Puma v EUIPO - CMS (CMS Italy) (EU trade mark - Judgment) [2022] EUECJ T-711/20 (05 October 2022)

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(EU trade mark – Opposition proceedings – International registration designating the European Union – Figurative mark CMS Italy – Earlier international figurative marks representing a feline bounding towards the left and earlier international figurative mark PUMA – Relative ground for refusal – Detriment to reputation – Article 8(5) of Regulation (EC) No 207/2009 (now Article 8(5) of Regulation (EU) 2017/1001) – Similarity of the signs – Proof of reputation – Overall assessment)

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

European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas 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

CMS Costruzione macchine speciali SpA, established in Alonte (Italy), represented by M. Salvador and R. Brogi, lawyers,

composed, at the time of the deliberations, of M.J. Costeira, President, T. Perišin (Rapporteur) and P. Zilgalvis, Judges,

1 By its action under Article 263 TFEU, the applicant, Puma SE, seeks the annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 September 2020 (Case R 2215/2019‑4) (‘the contested decision’).

2 On 21 December 2012, the intervener, CMS Costruzione macchine speciali SpA, designated the European Union, with effect as from 14 December 2012, in the context of the application for protection of international registration No 1 150 538.

3 The mark in respect of which that designation was made is the following figurative mark:

4 The goods and services in respect of which protection was sought are in Classes 7, 11 and 37 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 7: ‘Apparatus and industrial machine tools for making all types of heat exchanger’;

– Class 11: ‘Systems and equipment for heating, air conditioning, refrigeration, heat exchange, ventilation, steam generating, drying’;

– Class 37: ‘Installation, maintenance and repair of systems, equipment and industrial machine tools for making all types of heat exchanger’.

5 The application for protection was published in Community Trade Marks Bulletin No 48/2013 of 8 March 2013.

6 On 21 November 2013, the applicant filed a notice of opposition, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1) (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), and, in particular, Article 156 of that regulation (now Article 196 of Regulation 2017/1001), read in conjunction with Article 41 of that regulation (now Article 46 of Regulation 2017/1001), to international registration No 1150 538 designating the European Union (‘the mark applied for’) in respect of the goods and services referred to in paragraph 4 above.

– the international figurative mark reproduced below, which was registered on 17 June 1992 under the number 593 987 (‘earlier trade mark No 1’) and has been renewed until 2022, with effect in Austria, Benelux, Bulgaria, Cyprus, Croatia, Spain, Estonia, Finland, France, Greece, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, the Czech Republic, Romania, the United Kingdom, Slovakia and Slovenia, covering, inter alia, goods in Classes 18, 25 and 28:

– the international figurative mark reproduced below, which was registered on 30 September 1983 under the number 480 105 (‘earlier trade mark No 2’) and has been renewed until 2023, with effect in Austria, Benelux, Croatia, France, Hungary, Italy, Portugal, the Czech Republic, Romania, Slovakia and Slovenia, covering goods in Classes 18, 25 and 28:

– the international figurative mark reproduced below, which was registered on 22 July 1991 under the number 582 886 (‘earlier trade mark No 3’) and has been renewed until 2031, with effect in Austria, Benelux, Bulgaria, Cyprus, Denmark, Spain, Estonia, Finland, France, Greece, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, the Czech Republic, Romania, the United Kingdom, Slovakia and Slovenia, covering, inter alia, goods in Classes 18, 25 and 28:

8 The ground relied on in support of the opposition was that set out in Article 8(5) of Regulation No 207/2009 (now Article 8(5) of Regulation 2017/1001). The opposition, which was directed against all the goods and services referred to in paragraph 4 above, was based on all the goods covered by earlier trade mark No 2 and on some of the goods covered by earlier trade marks No 1 and No 3, namely those in Classes 18, 25 and 28. Reputation was claimed in respect of all the goods on which the opposition was based and in respect of all the countries in which the earlier marks enjoyed protection. Eighteen documents were submitted as annexes to the notice of opposition for the purposes of proving that reputation.

9 On 28 November 2014, the Opposition Division rejected the opposition on the ground that it had not been established that the earlier marks had a reputation.

10 On 26 January 2015, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division. It submitted, for the first time before the Board of Appeal, 3 CDs of annexes containing 12 documents or groups of documents for the purposes of proving that the earlier marks had a reputation.

11 By decision of 29 January 2016 (‘the first decision’), the Second Board of Appeal of EUIPO dismissed the appeal, on the ground that the applicant had not proved that the earlier marks had a reputation. To that end, it found, first, that the evidence which had been submitted before the Opposition Division was blatantly insufficient, since it did not contain any real and relevant information regarding the reputation of the earlier marks and, secondly, that it could not take into account the evidence which had been submitted for the first time in the appeal proceedings.

12 On 18 April 2016, the applicant brought an action before the Court seeking the annulment of the first decision.

13 By order of 22 May 2019, Puma v EUIPO – CMS (CMS Italy) (T‑161/16, EU:T:2019:350; ‘the annulling order’), the Court annulled the first decision. In that order, the Court took into account, inter alia, the guidance in the judgment of 28 June 2018, EUIPO v Puma (C‑564/16 P, EU:C:2018:509), which concerned another trade mark application. In essence, the Court held, first, that the Board of Appeal had erred in not taking into account the previous decisions of EUIPO which the applicant had submitted before the Opposition Division in order to prove that the earlier marks relied on had a reputation and, secondly, that it had erred in rejecting, on the ground of its inadmissibility, the evidence submitted in the appeal proceedings.

14 By the contested decision, the Fourth Board of Appeal again dismissed the applicant’s appeal against the Opposition Division’s decision which had rejected the opposition.

15 First, as regards the similarity of the signs, the Board of Appeal found that the mark applied for was similar to a very low degree to earlier trade mark No 1 and similar to an extremely low degree to earlier trade mark No 2, whereas it was dissimilar to earlier trade mark No 3. It added that it followed from the comparison of the signs that the applicant’s best case was based on earlier trade mark No 1, which had been found to be similar to a low degree to the mark applied for, and therefore decided to proceed with the examination of the opposition solely on the basis of that earlier mark.

16 Secondly, as regards the reputation of earlier trade mark No 1, on the one hand, the Board of Appeal found that the evidence filed before the Opposition Division, including previous decisions B 1 459 017 and B 1 287 178, did not suffice to prove that that mark had a reputation, stating, inter alia, that, ‘with all due respect’, it found it difficult to establish, on the basis of those previous decisions, for which of the numerous goods in Classes 18, 25 and 28, and in which territories, that mark could have enjoyed a reputation at the relevant point in time. On the other hand, the Board of Appeal found that the evidence submitted before it showed at best some degree of reputation for ‘sports shoes’ in Class 25, but was entirely insufficient with regard to any of the other goods in Classes 18, 25 and 28 in respect of which reputation had been claimed.

17 Thirdly, as regards the existence of a link and of a risk of harm, the Board of Appeal found that the applicant (i) had failed to explain why completely different relevant publics would make a connection between the marks at issue, which were only similar to a very low degree and were protected for goods and services that belonged to entirely different market sectors, and (ii) had failed to provide a coherent line of argument to support its claim that use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of earlier trade mark No 1. It concluded that the opposition had to fail for that reason alone. Furthermore, the Board of Appeal found that, in any event, the intervener could successfully invoke due cause based on the use in Italy since 1989 of the non-registered sign reproduced below and that the applicant had to tolerate the use of the mark applied for, which constituted a modernised version of the sign which had previously been used:

The issue of whether Annexes A6 to A10 to the application are admissible

20 EUIPO submits that Annexes A6 to A10 to the application are inadmissible, on the ground that they are new items of evidence. Those annexes consist of three decisions of the Boards of Appeal (namely those of 30 April 2019 in Case R 2057/2018‑4, which has been submitted twice, of 28 May 2019 in Case R 1888/2018‑4 and of 27 November 2019 in Case R 404/2019‑1) and a decision of the Opposition Division (of 22 October 2020 in opposition B 3 085 149).

