Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

19 May 2021 (*)

(EU trade mark – Opposition proceedings – Application for the EU figurative mark representing a bounding feline – Earlier international figurative marks representing a bounding feline – Relative ground for refusal – No injury to reputation – Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001))

In Case T‑510/19,

Puma SE, established in Herzogenaurach (Germany), represented by P. González-Bueno Catalán de Ocón, lawyer,

applicant,

v

European Union Intellectual Property Office (EUIPO), represented by D. Hanf and S. Hanne, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of EUIPO being

Gemma Group Srl, established in Cerasolo Ausa (Italy),

ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 30 April 2019 (Case R 2057/2018-4), relating to opposition proceedings between Puma and Gemma Group,

THE GENERAL COURT (Sixth Chamber),

composed of A. Marcoulli, President, J. Schwarcz and C. Iliopoulos (Rapporteur), Judges,

Registrar: J. Pichon, Administrator,

having regard to the application lodged at the Court Registry on 17 July 2019,

having regard to the response lodged at the Court Registry on 10 October 2019,

having regard to the written question put by the Court to the parties and their answers to that question lodged at the Court Registry on 5 and 19 May 2020,

further to the hearing on 18 September 2020,

gives the following

Judgment

 Background to the dispute

1        On 14 February 2013, Gemma Group Srl filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

2        Registration as a mark was sought for the following figurative sign:

3        The goods in respect of which registration was sought are in Class 7 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Machines for processing of wood; machines for processing aluminium; machines for treatment of PVC’.

4        The trade mark application was published in Community Trade Marks Bulletin No 66/2013 of 8 April 2013.

5        On 8 July 2013, the applicant, Puma SE, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all of the goods referred to in paragraph 3 above. The ground for the opposition was that set out in Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001).

6        The opposition was based, inter alia, on the following earlier marks:

–        the international figurative mark reproduced below, which was registered on 30 September 1983 under the number 480105 (‘earlier mark No 1’) and has been renewed until 2023, with effect in Austria, Benelux, Croatia, France, Hungary, Italy, Portugal, the Czech Republic, Romania, Slovakia and Slovenia, covering goods in Classes 18, 25 and 28 corresponding, for each of those classes, to the following description:

–        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’:

–        the international figurative mark reproduced below, which was registered on 17 June 1992 under the number 593987 (‘earlier mark No 2’) and has been renewed until 2022, with effect in Austria, Benelux, Bulgaria, Cyprus, Croatia, Spain, Estonia, Finland, France, Greece, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, the United Kingdom, the Czech Republic, Romania, Slovenia and Slovakia, covering, inter alia, the goods in Classes 18, 25 and 28 corresponding, for each of those classes, to the following description:

–        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 ball 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’:

7        In support of its opposition based on Article 8(5) of Regulation No 207/2009, the applicant relied on the reputation of the earlier marks in all the Member States and for all the goods listed in paragraph 6 above.

8        On 10 March 2014, the Opposition Division rejected the opposition in its entirety. Regarding the reputation of earlier mark No 2, it found that, for reasons of procedural economy, it was not necessary to examine the evidence which the applicant had filed in order to prove the extensive use and reputation of that mark and that the examination would be carried out on the assumption that the earlier mark had ‘enhanced distinctiveness’. The Opposition Division then rejected the opposition based on that mark on the ground that the relevant public would not establish a link between the marks at issue. Lastly, it found that the same conclusion applied to the opposition based on earlier mark No 1.

9        On 7 May 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

10      By decision of 19 December 2014 in Case R 1207/2014-5, the Fifth Board of Appeal of EUIPO dismissed the appeal (‘the earlier decision of 19 December 2014’). First, it found that there was a certain degree of visual similarity between the earlier marks and the mark applied for and that they conveyed the same concept of a ‘pouncing feline recalling a puma’. Secondly, the Board of Appeal rejected the applicant’s argument that the Opposition Division had confirmed that the earlier marks had a reputation, on the ground that the Opposition Division had, in fact, limited itself to stating that, for reasons of procedural economy, the evidence of reputation filed by the applicant did not have to be assessed in the present case and that the examination would proceed on the assumption that earlier mark No 2 had ‘enhanced distinctiveness’. The Board of Appeal also examined and rejected the evidence of the reputation of the earlier marks regarding the goods referred to in paragraph 6 above. Thirdly, the Board of Appeal found that, even assuming that the reputation of the earlier marks were to be regarded as proven, the opposition based on Article 8(5) of Regulation No 207/2009 would have to fail because the other conditions, namely the existence of an unfair advantage taken of the distinctive character or the repute of the earlier marks or of detriment to their distinctive character or repute, had also not been satisfied.

11      By application lodged at the Court Registry on 1 April 2015, the applicant brought an action against the earlier decision of 19 December 2014.

12      By judgment of 9 September 2016, Puma v EUIPO – Gemma Group (Representation of a bounding feline) (T‑159/15, EU:T:2016:457), the General Court annulled the earlier decision of 19 December 2014. It held, inter alia, that, in the light of the principles of equal treatment and sound administration, which included, among other obligations, that requiring the administration to state reasons for its decisions, EUIPO had to take into account the decisions already taken in respect of similar applications and consider with especial care whether it should decide in the same way. The Court thus formed the view that, since the applicant had relied on the decisions of the Opposition Division of 20 August 2010 relating to opposition proceedings B1459017, of 30 August 2010, relating to opposition proceedings B1287178, and of 30 May 2011, relating to opposition proceedings B1291618 (‘the three previous EUIPO decisions’), which had concluded that the earlier marks had a reputation and were widely known to the relevant public, and which had been endorsed by several decisions of national offices, the Board of Appeal could not merely state that EUIPO was not bound by its previous decision-making practice. The Court concluded from this that EUIPO had infringed the principle of sound administration and, in particular, its obligation to state reasons for its decisions. The Court found, lastly, that, in view of the fact that the strength of the earlier marks’ reputation had to be taken into account in the overall assessment of whether there was detriment for the purposes of Article 8(5) of Regulation No 207/2009, a matter upon which the Board of Appeal had ruled for the sake of completeness in the earlier decision of 19 December 2014, the Board of Appeal’s error in law might have had a decisive influence on the outcome of the opposition, since the Board had not carried out a full examination of the reputation of the earlier marks, thereby preventing the Court from ruling on the alleged infringement of Article 8(5).

13      On 7 November 2016, EUIPO lodged an appeal against the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457). By its judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509), the Court of Justice dismissed the appeal. It held that the General Court had been right to examine whether the Board of Appeal, by merely stating in the earlier decision of 19 December 2014 that EUIPO was not bound by its decision-making practice, had satisfied its obligation to state reasons, in view of the context in which that decision had been made and in view of the legal rules governing the matter in question, including the principles of sound administration and equal treatment. The Court of Justice also took the view that the General Court had been right to consider that, in the circumstances of the present case, the adjudicating bodies of EUIPO could not satisfy their obligation to state reasons by merely stating that the lawfulness of EUIPO’s decisions had to be assessed solely on the basis of Regulation No 207/2009 and not on the basis of its previous decision-making practice. Thus, the Court of Justice held, in essence, that, in so far as the applicant had relied, in support of its opposition, on three previous EUIPO decisions that had recognised the reputation of the earlier marks, which were a strong indication, in the opposition proceedings at issue, that those marks could also be regarded as having a reputation, EUIPO was required to take those decisions into account and had to provide an explicit statement of the reasoning for its decision to depart from the approach adopted in those decisions on the reputation of the earlier marks. Lastly, the Court of Justice held that the General Court had not erred in law in concluding that, in the circumstances of the present case, it was incumbent on the Board of Appeal, in accordance with the principle of sound administration, either to provide the reasons why it considered that the findings made by the Opposition Division in the three previous EUIPO decisions relating to the reputation of the earlier marks had to be disregarded in the present case, or request that the applicant submit supplementary evidence of the reputation of the earlier marks.

