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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

4 December 2024 (*)

( EU trade mark - Opposition proceedings - Application for the EU figurative mark LaZZarO by Li Puma - Earlier EU figurative marks PUMA - Relative ground for refusal - No injury to reputation - Article 8(5) of Regulation (EU) 2017/1001 - Link between the marks at issue )

In Case T‑11/24,

Puma SE, established in Herzogenaurach (Germany), represented by M. Schunke and P. Trieb, lawyers,

applicant,

v

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

defendant,

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

Luca Gottardo Li Puma, residing in Turin (Italy),

THE GENERAL COURT (Second Chamber),

composed of A. Marcoulli (Rapporteur), President, J. Schwarcz and L. Spangsberg Grønfeldt, Judges,

Registrar: G. Mitrev, Administrator,

having regard to the written part of the procedure,

further to the hearing on 18 September 2024,

gives the following

Judgment

1        By its action under Article 263 TFEU, the applicant, Puma SE, seeks the annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 31 October 2023 (Case R 2290/2022-1) (‘the contested decision’).

 Background to the dispute

2        On 6 October 2020, the other party to the proceedings before the Board of Appeal, Luca Gottardo Li Puma, filed with EUIPO an application for registration of an EU trade mark in respect of the following figurative sign:

3        The mark applied for covered services in Class 40 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Recycling and waste treatment; Consultancy relating to the recycling of waste and trash; Reclamation of material from waste’.

4        On 23 February 2021, the applicant filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above.

5        The opposition was based on the following earlier marks:

–        the EU trade mark reproduced below, registered on 30 June 2014 under number 12579728 covering goods in Class 25 corresponding to the following description: ‘Apparel, footwear, headgear’ (‘earlier mark No 1’):

–        the EU trade mark reproduced below, registered on 30 June 2014 under number 12579694 covering goods in Class 25 corresponding to the following description: ‘Apparel, footwear, headgear’ (‘earlier mark No 2’):

6        The ground relied on in support of the opposition was that set out in Article 8(5) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

7        On 30 September 2022, the Opposition Division rejected the opposition.

8        On 23 November 2022, the applicant filed a notice of appeal with EUIPO against the decision of the Opposition Division.

9        By the contested decision, the Board of Appeal upheld the Opposition Division’s decision and dismissed the appeal. Relying, for reasons of procedural economy, on earlier mark No 1, it found that, in the light of the specific nature of the services covered by the mark applied for, the fact that those services and the goods covered by earlier mark No 1 fell within significantly different market sectors and the low degree of visual and phonetic similarity and the absence of conceptual similarity between the signs at issue, the public would not establish a link between the marks at issue, notwithstanding the strength of the reputation of that earlier mark. It added that, even if the public were to establish such a link between those marks, it was unlikely that it would be such as to be detrimental to earlier mark No 1 or beneficial to the mark applied for. It found that the reasoning, developed on the basis of earlier mark No 1, was applicable a fortiori in respect of earlier mark No 2, which was less similar but covered the same goods.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        order EUIPO to pay the costs, including those incurred before the Board of Appeal.

11      EUIPO contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs in the event that an oral hearing is convened.

 Law

12      In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(5) of Regulation 2017/1001.

13      Article 8(5) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

14      Although 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 2017/1001 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 or services covered by the mark applied for are not similar to those for which the earlier mark with a reputation has been registered (judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraph 35).

15      It is clear from the wording of Article 8(5) of Regulation 2017/1001 that the application of that provision presupposes that a number of conditions are satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, in the case of an earlier EU trade mark, it must have a reputation in the European Union. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (see judgments of 22 March 2007, VIPS, T‑215/03, EU:T:2007:93, paragraph 34 and the case-law cited, and of 31 May 2017, Alma-The Soul of Italian Wine v EUIPO – Miguel Torres (SOTTO IL SOLE ITALIANO SOTTO il SOLE), T‑637/15, EU:T:2017:371, paragraph 29 and the case-law cited).

