgment, the Court recalled that the Fourth Board of Appeal, in the second decision, had found that the evidence produced before it showed ‘at best some degree of reputation’ for ‘sports shoes’ in Class 25, the fact remains that it did not rule on that point in the ‘Law’ section of the annulling judgment. Lastly, while it is true that, in the judgment of 9 September 2020, PRIMUS (T‑669/19, not published, EU:T:2020:408, paragraphs 77 and 107), the Court first of all found that the earlier marks enjoyed ‘a certain reputation’, it then stated that that reputation had to be ‘regarded as normal’ before finding, unlike the Board of Appeal in the present case, that there was injury to reputation.
43 Thus, none of the judgments relied on by EUIPO is relevant in the circumstances of the present case, in which the Board of Appeal did not expressly take into account the best-case scenario for the losing party.
44 Secondly, EUIPO claims that the degree of reputation may vary according to the specific goods and services and that, therefore, a general finding of reputation that would cover all those goods and services could facilitate the application of Article 8(5) of Regulation No 207/2009.
45 In that regard, suffice it to state that, given that the strength of the reputation is a factor in assessing whether there is a link and that it may vary according to the specific goods and services, it is for EUIPO either to establish the precise degree of strength of the reputation for each of the specific goods and services for which an earlier mark has a reputation or, at the very least, for each of those goods and services, expressly to take into account the best-case scenario for the losing party (see paragraph 31 above).
46 Thirdly, EUIPO considers that the Board of Appeal’s finding that the earlier marks enjoy ‘at least an average degree of reputation’ for ‘sporting shoes’ and ‘sports clothing’ in Class 25 implies that, for those goods, the reputation may actually be very high. In response to a written question from the Court, it considers that the Board of Appeal ‘implicitly yet necessarily’ took into account the high degree of reputation of the earlier marks, which had been claimed by the applicant.
47 In that regard, suffice it to note that such consideration by EUIPO of the best-case scenario for the losing party before it should be explicit and clear, and not implicit or abstruse.
48 Fourthly, EUIPO submits that it is not apparent from the contested decision that the Board of Appeal took into account, for the purposes of applying Article 8(5) of Regulation No 207/2009, only the average degree of reputation of the earlier marks. According to EUIPO, it is apparent, on the contrary, from the wording of paragraph 62 of the contested decision (for example, ‘the publication “Sporting Goods Intelligence” (Annex 9 …) shows that the [applicant] had a considerable market share for “athletic footwear” in 2007, being the third company in the worldwide ranking’, ‘the earlier marks enjoyed a longstanding extensive use’) that the Board of Appeal did not rule out that the reputation of the earlier marks could indeed be above average. Similarly, it is apparent from paragraph 78 of the contested decision, in which it is stated ‘for the sake of completeness’ that ‘even if the earlier marks enjoyed a high degree of reputation also for other goods in Class 25 …, the result would be the same’, that the Board of Appeal took into account a high degree of reputation of the earlier marks, at least for some of the goods covered by the earlier marks, and therefore the ‘best-case scenario’ for the applicant.
49 In that regard, it must be stated that the contested decision does not contain any explicit and clear indication of any consideration, in the overall assessment of the link, of a very high degree of reputation for sporting shoes or sports clothing. As regards the extracts cited in paragraph 62 of that decision, it should be noted that they are at the heart of the assessment of the existence and strength of the reputation, both before and after the findings, in paragraphs 62 and 63 of that decision, according to which the joint examination of the evidence submitted shows ‘at least an average degree of reputation’. Those extracts do not therefore in any way call into question the Board of Appeal’s overall conclusion on the strength of the reputation. Moreover, they do not form part of the overall assessment of the link. They cannot therefore establish, or even suggest, that a high, or even very high, degree of reputation should be taken into account in that context.
50 As regards the extract cited from paragraph 78 of the contested decision, apart from the fact that it appears in the assessment of the existence of injury, it relates specifically to goods in Class 25 ‘other’ than sporting shoes and sports clothing. It cannot therefore establish, solely on the basis of the adverb ‘also’, the explicit and clear consideration of a high, or even very high, degree of reputation for sporting shoes and sports clothing in the overall assessment of the link.