14      Since the earlier decision of 19 December 2014 had been definitively annulled, the appeal against the decision of the Opposition Division was assigned a new case number (R 2057/2018-4) and was re-examined by the Fourth Board of Appeal, following which the decision of 30 April 2019 was adopted (‘the contested decision’).

15      In that decision, the Board of Appeal essentially confirmed the findings made by the Opposition Division in the decision of 10 March 2014. First, the Board of Appeal confirmed the findings of the Opposition Division concerning the similarity of the marks at issue. It thus found, in essence, that, notwithstanding their obvious differences, the mark applied for and earlier mark No 2 had a certain degree of visual similarity and conveyed the same concept of ‘pouncing feline recalling a puma’. It further found that a phonetic comparison of the marks at issue was not possible and that, visually, those marks were far from being identical. Lastly, the Board of Appeal stated, in essence, that those findings were also valid as regards the comparison between the mark applied for and earlier mark No 1. It therefore concluded that those marks exhibited obvious differences, and referred in this regard to the findings of the Opposition Division. Secondly, the Board of Appeal noted that it followed from the decision given by the Opposition Division on 30 May 2011 in opposition proceedings B1291618 that earlier mark No 1 had acquired a substantial reputation at least in France through its use on the market in connection with ‘clothing, boots, shoes and slippers’. The Board of Appeal also found that it followed from the decision of the Opposition Division of 30 August 2010 in opposition proceedings B1287178 that earlier mark No 2 had acquired a substantial reputation through its use on the market for clothing, footwear, headgear and sports articles not included in other classes. In addition, it recalled that, in the decision of 20 August 2010, concerning opposition proceedings B1459017, the Opposition Division had found that earlier mark No 2 had acquired a high degree of distinctiveness through its use on the market for sportswear and clothing. The Board of Appeal therefore accepted, first, that earlier mark No 1 had acquired a very substantial reputation for clothing, boots, shoes and slippers and, second, that earlier mark No 2 had acquired a substantial reputation and a high degree of distinctiveness through its use on the market for clothing, footwear, headgear and sports articles not included in other classes. Thirdly, the Board of Appeal concluded that the applicant’s opposition had to fail since the applicant had not demonstrated that the other conditions governing the application of Article 8(5) of Regulation No 207/2009 were satisfied in the present case, and referred to the reasons set out in the earlier decision of 19 December 2014. In that regard, first of all, the Board of Appeal stated, in essence, that the applicant had not shown that the relevant, and entirely distinct, sections of the public targeted by the goods covered by each of the marks at issue established a link between those marks even though the goods covered by them were different. Next, it found that the applicant had not shown, in essence, that the positive values associated with the earlier marks could be transferred to the mark applied for. In particular, first, the Board of Appeal found that the applicant had not established the reasons why the image of the sports articles covered by the earlier marks positively influenced consumers in their choice of the goods covered by the mark applied for, which bore no relation to the concepts of sports, competition, active lifestyle, youth, pleasure and leisure conveyed by the earlier marks. The Board of Appeal found, secondly, that the applicant had not shown that the use of that mark for very specific industrial goods could devalue the image of the earlier marks.

 Forms of order sought

16      By application lodged at the Court Registry on 17 July 2019, the applicant brought the present action.

17      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO and Gemma Group to pay the costs.

18      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

19      Given the date on which the application for registration at issue was filed, namely 14 February 2013, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited).

20      Consequently, in the present case, as regards the substantive rules, the references made by the applicant to Article 8(5) of Regulation 2017/1001 must be understood as referring to Article 8(5) of Regulation No 207/2009, the content of which is identical.

21      The applicant relies on a single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009.

22      Under Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to 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 Community 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.

23      Although it is true that the primary function of a mark is that of an indication of origin, every mark also has an inherent economic value which is independent of and separate from that of the goods and services for which it has been registered. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are not similar to those for which the earlier mark has been registered (judgments of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35, and of 8 December 2011, Aktieselskabet af 21. november 2001 v OHIM – Parfums Givenchy (only givenchy), T‑586/10, not published, EU:T:2011:722, paragraph 58).

24      It follows from the wording of Article 8(5) of Regulation No 207/2009 that the application of that provision is subject to three conditions: first, the identity of or similarity between the marks at issue; secondly, the existence of a reputation of the earlier trade mark relied on in support of the opposition; and, thirdly, the existence of 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 the provision inapplicable (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 34 and the case-law cited).

25      In paragraph 25 of the contested decision, the Board of Appeal, in essence, confirmed the Opposition Division’s finding that there was a certain degree of similarity between the marks at issue. In addition, in paragraph 31 of the contested decision, the Board of Appeal noted, first, that earlier mark No 1 had acquired a very substantial reputation for clothing, boots, shoes and slippers and, second, that earlier mark No 2 had acquired a substantial reputation and a high degree of distinctiveness through its use on the market for clothing, footwear, headgear and sports articles not included in other classes. Furthermore, in paragraph 36 of the contested decision, the Board of Appeal found, in essence, that the applicant had not shown that the relevant, and entirely distinct, sections of the public targeted by the goods covered by each of the marks at issue established a link between those marks notwithstanding the fact that the goods covered by them were different. Lastly, in paragraphs 37 to 39 of that decision, the Board of Appeal noted that the applicant had not shown that the use of the mark applied for was liable to take unfair advantage of, or be detrimental to, the repute or the distinctive character of the earlier marks.

26      The applicant disputes those assessments. In that regard, it submits that the Board of Appeal erred in its examination of the conditions for the application of Article 8(5) of Regulation No 207/2009. In particular, first, the applicant criticises the Board of Appeal, in essence, for finding that the sections of the public targeted by the goods covered by each of the marks at issue are different, even though they overlap. Secondly, the applicant submits, in essence, that the Board of Appeal did not correctly assess the degree of similarity between the marks at issue. Thirdly, it disputes the degree of reputation of the earlier marks found by the Board of Appeal and submits, in that regard, that the Board of Appeal still did not carry out a full examination of that reputation, even though it had been invited to do so by the Court in the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457). Fourthly, the applicant claims, in essence, that, in the light of the exceptional reputation of the earlier marks and the fact that the marks at issue are almost identical, the relevant public will establish a link between those marks, notwithstanding the fact that the goods which they cover and the sections of the public targeted by those goods are different. Fifthly, the applicant criticises the Board of Appeal for finding that it had not demonstrated the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009.

 The relevant sections of the public

27      In accordance with the case-law, the public to be taken into account for the purposes of assessing whether one of the injuries referred to in Article 8(5) of Regulation No 207/2009 exists will vary according to the type of injury alleged by the proprietor of the earlier mark. Thus, the relevant public with regard to whom the assessment of whether any unfair advantage has been taken of the distinctive character or the repute of the earlier mark must be made consists of average consumers of the goods or services in respect of which the later mark is applied for, who are reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 12 March 2009, Antartica v OHIM, C‑320/07 P, not published, EU:C:2009:146, paragraphs 46 to 48). By contrast, the public with regard to whom the assessment of whether there is any detriment to the distinctive character or the repute of the earlier mark must be made consists of average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (see, to that effect and by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 35).