16      In the present case, the applicant submits that the Board of Appeal’s finding that the relevant public would not establish a link between the marks at issue for the purpose of applying Article 8(5) of Regulation 2017/1001 is vitiated by errors of law and assessment. It disputes, on that occasion, the Board of Appeal’s assessment of the similarity of the signs at issue. It also submits that the mark applied for will take unfair advantage of the distinctive character or reputation of the earlier marks and be detrimental to them.

17      EUIPO disputes the applicant’s arguments.

18      By contrast, the applicant does not dispute the Board of Appeal’s assessment concerning the relevant public according to which the services in Class 40 covered by the mark applied for were aimed, in view of their nature, at professionals or specialists in the recycling and waste management sector with a high level of attention, whereas the goods in Class 25 covered by the earlier marks were aimed at the general public with an average level of attention. There is no need to call that assessment into question.

19      It must also be pointed out, as regards the reputation of the earlier marks, that the Board of Appeal found, in the light of the evidence adduced by the applicant, that those marks were very highly reputed as regards sports apparel, footwear and headgear in the European Union, inter alia in Germany, Italy, France and the Netherlands. There is no need to call into question that finding, which is not disputed by the applicant, as it confirmed at the hearing, and leads to the earlier marks being recognised, according to EUIPO’s statements at that hearing, as having the highest degree of reputation.

 The comparison of the signs at issue

20      The existence of a similarity between an earlier mark and the mark applied for is a precondition for the application both of Article 8(1)(b) of Regulation 2017/1001 and of Article 8(5) of that regulation (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 51). It does not follow either from the wording of paragraphs 1(b) and 5 of Article 8 of Regulation 2017/1001 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).

21      It is true that the degree of similarity required under Article 8(1)(b) of Regulation 2017/1001 and Article 8(5) of that regulation is different. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation 2017/1001 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant 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 mark and the mark applied for, 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 (see judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 53 and the case-law cited).

22      Furthermore, the comparison of the signs must, so far as concerns the visual, phonetic and conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements (see judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited, and of 20 September 2017, Jordi Nogues v EUIPO – Grupo Osborne (BADTORO), T‑350/13, EU:T:2017:633, paragraph 23).

 The distinctive and dominant elements of the signs at issue

23      In the present case, it is recalled that the Board of Appeal examined the opposition on the basis of earlier mark No 1 on the ground that it was more similar to the mark applied for.

24      The Board of Appeal found, as regards earlier mark No 1, that the element ‘puma’ had a normal distinctive character. As regards the mark applied for, it found, in essence, that each of the word elements of which it is composed also had a normal distinctive character, while noting that the distinctive character of the letter ‘o’ in the shape of a recycling symbol was weak. It found that the element ‘Lazzaro’ was dominant in view of its size, length and position. As regards the expression ‘Li Puma’, it found that it would be understood as a reference to a person and, therefore, that the expression ‘by Li Puma’ would be perceived as an indication of commercial origin. The Board of Appeal added that that expression, which is hardly legible, could not be disregarded even if it played only a subordinate role.

25      The applicant disputes the Board of Appeal’s assessment of the mark applied for. It submits, in essence, that, in the light of the distinctive character and exceptional reputation of earlier mark No 1, the public’s attention will focus on the element ‘puma’ of the mark applied for, which has an independent distinctive role within the meaning of the case-law deriving from the judgment of 6 October 2005, Medion (C‑120/04, EU:C:2005:594), all the more so since the element ‘li’ could be overlooked, given its size, or be perceived not as a first name but as the article accompanying the word ‘puma’, or even be read as the Italian article ‘il’.

