Jose A. Alfonso Arpon v EUIPO - Puma (PLUMAflex by Roal) (EU trade mark - Judgment) [2022] EUECJ T-357/21 (29 June 2022)

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(EU trade mark – Opposition proceedings – Application for the EU figurative mark PLUMAflex by Roal – Earlier EU figurative mark PUMA – Relative ground for refusal – Damage to reputation – Article 8(5) of Regulation (EU) 2017/1001)

Jose A. Alfonso Arpon SL, established in Arnedo (Spain), represented by C. Hernández Hernández, lawyer,

European Union Intellectual Property Office (EUIPO), represented by A. Söder and V. Ruzek, acting as Agents,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

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

composed of M.J. Costeira, President, M. Kancheva and I. Dimitrakopoulos (Rapporteur), Judges,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 By its action under Article 263 TFEU, the applicant, Jose A. Alfonso Arpon SL, seeks annulment of the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 April 2021 (Case R 2991/2019-1) (‘the contested decision’).

2 On 27 March 2018, the applicant filed an application for registration of an EU trade mark with EUIPO pursuant to Regulation (EC) 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).

4 The goods in respect of which registration was sought are in Class 25 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: ‘Footwear (except orthopaedic footwear)’.

5 The trade mark application was published in European Union Trade Marks Bulletin No 85/2018 of 7 May 2018.

6 On 1 August 2018, the intervener, Puma SE, filed a notice of opposition pursuant to Article 46 of Regulation 2017/1001 to registration of the mark applied for in respect of the goods referred to in paragraph 4 above. The grounds for the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation 2017/1001.

7 The opposition was based, inter alia, on the EU figurative mark reproduced below, registered on 30 June 2014 under No 12579728, inter alia for goods in Class 25 corresponding to the following description: ‘Apparel, footwear, headgear’:

8 In support of its opposition based on Article 8(5) of Regulation 2017/1001, the intervener relied on the reputation of the earlier mark.

9 On 16 December 2019, the Opposition Division upheld the opposition based on Article 8(5) of Regulation 2017/1001 in respect of all the goods referred to in paragraph 4 above.

10 On 30 December 2019, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 66 to 71 of Regulation 2017/1001, against the decision of the Opposition Division.

11 By the contested decision, the First Board of Appeal of EUIPO upheld the decision of the Opposition Division on the ground that the conditions necessary for upholding the opposition pursuant to Article 8(5) of Regulation 2017/1001 were satisfied in the present case and, consequently, dismissed the appeal brought by the applicant. First, the Board of Appeal noted, in essence, that the relevant public with regard to which it was necessary to assess whether there was a risk of unfair advantage being taken of the repute or the distinctive character of the earlier mark was the average consumer of the goods in Class 25 covered by the mark applied for, namely the general public, which has an average level of attention (see paragraphs 16 and 17 of the contested decision). In addition, the Board of Appeal found, in essence, that it was more appropriate, in the present case, to examine the existence of the abovementioned risk with regard to the German-speaking part of the relevant public (see paragraphs 39 and 40 of the contested decision). Second, the Board of Appeal found that the earlier mark had, on the one hand, a very high degree of reputation in the European Union (see paragraphs 24, 25, 26 and 40 of the contested decision) and, on the other, in essence, an average degree of inherent distinctive character in the European Union, and, in Germany, a very high degree of reputation, as well as distinctive character acquired through its use for clothes and sports shoes (see paragraphs 32 and 33 of the contested decision). Third, the Board of Appeal found that the signs at issue were similar for the German-speaking part of the relevant public, after finding that those signs were visually similar to a low degree, phonetically similar to an average degree and conceptually dissimilar (see paragraphs 40, 44, 45, 46 and 56 of the contested decision). Fourth, the Board of Appeal found that the goods designated by the mark applied for were identical to the goods in respect of which the earlier mark has a reputation (see paragraph 49 of the contested decision). Fifth, having regard to all the foregoing factors, it concluded, in essence, that the relevant public would establish a link between the signs at issue (see paragraph 50 of the contested decision) and that it was very likely that the use of the mark applied for in relation to goods identical to those for which the earlier mark had a very high degree of reputation would take unfair advantage of that repute and the investments made by the intervener in order to obtain it (see paragraph 55 of the contested decision). Lastly, since it upheld the opposition on the basis of Article 8(5) of Regulation 2017/1001, the Board of Appeal did not consider it necessary to examine the ground of opposition based on Article 8(1)(b) of that regulation.