28      It is apparent from paragraphs 36 to 41 of the contested decision that the Board of Appeal examined whether the injuries referred to in Article 8(5) of Regulation No 207/2009 existed and, in that context, the condition relating to the existence of a link between the marks at issue, both with regard to the public targeted by the goods covered by the mark applied for, namely industry specialists, and with regard to the public targeted by the goods covered by the earlier marks, namely the general public (paragraph 36 of the contested decision). It also follows from the foregoing that the Board of Appeal clearly defined the relevant sections of the public targeted by the goods covered by each of the marks at issue, concluding, in that regard, that they were two completely different target groups (paragraph 36 of the contested decision).

29      The applicant submits, in essence, that the sections of the public targeted by the goods covered by each of the marks at issue are not different because they overlap. In its submission, the public targeted by the goods covered by the mark applied for also forms part of the general public targeted by the goods covered by the earlier marks.

30      It should be recalled that the public concerned by a given trade mark consists of average consumers of the goods or services for which that mark is registered or, as the case may be, applied for, who are reasonably well informed and reasonably observant and circumspect (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 34).

31      In paragraph 36 of the contested decision, the Board of Appeal correctly found that the goods covered by the mark applied for were aimed at industry specialists, that is to say, a professional public. Furthermore, in the same paragraph, the Board of Appeal made no error in finding that the goods covered by the earlier marks were aimed at the general public. Therefore, it was correct in concluding, again in that paragraph, that the respective sections of the public for the goods covered by each of the marks at issue were different (see, by analogy, judgments of 19 May 2015, Swatch v OHIM – Panavision Europe (SWATCHBALL), T‑71/14, not published, EU:T:2015:293, paragraph 31, and of 29 October 2015, Éditions Quo Vadis v OHIM – Gómez Hernández (“QUO VADIS”), T‑517/13, not published, EU:T:2015:816, paragraph 32).

32      The Board of Appeal therefore correctly took into consideration the appropriate relevant public for the purposes of assessing whether one of the types of injury referred to in Article 8(5) of Regulation No 207/2009 existed.

33      Accordingly, the applicant’s complaint cannot be upheld.

 The similarity between the marks at issue

34      According to case-law, the existence of a similarity between the earlier mark and the mark applied for is a precondition for the application both of Article 8(1)(b) of Regulation No 207/2009 and Article 8(5) of that regulation (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 51) and it is not apparent either from the wording of paragraphs 1(b) and 5 of Article 8 of Regulation No 207/2009 or from the case-law that the concept of similarity has a different meaning in each of those paragraphs (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 39). It is true that 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 No 207/2009 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 section of the public, the existence of such a likelihood 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) may be the consequence of a lesser degree of similarity between the earlier and later marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 53).

35      Furthermore, 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, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see, by analogy, judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see, by analogy, judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (see, by analogy, judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

36      In paragraph 25 of the contested decision, the Board of Appeal confirmed the Opposition Division’s findings relating to the existence of a certain degree of similarity between the marks at issue.

37      In that regard, it is apparent from reading paragraphs 5 and 25 of the contested decision together, first of all, that the Opposition Division found, in essence, that there was a certain degree of visual similarity between the marks at issue notwithstanding obvious differences. Next, it concluded that it was not possible to compare the marks at issue phonetically because they were purely figurative. Lastly, it found that the figurative elements of the marks at issue referred to the same concept.

38      The applicant claims, in essence, that the Board of Appeal erred in finding that there were obvious visual differences between the marks at issue. According to the applicant, those differences are not ‘obvious’ and do not call into question the high degree of visual similarity between those marks and the fact that, overall, they are almost identical.

39      EUIPO contests the applicant’s arguments.

40      In the first place, there is no need to call into question the Board of Appeal’s findings in paragraph 25 of the contested decision, which concern, in essence, the fact that the marks at issue are conceptually identical and that a phonetic comparison of those marks was impossible, which are not disputed by the applicant. Moreover, there is nothing in the file that makes it possible to call those findings into question.

41      In the second place, EUIPO’s argument that the applicant’s line of arguments is contradictory in that, on the one hand, it expressly approved the Board of Appeal’s finding, in paragraph 25 of the contested decision, relating to the existence of a certain degree of visual similarity between the mark applied for and earlier mark No 2 and, on the other hand, it maintained that those marks were almost identical visually, must be rejected.

42      In that regard, it is sufficient to note that, by its arguments, the applicant disputes, in essence, the Opposition Division’s finding, confirmed by the Board of Appeal (see paragraph 25 of the contested decision), that there is a certain degree of similarity between the marks at issue, because it takes the view that those marks are almost identical, particularly in view of their high degree of visual similarity.

43      In the third place, it must be borne in mind that, in view of the continuity in terms of functions between the Opposition Division and the Board of Appeal, the decision of the Opposition Division, together with its statement of reasons, forms part of the context in which the contested decision was adopted, a context which is known to the applicant and which enables the Court to exercise fully its judicial review (see, to that effect and by analogy, judgment of 22 September 2016, Sun Cali v EUIPO– Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 46).

44      In the present case, it is apparent from paragraph 25 of the contested decision that the Board of Appeal expressly confirmed the Opposition Division’s findings on the visual similarity of the marks at issue and, therefore, implicitly but necessarily confirmed its findings relating to the elements of visual similarity and differentiation between those marks (see paragraphs 36 and 37 above).

45      In that regard, it must be borne in mind that the Opposition Division found that the visual similarity between earlier mark No 2 and the mark applied for stemmed from the similar graphic structure of the marks at issue representing a feline bringing to mind a puma (also known as a panther, mountain lion, wildcat or cougar) leaping into the air, with its front and hind legs stretched out and its tail pointing upwards. Furthermore, the Opposition Division noted that the marks at issue differed in so far as, in earlier mark No 2, the feline was facing left, whereas in the mark applied for it was facing right. Moreover, in earlier mark No 2, the feline had a rounded, soft shape, whereas in the mark applied for the stylisation was sharper. In addition, the Opposition Division found that the marks at issue differed in their colours, earlier mark No 2 being represented in white with a black outline, whereas in the mark applied for the outline and body of the feline were represented in blue and white, which created an impression of volume. It should be recalled that those findings were confirmed by the Board of Appeal, which also took care to state, in essence, that they were equally valid as regards the comparison between the mark applied for and earlier mark No 1, which is the black version of earlier mark No 2. The Board of Appeal therefore concluded that the visual similarity between the marks at issue was far from identical and that there were obvious differences between those marks.

46      In view of the visual differences between the marks at issue, referred to in paragraph 45 above, the existence of which is not called into question by the applicant, it must be held that those marks are not almost identical visually.

47      Furthermore, even if the Board of Appeal made an error of assessment in concluding that the marks at issue had obvious visual differences, as the applicant essentially claims, it must be held that the differences between those marks, referred to in paragraph 45 above, are sufficiently significant to be perceived by the average consumers of the goods in question and, therefore, to rule out the existence of a high degree of visual similarity between those marks.

48      The findings made in paragraphs 46 and 47 above are not invalidated by the arguments put forward by the applicant.

49      First, the applicant relies on the judgment of 26 March 2015, Royal County of Berkshire Polo Club v OHIM – Lifestyle Equities (Royal County of Berkshire POLO CLUB) (T‑581/13, not published, EU:T:2015:192), in order to demonstrate, in essence, that the visual differences between the marks at issue do not call into question the fact that they are almost identical.

