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 Li Puma Design - 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‑30/24,

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 7 November 2023 (Case R 2291/2022-1) (‘the contested decision’).

 Background to the dispute

2        On 13 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 and the fact that those services and the goods covered by earlier mark No 1 fell within significantly different market sectors, the public would not establish a link between the marks at issue, notwithstanding the strength of the reputation of that earlier mark and the similarity of the signs at issue. 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 inherent distinctive character. As regards the mark applied for, it found that each of the word elements of which it is composed also had such a character and that none was dominant. In particular, as regards the element ‘design’, it noted that it had no meaning with regard to the services covered.

25      The applicant disputes the Board of Appeal’s assessment of the mark applied for.

26      First, in so far as that assessment relates to the distinctive character of the element ‘design’ of the mark applied for, the applicant submits that the public is accustomed to the use of that word in trade marks or company names and perceives it as a reference to the activity of the undertaking or to a characteristic of the goods or services covered. It argues, like the Opposition Division, that the distinctive character of the element ‘design’ is, at best, limited or even that that element is purely descriptive of the services covered and that, accordingly, it is negligible and should not therefore be taken into account for the purposes of assessing the similarity of the signs. It also submits that the contested decision is inadequately reasoned on that point, even though the Board of Appeal departed from an uncontested assessment of the Opposition Division.

27      In that regard, first of all, it follows from Article 71(1) of Regulation 2017/1001 that, following the examination as to the merits of the appeal, the Board of Appeal is to decide on the appeal and that, in doing so, it may exercise any power within the competence of the department which was responsible for the decision appealed, that is to say, in the present case, give judgment itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or reversing the decision of the Opposition Division. The Board of Appeal is thus called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (see judgment of 4 March 2020, Tulliallan Burlington v EUIPO, C‑155/18 P to C‑158/18 P, EU:C:2020:151, paragraph 97 and the case-law cited). It follows that the Board of Appeal was required to assess the distinctive character of the element ‘design’, even though the Opposition Division’s assessment on that point was not disputed by the applicant.

28      Furthermore, by stating that the element ‘design’ was distinctive on the ground that it had no meaning in relation to the services covered by the mark applied for, the Board of Appeal gave sufficient reasons for its assessment.

29      Furthermore, that assessment is correct. Even if it were established, the fact that the word ‘design’ is regularly used in trade marks or company names is not such as to weaken its distinctive character, since it is unlikely that the public would establish a link between that word, whether it refers to the aesthetics or the design of an object, and services for the treatment, recovery and recycling of waste and related consultancy services covered by the mark applied for.

30      Lastly, since the element ‘design’ is clearly visible in the mark applied for, the applicant is not justified in claiming that it is a negligible element which should not be taken into account in the analysis of the similarity of the signs.

31      Second, the applicant 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, in particular since the shorter element ‘li’ could be perceived as the article accompanying that name, or even be read as the Italian article ‘il’.

32      In that regard, 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).

33      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).

34      As regards the element ‘li’, the applicant claims that it could be perceived as an article accompanying the word ‘puma’, or could even be read as ‘il’ instead of ‘li’ and that, given its brevity, it could be overlooked.

35      At the outset, it should be noted that the brevity of the element ‘li’, composed of two letters, can be put into perspective since the element ‘puma’ consists of only four letters. In any event, the applicant is not capable of establishing that the element ‘li’ is negligible when, in particular, it is the first word element of the mark applied for.

36      Furthermore, the Board of Appeal found that the word ‘li’ was likely to be perceived as a first name, with the result that the expression ‘li puma’ could be perceived as a reference to a person. In so doing, it did not rule out, as the applicant points out, that part of the relevant public might see in the word ‘puma’ a reference to the animal. However, the word ‘li’ is not an article accompanying a common noun in any of the languages of the European Union and the assertion that it could be read backwards, that is to say ‘il’, is purely speculative. In that context, even if the element ‘li’ could be perceived, by part of the relevant public, as an article in a non-European language accompanying the word ‘puma’, the distinctive character of that element would not be weakened in view of the originality resulting from the introduction of such an unknown language.

