JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
6 October 2011 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark SEVEN FOR ALL MANKIND – Earlier Community and international figurative marks containing the word element ‘seven’ – Relative ground for refusal – Similarity of the signs – Article 8(1)(b) and (5) of Regulation (EC) No 207/2009)
In Case T‑176/10,
Seven SpA, established in Leinì (Italy), represented by L. Trevisan, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Seven For All Mankind LLC, established in Vernon, California (United States), represented by A. Gautier-Sauvagnac, B. Guimberteau and M. Choukroun, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 28 January 2010 (Case R 1514/2008‑2) relating to opposition proceedings between Seven SpA and Seven For All Mankind LLC,
THE GENERAL COURT (Sixth Chamber),
composed of E. Moavero Milanesi (Rapporteur), President, N. Wahl and S. Soldevila Fragoso, Judges,
Registrar: J. Palacio González, Principal Administrator,
having regard to the application lodged at the Registry of the General Court on 15 April 2010,
having regard to the decision of 8 July 2010 designating English as the language of the case,
having regard to the response of OHIM lodged at the Registry of the General Court on 18 October 2010,
having regard to the response of the intervener lodged at the Registry of the General Court on 21 October 2010,
having regard to the decision of 10 February 2011 refusing to allow the submission of a reply,
further to the hearing on 11 July 2011, in which OHIM did not take part,
gives the following
Judgment
Background to the dispute
1 On 18 May 2005, the intervener, Seven For All Mankind LLC, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the word sign SEVEN FOR ALL MANKIND.
3 The goods in respect of which registration was sought fall, inter alia, within Classes 14 and 18 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 14: ‘Jewellery, namely, jewellery made of precious metals and stones, bracelets, earrings, rings, necklaces, cufflinks, tie tacks, tie fasteners, pins, watches, watchbands, belt buckles of precious metals’;
– Class 18: ‘Bags, hand bags, travel bags, travelling sets (leather goods), suitcases, rucksacks, valises, beach bags, trunks, document cases, pouches, wallets, card cases, portfolios, purses not of precious metal, cases for keys (leather goods), vanity cases, umbrella covers’.
4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 1/2006 of 2 January 2006.
5 On 31 March 2006, the applicant, Seven SpA, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above on the basis of the following:
– Community registration No 591206 of the figurative mark shown below, designating, inter alia, goods in Class 18 corresponding to the description: ‘Knapsacks and rucksacks, small knapsacks and rucksacks; school satchels; bags; multipurpose big bags; sling bags for carrying infants; pouches; camping sacks, beach bags; travelling bags; bags for climbers; school bags; leather and imitation of leather, wallets, purses, briefcases, cheque-book covers, keycases of leather or imitation of leather, paper-cases; hides; trunks and suitcases; umbrellas and walking sticks; whips, harness and saddlery’:
– Community registration No 3489234 of the figurative mark shown below, designating, inter alia, goods in Class 18 corresponding to the description: ‘Goods made from leather and imitations of leather not included in other classes; knapsacks, rucksacks, school bags, bags, baby carriers, stroller bags, shopping bags, travelling bags and holdalls, sports bags and holdalls; handbags, bags for campers; bags for climbers; school satchels, portfolio bags, billfolds, purses not of precious metal; cases for keys, fanny packs, travelling bags, umbrellas and parasols; trunks, canes; whips, harness, saddlery; briefcases of plastic’:
– international registration No 731954 of the figurative mark shown below, with effect in Germany and designating, inter alia, goods in Classes 14 and 18:
6 The goods covered by registration No 731954, corresponding, for each of those classes, to the following description:
– Class 14: ‘Watches, small clocks, wall clocks and their cases, chronometric instruments, imitation jewellery, fancy key rings’;
– Class 18: ‘Goods made from leather and imitations of leather not included in other classes; knapsacks, small knapsacks, school satchels, shopping bags, sling bags for carrying infants, bags, provisions bags, bags and big travelling bags, bags and big sport bags; hand bags, bags for campers; beach bags; bags for climbers; school satchels, billfolds, portfolio bags, purses not of precious metal; cases for keys, (fine leather goods), bum bags, suitcases, umbrellas and parasols; trunks, walking sticks; whips, harness and saddlery.’