50      In the judgment of 26 March 2015, Royal County of Berkshire POLO CLUB (T‑581/13, not published, EU:T:2015:192), the marks at issue consisted of a figurative element, representing a polo player wielding his mallet, and other word elements, including the words ‘polo club’, which were present in each of the marks at issue. In that judgment, the Court held that the fact that, in the mark applied for, the polo player was facing left and holding his mallet upright, while in the earlier marks the polo player was facing right and holding his mallet ready to strike the ball was a slight difference not sufficient to reduce significantly the similarity deriving from the fact that both the marks at issue displayed the figure of a polo player astride a galloping horse. The Court therefore upheld the Board of Appeal’s finding that there is ‘some visual similarity’ between the marks at issue (judgment of 26 March 2015, Royal County of Berkshire POLO CLUB, T‑581/13, not published, EU:T:2015:192, paragraphs 54 and 59).

51      Although the facts of the present case differ from those at issue in the judgment of 26 March 2015, Royal County of Berkshire POLO CLUB (T‑581/13, not published, EU:T:2015:192), it must be stated that that judgment does not support the applicant’s argument that there is a high degree of visual similarity between the marks at issue, but appears, on the contrary, to confirm the Board of Appeal’s finding that there is a certain degree of visual similarity between those marks.

52      In addition, it should be borne in mind that, in the present case, the fact that the bounding felines look in different directions, alleged by the applicant, is not the only element of differentiation between the marks at issue which was found by the Opposition Division and the Board of Appeal (see paragraph 45 above).

53      Secondly, the applicant submits that the high degree of visual similarity between the marks at issue stems from the fact that they all represent a bounding feline of which the curves of the back and the stomach are practically identical, the front legs are raised in a leaping position, the claws are drawn under the head and the tail is lifted up, slightly above the head.

54      First of all, it must be stated that the abovementioned elements of similarity, in respect of which it is neither established nor alleged that they were disregarded by the Board of Appeal, indeed contribute to creating a certain degree of visual similarity between the marks at issue.

55      Next, having regard to the visual differences between those marks, referred to in paragraph 45 above, the Board of Appeal did not err in finding that there was a certain degree of visual similarity between those marks taken as a whole.

56      Lastly, it must be held that, in the light of the abovementioned visual differences and the fact that it is impossible to compare the marks at issue phonetically, the Board of Appeal was correct in not finding, for the purposes of its analysis, that those marks were almost identical.

57      Thirdly, the applicant’s assertion that the visual similarity of the signs at issue would inevitably give rise to a likelihood of confusion is not capable of establishing that, visually, the signs at issue are almost identical or that they are highly similar. Article 8(1)(b) of Regulation No 207/2009 makes the existence of a likelihood of confusion conditional on the similarity of the signs and does not mean that the degree of similarity must be high.

58      In the light of the foregoing, it must be concluded that the Board of Appeal was fully entitled to find that there was a certain degree of visual similarity between the marks at issue and, overall, a certain degree of similarity between those marks.

59      The applicant’s complaint must therefore be rejected.

 The reputation of the earlier marks

60      It must be borne in mind that the reputation of the earlier marks is a condition for the application of Article 8(5) of Regulation No 207/2009 (see paragraph 24 above).

61      The reputation of a mark must be assessed by reference to the perception of the relevant public which consists of average consumers of the goods or services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (see judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 34 and the case-law cited).

62      Furthermore, Article 8(5) of Regulation No 207/2009 does not define the concept of reputation. However, it is clear from settled case-law relating to the interpretation of Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), the substantive content of which is, in essence, identical to that of Article 8(5) of Regulation No 207/2009, that, in order to satisfy the requirement of reputation, the earlier trade mark must be known to a significant part of the public concerned by the goods or services covered by that trade mark (see, to that effect, judgments of 6 February 2007, Aktieselskabet af 21. november 2001 v OHIM – TDK Kabushiki Kaisha (TDK), T‑477/04, EU:T:2007:35, paragraph 48, and of 28 October 2016, Unicorn v EUIPO – Mercilink Equipment Leasing (UNICORN-čerpací stanice), T‑123/15, not published, EU:T:2016:642, paragraph 37 and the case-law cited).

63      In paragraph 31 of the contested decision, the Board of Appeal found, first, that earlier mark No 1 had acquired a very substantial reputation for clothing, boots, shoes and slippers and, second, that earlier mark No 2 had acquired a substantial reputation on the market for clothing, footwear, headgear and sports articles not included in other classes.

64      The applicant disputes, in essence, the degree of reputation which the Board of Appeal found the earlier marks to have. First, the applicant criticises the Board of Appeal for not having fully executed the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), because, having failed to take into account all of the documents which had been produced by the applicant before the adjudicating bodies of EUIPO, it has still not carried out a full examination of the reputation of the earlier marks. Secondly, the applicant submits, in essence, that the Opposition Division’s failure to assess the degree of reputation enjoyed by the earlier marks in the light of the abovementioned documents deprived it of the possibility of submitting additional evidence substantiating the existence of an extraordinary or exceptional reputation on the part of those marks and that the Opposition Division thus erred as to the degree of their reputation.

65      EUIPO submits, in essence, that the applicant’s complaint based on the exceptional reputation of the earlier marks, which was presented for the first time in the action that gave rise to the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), is inadmissible. In any event, EUIPO contends that the applicant’s complaint should be rejected, submitting, inter alia, in essence, that the Board of Appeal accepted the degree of reputation of the earlier marks which the applicant had claimed in its opposition.

66      As a preliminary point, first, it should be noted that, for the purposes of establishing the reputation of the earlier marks before the adjudicating bodies of EUIPO, the applicant had submitted the following evidence:

–        a market survey carried out in France in May 2008 by Harris Interactive France;

–        a market survey carried out in Sweden in 2001;

–        three decisions of the Polish Intellectual Property Office dated 4 July 2008, 7 December 2010 and 15 December 2011;

–        four decisions of the French Intellectual Property Office dated 4 February 2011, 25 October 2012, 13 November 2012 and 10 April 2013;

–        a decision of the Portuguese Intellectual Property Office dated 22 July 2011;

–        seven decisions of the Spanish Intellectual Property Office dated from 2008 to 2012.

67      In addition, the applicant had relied on the three previous EUIPO decisions and the judgment of 7 November 2013, Budziewska v OHIM – Puma (Bounding feline) (T‑666/11, not published, EU:T:2013:584).

68      Secondly, it should be borne in mind that, in the decision of 10 March 2014, the Opposition Division did not examine the evidence submitted by the applicant in order to prove that the earlier marks had a reputation, but went on to examine the opposition on the basis of the premiss that earlier mark No 2 and earlier mark No 1 had an ‘enhanced distinctiveness’ (see paragraph 8 above).

69      In the earlier decision of 19 December 2014, the Board of Appeal found that the market survey concerning Sweden was not relevant because the opposition was not based on earlier rights in Sweden. In addition, the Board of Appeal found that the market survey relating to France and the decisions of the Polish Intellectual Property Office in 2010 and 2011 and the seven decisions of the Spanish Office were not to be taken into account pursuant to Rule 19(1), (3) and (4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (replaced by Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001 and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), since they had not been translated into the language of the proceedings, namely English. In addition, as regards the market survey concerning France, the Board of Appeal found that it was unclear on what basis that survey had been conducted and to which goods the alleged reputation related, pointing out, moreover, that the survey had been carried out five years before the application for registration of the mark applied for was filed. Lastly, as regards the decision of the Polish Intellectual Property Office of 2008 and the decisions of the French Intellectual Property Office, the Board of Appeal found, in essence, that it was unclear on which evidence those national intellectual property offices relied in order to conclude that the ‘logo of a jumping cat’ was a mark with a reputation in Poland and France respectively. In any event, in essence, it found that the documents produced in those national proceedings could not be taken into consideration because they had not been expressly cited and identified by the applicant. Lastly, the Board of Appeal noted that the legality of EUIPO’s decisions had to be assessed solely on the basis of Regulation No 207/2009, as interpreted by the Courts of the European Union, and not on the basis of a previous practice of EUIPO or national intellectual property offices. Thus, it concluded that, taken as a whole, the evidence submitted by the applicant was insufficient to show that the earlier marks had a reputation in relation to the specific goods in any of the relevant Member States.