26      In that regard, at the outset, it must be borne in mind that, unlike the factor of the similarity of the signs at issue, the factor of the reputation and distinctive character of the earlier mark does not involve a comparison between a number of signs. It concerns only one sign, namely that which the opponent has registered as a mark. Since those two factors are thus fundamentally different in scope, examination of one of them does not allow conclusions to be drawn concerning the other. Even where the earlier mark has a high degree of distinctive character by reason of its reputation, that fact does not make it possible to determine whether and, if so, to what extent that mark is visually, phonetically and conceptually similar to the mark in respect of which registration is sought. It is therefore incorrect in law to assess the similarity of the signs at issue in the light of the reputation of the earlier mark (judgments of 11 June 2020, China Construction Bank v EUIPO, C‑115/19 P, EU:C:2020:469, paragraphs 58 and 59, and of 16 June 2021, Chanel v EUIPO – Innovative Cosmetic Concepts (INCOCO), T‑196/20, not published, EU:T:2021:365, paragraphs 41 and 42).

27      Accordingly, the argument based on the strength of the reputation of earlier mark No 1 must, at the stage of the comparison of the signs, be rejected as ineffective (see, to that effect, judgments of 29 June 2022, Jose A. Alfonso Arpon v EUIPO – Puma (PLUMAflex by Roal), T‑357/21, not published, EU:T:2022:405, paragraph 45, and of 7 September 2022, Łosowski v EUIPO – Skawiński (KOMBI), T‑730/21, not published, EU:T:2022:521, paragraph 67).

28      Next, it is apparent from the examination of the mark applied for that it is dominated by the element ‘Lazzaro’ and that, in view of the size of the font used, the expression ‘by Li Puma’ is, as the Board of Appeal points out, hardly legible.

29      It follows that the applicant is not justified in claiming that the comparison of the signs should be carried out taking into account only the expression ‘Li Puma’.

30      It should also be added that the applicant’s assertion that the element ‘puma’ retains an independent distinctive role within the expression ‘by Li Puma’ does not appear convincing.

31      In that regard, the Court has held that, as regards marks with a common element, even if that element cannot be regarded as dominating the overall impression, it must be taken into account in the assessment of the similarity of those marks, to the extent that it constitutes in itself the earlier mark and retains an independent distinctive role in the trade mark consisting, inter alia, of that element, for which registration is sought. Where a common element retains an independent distinctive role in the mark applied for, the overall impression produced by that sign may lead the public to believe that the goods or services at issue come, at the very least, from companies which are linked economically, in which case a likelihood of confusion must be held to be established (see judgments of 22 October 2015, BGW, C‑20/14, EU:C:2015:714, paragraph 38 and the case-law cited, and of 24 September 2019, IAK – Forum International v EUIPO – Schwalb (IAK), T‑497/18, not published, EU:T:2019:689, paragraph 70). The Court of Justice has also stated that a component of a composite sign does not retain such an independent distinctive role if, together with the other component or components of the sign, that component forms a unit having a different meaning as compared with the meaning of those components taken separately (judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 25).

32      In the present case, as the Board of Appeal pointed out, in essence, the prefix ‘by’, which is common in trade, reinforces the unity of the expression ‘Li Puma’ and its perception as being the name of a person. In that context, the assertion that the word ‘li’ could be read backwards, that is to say ‘il’, and perceived by part of the relevant public as an article in a non-European language accompanying the word ‘puma’, appears to be purely speculative. It also follows that, contrary to what the applicant claims, the element ‘puma’ does not retain an independent distinctive role in the mark applied for.

33      Consequently, the applicant is not justified in challenging the Board of Appeal’s assessment of the distinctive and dominant elements of the mark applied for.

 The visual, phonetic and conceptual similarity of the signs at issue

34      The Board of Appeal found that, since the element ‘puma’ common to the signs at issue was of secondary importance in the mark applied for, the signs at issue were, at best, visually similar to a low degree. It also found that those signs were phonetically similar to a low degree, or, at best, similar to a low degree, since the expression ‘by Li Puma’ was unlikely to be pronounced in view of its size, its position in the mark applied for and the tendency of consumers to abbreviate long signs. It concluded that there was no conceptual similarity, since, first, those signs conveyed different concepts, since earlier mark No 1 refers to the animal and the expression ‘Li Puma’ of the mark applied for could be perceived as a reference to a person and, second, that expression was hardly legible.