37      It follows that the Board of Appeal was right to find that each of the word elements making up the mark applied for was distinctive and that that mark did not contain a dominant element.

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

38      Visually and phonetically, the Board of Appeal found that the signs at issue were, at best, similar to an average degree since the additional elements ‘li’ and ‘design’ reduced the degree of similarity resulting from the common element ‘puma’. It also found that those signs were conceptually different because one could refer to a surname whereas the other referred to an animal. It added that it could not be ruled out that the relevant public might also perceive a reference to the animal in the surname ‘puma’ and concluded that those signs were, at most, conceptually similar to a low degree.

39      First, the applicant argues that the signs at issue have a high degree of visual and phonetic similarity in the light of the common element ‘puma’. It bases its assessment, in essence, on the weak distinctive character of the elements ‘design’ and ‘li’ and on the fact that the element ‘li’ could be omitted in view of its brevity.

40      However, it has been held in paragraph 37 above that the word elements of which the mark applied for consists were distinctive and that that mark had no dominant element. Consequently, in view of the presence of the additional elements ‘li’ and ‘design’ in that mark, the element ‘puma’ is not such as to establish a visual similarity between the signs at issue exceeding an average degree. The same is true as regards phonetic similarity, since it is likely that all the elements making up the mark in question will be pronounced.

41      Consequently, the applicant is not justified in disputing the degree of visual and phonetic similarity found by the Board of Appeal.

42      Second, the applicant claims that, since part of the relevant public perceives the expression ‘li puma’ as referring to an animal and not to a person, the signs at issue are conceptually similar to a high degree.

43      It is apparent from the contested decision that the Board of Appeal found that the mark applied for could be perceived as referring to a person whereas earlier mark No 1 referred to an animal, but that part of the relevant public could recognise the concept of an animal in the surname ‘Puma’. It inferred from this that the conceptual link was ‘at most remote’.

44      In that regard, it must be pointed out that the Board of Appeal’s assessment is ultimately based on the fact that the relevant public will perceive the expression ‘li puma’ as a reference to a person. A part of that public, which cannot be described as negligible, might not perceive that expression in that way and might recognise a direct reference to the animal in the expression ‘li puma design’. It follows that, for that part of the public, the signs at issue are similar, since they relate to the same concept. The presence of the elements ‘li’ and ‘design’, however, reduces the degree of similarity, which cannot therefore be classified as high. By contrast, the Board of Appeal was right to find that those signs were conceptually different for the other part of that public which will perceive the element ‘li puma’ of the mark applied for as a reference to a person.

45      It follows that the applicant is justified in challenging the contested decision in so far as the Board of Appeal found that there was a low degree of conceptual similarity between the signs at issue, that similarity being average for the part of the relevant public which will perceive the reference to the animal in the mark applied for.

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

46      As regards the fourth condition defined 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).

47      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 (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).

48      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).

49      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).

50      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

51      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.

52      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.

53      In that regard, 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 49 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).

54      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.

55      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).

56      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 were visually and phonetically similar to an average degree and conceptually similar to a low degree 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.

57      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.

58      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.

59      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.

60      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).

61      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).

62      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

63      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.

64      In the first place, since it has been concluded, in paragraph 54 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.

65      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.

66      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.

67      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.

68      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.

69      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 an average degree and conceptually similar to an average degree for the part of the public which will perceive the reference to the animal in the expression ‘li puma design’ and different for the part of the public which will perceive the expression ‘li puma’ as a reference to a person (see paragraphs 40 and 44 above). 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.

70      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.

71      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.

72      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

73      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.

74      According to the case-law cited in paragraphs 46 and 47 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.

75      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 74 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.

76      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.

77      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.

78      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

79      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.

80      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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