21 It must be stated that those decisions are new documents which were never submitted to EUIPO in the course of the administrative proceedings and which have therefore been produced for the first time before the Court.

22 In that regard, it must be borne in mind that the purpose of actions before the Court is to review the legality of decisions of the Boards of Appeal of EUIPO for the purposes of Article 72 of Regulation 2017/1001, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it (see, to that effect, judgment of 24 November 2005, Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, EU:T:2005:420, paragraph 19 and the case-law cited).

23 It is true that it is clear from the case-law that the parties have the right to refer to EUIPO’s decision-making practice. Likewise, by analogy, neither the parties nor the Court itself can be precluded from drawing on national legislation, case-law or academic writing, where it is not alleged that the Board of Appeal failed to take the factual aspects of a specific national judgment into account, but rather reliance is placed on judgments or academic writing in support of a plea alleging that the Board of Appeal misapplied a provision of Regulation No 207/2009 (see, to that effect, judgment of 18 March 2016, Karl-May-Verlag v OHIM – Constantin Film Produktion (WINNETOU), T‑501/13, EU:T:2016:161, paragraph 18 and the case-law cited).

24 However, in the present case, it must be pointed out, as stated by EUIPO, that the decisions submitted by the applicant are not meant to prove merely the interpretation to be given to a particular provision of law. As is apparent from the application, the applicant is submitting those documents in order to prove aspects of a factual nature, namely that, in other proceedings before EUIPO, the reputation of the same earlier marks was assessed differently or that particular items of evidence were given more weight than in the present case. Consequently, it must be held that those documents, which are intended to prove aspects of a factual nature, cannot be taken into consideration.

26 Given the date on which the application for registration at issue was filed, namely 21 December 2012, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 in its original version (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Consequently, in the present case, so far as concerns the substantive rules, the references to Article 8(5) of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the parties in their written pleadings must be understood as referring to Article 8(5) of Regulation No 207/2009, which is, in essence, substantively identical.

27 In support of its action, the applicant relies, in essence, on a single plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009, read in conjunction with the principles of legal certainty, of equal treatment and of sound administration. It complains that the Board of Appeal made errors in assessing each of the three conditions laid down by that provision.

28 The applicant’s single plea therefore consists, in essence, of three parts relating, first, to the similarity of the marks at issue, secondly, to the existence and strength of the reputation of the earlier marks and, thirdly, to the existence of a link between the marks at issue and a risk of harm to the reputation of the earlier marks and also to the lack of due cause. Since the applicant does not put forward any complaint specifically based on the principles of legal certainty, of equal treatment and of sound administration, it must be ascertained whether those principles were complied with in the context of the examination of the alleged infringement of Article 8(5) of Regulation No 207/2009.

29 Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

30 Although it is true that the primary function of a mark is that of an indication of origin, every mark also has an inherent economic value which is independent of and separate from that of the goods or services for which it has been registered. Consequently, Article 8(5) of Regulation No 207/2009 ensures that a mark with a reputation is protected with regard to any application for an identical or similar mark which might adversely affect its image, even if the goods covered by the mark applied for are not similar to those for which the earlier mark has been registered (see judgment of 19 May 2021, Puma v EUIPO – Gemma Group (Representation of a bounding feline), T‑510/19, not published, EU:T:2021:281, paragraph 23 and the case-law cited).

31 For an earlier registered trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, the following three conditions must be satisfied: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (see judgment of 21 April 2021, Chanel v EUIPO – Huawei Technologies (Representation of a circle containing two interlaced curves), T‑44/20, not published, EU:T:2021:207, paragraph 18 and the case-law cited).

32 In the present case, since the Board of Appeal carried out the examination of the similarity between the marks at issue before that of the reputation of the earlier marks and drew inferences from the former examination with regard to the latter one, it is appropriate to proceed in the same logical order.

The first part of the single plea, relating to the similarity between the marks at issue

33 By the first part, the applicant claims that the Board of Appeal made an error of assessment regarding the similarity of the marks at issue. It submits, in essence, that the figurative element in the mark applied for, which represents a bounding feline, predominates over the other elements in that mark, in particular the word element ‘CMS’. As regards in particular the comparison with earlier trade mark No 3, it argues that the coincidence in the figurative element in common renders those marks very similar visually.

35 It is clear from the case-law that the existence of a similarity between the earlier mark and the mark applied for is a precondition for the application both of Article 8(1)(b) of Regulation No 207/2009 and 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) and it is not apparent either from the wording of paragraphs 1(b) and 5 of that article or from the case-law that the concept of similarity has a different meaning in each of those paragraphs (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 39). It is true that those provisions differ in terms of the degree of similarity required. Whereas the implementation of the protection provided for under Article 8(1)(b) of Regulation No 207/2009 is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion on the part of the relevant public, the existence of such a likelihood of confusion is not necessary for the protection conferred by paragraph 5 of that article. Accordingly, the types of injury referred to in Article 8(5) may be the consequence of a lower degree of similarity between the earlier and later marks, 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 (judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraph 53; of 10 March 2021, Puma v EUIPO – CAMäleon (PUMA-System), T‑71/20, not published, EU:T:2021:121, paragraph 26; and of 19 May 2021, Representation of a bounding feline, T‑510/19, not published, EU:T:2021:281, paragraph 34).

36 Furthermore, it is clear from the case-law that two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. The assessment of the visual, phonetic or conceptual similarity of the signs at issue must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements (see, to that effect, judgment of 27 October 2016, Spa Monopole v EUIPO – YTL Hotels & Properties (SPA VILLAGE), T‑625/15, not published, EU:T:2016:631, paragraph 35 and the case-law cited).

37 As regards the relevant public, it must be pointed out that, according to the case-law, the public to be taken into account for the purposes of assessing whether one of the injuries referred to in Article 8(5) of Regulation No 207/2009 exists will vary according to the type of injury alleged by the proprietor of the earlier mark. Thus, the relevant public with regard to which the assessment of whether 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 which 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).

38 In the present case, it must be stated that the comparison of the marks at issue carried out by the Board of Appeal applies equally to both of those relevant publics (taken together, ‘the relevant public’), since the distinction between them does not have any effect with regard to that comparison. Moreover, the applicant does not dispute the Board of Appeal’s definition of the relevant public.

39 The applicant takes the view, in essence, that the figurative element in the mark applied for, which represents a bounding feline, is dominant in relation to the other elements in that mark, in particular the word element ‘CMS’.

40 In paragraphs 19 and 20 of the contested decision, the Board of Appeal found that the mark applied for was a composite sign that consisted of the bold white letters ‘CMS’ written on the lower half of a black rectangular background. It stated that above the letters was a stylised depiction of an unspecific big white cat, jumping upwards from left to right. It observed that the word ‘Italy’, in a much smaller size and font, appeared below those letters. It found that the letters ‘CMS’ had no meaning in relation to the goods and services applied for, which essentially consisted of industrial machine tools for making heat exchangers, systems and equipment for heating, air conditioning, refrigeration, ventilation and related services, whereas the word ‘Italy’ would be understood throughout the entire European Union as referring to their geographical origin. The Board of Appeal took the view that, in relation to technical equipment and machinery, the depiction of a leaping big cat alluded to the strength and endurance for which tigers, leopards, jaguars, pumas and the like are known. It found that the frequent use of such figurative elements in trade marks was confirmed by the examples which had been furnished by the intervener, which showed numerous trade marks that combined word elements with stylised depictions of big cats to cover a broad variety of goods and services, including technical goods and services in Classes 7, 11 and 37. The Board of Appeal concluded that consumers would therefore pay less attention to the figurative element and would perceive the prominent bold letters ‘CMS’ as the dominant element of the sign in the overall impression created by that sign.

41 In that regard, it must be borne in mind that, according to settled case-law, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element. That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraphs 41 and 42; of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 42 and 43; and of 10 March 2021, PUMA-System, T‑71/20, not published, EU:T:2021:121, paragraph 27).