35      Without developing a different line of argument from that referred to in paragraph 25 above, the applicant claims that the signs at issue are very similar in view of the fact that they both contain the element ‘puma’.

36      In that regard, in view of the dominant character of the element ‘Lazzaro’ and, in particular, of the size of the font used for the expression ‘by Li Puma’, there is no reason to call into question the Board of Appeal’s assessment as to the, at best, low degree of visual similarity between the signs at issue. Similarly, in so far as it is likely that the expression ‘by Li Puma’ will not be pronounced by the relevant public, the applicant is not justified in claiming that the degree of phonetic similarity of those signs is higher than that found by the Board of Appeal. Lastly, conceptually, earlier mark No 1 will evoke an animal. As regards the mark applied for, the Board of Appeal noted, without being challenged on that point, that the element ‘Lazzaro’ would be associated by a significant part of that public with a biblical character. Furthermore, the words ‘Li Puma’ in the expression ‘by Li Puma’ may indeed be perceived as evoking a person. In that context, and although that expression has only a secondary role in the mark applied for, the Board of Appeal was entitled to find that those signs were not conceptually similar.

37      It follows that the applicant is not justified in claiming that the signs at issue have a high degree of similarity.

 The existence of a link between the marks at issue on the part of the relevant public

38      As regards the fourth condition set out in Article 8(5) of Regulation 2017/1001 (see paragraph 15 above), the types of injury, where they occur, are the consequence of a certain degree of similarity between the earlier mark and the mark applied for, by virtue of which the relevant public makes a connection between those two marks. In other words, the relevant public establishes a link between them even though it does not confuse them (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 50 and the case-law cited).

39      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 2017/1001 (see judgment of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA), T‑62/16, EU:T:2018:604, paragraph 22 and the case-law cited).

40      The fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the mark applied for would call the earlier mark to mind is tantamount to the existence of a link between those marks (judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 60).

41      The existence of a link between the marks at issue must be assessed globally, taking into account all factors relevant to the circumstances of the case, such as the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of a likelihood of confusion on the part of the public (see judgment of 26 July 2017, Staatliche Porzellan-Manufaktur Meissen v EUIPO, C‑471/16 P, not published, EU:C:2017:602, paragraph 52 and the case-law cited). In particular, although the existence of a similarity between the goods and services covered by the marks at issue does not constitute a condition for the application of the relative ground for refusal laid down in Article 8(5) of Regulation 2017/1001, the nature and the degree of closeness of the goods or services concerned constitute factors that are relevant in order to assess whether a link between those marks exists (see judgment of 21 December 2022, Puma v EUIPO – DN Solutions (PUMA), T‑4/22, not published, EU:T:2022:850, paragraph 38 and the case-law cited).

42      It is in the light of those preliminary considerations that it is necessary to examine the applicant’s arguments relating to the existence of a link between the marks at issue, which seek, in essence, to establish that the Board of Appeal’s analysis in that regard is vitiated by errors of law and of assessment.

 The alleged errors of law made in the examination of the existence of a link between the marks at issue

43      The applicant submits that the Board of Appeal made a first error in law in finding that, in the case of a very highly reputed earlier mark, the absence of a link between the goods and services covered by the marks at issue was a decisive element for the purposes of establishing a link between those marks even though they are very similar. According to the applicant, in that case, a link between the goods and services covered is not required and the existence of a mental link between the marks at issue should be presumed, irrespective of the market sector to which those trade marks relate. The applicant argues that the Board of Appeal made a second error of law in finding that the sections of the public targeted by the marks at issue were different, whereas the specialist public at which the mark applied for was aimed necessarily forms part of the general public at which the earlier marks were aimed.