14 The applicant raises a single plea, alleging infringement of Article 8(5) of Regulation 2017/1001. In support of that plea, it relies on two complaints, alleging, first, that there is no similarity between the signs at issue and, second, that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001.

15 Article 8(5) of Regulation 2017/1001 provides that, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2), 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.

16 It is apparent from the wording of Article 8(5) of Regulation 2017/1001 that its application is subject to the following conditions: first, that the marks at issue are identical or similar; second, that the earlier mark cited in opposition has a reputation and, third, that there is a risk that the use without due cause of the trade mark applied for takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 22 March 2007, Sigla v OHIM – Elleni Holding (VIPS), T‑215/03, EU:T:2007:93, paragraphs 34 and the case-law cited).

17 In accordance with the case-law, 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 and later marks, by virtue of which the relevant section of the public makes a connection between those marks, in other words 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 on the part 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, 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).

18 Furthermore, the existence of a link between the marks at issue on the part of the relevant public must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include: 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 relevant public (order of 30 April 2009, Japan Tobacco v OHIM, C‑136/08 P, not published, EU:C:2009:282, paragraph 26; and judgment of 6 July 2012, Jackson International v OHIM – Royal Shakespeare (ROYAL SHAKESPEARE), T‑60/10, not published, EU:T:2012:348, paragraph 21; see also, by analogy, judgment of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42).

19 Lastly, 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 2017/1001 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).

20 In the present case, the Board of Appeal found, in paragraph 17 of the contested decision, that the relevant public consisted, for the goods at issue in Class 25, of the general public with an average level of attention (see paragraph 11 above). There is no reason to call into question that assessment, which, moreover, is not disputed by the applicant.

21 Furthermore, it should be noted that the applicant does not dispute the Board of Appeal’s findings concerning the very high degree of reputation enjoyed by the earlier mark, in particular for sports shoes (see paragraph 26 of the contested decision) and the existence of a risk that the use without due cause of the mark applied for would take unfair advantage of the repute of the earlier mark (see paragraphs 56 and 57 of the contested decision). Accordingly, the applicant does not call into question the Board of Appeal’s findings concerning the second and third conditions for the application of Article 8(5) of Regulation 2017/1001 (see paragraph 16 above).

22 It is in the light of those considerations that the two complaints referred to in paragraph 14 above must be examined.

The first complaint, alleging that there is no similarity between the signs at issue

23 The applicant claims that the Board of Appeal erred in finding that the signs at issue were similar, since those signs are, according to the applicant, different. Accordingly, for the applicant, the first condition for the application of Article 8(5) of Regulation 2017/1001, referred to in paragraph 16 above, relating to the identity or similarity of the signs at issue, is not satisfied in the present case.

25 The existence of a similarity between an earlier mark and a mark applied for is a precondition for the application both of Article 8(1)(b) and of Article 8(5) of Regulation 2017/1001. That condition requires, in the context both of Article 8(1)(b) and of Article 8(5), the existence, in particular, of elements of visual, phonetic or conceptual similarity (see, to that effect, judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 52, and of 4 October 2017, Gappol Marzena Porczyńska v EUIPO – Gap (ITM) (GAPPOL), T‑411/15, not published, EU:T:2017:689, paragraph 148).

26 However, those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation 2017/1001 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant 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) of Regulation 2017/1001 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 public to make a connection between those marks, that is to say, to establish a link between them. On the other hand, it is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way, according to whether the assessment is carried out under Article 8(1)(b) of Regulation 2017/1001 or under Article 8(5) (judgment of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 53 and 54).