7 The grounds put forward in support of the opposition were those referred to in Article 8(1)(a) and (b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(a) and (b) and Article 8(5) of Regulation No 207/2009). In the notice of opposition the applicant referred to evidence aimed at proving the reputation of the earlier trade marks.
8 On 19 September 2008, the Opposition Division upheld the opposition in part as regards ‘rucksacks’ in Class 18, considering in particular that, in the light of the evidence presented by the applicant, the earlier trade marks had acquired an average degree of distinctiveness on the Italian market in relation to those goods.
9 On 20 October 2008, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision. In an annex to the statement of grounds sent to the Board of Appeal, the applicant presented further evidence with a view to proving the reputation of the earlier trade marks in the Community.
10 By decision of 28 January 2010 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. Having noted that the intervener had not sought the annulment or alteration of the Opposition Division’s decision in so far as the opposition was upheld for ‘rucksacks’ in Class 18, and having consequently limited its review to the likelihood of confusion between the marks at issue in so far as the other goods in Classes 14 and 18 were concerned, the Board of Appeal found that there was no such likelihood, on the ground that the signs in question were not similar overall. It further stated that, in the absence of similarity between the signs, and even if the goods were found to be identical or similar, there was no likelihood of confusion, and there was therefore no need to establish whether the distinctive character or the reputation of the earlier trade marks had been proven, or to consider the other grounds of opposition based on Article 8(5) of Regulation No 207/2009.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision and, as a result, upholding the opposition, refuse the application for registration of the mark applied for in respect of the goods in Classes 14 and 18;
– in the alternative, in consequence of the annulment of the contested decision, refer the case back to OHIM;
– order OHIM to pay the costs, including those incurred in the proceedings before the Board of Appeal.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– dismiss the action;
– uphold the contested decision;
– declare that the trade mark applied for is eligible for registration;
– order the applicant to pay the costs, including those of proceedings before the Board of Appeal.
Law
14 In support of the action, the applicant relies in essence on two pleas in law, alleging infringement, first, of Article 8(1)(b) of Regulation No 207/2009 and, second, of Article 8(5) of that regulation.
15 The applicant contends, in essence, that the marks at issue are similar and that the Board of Appeal was wrong in concluding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. It also contends that the Board of Appeal should have taken into account the reputation of the earlier trade marks.
16 OHIM and the intervener contend that, since the signs at issue are not similar, there is no likelihood of confusion between the marks at issue, whatever the reputation and distinctiveness of the earlier trade marks.
Preliminary considerations
17 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(iii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered under international arrangements, which have effect in a Member State, with a date of application for registration that is earlier than the date of application for registration of the Community trade mark.
18 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception that the relevant public has of the signs and the goods or services at issue, account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
19 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).
20 Furthermore, in accordance with the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
21 It is in the light of those principles that the lawfulness of the contested decision must be examined.
22 As a preliminary point, it should be noted that, as the Board of Appeal rightly held, the goods at issue are intended for the general public and the relevant territory is the territory of the European Union, in particular Germany, given that international registration No 731954 has effect in that Member State. The applicant does not moreover dispute the Board of Appeal’s assessment.
23 It is also apparent from the decision of the Opposition Division that the goods at issue are either identical or similar. That finding, which is not called into question in the contested decision, is not moreover disputed by the parties.
24 It must therefore be examined whether the Board of Appeal was right to find that the signs at issue were not similar.
Comparison of the signs at issue
25 According to the case‑law, 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 (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30). The global assessment of the likelihood of confusion, in relation to 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 components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
26 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. 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 alone of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components of the mark are negligible in the overall impression created by that mark (see Case T‑7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II-3085, paragraph 40 and the case-law cited).
27 Moreover, according to the case-law, the fact that an element of a complex mark has only a weak distinctive character does not necessarily mean that that element cannot constitute a dominant element since, because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them (Case T‑153/03 Inex v OHIM – Wiseman (Representation of a cowhide) [2006] ECR II‑1677, paragraph 32, and Case T‑134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II‑5213, paragraph 54).
28 Furthermore, the Court of Justice has held that the existence of a similarity between two marks does not presuppose that their common component forms the dominant element within the overall impression created by the mark applied for (Case C‑254/09 P Klein Trademark Trust v OHIM [2010] ECR I‑0000, paragraph 56).