44      The first alleged error of law is based, in particular, on the erroneous premiss that, for the purposes of the application of Article 8(5) of Regulation 2017/1001, proof of the existence of a link between the goods and services covered is never required in the case of a very highly reputed earlier mark.

45      As a preliminary point, it must be borne in mind that the existence of a link between the marks at issue must be assessed globally, taking into account all factors relevant to the circumstances of the case (see paragraph 41 above). Although the strength of the earlier mark’s reputation is a relevant factor, other factors may come into play, such as the degree of closeness or dissimilarity between the goods and services covered by the marks at issue, the degree of similarity between those marks or the fact that the earlier mark consists of a fanciful word or a word which has a semantic content. In particular, where the identity or similarity of the signs at issue results from the presence of a word which has a specific meaning, that meaning could become apparent to the relevant public when the similar mark is used in a commercial context which is fundamentally different from that in which the earlier mark has a reputation. In that regard, it has been accepted that the standard of proof required to establish a link between the marks at issue was more demanding where the earlier mark was composed not of a fanciful word but of a common noun referring to a specific concept, in this case an animal (see, to that effect, judgment of 21 December 2022, PUMA, T‑4/22, not published, EU:T:2022:850, paragraph 66).

46      Therefore, the fact that the earlier mark is very highly reputed does not mean that a similar mark will necessarily evoke the mark with a reputation on the part of the relevant public, irrespective of the commercial context in which that mark is used. It follows that, contrary to what the applicant claims, the relevance of the factor linked to the degree of closeness or dissimilarity between the goods and services covered by the marks at issue cannot be ruled out as a matter of principle where the earlier mark has such a reputation.

47      Furthermore, in so far as the applicant claims that the Board of Appeal erred in finding that the absence of a link between the goods and services covered by the marks at issue was a decisive factor in concluding that there was no link between those marks, it must be borne in mind that the dissimilarity between the goods and services covered by the marks at issue is a relevant factor in assessing whether there is a link between those marks and not a condition for its existence. A link between the marks at issue may be found even in the absence of any link between the goods or services which they cover and although the respective relevant publics are completely different (see, to that effect, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 51 to 53).

48      In the present case, in its analysis of the link between the marks at issue, the Board of Appeal, first of all, noted that the existence of such a link had to be assessed taking into account all factors relevant to the circumstances of the case. Next, it recalled that the signs at issue had, at best, only a low degree of visual and phonetic similarity and that they were not conceptually similar and that earlier mark No 1 was very highly reputed for sports apparel, footwear and headgear. It stated that the publics of each of the marks at issue were fundamentally different. It added that the services covered by the mark applied for and the goods covered by that earlier mark belonged to completely different sectors, that companies active in the clothing sector did not expand into the field of recycling and waste treatment and that, in the absence of evidence to the contrary produced by the applicant, the possibility of collaboration between the mark applied for and that earlier mark was highly unlikely. It also noted that the standard of proof required to establish the existence of a link between the marks at issue was higher since that earlier mark consisted of a common noun primarily designating an animal and not a fanciful word.

49      Accordingly, it is apparent from the contested decision that, in order to conclude that there was no link between the marks at issue, the Board of Appeal relied not only on the dissimilarity between the goods and services covered by those marks and the absence of any link between them, but also on the degree of similarity of the signs at issue, the differences in the public targeted by each of those marks, the lack of probative evidence adduced by the applicant in order to establish the existence of a link between the marks at issue and the fact that earlier mark No 1 had a conceptual content.

50      It follows that the applicant’s complaint, alleging that the Board of Appeal erred in law in finding that the absence of a link between the goods and services covered by the marks at issue was a decisive factor for the purposes of assessing the link between those marks, is based on a misreading of the contested decision.

51      The applicant submits that the Board of Appeal made a second error of law in finding that the target publics of the marks at issue were different, whereas the specialist public at which the mark applied for was aimed necessarily forms part of the general public at which the earlier marks were aimed.

52      In that regard, it should be noted that the public concerned by a given mark 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, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 34).