70      In the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), in response to the applicant’s argument relating to the Board of Appeal’s refusal to take into consideration certain items of evidence which had not been translated into the language of the proceedings, the Court held that the Board of Appeal had been right to disregard that evidence. In addition, it held that the fact that the market survey relating to France was in any event ‘absolutely self-evident’ or that it had been allowed without a translation in previous proceedings could not affect such a finding. In that regard, the Court recalled, in essence, that the obligation to translate evidence into the language of the proceedings laid down by Rule 19 of Regulation No 2868/95 was justified by the necessity to observe the principle of the right to be heard and to ensure equality of arms between the parties in inter partes proceedings (judgment of 9 September 2016, Representation of a bounding feline, T‑159/15, EU:T:2016:457, paragraph 25).

71      Furthermore, in the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), the Court held that the Board of Appeal should have examined the three previous EUIPO decisions relied on by the applicant, which concerned the same earlier marks and were supported by the decisions of the national intellectual property offices which the applicant had also produced. If necessary, the Board of Appeal should have set out the reasons why it considered that the findings on the reputation of the earlier marks set out in the three previous EUIPO decisions had to be discounted in the present case, or request the applicant to submit supplementary evidence of the reputation of those marks.

72      It is in the light of those considerations that the applicant’s complaint relating to the strength of the earlier marks’ reputation must be examined.

73      EUIPO contends that the applicant’s complaint based on the extraordinary or exceptional reputation of the earlier marks, which was relied on for the first time in the action that gave rise to the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), is inadmissible.

74      It should be borne in mind that, in support of the single plea in law alleging infringement of Article 8(5) of Regulation No 207/2009, the applicant complains, inter alia, that the Board of Appeal failed to take into consideration the ‘extraordinary’ or ‘exceptional’ degree of the reputation of the earlier marks.

75      In response to a question put by the Court at the hearing, the applicant stated that the reputation of the earlier marks was ‘exceptional’ in that it went ‘beyond’ the public concerned by the goods covered by those marks. In addition, it submitted that it had relied on the existence of such a degree of reputation as early as the statement in support of the opposition of 27 June 2013.

76      However, it must be stated that, before the adjudicating bodies of EUIPO, the applicant never expressly invoked an extraordinary or exceptional reputation of the earlier marks on which it relies in the present action, and did not claim that that reputation goes beyond the relevant public for the goods covered by those marks.

77      During the administrative proceedings, it merely stated that the reputation of the earlier marks was ‘very high’, ‘excellent and very special’, ‘ample’ or ‘significant’, referring, in that regard, to the three previous EUIPO decisions and to the decisions of the national intellectual property offices which it had produced in support of its opposition (see paragraph 66 above).

78      Furthermore, it should be noted that the abovementioned decisions do not describe the reputation of the earlier marks as extraordinary or exceptional, or consider that it goes beyond the relevant public for the goods covered by those marks. It is clear from those decisions that earlier mark No 1 had acquired a very substantial reputation on the market for clothing, boots, shoes and slippers, and that earlier mark No 2 had acquired a substantial reputation on the market for clothing, footwear, headgear and sports articles not included in other classes.

79      Thus, it must be considered, as observed by EUIPO, that the applicant relied for the first time on the exceptional reputation of the earlier marks in the action that gave rise to the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457). Furthermore, it was at the hearing in the present case that the applicant stated for the first time that its earlier marks enjoyed the ‘highest degree’ of reputation, that is to say, a reputation which goes ‘beyond’ the relevant public for the goods covered by those marks.

80      The purpose of an action before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO within the meaning of Article 65 of Regulation No 207/2009 (now Article 72 of Regulation 2017/1001). It follows from that provision that facts not relied on by the parties before the adjudicating bodies of EUIPO cannot be submitted at the stage of the action brought before the General Court and that the latter cannot re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. The legality of a decision of a Board of Appeal of EUIPO must be assessed in the light of the information available to it when it adopted that decision (see judgment of 14 December 2018, TDH Group v EUIPO – Comercial de Servicios Agrigan (Pet Cuisine), T‑46/17, not published, EU:T:2018:976, paragraph 27 and the case-law cited).

81      It follows that the applicant’s complaint relating to the extraordinary or exceptional reputation of the earlier marks, relied on for the first time in the proceedings before the Court that gave rise to the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), and reiterated in the present action, is inadmissible and must be rejected on that ground.

82      Moreover, in order to demonstrate the exceptional degree of reputation of the earlier marks, the applicant produced, in Annexes A.5 to A.8 to the application, market surveys conducted in Germany, France, Italy and the Netherlands, the dates of which are between May and July 2018.

83      In response to a question put by the Court at the hearing, the applicant stated that it had produced those surveys for the first time before the Court in the present case. Therefore, in accordance with the case-law referred to in paragraph 80 above, and as EUIPO submitted at the hearing, those surveys are inadmissible.

84      In any event, the applicant’s complaint is unfounded.

85      First, the applicant’s argument that the Board of Appeal failed examine the documents which it had produced before the adjudicating bodies of EUIPO in order to prove that the earlier marks had a reputation, in defiance of the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), and, therefore, has still not carried out a full examination of the reputation of those marks, is unfounded.

86      First of all, in the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), the Court agreed with the Board of Appeal in so far as it had not taken into consideration evidence which had not been translated into the language of the proceedings (see paragraph 70 above). The Board of Appeal was therefore right not to examine that evidence.

87      Next, it must be held that the Board of Appeal was correct in not taking into account the market survey concerning Sweden. As the Board of Appeal correctly stated in paragraph 17 of the earlier decision of 19 December 2014, that market survey is not relevant in the present case, given that the opposition is not based on earlier rights in Sweden. That conclusion was not challenged by the applicant in the action that gave rise to the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457). Moreover, there is no evidence in the file capable of calling that conclusion into question.

88      Lastly, in the contested decision, the Board of Appeal accepted that the earlier marks had the same degree of reputation as that found in the three previous EUIPO decisions relied on by the applicant (see paragraphs 28, 29 and 31 of the contested decision).

89      In those circumstances, the Board of Appeal cannot be criticised for not having further examined the other evidence of the reputation of the earlier marks produced by the applicant, namely the decisions of the national intellectual property offices translated into the language of the proceedings.

90      In the light of the foregoing, the applicant is not entitled to rely on either a failure to comply with the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), or an incomplete examination, by the Board of Appeal, of the evidence of the reputation of the earlier marks which it had submitted before the adjudicating bodies of EUIPO.

91      Secondly, the applicant’s argument that it was deprived of the possibility of submitting additional evidence substantiating the existence of an extraordinary or exceptional reputation on the part of the earlier marks is unfounded.

92      In that regard, first of all, it should be borne in mind that, as regards the burden of proof and the taking of evidence, where the proprietor of a mark wishes to rely on the ground for refusing registration referred to in Article 8(5) of Regulation No 207/2009, Rule 19(1) and (2)(c) of Regulation No 2868/95 provides that EUIPO must give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition, in particular evidence that the earlier mark has a reputation, or to complete any facts, evidence or arguments that have already been submitted (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 58 and the case-law cited).

93      Next, under Article 76(1) of Regulation No 207/2009, in proceedings relating to relative grounds for refusal of registration, such as the ground provided for in Article 8(5) of that regulation, the examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 59).