27 Lastly, it must be recalled that, in relation to the visual, phonetic and conceptual similarities of the signs at issue, the comparison of the signs must be based upon the overall impression produced by the signs, bearing in mind, in particular, their distinctive and dominant elements (judgment of 25 January 2012, Viaguara v OHIM – Pfizer (VIAGUARA), T‑332/10, not published, EU:T:2012:26, paragraph 32).

28 In the present case, the earlier mark consists of the word element ‘puma’, written in bold, upper-case letters in a slightly stylised black font.

29 The mark applied for is a composite mark consisting, on the one hand, of the word elements ‘plumaflex’ and ‘by roal’ and, on the other, of a figurative element representing a grey feather. The word element ‘plumaflex’ is placed on the first row of the sign. Its first five letters (‘p’, ‘l’, ‘u’, ‘m’, ‘a’) are written in black capital letters while the last four letters (‘f’, ‘l’, ‘e’, ‘x’) are written in grey lower-case letters. The word element ‘by roal’ is written below the final part of the word element ‘plumaflex’, in a cursive font significantly smaller than that word element, and in lower-case letters, with the exception of the letter ‘r’, which is written in upper case. The figurative element is placed on the right-hand side of the sign.

30 As a preliminary point, in paragraphs 37 and 38 of the contested decision, the Board of Appeal found that, when perceiving the word element ‘plumaflex’, the relevant public would break it down into two separate word elements, ‘pluma’ and ‘flex’, having regard, first, to the fact that those words have a meaning for part of that public and, second, to their different fonts.

31 Next, in the light of the principle that the unitary character of the EU trade mark means that an earlier EU trade mark may be relied on in opposition proceedings against any application for registration of a later mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (judgment of 18 September 2008, Armacell v OHIM, C‑514/06 P, not published, EU:C:2008:511, paragraph 57), the Board of Appeal considered it appropriate to take into account the assessment of the German-speaking part of the relevant public which understands the meaning of the word element ‘flex’ but not that of the word element ‘pluma’, that word element being therefore distinctive with regard to the signs at issue (see paragraphs 39 and 40 of the contested decision).

32 There is no reason to call into question those findings, which, moreover, have not been expressly disputed by the applicant.

33 Furthermore, after examining the distinctive and dominant character of the elements which make up the mark applied for (see paragraphs 38 to 43 of the contested decision), and after finding that the signs at issue were visually similar to a low degree (see paragraph 44 of the contested decision), phonetically similar to an average degree (see paragraph 45 of the contested decision) and conceptually dissimilar (see paragraph 46 of the contested decision), the Board of Appeal concluded, in essence, that those signs were similar (see paragraph 56 of the contested decision).

34 As regards the analysis of the distinctive and dominant elements of which the mark applied for consists, first of all, the Board of Appeal found that the word element ‘flex’ was devoid of any distinctive character in respect of the goods at issue in Class 25, since the German-speaking part of the relevant public would associate it with the term ‘flexible’ and, therefore, with one of the attributes of those goods (see paragraph 41 of the contested decision). Next, the Board of Appeal found that the word element ‘by roal’, although having distinctive character, had a visually secondary position in that sign because, in essence, it was represented below the word elements ‘pluma’ and ‘flex’ in a smaller font than those word elements (see paragraph 42 of the contested decision). Lastly, the Board of Appeal found that the figurative element, although distinctive with regard to the goods at issue, had less impact in the visual comparison of the signs at issue, since the average consumer referred more easily to those goods by quoting the word elements than by describing the figurative elements of the sign (see paragraph 43 of the contested decision).

35 From a visual standpoint, the Board of Appeal found, in paragraph 44 of the contested decision, that, first, the signs at issue visually coincided in the words ‘puma’ in the earlier mark and ‘p*uma’ in the mark applied for. Second, they differed in the presence, in the mark applied for, of the second letter ‘l’ of the word element ‘pluma’, of the word elements ‘flex’, ‘by’ and ‘roal’, the latter being either devoid of any distinctive character or secondary, and of its figurative element, and in the stylisation of the respective word elements of the signs at issue. Consequently, like the Opposition Division, the Board of Appeal concluded that there was a low degree of visual similarity between those signs.