53      Consequently, the public in the territory in which the mark is protected cannot merely be defined as consisting of a part of the population of that territory, rather it involves defining the relevant consumer of the goods or services for which the trade mark is registered. It follows that the fact that the professional or specialist public of the services covered by the mark applied for may be part of the population in general, as composed of natural persons, does not mean that it also forms part, on that ground alone, of the public for which the goods covered by the earlier mark are intended (judgments of 7 December 2022, Puma v EUIPO – Vaillant (Puma), T‑623/21, not published, EU:T:2022:776, paragraph 37, and of 21 December 2022, PUMA, T‑4/22, not published, EU:T:2022:850, paragraphs 32 and 33).

54      Consequently, the Board of Appeal’s finding that the target publics of the marks at issue are different is not vitiated by any error of law. The fact remains that, as the Board of Appeal pointed out in the contested decision, in so far as the professional or specialist public is also part of the general public, it will also know earlier mark No 1.

 The alleged errors of assessment made in the examination of the existence of a link between the marks at issue

55      The applicant puts forward two complaints. First, the applicant claims that the high degree of similarity between the signs at issue, the uniqueness of the earlier marks and their exceptional reputation, which extends beyond the public concerned by the goods covered, justify the conclusion that there is a link between the marks at issue despite the dissimilarity of the goods and services covered by those marks. Second, even assuming that a link between the goods and services covered is required in order to establish the link between the marks at issue, the applicant submits that it justified the existence of that link by demonstrating that it manufactures goods from recycled materials, including based on used clothing which it collects.

56      In the first place, since it has been concluded, in paragraph 46 above, that the relevance of the factor relating to the degree of closeness or dissimilarity between the goods and services covered by the marks at issue cannot be ruled out as a matter of principle where the earlier mark is, as in the present case, very highly reputed, it is necessary to examine, first of all, the second complaint, alleging the existence of a link between those goods and services.

57      In that regard, as the Board of Appeal pointed out, the services covered by the mark applied for fall within a specific sector, namely the collection, treatment and recycling of waste and related consultancy services. Those services are usually provided by local bodies, municipalities or undertakings specialising in waste management. They are aimed at a specific and limited public, namely professionals in the recycling and waste management sector and bodies with specific needs in that field, such as municipalities and specialised companies. By contrast, the goods covered by earlier mark No 1 for which reputation has been established are offered by undertakings active in the fashion industry and are aimed at the general public.

58      The applicant claims that there is a link between the goods and services at issue linked to the establishment, by undertakings in the clothing sector, of collection points for used clothing and footwear for recycling and the use of recycled materials for the manufacture of clothing and footwear.

59      However, the practices, now common in the clothing sector, of using recycled materials for the manufacture of clothing and footwear and organising the collection of those items once they are used, which reflect the general concern of consumers to develop more sustainable consumption and the commitment of undertakings to that end, are not such as to establish, on the part of the relevant public, the existence of a link between, on the one hand, sports apparel, footwear and headgear and, on the other hand, services for the collection, treatment and recycling of waste and related consultancy services. As the Board of Appeal explained in detail in the contested decision, the goods covered by earlier mark No 1, even if they can be manufactured from recycled materials, serve a different purpose and have a substantially different function from those of the industrial sector of waste management and recycling. They target different consumer groups and have different distribution channels. Moreover, although the collection of waste is part of the recycling process, it is merely a step in that process. In particular, the collection of used clothing and footwear may serve purposes quite different from those of waste collection, such as donations to charities or obtaining discount vouchers in stores which collect them. In addition, waste treatment and recycling services are processes that are well upstream of the process of manufacturing recycled raw materials.

60      It follows that the Board of Appeal was entitled, without making an error of assessment, to find that the services covered by the mark applied for and the goods covered by earlier mark No 1 were radically distinct, belonged to completely different sectors and were aimed at fundamentally different publics and, therefore, were devoid of any link between them.