51 In that regard, it is necessary to clarify, as regards the existence of injury for the purposes of the third condition of Article 8(5) of Regulation No 207/2009 (see paragraph 19 above), that, in its assessment carried out ‘for the sake of completeness’ in paragraphs 74 to 78 of the contested decision, the Board of Appeal also did not expressly take into account the best-case scenario for the applicant as regards the strength of the reputation of the earlier marks. The Board of Appeal referred, in paragraph 77 of that decision, to the ‘at least average degree of reputation enjoyed by the earlier marks for sporting shoes and sports clothing’ and, in the extract cited in paragraph 78 of that decision, referred to the possibility of a ‘high degree of reputation’ for goods ‘other’ than sporting shoes and sports clothing.
52 Fifthly, at the hearing, EUIPO claimed that, before its own adjudicating bodies, the applicant had not claimed a high degree of reputation.
53 However, it is apparent from the statement setting out the grounds of appeal before the Board of Appeal, summarised in paragraph 8 of the contested decision, that the applicant claimed a ‘very high degree of recognition on the market’ and a ‘well-known character’ for its earlier marks. Accordingly, EUIPO’s claim has no factual basis. Moreover, it contradicts its own claim that the Board of Appeal ‘implicitly yet necessarily’ took into account the high degree of reputation of the earlier marks that had been relied on by the applicant (see paragraph 46 above).
54 It must be concluded that the Board of Appeal, by not expressly taking into account the best-case scenario for the applicant (which, moreover, was relied on by the applicant), namely that of a ‘very high’ degree of reputation, in the overall assessment of the link between the marks at issue, infringed the obligation set out in paragraphs 31 to 37 above and thereby erred in law.
55 The first complaint of the second part of the single plea in law must therefore be upheld.
56 According to settled case-law, the existence of a link between the marks at issue – which constitutes an essential, albeit implicit, precondition for the application of Article 8(5) of Regulation No 207/2009 – must be assessed globally, taking into account all factors relevant to the circumstances of the case. Those factors include, inter alia, the strength of the earlier mark’s reputation (see the annulling judgment, paragraph 139 and the case-law cited).
57 In the present case, given the error of law committed by the Board of Appeal with regard to the strength of the reputation of the earlier marks (see paragraph 54 above), it is not for the Court to rule on the strength of that reputation or on the Board of Appeal’s overall assessment of the existence of a link between the marks at issue. It will therefore be for the Board of Appeal to assess those aspects in order to make a decision that it will be called upon to give in the appeal that is still pending before it (see, to that effect, the annulling judgment, paragraph 140 and the case-law cited).
58 In that regard, it must be noted that the Court is not entitled itself to assess the strength of the reputation of the earlier marks, since, in accordance with Article 65(2) of Regulation No 207/2009, the Court is to carry out a review of the legality of the decisions of EUIPO. If it holds that such a decision, called into question in an action brought before it, is vitiated by illegality, it must annul it. It may not, however, dismiss the action while substituting its own reasoning for that of the competent adjudicating body of EUIPO, which is the author of the contested act (see, to that effect, judgment of 28 September 2016, HENLEY, T‑362/15, not published, EU:T:2016:576, paragraph 25 and the case-law cited).
59 In the light of all of the foregoing and without it being necessary to examine the other parts and complaints of the applicant’s single plea in law, the contested decision must be annulled in its entirety.
Costs
60 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.
61 Since EUIPO has been unsuccessful, it must be ordered to pay the costs of these proceedings, in accordance with the form of order sought by the applicant. Furthermore, the applicant has claimed that EUIPO should be ordered to pay the costs that the applicant incurred before the Board of Appeal. In that regard, it is sufficient to note that it will be for the Board of Appeal to decide, in the light of the present judgment, on the costs relating to the proceedings before it (see, to that effect, judgment of 29 May 2018, Uribe-Etxebarría Jiménez v EUIPO – Núcleo de comunicaciones y control (SHERPA), T‑577/15, EU:T:2018:305, paragraph 94 and the case-law cited).
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 4 July 2024 (Case R 2215/2019‑5);
2. Orders EUIPO to pay the costs of the proceedings.
Costeira | Kancheva | Zilgalvis |
Delivered in open court in Luxembourg on 22 October 2025.
V. Di Bucci | | S. Papasavvas |