36 From a phonetic standpoint, in paragraph 45 of the contested decision the Board of Appeal found that, in so far as the relevant public generally tended to shorten signs when they are pronounced, it was likely that part of that public would not pronounce, in essence, the word elements ‘by’ and ‘roal’, which formed the second row of the mark applied for and were written in a smaller italic font than that of the word elements forming the first part of that mark. Furthermore, the Board of Appeal found that it could not be ruled out that part of the relevant public might not pronounce the word element ‘flex’ either. Accordingly, the Board of Appeal found, in essence, that for the part of the relevant public that would pronounce the mark applied for as ‘pluma’, the signs at issue were phonetically similar to an average degree.

37 From a conceptual standpoint, in paragraph 46 of the contested decision the Board of Appeal found that the signs at issue had different meanings and were therefore dissimilar. First, the Board of Appeal found that the earlier mark PUMA would be understood as designating a large American wild cat with a plain tawny to greyish coat, found from Canada to Patagonia (see paragraph 36 of the contested decision). Second, as regards the mark applied for, the Board of Appeal noted that the term ‘pluma’ would not be understood by the German-speaking part of the relevant public whereas that part of the public would understand the other elements making up that sign. Accordingly, the word element ‘flex’ would be understood as meaning ‘bend or become bent’ or ‘flexible’, the word element ‘by Roal’ would be understood as ‘made by Roal’ and the figurative element referred to the concept of a feather (see paragraphs 40 to 43 of the contested decision).

38 In the first place, the applicant complains, in essence, that the Board of Appeal did not carry out a global assessment of the similarity of the signs at issue, since it merely compared, visually and phonetically, the earlier mark with the word element ‘pluma’ of the mark applied for.

39 However, it is apparent from paragraphs 35 and 36 above that, for the purposes of the visual and phonetic comparison of the signs at issue, the Board of Appeal duly took into account all the elements making up those signs, specifically referring to their elements of similarity and dissimilarity.

40 Accordingly, contrary to what the applicant claims, the Board of Appeal did not confine itself to comparing the earlier mark with the word element ‘pluma’ of the mark applied for, but carried out an overall assessment of the signs at issue.

42 In the second place, the applicant claims, in essence, that the Board of Appeal erred in finding a visual and phonetic similarity between the signs at issue, which are different.

43 First, from a visual standpoint, the applicant submits that the signs at issue produce a general impression of dissimilarity given, on the one hand, the presence, in the mark applied for, of the figurative element and the word elements ‘flex’ and ‘by roal’, and, on the other, the differences in the font and characters of the word elements of which each of the signs at issue consists, as well as the configuration and positioning of their respective elements. According to the applicant, it is therefore impossible for a consumer to confuse the signs at issue, particularly since the earlier mark is known to a very significant portion of consumers interested in sport shoes and sport apparel, in respect of which a reputation has been relied on.

44 In that regard, on the one hand, the Board of Appeal was correct in finding that the word element ‘flex’ was devoid of distinctive character and that the word element ‘by roal’ was secondary in the overall impression produced by the mark applied for (see paragraphs 34 and 35 above). Furthermore, the Board of Appeal was fully entitled to consider that the figurative element, although distinctive with regard to the goods at issue, had less impact in the visual comparison of the signs at issue, since the average consumer refers more easily to those goods by quoting the word elements than by describing the figurative elements of the sign. Lastly, it should be noted, as noted by the applicant, that the signs at issue also contain differences in the font and characters of the word elements of which it consists, as well as the configuration and positioning of their respective elements. However, although all of those elements contribute to the visual differentiation of the signs at issue, that finding cannot call into question the similarity arising from the fact that the earlier mark PUMA is reproduced, almost identically, in the word element ‘pluma’, which is distinctive with regard to the goods in question for the German-speaking part of the relevant public (see paragraph 31 above) and forms the initial part of the mark applied for, that is to say, the part to which the consumer generally pays greater attention (see, to that effect, judgment of 7 September 2006, Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, EU:T:2006:247, paragraph 51).