61      In the second place, as regards the alleged error of assessment vitiating the Board of Appeal’s finding that the relevant public will not make any connection between the marks at issue, it should be noted, first, that the signs at issue are not highly similar, as the applicant claims. They are visually and phonetically similar at best to a low degree and are not conceptually similar. Second, it is common ground that earlier mark No 1 is very highly reputed in the European Union as regards sports apparel, footwear and headgear (see paragraph 19 above). Third, the goods and services covered by the marks at issue are devoid of any link between them and target different publics. In particular, the services covered by the mark applied for fall within a specific sector and are aimed at a specific public.

62      In that regard, the applicant submits that the Board of Appeal itself acknowledged that regular cooperation between undertakings belonging to sectors which are completely different, in particular, the collaboration between a mark with a reputation in one sector and an undertaking in another sector, is common commercial practice. The applicant claims that, because of its commitment to sustainability, cooperation in the field of the services covered by the mark applied for is entirely conceivable.

63      However, it must be held, as the Board of Appeal found, that although it is true that marks with a reputation collaborate occasionally with undertakings in completely different sectors, in the present case, the fact that the services covered by the mark applied for are part of a specific and limited market makes the possibility of collaboration with a mark with a reputation for sports articles highly unlikely, especially since those services are offered in places which are not generally accessible to the public. Furthermore, the Board of Appeal pointed out that undertakings in the clothing sector are not active in recycling and waste treatment and that the applicant had not adduced any evidence to the contrary.

64      In that context, the Board of Appeal did not make an error of assessment in finding that, when faced with services for the treatment, recycling and recovery of waste and related consultancy services offered under the mark applied for, the professional or specialist public targeted by that mark would not make a connection with earlier mark No 1, which is composed not of a fanciful word but of the word ‘puma’ which primarily designates an animal. It follows that the Board of Appeal was right to rule out the existence of a link between the marks at issue.

 The existence of injury to the distinctive character or the repute of the earlier marks or unfair advantage taken by the mark applied for

65      The applicant submits, in essence, that the registration and use of the mark applied for, which is similar to the earlier marks, will lead to a weakening or dilution of the earlier marks. It argues that there is a risk of a ‘domino effect’ associated with the registration of trade marks similar to the earlier marks in fields which are increasingly similar to its sector of activity. It adds that this will necessarily result in an erosion of the value of the earlier marks, in breach of the special protection afforded to marks with a reputation under Article 8(5) of Regulation 2017/1001. It also submits that it must be presumed that the mark applied for will benefit from its association with the earlier marks.

66      According to the case-law cited in paragraphs 38 and 39 above, Article 8(5) of Regulation 2017/1001 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 mark and the mark applied for, by virtue of which the relevant public makes a connection between those marks, that is to say, establishes a link between them even though it does not confuse them. The existence of such a link between the mark applied for and the earlier mark on the part of the relevant public is therefore an implied essential precondition for the application of Article 8(5) of Regulation 2017/1001.

67      In the present case, the Board of Appeal was fully entitled to find that there was no link between the marks at issue on the part of the relevant public. In the absence of such a link, in accordance with the case-law recalled in paragraph 66 above, the use of the mark applied for is therefore unlikely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of earlier mark No 1.

68      Consequently, without there being any need to examine the arguments put forward specifically in that regard by the applicant, the latter is not justified in claiming that the use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of earlier mark No 1. That conclusion applies a fortiori with regard to earlier mark No 2, which covers the same goods and which, as is common ground, is less similar to the mark applied for.

69      Since one of the four cumulative conditions laid down in Article 8(5) of Regulation 2017/1001 for protection to be granted to the earlier marks has not been satisfied, it must be concluded that the Board of Appeal was right to reject the opposition brought by the applicant.

70      In the light of all the foregoing considerations, the single plea in law relied on by the applicant must be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

71      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

72      As a hearing has taken place and the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Puma SE to pay the costs.

Delivered in open court in Luxembourg on 4 December 2024.

*      Language of the case: English.

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