42 In the present case, it must be stated that the word element ‘CMS’, which is very visible in bold upper-case letters, is dominant in the overall impression created by the mark applied for and that the figurative element representing a bounding feline is, owing to its size and its position, rather of secondary importance in that mark, although it is not negligible. Contrary to what the applicant claims, the mere fact that that figurative element is placed above that word element does not confer greater significance on it in that overall impression.

43 In addition, it must be stated that, whereas the word element ‘CMS’ is of average distinctiveness with regard to the goods and services covered by the mark applied for, with which it has no semantic connection, the figurative element representing a bounding feline is of lower distinctiveness, because it alludes to certain characteristics of those goods and services, in particular the strength and endurance which are typical of the big cats, and, as the intervener established in the course of the administrative proceeding, such an element is frequently used in registered trade marks in order to designate such goods or services (see Annex B5). Furthermore, it must be pointed out that, according to the case-law, where a trade mark consists of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by citing their name than by describing the figurative element of the mark (judgment of 14 July 2005, Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37). That is the case here.

44 Consequently, the relevant public will perceive the word element ‘CMS’ as being the most distinctive and dominant element in the overall impression created by the mark applied for, but will pay only a secondary level of attention to the figurative element in that mark, whereas the small and descriptive element ‘Italy’ will be negligible.

45 The Board of Appeal was therefore right in finding, in essence, in paragraphs 19 and 20 of the contested decision, that the word element ‘CMS’ was the most distinctive and dominant element in the mark applied for and that the figurative element representing a bounding feline was only of secondary importance in the overall impression created by that mark.

46 The applicant claims, in essence, that the Board of Appeal did not duly take account of the figurative elements in the comparison of the marks at issue and that those marks are similar to a high degree.

48 In paragraphs 21 to 26 of the contested decision, the Board of Appeal first of all pointed out that earlier trade mark No 1 was a purely figurative mark which consisted of the black contours of a stylised depiction of a big cat leaping upwards from right to left. From a visual standpoint, the Board of Appeal found that the signs coincided in the figurative device of a big cat, which was, however, of secondary importance in the overall impression created by the mark applied for. The Board of Appeal took the view that there were also notable differences in the details of those devices. It found that, since the mark applied for was a composite sign which contained both word and figurative elements, the comparison had to be made on the basis of its overall impression, which was dominated by the word element ‘CMS’, a word element which had no counterpart in earlier trade mark No 1. The Board of Appeal concluded that, visually, the degree of similarity was very low.

49 From a phonetic standpoint, the Board of Appeal found that the marks were dissimilar, even on the assumption that the earlier mark might be referred to as ‘jumping animal’ or ‘puma’, because the mark applied for would be pronounced by means of its dominant element as ‘CMS’, which was phonetically different from the pronunciation of any words by which the earlier mark might be referred to orally. From a conceptual standpoint, the Board of Appeal found that the dominant element ‘CMS’ in the mark applied for had no meaning, whereas its figurative element and the earlier mark both conveyed the concept of a jumping big cat. However, since the figurative element was of secondary importance in the overall impression created by the mark applied for, it found that the degree of conceptual similarity was very low. The Board of Appeal concluded that, overall, the marks at issue were similar to a very low degree.

50 In that regard, it must be stated at the outset that, contrary to what the applicant claims, the Board of Appeal duly took account of the figurative elements in the comparison of the marks at issue and assessed the similarity between those marks by taking their overall impressions into consideration. Moreover, it rightly pointed out that the assessment of the similarity between two marks could not be made by taking only one element of a composite mark and comparing it with another mark. The applicant’s argument that, in essence, the Board of Appeal should have taken into consideration only or mainly the figurative element representing a bounding feline, without giving due weight to the other elements, in particular to the most distinctive and dominant element in the mark applied for, namely the word element ‘CMS’, is contrary to settled case-law (see paragraph 41 above) and cannot succeed.

51 From a visual standpoint, it must be pointed out that, since the mark applied for is a composite mark consisting of both a word element and a figurative element, the comparison must be carried out on the basis of the overall impression created by that mark. The word element ‘CMS’, which dominates that overall impression (see paragraph 45 above), has no counterpart in the earlier mark. That is a major difference between the marks at issue, which contributes towards significantly weakening the similarity which could result from the presence within both of them of a figurative element representing a bounding feline.

52 Moreover, as the Board of Appeal pointed out, there are also notable differences between the representation of the figurative element in the mark applied for and that of the figurative element in the earlier mark. In the mark applied for, the feline is jumping from left to right, the front paws not being clearly distinct from the body, with the tail in a horizontal position, the head slightly bent downwards and the mouth open, a movement which suggests a feline about to attack its prey. By contrast, the earlier mark, in which the feline is bounding from right to left, appears to show a rather idealised movement with the tail almost vertically up in the air, the mouth closed and the muscular front paws being clearly discernible.

53 In that regard, it must be pointed out that the legislation on EU trade marks does not permit the protection of a concept or an idea, such as that of a bounding feline in the present case, but only the protection of a concrete expression of a concept or an idea, such as that incorporated in a sign and defined by the clear and precise representation of that sign (see, to that effect, judgment of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 130). The differences between the representations of the marks at issue must therefore be taken into consideration, since they are perceived by the relevant public.

54 Furthermore, as regards the applicant’s argument based on the judgment of 3 May 2017, Environmental Manufacturing v EUIPO – Société Elmar Wolf (Representation of the head of a wolf) (T‑681/15, not published, EU:T:2017:296), in which it was held that a sign consisting of a figurative element representing the head of a canine was visually similar to a composite sign consisting of two word elements and of a figurative element representing the head of a canine, it must be held, as pointed out by EUIPO, that the conclusions reached in that case cannot be transposed to the present case. In the present case, by contrast with the abovementioned case, the figurative element in the mark applied for, which represents a bounding feline is, on account of its size and position, secondary in relation to the word element ‘CMS’, which occupies a dominant position in that mark. Furthermore, it is less distinctive than that word element. Consequently, in the present case, the figurative element in the mark applied for is of only secondary importance with regard to the comparison of the marks at issue.

55 Furthermore, the applicant’s attempts, in paragraphs 59 to 61 of the application, to juxtapose a modified and differently oriented version of the figurative element in the mark applied for with the figurative element in the earlier mark or to compare the marks at issue by replacing the figurative element in the mark applied for with the earlier mark cannot be taken into consideration and must be firmly rejected. According to settled case-law, the comparison must be made between the signs as registered or as they appear in the application for registration (judgments of 8 December 2005, Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, EU:T:2005:438, paragraph 57, and of 8 May 2018, Luxottica Group v EUIPO – Chen (BeyBeni), T‑721/16, not published, EU:T:2018:264, paragraph 66), and not in accordance with fictitious arrangements.

56 In that regard, it must be stated that, when assessing whether they are identical or similar, the signs must be compared in the form in which they are protected, that is to say, as they were registered or as they appear in the application for registration. The actual or potential use of registered marks in another form is irrelevant when comparing the signs. The orientation of the signs, as set out in the application for registration, may have an impact on the scope of their protection and, consequently, contrary to what the applicant claims, in order to avoid any uncertainty and doubt, the comparison between the signs can be carried out only on the basis of the shapes and orientations in which those signs are registered or applied for (see, to that effect, judgment of 21 April 2021, Representation of a circle containing two interlaced curves, T‑44/20, not published, EU:T:2021:207, paragraphs 25 and 26 and the case-law cited).

57 Consequently, given that the overall impression created by the mark applied for is dominated by the word element ‘CMS’, which has no counterpart in the earlier mark, whereas the figurative element in that mark is of only secondary importance, and also given the notable differences between the figurative elements in the marks at issue, it cannot be held that those marks are visually similar to an average degree, and even less to a high degree, as the applicant claims. In the light of all of those differences, the overall impressions created by those marks are visually similar only to a very low degree. The assessments of the Board of Appeal which have been referred to in paragraph 48 above, assessments which have not otherwise been disputed by the applicant, must therefore be upheld.

58 From a phonetic and conceptual standpoint, there is no need to call into question the findings of the Board of Appeal which have been referred to in paragraph 49 above, findings which have not, moreover, been specifically disputed by the applicant.