94      In addition, Article 76(2) of Regulation No 207/2009 and the third subparagraph of Rule 50(1) of Regulation No 2868/95 grant EUIPO the discretion to decide whether or not to take into account additional or supplementary facts and evidence which were not presented within the time limits set or specified by the Opposition Division. In accordance with those provisions, when evidence is produced within the time limit set by EUIPO, the production of supplementary evidence remains possible (see judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 91 and the case-law cited).

95      Lastly, in the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509, paragraph 95), the Court of Justice held that the three previous EUIPO decisions, in so far as they had recognised the reputation of the earlier marks, were a strong indication, in the opposition proceedings at issue, that those earlier marks could also be regarded as having a reputation for the purposes of Article 8(5) of Regulation No 207/2009.

96      According to the Court of Justice, where an opponent relies on earlier EUIPO decisions relating to the reputation of a mark, in a precise manner, before the Opposition Division, as evidence of the reputation, for the purposes of Article 8(5) of Regulation No 207/2009, of the same earlier mark relied on in support of its opposition, it is incumbent on the adjudicating bodies of EUIPO to take into account the decisions which they have already adopted and to consider with especial care whether they should decide in the same way or not. Where those bodies decide to take a different view from the one adopted in those previous decisions, they should, having regard to the context in which they adopt their new decision, since reliance on those previous decisions forms part of that text, provide an explicit statement of their reasoning for departing from those decisions (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 66).

97      Thus, the Court of Justice held that the Board of Appeal was required to take into account those three previous EUIPO decisions and had to provide an explicit statement of its reasoning in that case in so far as it had decided to depart from the approach adopted in those decisions on the reputation of the earlier marks (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 96). It further held that, if the Board of Appeal itself were to reach the conclusion that it could not satisfy its obligations arising from the principle of sound administration and, in that context in particular, its obligation to state reasons, without the evidence which had been lodged in the earlier proceedings before EUIPO, it had be considered, as the General Court had, that it would have been necessary for the Board to exercise its power to request the production of that evidence for the purposes of exercising its discretion and carrying out a full examination of the opposition (judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 97).

98      In the present case, it must be borne in mind that, in the contested decision, the Board of Appeal found, on the basis of the three previous EUIPO decisions, that the earlier marks had a reputation (see paragraph 88 above).

99      Therefore, the Board of Appeal was not required to invite the applicant to produce other evidence, such as, inter alia, the evidence which had been filed during the proceedings that gave rise to the three previous EUIPO decisions.

 The existence of unfair advantage taken of, or detriment to, the distinctive character or the repute of the earlier marks

100    In accordance with the case-law, Article 8(5) of Regulation No 207/2009 implies that the three types of injury referred to therein, where they occur, are the consequence of a certain degree of similarity between the earlier and 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 (see, to that effect, judgment of 14 December 2012, Bimbo v OHIM – Grupo Bimbo (GRUPO BIMBO), T‑357/11, not published, EU:T:2012:696, paragraph 29 and the case-law cited). 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 (see, to that effect, judgments of 10 May 2007, Antartica v OHIM – Nasdaq Stock Market (nasdaq), T‑47/06, not published, EU:T:2007:131, paragraph 53 and the case-law cited, and of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 26 and the case-law cited).

101    It is clear from the case-law that in order to benefit from the protection introduced by Article 8(5) of Regulation No 207/2009, the proprietor of the earlier mark must adduce evidence that the use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. The proprietor of the earlier mark is not required, for that purpose, to demonstrate that the type of injury to its mark that is referred to in that provision is actual and present. When it is foreseeable that such injury will ensue from the use which the proprietor of the mark applied for may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for this actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (see judgment of 3 May 2018, Gall Pharma v EUIPO – Pfizer (Styriagra), T‑662/16, not published, EU:T:2018:242, paragraph 64 and the case-law cited).

102    In the contested decision, the Board of Appeal found, in essence, that the applicant had not demonstrated the existence of one of the three types of injury referred to in Article 8(5) of Regulation No 207/2009, for the same reasons as those set out in the earlier decision of 19 December 2014 (see paragraph 33 of the contested decision).

103    In particular, in paragraph 36 of the contested decision, the Board of Appeal found, in essence, that the applicant had not shown that the relevant sections of the public targeted by the goods covered by the marks at issue would establish a link between those non-identical marks, given the differences between the goods covered by those marks and also between the sections of the public targeted by those goods.

104    As regards the existence of unfair advantage being taken of the distinctive character or the repute of the earlier mark, the Board of Appeal found that the applicant had not shown, in essence, that the image and positive values associated with the earlier marks could be transferred to the mark applied for, and that they would positively influence the choice of consumers of the goods covered by the mark applied for (see paragraphs 37 and 38 of the contested decision). As regards the existence of detriment to the repute of the earlier marks by the use without due cause of the mark applied for, the Board of Appeal found that the applicant had not shown that the use of the mark applied for in respect of very specific industrial products was liable to devalue the image of those marks (see paragraph 38 of the contested decision).  In any event, in essence, the Board of Appeal found that the similarity between the marks at issue and the reputation of the earlier marks in respect of ‘clothing, footwear, headgear and sports articles’ were not sufficient, in themselves, to establish one of the types of injury referred to in the abovementioned provision, in particular in a case such as the present, where, first, the marks at issue are not identical and, second, the goods covered by those marks do not have any point of connection and are intended for completely different sections of the public (see paragraphs 36 to 38 of the contested decision).

105    The applicant disputes the Board of Appeal’s finding that there is no link between the marks at issue. First, it complains that the Board of Appeal failed to take into account the particular strength of the earlier marks’ reputation. Secondly, it submits that the reputation of those marks, combined with the fact that the marks at issue are practically identical, was sufficient to demonstrate the existence of a link between those marks in the minds of the relevant public. According to the applicant, the fact that the goods covered by the marks at issue are different cannot call into question the existence of that link, which, moreover, the Opposition Division found in the decisions of 28 February 2018 relating to opposition proceedings B2811340 and of 30 April 2019 relating to opposition proceedings B2991274.

106    The applicant also complains that the Board of Appeal found that it had not demonstrated the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009. In essence, it claims to have provided prima facie evidence that there is a future, non-hypothetical risk that the use without due cause of the mark applied for will take unfair advantage of, and be detrimental to, the distinctive character or the repute of the earlier marks. In particular, first, the applicant submits that the use of the mark applied for will dilute the ability of the earlier marks to be associated with a given range of high-quality goods from a single source and the relevant public will start to associate them with different goods from multiple origins. Secondly, it submits that the mark applied for is a ‘parasitic’ mark which, in essence, will ride on the coat-tails of the reputation acquired by the earlier marks to facilitate the marketing of the goods covered by it. In any event, for the applicant, the exceptional reputation of the earlier marks, the fact that the marks at issue are almost identical and the high probability that the relevant public will establish a link between those marks will lead to a probable association among consumers, who will confuse or associate the goods covered by the marks at issue and come to the inevitable conclusion that they belong to the same company.

107    EUIPO contends that the applicant’s complaints should be rejected and that certain arguments and evidence submitted by the applicant in order to establish the existence of the types of injury referred to in Article 8(5) of Regulation No 207/2009 are inadmissible.

108    It is necessary to examine whether the Board of Appeal erred in finding that the applicant had not demonstrated the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009. The Court considers that, for reasons of procedural economy, it is appropriate to carry out that examination without first assessing the arguments put forward by the applicant with a view to establishing that the relevant public might establish a link between the marks at issue. Even if such a link could be found, the applicant has not, in any event and for the reasons set out below, established that the mark applied for could take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier marks.