45 On the other hand, as regards the applicant’s argument that, in essence, the relevant public will recognise the visual differences between the signs at issue on account of the reputation of the earlier mark for sport shoes and sport apparel (see paragraph 43 above), it must be recalled that the existence of such a reputation does not allow conclusions to be drawn concerning the similarity of the signs (see, to that effect, judgment of 11 June 2020, China Construction Bank v EUIPO, C‑115/19 P, EU:C:2020:469, paragraph 58). Therefore, that argument must be rejected as ineffective.

46 It follows that the Board of Appeal was entitled to conclude, without making an error of assessment, that the signs at issue are visually similar to a low degree.

47 Therefore, the applicant’s argument that the signs at issue are visually different is unfounded and must be rejected.

48 Second, the applicant claims that the signs at issue are phonetically different in the light of the number of letters and syllables of which they consist, their respective endings (‘roal’ and ‘ma’), which create a different rhythm and intonation, and the phonetic difference between the beginning of each of those signs resulting from the pronunciation of the letter ‘l’ in the word element ‘pluma’.

49 As a preliminary point, it must be pointed out that, in the strict sense, the phonetic reproduction of a composite trade mark corresponds to that of all its word elements, regardless of their specific graphic features, which fall more within the analysis of the sign on a visual level (see, to that effect, judgment of 11 December 2013, Eckes-Granini v OHIM – Panini (PANINI), T‑487/12, not published, EU:T:2013:637, paragraph 49 and the case-law cited). Accordingly, for the purposes of the phonetic comparison, it is not necessary to take into account the figurative element of the mark applied for, which will not be pronounced by the relevant public (see, to that effect, judgments of 11 September 2014, Aroa Bodegas v OHIM – Bodegas Muga (aroa), T‑536/12, not published, EU:T:2014:770, paragraph 45, and of 25 November 2020, Impera v EUIPO – Euro Games Technology (Flaming Forties), T‑874/19, not published, EU:T:2020:563, paragraph 68).

50 As regards the elements ‘by roal’ and ‘flex’, the Board of Appeal did not make an error of assessment in finding that they might not be pronounced by part of the relevant public.

51 In that regard, first, it may be considered that, to economise on words, part of the relevant public will omit the word element ‘by roal’ when pronouncing the mark applied for, since that element takes a relatively long time to pronounce and is easily separable from the remainder when pronouncing that mark in the light, in particular, of its secondary position within that mark (see paragraph 34 above) (see, to that effect, judgment of 11 January 2013, Kokomarina v OHIM – EURO Shoe Group (interdit de me gronder IDMG), T‑568/11, not published, EU:T:2013:5, paragraph 44 and the case-law cited).

52 Second, since the consumer generally pays greater attention to the beginning of a sign than to the end and generally tends to contract long marks consisting of two words into a single word, it may be presumed that that public or, at the very least, a part of it will not pronounce the word ‘flex’ inasmuch as that word is descriptive of an attribute of the goods covered by the mark applied for (see paragraph 34 above) (see, to that effect, judgment of 3 June 2015, Pensa Pharma v OHIM – Ferring and Farmaceutisk Laboratorium Ferring (PENSA PHARMA and pensa), T‑544/12 and T‑546/12, not published, EU:T:2015:355, paragraph 107 and the case-law cited).

53 Therefore, the Board of Appeal was entitled to find that it is likely that a part of the relevant public will not pronounce the word elements ‘flex’ and ‘by roal’ in the mark applied for.

54 Lastly, since the consumer generally pays greater attention to the beginning of a mark than to the end (judgment of 7 September 2006, PAM-PIM’S BABY-PROP, T‑133/05, EU:T:2006:247, paragraph 51), the word element ‘pluma’, which is found at the beginning of the mark applied for, to which the relevant public generally pays more attention, and which has distinctive character with regard to the goods at issue for the German-speaking part of the relevant public, which does not understand its meaning (see paragraphs 31 and 44 above), is bound to be pronounced by that public (see, to that effect, judgment of 3 July 2013, Warsteiner Brauerei Haus Cramer v OHIM – Stuffer (ALOHA 100% NATURAL), T‑243/12, not published, EU:T:2013:344, paragraph 34).