59 The Board of Appeal was therefore right in finding, in paragraphs 21 to 26 of the contested decision, that the mark applied for and earlier trade mark No 1 were similar to a very low degree.

60 The applicant claims, in essence, that the Board of Appeal did not duly take account of the figurative elements in the comparison of the marks at issue and that those marks are similar to a high degree.

62 In paragraphs 28 to 32 of the contested decision, the Board of Appeal, first of all, referred to its earlier description of the mark applied for in paragraph 19 of that decision (see paragraph 40 above). Next, it pointed out that earlier trade mark No 2 was a purely figurative mark that consisted of a black stylised depiction of a big cat leaping upwards from right to left. From a visual standpoint, the Board of Appeal took the view that the degree of similarity was even lower than that which had been found to exist in the comparison with earlier trade mark No 1, because the figurative devices not only differed in several graphic details, but also in the colour, because the sign applied for showed a big cat in white, whereas the earlier mark consisted of a big cat in black. It found that the earlier mark enjoyed protection only with regard to the black figurative device as registered and not with regard to depictions of big cats in general. The Board of Appeal concluded that the degree of visual similarity was therefore extremely low.

63 From a phonetic standpoint, the Board of Appeal found that the signs were dissimilar, irrespective of the pronunciation of the earlier mark. From a conceptual standpoint, it found that there was only a low degree of similarity because the coincidence in the concept of a jumping big cat was limited to an element that was of low distinctiveness in the mark applied for. The Board of Appeal concluded that the marks at issue were similar to an extremely low degree.

64 In that regard, it must be stated that, from a visual standpoint, since the applicant’s criticism relates essentially to the determination of the distinctive and dominant elements in the marks at issue and it has been held that the word element ‘CMS’, which does not have any counterpart in the earlier mark, and not the figurative element representing a bounding feline, is the most distinctive and dominant element in the sign applied for (see paragraph 45 above), the assessments of the Board of Appeal which have been referred to in paragraph 62 above, assessments which have not otherwise been disputed by the applicant, must be upheld.

65 It must, however, be pointed out that the relevant public will notice the difference in colour or greyscale, black or white respectively, between the bounding felines represented in earlier trade mark No 2 and the mark applied for. Consequently, there is an extremely low degree of similarity as regards earlier trade mark No 2, in which the feline is black, and not a very low degree of similarity as regards earlier trade mark No 1, in which the feline is white (see paragraph 59 above).

66 From a visual and phonetic standpoint, there is no need to call into question the findings of the Board of Appeal which have been referred to in paragraph 63 above, findings which have not, moreover, been specifically disputed by the applicant.

67 The Board of Appeal was therefore right in finding, in paragraphs 28 to 32 of the contested decision, that the mark applied for and earlier trade mark No 2 were similar to an extremely low degree.

68 The applicant claims, in essence, that the Board of Appeal did not duly take account of the figurative elements in the comparison of the marks at issue and that those marks are very similar.

70 In paragraphs 35 to 39 of the contested decision, the Board of Appeal, first of all, referred to its earlier description of the mark applied for in paragraph 19 of that decision (see paragraph 40 above). Furthermore, it stated that the earlier mark was a composite sign that consisted of the word ‘PUMA’ in bold black stylised letters and the black stylised depiction of a big cat jumping from right to left, which was arranged over the final letters ‘MA’. It took the view that the word ‘PUMA’ would be understood throughout the European Union as referring to the big cat of the same name and that the figurative element would be perceived as a mere illustration of that meaning, namely a stylised depiction of a puma, and was of secondary importance. It therefore found that the dominant element in the earlier mark was the word ‘PUMA’, which had no meaning in relation to the goods in Classes 18, 25 and 28 on which the opposition was based.

71 From a visual standpoint, the Board of Appeal found that the dominant elements in both marks, ‘CMS’ and ‘PUMA’, were entirely different and that those marks differed, moreover, in their overall layout. It stated that, whereas the mark applied for consisted of a black rectangle with white lettering and a figurative device that spanned the whole word element, the earlier mark consisted of a word in black letters with a figurative element arranged over its end. It found that, even with regard to the stylised depiction of a big cat, in which the two marks coincided, there were clear differences in the colour, position and the way that feline was represented, the direction of the jump, the position of the tail and the depiction of the head and the paws. Taking into account that the figurative element was, moreover, of secondary importance in both of the marks at issue, the Board of Appeal concluded that those marks were visually dissimilar.

72 From a phonetic standpoint, the Board of Appeal found that the marks at issue were also dissimilar, because only the dominant word elements ‘CMS’ and ‘PUMA’, which were clearly different, would be pronounced.

73 From a conceptual standpoint, the Board of Appeal found that the dominant element ‘CMS’ in the mark applied for had no meaning, whereas the word ‘PUMA’ referred to an animal. It took the view that a conceptual comparison was not therefore possible and that, although it was true that the figurative elements in both marks referred to the concept of a jumping big cat, that could not suffice to establish a relevant similarity, since both elements would be perceived as mainly ornamental. The Board of Appeal concluded that the marks at issue were dissimilar and that the opposition based on earlier trade mark No 3 had to fail for that reason alone, since one of the conditions of Article 8(5) of Regulation No 207/2009 was not satisfied.

74 In that regard, as far as the distinctive and dominant elements of earlier trade mark No 3 are concerned, it must be held that the word element ‘PUMA’ is, by virtue of its being markedly larger and being written in bold black stylised letters, dominant in relation to the figurative element representing a bounding feline, which is of secondary importance in the perception of the relevant public. According to the case-law, where a trade mark consists of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by citing their name than by describing the figurative element of the mark (judgment of 14 July 2005, SELENIUM-ACE, T‑312/03, EU:T:2005:289, paragraph 37). That is particularly the case here because the figurative element is perceived as a mere illustration of the word element.

75 From a visual standpoint, since the applicant’s criticism relates essentially to the determination of the distinctive and dominant elements in the signs at issue and since it has already been held, first, that the word element ‘CMS’, which does not have any counterpart in the earlier mark, and not the figurative element representing a bounding feline, is the most distinctive and dominant element in the sign applied for (see paragraph 45 above) and, secondly, that the word element ‘PUMA’ is the most distinctive and dominant element in earlier trade mark No 3 (see paragraph 74 above), the assessments of the Board of Appeal which have been referred to in paragraph 71 above must be upheld, in particular the assessment that, since the figurative element is, moreover, of secondary importance in the two marks at issue, those marks are visually dissimilar.

76 From a phonetic standpoint, there is no reason to call into question the findings of the Board of Appeal which have been referred to in paragraph 72 above, findings which have not, moreover, been specifically disputed by the applicant.

77 From a conceptual standpoint, it is true that the parties do not directly dispute the assessments of the Board of Appeal which have been referred to in paragraph 73 above. However, it must be pointed out, as observed by the Board of Appeal, that, although the dominant element ‘CMS’ in the mark applied for has no meaning for the relevant public, by contrast, the dominant element ‘PUMA’ in earlier trade mark No 3 conveys a conceptual message which will be easily perceived by that public, since the figurative elements of those marks will, moreover, be regarded as mainly ornamental. As is apparent from the case-law, where one of the marks at issue has a meaning from the perspective of the relevant public and the other mark has no meaning, it must be held that the marks at issue are conceptually dissimilar (see, to that effect, judgment of 2 February 2022, Canisius v EUIPO – Beiersdorf (CCLABELLE VIENNA), T‑694/20, not published, EU:T:2022:45, paragraph 81 and the case-law cited). Consequently, contrary to what the Board of Appeal asserted, it was possible to carry out a conceptual comparison of the marks at issue. The fact, however, remains that no conceptual similarity can be held to exist in the present case, as the Board of Appeal also stated.

78 The Board of Appeal was therefore right in finding that the overall impressions created by the mark applied for and earlier trade mark No 3 were dissimilar and that the opposition based on earlier trade mark No 3 had to fail for that reason alone, since one of the conditions of Article 8(5) of Regulation No 207/2009 was not satisfied.