 Preliminary observations

109    The applicant claims that ‘marks are evolving outside of the market on which they are normally present towards other markets’ and that it has itself extended its activities to machines and toys. EUIPO contends that this argument and the images reproduced in paragraphs 42, 48 and 50 of the application are new and, therefore, inadmissible.

110    Even if the argument referred to in paragraph 109 above seeks to establish not only the existence of a link between the marks at issue, but also the existence of an unfair advantage taken of, or detriment to, the distinctive character or the repute of the earlier marks, it must be pointed out that the applicant does not explain how the commercial practice on which it relies, or the fact that it could itself envisage diversifying its product range by producing machines, would establish the existence of one of the types of injury referred to above.

111    In any event, the abovementioned argument and the accompanying evidence are inadmissible.

112    First of all, as EUIPO correctly contends, it should be noted that, in the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), the Court refused to take into consideration certain images which had been reproduced for the first time by the applicant in the action brought before it (judgment of 9 September 2016, Representation of a bounding feline, T‑159/15, EU:T:2016:457, paragraphs 13 and 14).

113    For the same reasons as those set out in the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457), the images produced by the applicant in paragraph 41 of the application, identical to those rejected by the Court in that judgment, cannot be taken into consideration in the present case.

114    Furthermore, at the hearing, the applicant explained, in essence, that that argument had already been relied on in its observations in support of the appeal against the Opposition Division’s decision of 10 March 2014. It stated in that regard that, on page 7 of those observations, it had claimed that consumers could infer the existence of collaboration between different undertakings in the production of a new line of products.

115    In that regard, it should be noted that the argument on page 7 of the observations in support of the appeal against the Opposition Division’s decision of 10 March 2014 sought to demonstrate the existence of a link between the marks at issue. In that context, the applicant had stated that it was unthinkable that earlier marks with a reputation could be affixed to products completely different from those for which they were registered because consumers would associate them, thinking that they were faced with a new product covered by those earlier marks.

116    The argument referred to above differs from that which EUIPO contends is inadmissible, according to which, in essence, the fact that marks are evolving outside of the market on which they are normally present towards other markets makes it possible to transfer the image conveyed by the earlier marks to the mark applied for (see paragraph 109 above).

117    Thus, it must be held, as observed by EUIPO, that the argument that ‘marks are evolving outside of the market on which they are normally present towards other markets’ was relied on for the first time in the action that gave rise to the judgment of 9 September 2016, Representation of a bounding feline (T‑159/15, EU:T:2016:457).

118    It follows that the abovementioned argument must be rejected in accordance with the case-law cited in paragraph 80 above, without there being any need to examine its relevance and probative value.

119    Lastly, as observed by EUIPO, it should be noted that the applicant, on the one hand, claimed that it owns machinery and has extended its activities, by means of licensing agreements, in sectors other than those in which it is traditionally present, in particular the toy sector, and, on the other hand, communicated the images reproduced in paragraphs 42, 48 and 50 of the application for the first time in the present action.

120    At the hearing, the applicant admitted that those images were new, stating that it had produced them to illustrate the arguments which it had put forward within the time limits and in order to respond to EUIPO’s claims.

121    In that regard, it must be stated that the above explanation lacks clarity and precision, since the applicant does not indicate either the arguments which the images in question are supposed to illustrate or the claims made by EUIPO to which they are intended to respond.

122    In any event, contrary to what the applicant claims, the images reproduced in paragraphs 42, 48 and 50 of the application are intended to illustrate the arguments and claims referred to in paragraphs 117 and 119 above, which were not relied on before the adjudicating bodies of EUIPO.

123    Therefore, in accordance with the case-law cited in paragraph 80 above, the claims and images referred to in paragraph 119 above must be rejected, without it being necessary to examine their relevance and probative value.

124    Next, in the application, the applicant relies on the judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA) (T‑62/16, EU:T:2018:604), in order to demonstrate, in essence, that, in the light of the extraordinarily high reputation of the earlier marks and the fact that the marks at issue are practically identical, the probability of a future, non-hypothetical risk of detriment or of unfair advantage being taken by the mark applied for is so obvious that it does not need to put forward or adduce evidence of any other fact to that end.

125    It should be noted that that argument is based on the twofold premiss that the earlier marks have an exceptional reputation and that the marks at issue are almost identical.

126    That premiss is incorrect for the reasons set out in paragraphs 40 to 58 and 74 to 99 above, to which reference must be made. In particular, it is apparent from paragraphs 74 to 81 above that the applicant is not entitled, in the present case, to rely on the existence of an exceptional reputation on the part of the earlier marks.

127    It follows that the applicant cannot rely on the judgment of 26 September 2018, PUMA (T‑62/16, EU:T:2018:604), in order to frustrate its obligation to prove that there is a serious risk that one of the types of injury referred to in Article 8(5) of Regulation No 207/2009 will occur in the future.

128    Therefore, in accordance with the case-law referred to in paragraph 101 above, it was for the applicant to prove that there is a serious risk that one of the types of injury referred to in Article 8(5) of Regulation No 207/2009 will occur in the future.

 The unfair advantage taken of the distinctive character or the repute of the earlier marks

129    According to the case-law, the concept of the unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous trade mark or an attempt to trade upon its reputation. In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with the reputation (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 40 and the case-law cited).

130    The Board of Appeal found, in essence, that the applicant had not demonstrated, first, that the image and messages conveyed by the earlier marks were transferred to the goods covered by the mark applied for and, second, that the choice of the specialist public targeted by the goods covered by the mark applied for was positively influenced, when purchasing the goods in question, by the association with the image of excellence, reliability and quality conveyed by the earlier marks (see paragraphs 37 and 38 of the contested decision).

131    The applicant disputes those assessments, claiming that the images of excellence, reliability, quality, adaptability and sporty and healthy lifestyle, and the values of strength, speed and active sporting spirit, specifically associated with the earlier marks, are easily transferable to the machinery and equipment covered by the mark applied for and that, contrary to what the Board of Appeal found in the contested decision, there is therefore a clear ‘image transfer’ in the present case. Furthermore, having regard to the fact that the marks at issue are almost identical and the exceptional reputation of the earlier marks, the applicant submits that the marketing of the goods covered by the mark applied for will likely be facilitated even though it would not receive any financial compensation.

132    First of all, it is apparent from the case-law that, for the purposes of examining whether any unfair advantage has been taken of the distinctive character or the repute of an earlier mark, it is necessary to undertake a global assessment, taking into account all the factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned (see judgment of 18 July 2013, Specsavers International Healthcare and Others, C‑252/12, EU:C:2013:497, paragraph 39 and the case-law cited).

133    Thus, in the present case, the Board of Appeal was fully entitled, in essence, first, to find that the reputation of the earlier marks and the similarity of the marks at issue were not sufficient, in themselves, to establish the existence of one of the types of injury referred to in Article 8(5) of Regulation No 207/2009 and, secondly, to take into account, for the purposes of its analysis, the difference between the goods covered by the marks at issue, which do not have any point of connection, and the fact that the sections of the public targeted by those goods are completely different.

134    Next, it must be borne in mind that, in the present case, the applicant is not entitled to rely on the existence of an exceptional reputation on the part of the earlier marks and its claim that the marks at issue are almost identical is unfounded (see paragraphs 40 to 58 and 74 to 81 above).

135    Furthermore, even if it were accepted that the professional public targeted by the goods covered by the mark applied for are familiar with the earlier marks, it is unlikely that it would consider that the positive values and images conveyed by those marks in relation to the goods which they cover, referred to in paragraph 131 above, are transferred to the mark applied for when it is faced with goods of such a different nature, such as machines for processing wood, aluminium and PVC, that is to say, machines intended for industry specialists.