55 The pronunciation of that word element is similar to that of the sole word element of the earlier mark PUMA, from which it differs only in the presence of the letter ‘l’ in the first syllable of the word element ‘pluma’. Consequently, there is a clear phonetic proximity between those two elements.

56 That conclusion cannot be called into question by the applicant’s argument that, in essence, the relevant public will pay particular attention to the difference between the sounds ‘pu’ and ‘plu’, since, in the decision of the First Board of Appeal of 4 March 2002 (Case R 65/2001-1), the Board of Appeal held that ‘the human ear is a sensitive instrument, quite accustomed to distinguishing between even slight variations in the spoken word’. Although factual or legal grounds contained in an earlier decision of the Board of Appeal of EUIPO may, admittedly, constitute arguments to support a plea alleging infringement of a provision of Regulation 2017/1001, it must be pointed out that the earlier decision relied on by the applicant concerns the signs IBUSOL and IRUXOL, which are different from the signs at issue, and the phonetic relationship between which is not comparable with that in the present case (see, to that effect, judgment of 16 March 2005, L’Oréal v OHIM – Revlon (FLEXI AIR), T‑112/03, EU:T:2005:102, paragraph 68).

57 It follows that the Board of Appeal was entitled to conclude, without making an error of assessment, that the signs at issue are phonetically similar to an average degree.

58 Therefore, the applicant’s argument that the signs at issue are phonetically dissimilar is unfounded and must be rejected.

59 In the third place, as regards the conceptual comparison, the applicant asserts, first, that the term ‘pluma’, which means ‘feather’ in Spanish, will be understood in several languages and, second, that, in essence, in languages in which that term has no meaning, the figurative element of the mark applied for would not leave any doubt.

60 As a preliminary point, it should be recalled that, in paragraph 46 of the contested decision, the Board of Appeal upheld the applicant’s argument that the signs at issue were conceptually different. The Board of Appeal found that the signs at issue had different meanings for ‘the different publics’, that is to say, in essence, both for the part of the relevant public which would understand the term ‘pluma’ and for that which would not understand it (see paragraphs 40 and 46 of the contested decision).

61 Moreover, in paragraph 40 of the contested decision, the Board of Appeal found that it was, in essence, more appropriate to analyse the similarity between the signs at issue with regard to the German-speaking part of the relevant public, since those signs had totally different meanings in Portuguese, Spanish and French, such that, for the part of the relevant public which understands those languages, the similarities between those signs were so insignificant that even a high degree of reputation would not have been able to offset them. Accordingly, in essence, the Board of Appeal found that, for the part of the relevant public which would understand the meaning of the word element ‘pluma’, the conceptual difference between the signs at issue would be even more pronounced.

62 In so far as the applicant does not dispute the Board of Appeal’s findings referred to in paragraphs 60 and 61 above, which are favourable to it, its arguments relating to the meaning of the term ‘pluma’ in certain languages of the European Union are ineffective and must be rejected.

63 Moreover, the applicant’s argument that, in essence, the figurative element of the mark applied for will remove any conceptual doubt with regard to the part of the relevant public which does not understand the meaning of the term ‘pluma’ must be rejected. It cannot be accepted that the figurative element of the mark applied for, representing a feather, may confer a meaning on a term which does not have a meaning for the German-speaking part of the relevant public.

64 Lastly, the applicant complains that the Board of Appeal found, in essence, that the German-speaking part of the relevant public, for which the word element ‘pluma’ had no meaning, would associate it with the word element ‘puma’ in the mark applied for on account of their phonetic similarity.

65 In that regard, it is sufficient to note that although the Board of Appeal did in fact make the abovementioned finding in paragraph 40 of the contested decision, it did not draw any conclusions therefrom for the purposes of the conceptual comparison of the signs at issue, since it concluded that those signs were different. Therefore, the applicant’s argument must be rejected as ineffective.

66 Consequently, in the light of the case-law referred to in paragraph 26 above and the visual and phonetic similarity of the signs at issue found by the Board of Appeal, it must be held that the Board of Appeal was entitled to find that those signs were similar and, accordingly, to carry out a global assessment in order to determine whether, in the light of all the relevant factors, there was a link between those signs on the part of the relevant public (see paragraphs 18 to 50 of the contested decision).