79 According to the case-law, Article 8(5) of Regulation No 207/2009 is manifestly inapplicable where any similarity between the marks at issue is ruled out (see judgment of 20 November 2014, Intra-Presse v Golden Balls, C‑581/13 P and C‑582/13 P, not published, EU:C:2014:2387, paragraph 73 and the case-law cited).

The second part of the single plea, relating to the existence and strength of the reputation of the earlier marks

81 By the second part, the applicant complains that the Board of Appeal made various errors in the individual and overall assessment of the evidence of reputation of the earlier marks which had been filed throughout the proceedings before EUIPO (and is listed in Annexes A5.1 and A5.2 to the application). That part consist of four complaints, relating to, first, the failure to take into account the previous decision adopted in opposition proceedings B 1 291 618, secondly, the evidence filed before the Opposition Division, other than the previous decisions of the Opposition Division, thirdly, the previous decisions in opposition proceedings B 1 459 017 and B 1 287 178 which had been relied on before the Opposition Division and, fourthly, the evidence submitted before the Second Board of Appeal.

82 As regards the nature of reputation, it is clear from the case-law of the Court of Justice that a mark has a reputation for the purposes of EU law where it is known by a significant part of the public concerned by the goods or services covered by that mark, within a substantial part of the relevant territory. Whether a reputation exists must be assessed by taking into consideration all the relevant factors of the case, namely, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking in promoting it (see, to that effect, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraphs 55 and 56 and the case-law cited).

83 As regards the burden of proving reputation, it must be stated that that burden rests on the proprietor of the earlier mark (see, to that effect, judgment of 23 September 2020, Bauer Radio v EUIPO – Weinstein (MUSIKISS), T‑421/18, EU:T:2020:433, paragraph 52). The second part of Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001) provides that, in inter partes proceedings, EUIPO’s examination ‘shall be restricted to the facts, evidence and arguments provided by the parties and the relief sought’. It follows that, in assessing whether an earlier mark has a reputation, EUIPO cannot take into account facts with which it is acquainted because of its own knowledge of the market or examine the case file of its own motion, but that its findings must be exclusively based on information and documents provided by the proprietor of the earlier mark. Although EUIPO may, in its examination, take into consideration well-known facts, the reputation of the earlier mark cannot therefore in itself constitute a well-known fact.

84 As regards the quality of the evidence of reputation, it must be pointed out that the wording of Article 8(5) of Regulation No 207/2009 states clearly that an earlier mark merits broader protection only if it ‘has a reputation’. It follows that the evidence of reputation must be clear, specific and convincing, in the sense that the proprietor of the earlier mark must prove all the facts necessary in order for it to be concluded with certainty that his or her mark is known by a significant part of the public concerned. The reputation of the earlier mark must be sufficiently established in order to convince EUIPO, and not merely assumed. It is also apparent from the case-law that the proof of reputation must include adequately substantiated or verifiable objective particulars to make it possible to assess the relevant factors which have been referred to in paragraph 82 above (see, to that effect, judgment of 13 December 2004, El Corte Inglés v OHIM – Pucci (EMILIO PUCCI), T‑8/03, EU:T:2004:358, paragraph 73).

85 As regards the assessment of the evidence of reputation, it must be stated that an overall assessment of the evidence adduced by the proprietor of the earlier mark must be carried out in order to establish whether that mark has a reputation (see, to that effect, judgment of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 72). An accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (see judgment of 9 September 2020, Novomatic v EUIPO – Brouwerij Haacht (PRIMUS), T‑669/19, not published, EU:T:2020:408, paragraph 52 and the case-law cited).

86 It is in the light of those considerations that the complaints in the present part must be examined.

87 In the present case, it must be pointed out at the outset, as observed by EUIPO, that the decisions which have been produced for the first time before the Court, as Annexes A6 to A10, are inadmissible (see paragraphs 20 to 25 above). Consequently, the Board of Appeal cannot be criticised for not having referred to them of its own motion in its reasoning.

– The first complaint, relating to the failure to take into account the previous decision adopted in opposition proceedings B 1 291 618 and, in essence, to the determination of the earlier marks which should be taken into consideration with regard to the examination of the opposition, including the examination as regards reputation

88 By the first complaint, the applicant claims that the Board of Appeal erred in law in not taking into account the previous decision which had been adopted in opposition proceedings B 1 291 618 and, owing to that omission, infringed the principles of legal certainty, of equal treatment and of sound administration. It is true that it acknowledges that it can only be speculated that the Board of Appeal decided to consider only those decisions which concern earlier trade mark No 1, because it believed that that mark had more similarities with the mark applied for than earlier trade mark No 2. However, it submits that, even if that supposition were correct, the contested decision would nonetheless be erroneous. It argues that both of those marks are extremely similar and almost identical, so that it must be concluded that any decision recognising the reputation of one of those earlier marks is relevant in a case concerning the other mark.

89 EUIPO disputes the applicant’s arguments. It submits that, since the opposition was not successful on the basis of earlier trade mark No 1, which was found to be similar to a very low degree to the mark applied for, the opposition could equally not succeed on the basis of earlier trade mark No 2, which was found to be similar only to an extremely low degree and was protected for an even narrower list of goods. EUIPO also observes that earlier trade mark No 2 could not possibly be more reputed than earlier trade mark No 1, because the evidence submitted in opposition proceedings B 1 287 178, which related to earlier trade mark No 1 and was assessed by the Board of Appeal, is identical to the evidence submitted in opposition proceedings B 1 291 618, which related to earlier trade mark No 2. It contends that, moreover, the applicant has never claimed that the reputation of the two marks is somehow different. It argues that, as a result, since the outcome of the opposition would not have been different if it had been based on earlier trade mark No 2, there was no need for the Board of Appeal to take into account the opposition decision in opposition proceedings B 1 291 618.

90 The intervener disputes the applicant’s arguments. It submits that the Board of Appeal provided clear reasoning, by explaining that the decision which had been adopted in opposition proceedings B 1 291 618 was not relevant in the present case, because it concerned earlier trade mark No 2, which was similar only to an extremely low degree to the mark applied for, which made it irrelevant irrespective of whether that earlier mark was a reputed mark or not.

91 In that regard, it must be pointed out, as the Board of Appeal stated in paragraph 43 of the contested decision, that opposition proceedings B 1 291 618 concerned earlier trade mark No 2. It is therefore necessary to draw a distinction between whether the previous decision adopted in those opposition proceedings should have been taken into account as regards, in the first place, earlier trade mark No 1 and, in the second place, earlier trade mark No 2.

92 In the first place, as regards earlier trade mark No 1, it must be stated, as observed by EUIPO, that, since the Board of Appeal undertook its examination of reputation in relation to that earlier mark, it could take into account for that purpose only the decisions adopted in opposition proceedings B 1 287 178 and B 1 459 017, which concerned that mark, and not the decision adopted in opposition proceedings B 1 291 618, which related to a different earlier mark, namely earlier trade mark No 2.

93 It must be held that, when assessing whether an earlier mark has a reputation, EUIPO is required to examine only the evidence which clearly and specifically relates to the reputation of that particular mark, but not other evidence which relates to other marks, whether or not they are similar, to various degrees, to the earlier mark relied on. That restriction on EUIPO’s obligation to carry out an examination arises in particular from the requirements regarding the burden of proof of reputation and the quality of the evidence of reputation (see paragraphs 83 and 84 above).

94 In the present case, it must be pointed out, as observed by EUIPO, that earlier trade marks No 1 and No 2 are different. Apart from the marked differences in the colours (white or black) or greyscale used, the depictions of the figurative elements representing a large feline bounding towards the left also contain other differences, such as the angle of the jump and the thickness and length of the feline’s body, as is shown by their respective reproductions below:

95 Although it is true that, according to the case-law, the proprietor of a registered trade mark may, in order to prove the particular distinctive character and reputation of that mark, rely on evidence of its use in a different form, as part of another registered trade mark which has a reputation, provided that the relevant public continues to perceive the goods at issue as originating from the same undertaking (see, to that effect, judgment of 5 May 2015, Spa Monopole v OHIM – Orly International (SPARITUAL), T‑131/12, EU:T:2015:257, paragraph 33), that is not the case here, since earlier trades marks No 1 and No 2 are not part of each other, but are distinct.