136    Lastly, the Board of Appeal was correct in finding, in essence, that the applicant had not shown that, as regards the goods covered by the mark applied for, the choice of the relevant professional public would be influenced by the characteristics of excellence, reliability and quality associated, according to the applicant, with the sports articles covered by the earlier marks.

137    The similarity between the marks at issue and the considerable reputation of the earlier marks, on their own, do not lead to the conclusion that the marketing of the goods covered by the mark applied for would be facilitated by the use without due cause of the earlier marks.

138    In the light of the foregoing, it must be held that the applicant has not established that the Board of Appeal erred in finding that it had not submitted a coherent line of arguments demonstrating the existence of an unfair advantage deriving from use without due cause of the mark applied for.

 The detriment to the repute or the distinctive character of the earlier marks

139    It is apparent from the case-law that the detriment to the repute of the earlier mark by the use without due cause of the mark applied for is made out where the goods or services covered by the mark applied for may appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished. The risk of that detriment can, inter alia, occur where those goods or services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of its being identical or similar to the mark applied for (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 39 and the case-law cited).

140    Furthermore, according to the case-law, the detriment to the distinctive character of the earlier mark by the use without due cause of the mark applied for can occur where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used. That risk thus refers to the ‘dilution’ or ‘gradual whittling away’ of the earlier mark through the dispersion of its identity and its hold upon the public mind (see judgment of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 37 and the case-law cited).

141    Moreover, according to the case-law, proof that the use of the mark applied for is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier mark was registered, consequent on the use of the later mark, or a serious likelihood that such a change will occur in the future (see, to that effect, judgment of 14 November 2013, Environmental Manufacturing v OHIM, C‑383/12 P, EU:C:2013:741, paragraph 34 and the case-law cited).

142    As has been emphasised by the Court of Justice, the concept of ‘change in the economic behaviour of the average consumer’ lays down an objective condition. That change cannot be deduced solely from subjective elements such as consumers’ perceptions. The mere fact that consumers note the presence of a new sign similar to an earlier sign is not sufficient to establish the existence of detriment or a risk of detriment to the distinctive character of the earlier mark within the meaning of Article 8(5) of Regulation No 207/2009 (judgment of 14 November 2013, Environmental Manufacturing v OHIM, C‑383/12 P, EU:C:2013:741, paragraph 37).

143    Regulation No 207/2009 and the case-law do not require the proprietor of the earlier mark to adduce evidence of actual detriment, but also admit the serious risk of such detriment, allowing the use of logical deductions (judgment of 14 November 2013, Environmental Manufacturing v OHIM, C‑383/12 P, EU:C:2013:741, paragraph 42). Nonetheless, such deductions must not be the result of mere suppositions, but must be founded on an analysis of the probabilities which takes account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (judgment of 14 November 2013, Environmental Manufacturing v OHIM, C‑383/12 P, EU:C:2013:741, paragraph 43). It can be seen from the case-law of the Court of Justice that, when referring to that concept, the Court clearly indicated that it was necessary to demand a higher standard of proof in order to find detriment or the risk of detriment to the distinctive character of the earlier mark within the meaning of the provision mentioned above (judgment of 14 November 2013, Environmental Manufacturing v OHIM, C‑383/12 P, EU:C:2013:741, paragraph 40).

144    In the present case, first, as regards the detriment to the repute of the earlier marks, the Board of Appeal found that the applicant had not established that a negative image transfer could occur, having regard in particular to the fact that the goods in question, namely specialised machinery, had no connection with the concepts of sports, competition, active lifestyle, youth, pleasure and leisure conveyed by the earlier marks (see paragraphs 38 and 39 of the contested decision).

145    The applicant disputes those assessments. According to the applicant, the use of the mark applied for will give rise to associations that conflict with the sporty and healthy lifestyle image which the earlier marks have acquired on the market.

146    In that regard, it is sufficient to note that the applicant does not put forward any specific evidence or argument to establish a serious risk that the use of the mark applied for might be detrimental to the repute of the earlier marks. In particular, it has not mentioned the characteristics or qualities of the goods covered by the mark applied for which would be liable to have a negative impact on the image of the earlier marks.

147    Furthermore, there is no other evidence in the file to establish that the image generally conveyed by the goods covered by the mark applied for is negative. In addition, there is nothing in the file to support the conclusion that there is any antagonism between the nature or the methods of use of the goods in question such that the image of the earlier marks could be tarnished by the use of the mark applied for (see, to that effect, judgment of 30 January 2008, Japan Tobacco v OHIM – Torrefacção Camelo (CAMELO), T‑128/06, not published, EU:T:2008:22, paragraph 62).

148    Therefore, the Board of Appeal was fully entitled to find that the applicant had not shown that the use without due cause of the mark applied for would be detrimental to the repute of the earlier marks.

149    Secondly, the applicant claims that the registration of the mark applied for would be detrimental to the distinctive character of the earlier marks because, in essence, the relevant public will cease to associate them with a given range of high-quality goods from a single source and will start to associate them with different goods from multiple origins. According to the applicant, it would not be far-fetched to imagine an undertaking which has built up a reputation on the basis of its presence in the sports sector diversifying its product range by manufacturing machinery, for example, since ‘marks are evolving outside of the market on which they are normally present towards other markets’. Thus, the applicant submits that the possibility cannot be ruled out that, in spite of the differences between the goods in question, the mark applied for may remind the relevant public of the earlier marks.

150    On the one hand, it should be borne in mind that the argument that ‘marks are evolving outside of the market on which they are normally present towards other markets’ and that, in essence, the applicant itself follows that trend is inadmissible, as are the images reproduced in support of it in the application (see paragraphs 112 to 123 above).

151    On the other hand, it is common ground between the parties that, before the adjudicating bodies of EUIPO, the applicant submitted purely hypothetical examples of use of well-known third-party marks, such as McDonalds, Mercedes and Apple, for goods completely different from those related to the main activity of the proprietor of those marks.

152    In the light of the foregoing, it must be held that the applicant’s line of arguments is not sufficient to establish a serious risk of detriment to the distinctive character of the earlier marks within the meaning of the case-law of the Court of Justice, which requires, as is apparent from paragraph 143 above, a higher standard of proof in order to establish such a risk. More specifically, none of the arguments put forward by the applicant establishes a serious likelihood of a change in the economic behaviour of the average consumer of the goods covered by the earlier marks.

153    Failing any evidence capable of establishing a serious likelihood of a change in the economic behaviour of the average consumer, the risk of detriment to the distinctive character of the earlier marks cannot be established solely on account of the similarity between the marks at issue and the high reputation of the earlier marks.

154    Therefore, the Board of Appeal was fully entitled to find that the applicant had not shown that the use without due cause of the mark applied for would be detrimental to the distinctive character of the earlier marks.

155    In the light of all the foregoing, the single plea in law put forward by the applicant, alleging infringement of Article 8(5) of Regulation No 207/2009, must be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

156    Under Article 134(2) of the Rules of Procedure of the General Court, where there are several unsuccessful parties, the Court is to decide how the costs are to be shared.

157    In the present case, since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by EUIPO.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Puma SE to bear its own costs and to pay those incurred by the European Union Intellectual Property Office (EUIPO).

Delivered in open court in Luxembourg on 19 May 2021.

Table of contents

Background to the dispute

Forms of order sought

Law

The relevant sections of the public

The similarity between the marks at issue

The reputation of the earlier marks

The existence of unfair advantage taken of, or detriment to, the distinctive character or the repute of the earlier marks

Preliminary observations

The unfair advantage taken of the distinctive character or the repute of the earlier marks

The detriment to the repute or the distinctive character of the earlier marks

Costs

*      Language of the case: English.

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