67 That conclusion cannot be called into question by the decision of the Oficina Española de Patentes y Marcas (Spanish Patent and Trade Mark Office) of 6 June 2016 concerning the application for registration of the Spanish trade mark PLUMAflex by Roal, relied on by the applicant, which rejected the opposition to registration of that mark filed by the intervener.

68 It follows from settled case-law that the EU trade mark regime is an autonomous legal system which pursues objectives peculiar to it; it applies independently of any national system (see judgment of 12 December 2013, Rivella International v OHIM, C‑445/12 P, EU:C:2013:826, paragraph 48 and the case-law cited; judgments of 5 December 2000, Messe München v OHIM (electronica), T‑32/00, EU:T:2000:283, paragraph 47; and of 3 December 2015, Infusion Brands v OHIM (DUALTOOLS), T‑648/14, not published, EU:T:2015:930, paragraph 36). Neither the Board of Appeal nor, as the case may be, the EU judicature are therefore bound by decisions adopted in a Member States or in a State that is not a member of the European Union (judgment of 28 March 2019, dm-drogerie markt v EUIPO – Albea Services (ALBÉA), T‑562/17, not published, EU:T:2019:204, paragraph 44; see, also, judgment of 28 April 2021, Asolo v EUIPO – Red Bull (FLÜGEL), T‑509/19, not published, EU:T:2021:225, paragraph 147 and the case-law cited), even though they should be taken into consideration as relevant evidence in the file. Accordingly, the Board of Appeal was not bound by the decision of the Spanish Patent and Trade Mark Office referred to in paragraph 67 above.

69 In any event, it must be stated that in the present case, the Opposition Division did indeed take into account the decision of the Spanish Patent and Trade Mark Office referred to in paragraph 67 above, while finding that that decision was not relevant because it concerned opposition proceedings examined with regard to the Spanish public, for which the signs at issue conveyed clearly different meanings, whereas the Opposition Division had examined the opposition in the light of the English-speaking part of the relevant public, which does not understand the term ‘pluma’.

70 In addition, it must be recalled that, like the Opposition Division, the Board of Appeal did not examine the ground of opposition based on Article 8(5) of Regulation 2017/1001 with regard to the Spanish-speaking part of the relevant public, which understands the term ‘pluma’, but with regard to the German-speaking part of that public for which that term has no meaning (see paragraph 31 above).

71 Thus, although the signs at issue in the decision of the Spanish Patent and Trade Mark Office referred to in paragraph 67 above were similar, or even identical, to the signs at issue in the present case, the solution adopted in that decision is not relevant in the present case. Accordingly, that decision was not capable of affecting the administrative procedure before the adjudicating bodies of EUIPO.

72 In the light of all the foregoing, the applicant’s first complaint must be rejected.

73 As regards the applicant’s complaint that, in essence, the contested decision infringed Article 8(5) of Regulation 2017/1001 on the ground that there is no likelihood of confusion between the signs at issue, it should be recalled that demonstrating that there is such a likelihood of confusion as to the origin of the goods, within the meaning of Article 8(1)(b) of Regulation 2017/1001, is not required for the purposes of applying Article 8(5) of Regulation 2017/1001 (see paragraph 26 above).

74 Furthermore, although the likelihood of confusion is one of the factors which may be taken into account for the purposes of assessing whether there is a link between the signs at issue on the part of the relevant public (see paragraph 18 above), it must be observed that, in the present case, the Board of Appeal neither found nor even examined the existence of such a likelihood.

75 Therefore, the applicant’s second complaint must be rejected as ineffective.

76 In the light of all the foregoing, the applicant’s single plea in law must be rejected and, consequently, the action must be dismissed in its entirety.

77 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Jose A. Alfonso Arpon v EUIPO - Puma (PLUMAflex by Roal) (EU trade mark - Judgment) [2022] EUECJ T-357/21 (29 June 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T35721.html Cite as: ECLI:EU:T:2022:405, EU:T:2022:405, [2022] EUECJ T-357/21

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