96 Consequently, the Board of Appeal cannot be criticised for not having taken the previous decision adopted in opposition proceedings B 1 291 618, relating to earlier trade mark No 2, into account when assessing whether earlier trade mark No 1 had a reputation.

97 In the second place, as regards earlier trade mark No 2, it is necessary at the outset to determine the earlier marks which should be taken into consideration with regard to the examination of the opposition in the present case, including the examination as regards reputation.

98 In that regard, it must be borne in mind that, in paragraph 40 of the contested decision, the Board of Appeal found that it followed from the comparison of the signs that ‘the best case for the [applicant was based on] … earlier [trade] mark [No 1,] which [had] been found to be lowly similar to the [mark applied for]’. It therefore decided to ‘proceed with the examination of the opposition based on this mark’.

99 That implicitly, but necessarily, means that the Board of Appeal decided not to proceed further with the examination of the opposition based on earlier trade mark No 2, which the Board of Appeal had found to be similar to an extremely low degree to the mark applied for (see paragraph 67 above), and not merely similar to a very low degree as with regard to earlier trade mark No 1.

100 It is true that the applicant errs, in referring to the decision adopted in opposition proceedings B 1 291 618, in claiming first of all that the Board of Appeal, ‘without providing any argument, arbitrarily exclude[d] one of the decisions from its analysis’ or ‘simply refuse[d] to consider one of the previous decisions without giving any reasons whatsoever’. The reasoning which the Board of Appeal provided in paragraph 40 of the contested decision is sufficient, first, to allow the applicant to know the reasons for the contested decision in that regard so as to enable it to defend its rights, which it has, moreover, subsequently done, and, secondly, to enable the Court, before which the present case has been brought, to review the legality of those aspects of that decision.

101 However, it must be stated that that reasoning on the part of the Board of Appeal is incorrect in the light of the internal logic of Article 8(5) of Regulation No 207/2009, on which the applicant also relies.

102 In that regard, it is important to bear in mind that, according to settled case-law, whether there is a link between the marks at issue and whether one of the types of injury referred to in Article 8(5) of Regulation No 207/2009 exists must be assessed globally, taking into account all factors relevant to the circumstances of the case, which include the strength of the earlier mark’s reputation and the degree of the earlier mark’s distinctive character, whether inherent or acquired through use. Furthermore, the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that harm has been caused to it (see, to that effect, judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraph 41 and the case-law cited, paragraphs 42, 53, 68 and 69, and of 9 September 2016, Puma v EUIPO – Gemma Group (Representation of a bounding feline), T‑159/15, EU:T:2016:457, paragraphs 41 and 42).

103 It is clear from that case-law that whether there is a link between the marks at issue for the purposes of Article 8(5) of Regulation No 207/2009 must be assessed globally, taking into account all factors relevant to the circumstances of the case, including, inter alia, the strength of the earlier mark’s reputation. Consequently, the degree of similarity between the marks at issue is by no means the only relevant factor in assessing whether there is a link between those marks.

104 In the light of the overall nature of the assessment of whether there is a link between the marks at issue, the factor of the variably high, average or low degree of similarity between the signs cannot therefore, in principle, on its own determine the outcome of such an assessment. In particular, an earlier mark which is similar to a lower degree to the mark applied for might, as the case may be, be more reputed.

105 It is otherwise only where the marks at issue are completely different, in which case the lack of a similarity between those marks is sufficient to rule out the existence of a link between them and, consequently, the application of Article 8(5) of Regulation No 207/2009. That is, moreover, the case here as regards earlier trade mark No 3 (see paragraphs 78 and 79 above).

106 In the present case, it must therefore be held that the Board of Appeal erred when it found, in essence, that it was not necessary to examine the opposition based on earlier trade mark No 2 on the sole ground that there was a lower degree of similarity between that mark and the mark applied for than there was between earlier trade mark No 1 and the mark applied for. EUIPO also errs in submitting, in its response, that, since the opposition was not successful on the basis of earlier trade mark No 1, which was found to be similar to a very low degree to the mark applied for, the opposition could equally not succeed on the basis of earlier trade mark No 2, which was found to be similar only to an extremely low degree and was protected for an even narrower list of goods.

107 It cannot be expressly ruled out a priori that the overall assessment of whether there is a link between the mark applied for and earlier trade mark No 2, in the light of an assessment of whether that earlier mark has a reputation and the strength of that reputation, could have been more favourable to the applicant than the overall assessment of whether there was a link with earlier trade mark No 1. Consequently, the error in law made by the Board of Appeal is likely to have had a decisive influence as regards the outcome of the opposition based on earlier trade mark No 2.

108 The Board of Appeal should therefore have examined further the opposition based on earlier trade mark No 2, which it failed to do, in disregard of the overall nature of the assessment of whether there was a link between the marks at issue and harm caused to the reputation of that earlier mark.

109 EUIPO submits that earlier trade mark No 2 could not possibly be more reputed than earlier trade mark No 1. It contends that, as was stated in paragraph 55 of the contested decision, the evidence submitted in opposition proceedings B 1 287 178, which related to earlier trade mark No 1 and was assessed by the Board of Appeal, is identical to the evidence submitted in opposition proceedings B 1 291 618, which related to earlier trade mark No 2. It submits that, moreover, the applicant has never claimed that the reputation of the two marks is somehow different. As a result, EUIPO concludes that, since the outcome of the opposition would not have been different even if it had been based on earlier trade mark No 2, there was no need for the Board of Appeal to take into account the opposition decision in opposition proceedings B 1 291 618.

110 In that regard, it must be stated that the considerations which EUIPO has put forward before the Court and which have been summarised in paragraph 109 above are not apparent from the reasoning in the contested decision, since the Board of Appeal did not examine the opposition based on earlier trade mark No 2 or, in particular, whether that mark had a reputation. However, additional reasoning cannot be successfully relied on before the Court in order to perfect potentially inadequate reasoning in the contested decision (see judgment of 11 December 2014, CEDC International v OHIM – Underberg (Shape of a blade of grass in a bottle), T‑235/12, EU:T:2014:1058, paragraph 71 and the case-law cited). If the Board of Appeal had intended to base the contested decision on such considerations, it should have done so expressly.

111 Furthermore, since the question of whether earlier trade mark No 2 had a reputation was not examined by the Board of Appeal in the contested decision, the Court is not itself entitled to assess that issue. It must be borne in mind that, in accordance with Article 65(2) of Regulation No 207/2009 (now Article 72(2) of Regulation 2017/1001), the General Court carries out a review of the legality of the decisions of EUIPO (see, to that effect, judgment of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraph 52). It is not for the General Court to put itself in EUIPO’s place in exercising the powers vested in EUIPO by that regulation (judgments of 15 March 2006, Athinaiki Oikogeniaki Artopoiia v OHIM – Ferrero (FERRÓ), T‑35/04, EU:T:2006:82, paragraph 22, and of 1 June 2018, Casual Dreams v EUIPO – López Fernández (Dayaday), T‑900/16, not published, EU:T:2018:327, paragraph 38).

112 The first complaint must therefore be upheld as regards earlier trade mark No 2.

113 Since the first complaint must be rejected as regards earlier trade mark No 1, the complaints which follow will therefore be examined only in so far as they relate to the reputation of that mark.

– The second complaint, relating to the evidence filed before the Opposition Division, other than the previous decisions of the Opposition Division

114 By the second complaint, the applicant claims, in essence, that the Fourth Board of Appeal did not correctly re-examine the evidence of reputation which had been filed before the Opposition Division, other than the previous decisions of the Opposition Division, and which had previously been examined by the Second Board of Appeal. It submits that paragraph 42 of the contested decision is based on an incorrect inference, because the examination of that evidence was never discussed in the annulling order. The applicant argues that, on account of the obligation to examine and assess all the evidence provided globally and exhaustively, it was incumbent on the Board of Appeal to analyse the documents which it had filed before the Opposition Division together with the three previous decisions, as well as the other evidence submitted before the Board of Appeal. It contends that, since it did not do so, the contested decision is affected by a grave irregularity.

115 EUIPO disputes the applicant’s arguments. It submits that, when re-examining the present case, the Board of Appeal had no reason to deviate from the respective findings made previously in the proceedings as regards that evidence. It claims that the Board of Appeal implicitly took into account also the evidence submitted before the Opposition Division, but that it was insufficient to prove reputation for a greater number of goods than ‘sports shoes’ in Class 25.

116 The intervener disputes the applicant’s arguments. It argues that the fact that the evidence filed before the Opposition Division was insufficient was not disputed by the applicant and that the Board of Appeal could therefore rely on that fact.

117 It must be stated at the outset that the opposition decision adopted in opposition proceedings B 1 291 618 has been examined in the context of the first complaint, whereas the decisions adopted in opposition proceedings B 1 287 178 and B 1 459 017 are the subject of the third complaint. The present complaint concerns the other documents submitted before the Opposition Division.

118 It must be pointed out that the applicant submitted, before the Opposition Division, 18 documents, other than the previous decisions of the Opposition Division, for the purposes of proving that the earlier marks had a reputation. Those documents, which are listed in Annex A5.1 to the application, consist of a report of a market survey carried out in France in 2008 (Annex 1 to the notice of opposition), a report of a market survey carried out in Sweden in 2011 (Annex 2 to the notice of opposition), the judgment of 7 November 2013, Budziewska v OHIM – Puma (Bounding feline) (T‑666/11, not published, EU:T:2013:584) (Annex 3 to the notice of opposition), and 15 decisions of national trade mark offices, namely 3 of the Urząd Patentowy Rzeczypospolitej Polskiej (Polish Patent Office), 4 of the Institut national de la propriété industrielle (National Institute for Industrial Property) (INPI, France), 1 of the Instituto nacional da propriedade industrial (INPI, National Institute of Industrial Property, Portugal) and 7 of the Oficina Española de Patentes y Marcas (Spanish Patents and Trade Marks Office) (Annexes 4 to 18 to the notice of opposition).

119 In paragraph 42 of the contested decision, after pointing out that, as held by the annulling order, the three previous opposition decision relied upon by the applicant constituted evidence of reputation, the Board of Appeal found that, with regard to the evidence filed before the Opposition Division, that order did not find any fault with the assessment of the Second Board of Appeal that it did not suffice to prove reputation (see paragraph 11 above), with the result that there was therefore no need for a re-examination of those documents.

120 In that regard, it must be borne in mind that, in the annulling order, the Court merely held that the Board of Appeal was required to take into account the three previous decisions of the Opposition Division which the applicant had relied on as evidence of the reputation of its earlier marks, but in no way held that the other items of evidence which had been submitted before the Opposition Division had evidential value or assessed that evidential value.

121 In particular, although, in paragraph 11 (not published) of the annulling order, under the heading ‘Background to the dispute’ and not under the heading ‘Law’, the Court referred to the assessments of the Second Board of Appeal with regard to those other items of evidence which had been submitted before the Opposition Division, it did not, subsequently, either expressly or implicitly, uphold those assessments in any way.

122 Consequently, the fact that the Court did not hold that there was any error in the Second Board of Appeal’s assessment that those items of evidence were not sufficient to prove reputation (see paragraph 11 above) is due solely to a lack of any substantive examination of that issue and not to any implicit upholding of the first decision in that regard.

123 It must therefore be held that the Board of Appeal erred in law in stating, in paragraph 42 of the contested decision, that there was no need for a re-examination of the evidence relating to reputation which had been filed before the Opposition Division other than the previous decisions of the Opposition Division.

124 It must also be noted that that incorrect statement by the Board of Appeal, in paragraph 42 of the contested decision, seems to contradict the correct preliminary observation, in paragraph 14 of that decision, that, in the annulling order, the Court only decided on the evidence to be taken into consideration in the assessment of the reputation of the earlier marks, but did not examine that evidence or any of the other conditions set out in Article 8(5) of Regulation No 207/2009.

125 The Board of Appeal should therefore have re-examined the evidence relating to reputation which had been submitted before the Opposition Division other than the previous decisions of the Opposition Division, namely the 18 documents which have been referred to in paragraph 118 above. Incidentally, it may be pointed out that, in the course of such a re-examination, the Board of Appeal, in the present case, would not have been precluded from adopting the same assessment as that which had previously been adopted by the Second Board of Appeal, since the Court did not cast doubt on that assessment in the annulling order.

126 As regards the assessment of the evidence of reputation, it is clear from settled case-law, which has been referred to in paragraph 85 above, that an overall assessment of the evidence adduced by the proprietor of the earlier mark must be carried out in order to establish whether that mark has a reputation (see, to that effect, judgments of 10 May 2012, Rubinstein and L’Oréal v OHIM, C‑100/11 P, EU:C:2012:285, paragraph 72, and of 9 September 2020, PRIMUS, T‑669/19, not published, EU:T:2020:408, paragraph 52 and the case-law cited).

127 Furthermore, according to other settled case-law, Article 76(1) of Regulation No 207/2009 (now Article 95(1) of Regulation 2017/1001), which provides that ‘[EUIPO] shall examine the facts of its own motion’, but that, ‘however, in proceedings relating to relative grounds for refusal of registration, [EUIPO] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought’, constitutes a statement of the duty of diligence, under which the relevant institution is required to examine carefully and impartially all the relevant factual and legal aspects of the case in question (see judgment of 15 July 2011, Zino Davidoff v OHIM – Kleinakis kai SIA (GOOD LIFE), T‑108/08, EU:T:2011:391, paragraph 19 and the case-law cited; judgment of 25 March 2015, Apple and Pear Australia and Star Fruits Diffusion v OHIM – Carolus C. (English pink), T‑378/13, EU:T:2015:186, paragraph 46; see also judgment of 14 February 2019, Torro Entertainment v EUIPO – Grupo Osborne (TORRO Grande MEAT IN STYLE), T‑63/18, not published, EU:T:2019:89, paragraph 72 and the case-law cited).

128 It must therefore be held that, by failing to examine the evidence relating to reputation which had been submitted before the Opposition Division other than the previous decisions of the Opposition Division, the Board of Appeal infringed Article 8(5) of Regulation No 207/2009, Article 76(1) of that regulation and its duty of diligence.

130 First, EUIPO submits that, in the first decision (see paragraph 11 above), the Second Board of Appeal found that the evidence that had been submitted by the applicant before the Opposition Division was blatantly insufficient to prove reputation of the earlier marks invoked. It adds that, although, by the annulling order, the Court annulled that decision, it did not rule that the assessment of the evidence that was actually taken into consideration by the Board of Appeal was erroneous. It argues that therefore, when re-examining the present case, the Board of Appeal had no reason to deviate from the respective findings made previously in the proceedings as regards that evidence.

131 In that regard, it is sufficient to point out that, not only did the Court in no way rule on that issue in the annulling order (see paragraphs 120 to 124 above), but it also annulled the first decision (of the Second Board of Appeal). According to settled case-law, a judgment or an order annulling a measure takes effect ex tunc and thus has the effect of retroactively eliminating the annulled measure from the legal system (see judgment of 25 March 2009, Kaul v OHIM – Bayer (ARCOL), T‑402/07, EU:T:2009:85, paragraph 21 and the case-law cited). Consequently, that first decision does not form part of the legal context in the light of which the statement of reasons and the merits of the contested decision must be assessed (see, to that effect, judgment of 23 September 2020, Shape of a blade of grass in a bottle, T‑796/16, EU:T:2020:439, paragraphs 72 (not published), 200 and 201).

132 Furthermore, although it is true that it is possible that, when re-examining the present case, the Board of Appeal might have had no reason to deviate from the findings made previously in the proceedings as regards that evidence, the fact, however, remains that the Board of Appeal was required to carry out such a re-examination (see paragraph 125 above) and that it could not avoid doing so by referring either to the first decision, which had been annulled, or to the annulling order.

133 Secondly, in any event, EUIPO argues that, in the contested decision, the Board of Appeal implicitly took into account also the evidence submitted before the Opposition Division when it arrived at the finding that the evidence, considered as a whole, showed that earlier trade mark No 1 had some degree of reputation for ‘sports shoes’ in Class 25, but was insufficient to prove reputation for a greater number of goods. EUIPO submits that the survey report of 2008 in France, which was submitted before the Opposition Division in the present case and which is identified by the applicant as the decisive piece of evidence for proving that the earlier marks had a reputation, was also provided in opposition proceedings B 1 459 017. It contends that that report was therefore explicitly assessed by the Board of Appeal in the contested decision, but was found insufficient to prove that the earlier marks concerned had a reputation.

134 In that regard, it must be stated that the considerations which EUIPO has put forward before the Court and which have been summarised in paragraph 133 above are not apparent from the reasoning in the contested decision. However, additional reasoning cannot be successfully relied on before the Court in order to perfect potentially inadequate reasoning in the contested decision (see, to that effect, judgment of 11 December 2014, Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraph 71 and the case-law cited). If the Board of Appeal had intended to base the contested decision on such considerations, it should have done so expressly.

135 Furthermore, since the evidence submitted before the Opposition Division, other than the previous decisions of the Opposition Division, was not examined by the Board of Appeal in the contested decision, the Court is not itself entitled to assess that issue. It must be borne in mind that, in accordance with Article 65(2) of Regulation No 207/2009, the General Court carries out a review of the legality of the decisions of EUIPO. It is not for the General Court to put itself in EUIPO’s place in exercising the powers vested in EUIPO by that regulation (see paragraph 111 above).

137 Since the upholding of the first complaint leads to the annulment in its entirety of the contested decision as regards the opposition based on earlier trade mark No 2 and the upholding of the second complaint leads to the annulment in its entirety of the contested decision as regards the opposition based on earlier trade mark No 1, since there was no overall assessment of whether those earlier marks had a reputation by the Board of Appeal, it is not necessary to examine the third and fourth complaints in the second part. It must therefore be understood that the Court cannot either confirm or cast doubt on the Board of Appeal’s assessments regarding the previous decisions in opposition proceedings B 1 459 017 and B 1 287 178 which were relied before the Opposition Division and the additional evidence submitted before the Second Board of Appeal.

138 Furthermore, since there was no overall assessment by the Board of Appeal of whether earlier trade marks No 1 and No 2 had a reputation and the strength of that reputation, it is not possible to examine the third part of the single plea, by which the applicant claims, in essence, that there is a link between the marks at issue, that there are various risks of harm to the ‘excellent and very special’ reputation of the earlier marks and that the intervener cannot rely on any due cause.

139 According to settled case-law, the existence of a link between the marks at issue – which constitutes an implied essential precondition for the application of Article 8(5) of Regulation No 207/2009 – must be assessed globally, taking into account all factors relevant to the circumstances of the case. Those factors include, inter alia, the strength of the earlier mark’s reputation (see, to that effect, judgments of 27 November 2008, Intel Corporation, C‑252/07, EU:C:2008:655, paragraphs 41 and 42 and the case-law cited, and of 26 September 2018, Puma v EUIPO – Doosan Machine Tools (PUMA), T‑62/16, EU:T:2018:604, paragraphs 22 and 24 and the case-law cited).

140 Since the Board of Appeal erred in not examining certain aspects of the present case, regarding the oppositions based on earlier trade marks No 1 and No 2, in particular whether those marks had a reputation, it is not for the Court to rule on them, for the first time, in its review of the legality of the contested decision (see, to that effect, judgments of 5 July 2011, Edwin v OHIM, C‑263/09 P, EU:C:2011:452, paragraphs 72 and 73; of 11 December 2014, Coca-Cola v OHIM – Mitico (Master), T‑480/12, EU:T:2014:1062, paragraphs 75 and 92 and the case-law cited; and of 2 October 2015, The Tea Board v OHIM – Delta Lingerie (Darjeeling), T‑624/13, EU:T:2015:743, paragraph 151). It will therefore be for the Board of Appeal to assess those aspects in order to make the decision which it is called upon to give in the appeal that is still pending before it (see, to that effect, judgments of 26 September 2013, Centrotherm Systemtechnik v OHIM and centrotherm Clean Solutions, C‑610/11 P, EU:C:2013:593, paragraph 119, and of 11 December 2014, Shape of a blade of grass in a bottle, T‑235/12, EU:T:2014:1058, paragraph 102).

141 In the first place, as regards the opposition based on earlier trade mark No 1, the Board of Appeal erred in not re-examining the evidence of reputation which had been submitted before the Opposition Division other than the previous decisions of the Opposition Division in opposition proceedings B 1 459 017 and B 1 287 178 (see paragraphs 114 to 136 above), namely the documents referred to in paragraph 118 above. It will therefore be for the Board of Appeal, in the course of its re-examination of the opposition based on earlier trade mark No 1, to carry out an overall assessment of whether that earlier mark had a reputation and the strength of that reputation by taking into consideration all the relevant evidence, although it can rely on the analysis of the similarity of the signs which has already been upheld by the present judgment (see paragraphs 50 to 59 above).

142 In the second place, as regards the opposition based on earlier trade mark No 2, the Board of Appeal erred in finding, in essence, that it was not necessary to examine that opposition further on the sole ground that there was a lower degree of similarity between that earlier mark and the mark applied for than there was between earlier trade mark No 1 and the mark applied for (see paragraphs 97 to 112 above). It will therefore be for the Board of Appeal, when it takes the necessary measures to comply with the present judgment, to examine the opposition based on earlier trade mark No 2 and to carry out an overall assessment of whether that earlier mark had a reputation and the strength of that reputation by taking into consideration all the relevant evidence, including the decision adopted in opposition proceedings B 1 291 618, although it can rely on the analysis of the similarity of the signs which has already been upheld by the present judgment (see paragraphs 64 to 67 above).

143 In the third place, as regards the opposition based on earlier trade mark No 3, the Board of Appeal was right in finding that the mark applied for and that earlier mark were dissimilar and that the opposition based on earlier trade mark No 3 had to fail for that reason alone, since one of the conditions of Article 8(5) of Regulation No 207/2009 was not satisfied (see paragraphs 74 to 79 above).

144 In the light of all of the foregoing considerations, the applicant’s single plea must be upheld in part and, consequently, the contested decision must be partially annulled as regards the oppositions based on earlier trade marks No 1 and No 2 and the action must be dismissed as to the remainder, namely as regards the opposition based on earlier trade mark No 3.

145 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. Furthermore, under Article 134(3) of the Rules of Procedure, where each party succeeds on some and fails on other heads, the parties are to bear their own costs.

146 In the present case, the applicant has been unsuccessful as regards a number of claims, inter alia, so far as concerns the opposition based on earlier trade mark No 3. EUIPO and the intervener have been unsuccessful as regards a number of claims, so far as concerns the oppositions based on earlier trade marks No 1 and No 2.

1. Annuls the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 24 September 2020 (Case R 2215/2019‑4) as regards the oppositions based on earlier trade marks No 480 105 and No 593 987;

3. Orders Puma SE, EUIPO and CMS Costruzione macchine speciali SpA each to bear their own costs.

The first part of the single plea, relating to the similarity between the marks at issue

The second part of the single plea, relating to the existence and strength of the reputation of the earlier marks

– The second complaint, relating to the evidence filed before the Opposition Division, other than the previous decisions of the Opposition Division

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Puma v EUIPO - CMS (CMS Italy) (EU trade mark - Judgment) [2022] EUECJ T-711/20 (05 October 2022) URL: http://www.bailii.org/eu/cases/EUECJ/2022/T71120.html Cite as: ECLI:EU:T:2022:604, [2022] EUECJ T-711/20, EU:T:2022:604

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