29 In the present case, at the visual level, the Board of Appeal held, in paragraph 26 of the contested decision, that despite the fact that the signs at issue had the word element ‘seven’ in common, they were not similar overall. It noted in particular that the figurative elements of the earlier trade marks were not reproduced in the mark applied for and that the word element ‘for all mankind’ was not present in the earlier trade marks. According to the Board of Appeal, those differences were sufficient to exclude any visual similarity between the marks at issue. In that regard, it noted in particular that the numeral 7 written as a word and in English possessed very low inherent distinctive character and that the addition of further elements, even with a low inherent distinctive character, might be capable of dispelling any likelihood of confusion. Thus, according to the Board of Appeal, the distinctiveness of the earlier trade marks is inherent in the totality of the figurative and word elements comprising them, so the word element ‘seven’ does not dominate the overall impression created by those marks.
30 The applicant challenges that finding and claims, in particular, that the word element ‘seven’ is the dominant element in the marks at issue. It also considers that the earlier trade marks have sufficient distinctive character, inter alia, because the word ‘seven’ is not widely used in the sector concerned, nor is it descriptive of the characteristics of the goods at issue.
31 It should be noted in that regard that the earlier trade marks are composite marks, comprising the word element ‘seven’, represented in a sequence of large and small letters in the case of earlier international trade mark No 731954, or reproduced in a slightly stylised font which rises to the right with a thick line below it in the case of earlier Community trade mark No 3489234. So far as earlier Community trade mark No 591206 is concerned, that element is reproduced in a simple bold font and the initial, capitalised, ‘s’ is very slightly more stylised than the other letters. The numeral 7, appearing in a similar font to that of the word ‘seven’ and containing a white star in the upper part, is placed at the beginning of the sign and rests on the contours of the letter ‘s’ to the point where it is almost indistinguishable from it. As the Board of Appeal held in paragraph 25 of the contested decision, although the last-mentioned mark may also be perceived as comprising the word ‘even’, preceded by a figurative element, it is more likely that a substantial part of the relevant public will immediately recognise the word element ‘seven’.
32 The trade mark applied for is a word mark, composed of the words ‘seven’, ‘for’, ‘all’ and ‘mankind’.
33 It should be stated first of all that the fact that the word ‘seven’ is present in both marks is an important point of similarity, given the not insignificant part played by that element in the perception of each of the marks at issue.
34 So far as earlier trade marks Nos 2489234 and 731954 are concerned, their figurative elements are limited to an unoriginal typeface and, because of their essentially ornamental function, are of lesser importance when compared with the word element ‘seven’, which will attract the attention of the relevant public to a greater extent and will be more easily remembered by that public. The same is true of the typeface of earlier trade mark No 591206 and the numeral 7 placed at the beginning of that mark. Therefore, the importance of the word element ‘seven’ in the overall impression created by the earlier trade marks must not be overlooked.
35 As regards the Board of Appeal’s statement, in paragraph 24 of the contested decision, that the word ‘seven’, like numerals in general, possessed very low inherent distinctive character because such signs are normally used to designate the quantity, weight or serial number of goods, and the public is not accustomed to perceiving them as an exclusive sign of an undertaking, in other words as a trade mark, the fact remains, as the applicant submits, that such general observations are insufficient to establish the very low distinctiveness of the word ‘seven’ with regard to the totality of the goods at issue.
36 In that regard, it is clear from the wording of Article 4 of Regulation No 207/2009 that numerals may be registered as Community trade marks. However, in order to be registered, any sign must meet the requirements laid down in Article 7 of Regulation No 207/2009, which prevents registration of signs not capable of fulfilling the function of indicating to the consumer the commercial origin of the goods and services covered by the application for registration. Therefore, a numeral may be registered as a Community trade mark provided that it is distinctive in relation to the goods and services covered by the application for registration and is not merely descriptive of them (see, to that effect, judgment of 19 November 2009 in Case T‑298/06 Agencja Wydawnicza Technopol v OHIM (1000), not published in the ECR, paragraphs 14 and 15 and the case-law cited).
37 Thus, in the present case, for the purpose of assessing the inherent distinctiveness of the word ‘seven’, the Board of Appeal should have carried out its analysis by reference to the goods at issue, in order to assess the capacity of that word to identify them as coming from a particular undertaking, and thus to distinguish them from those of other undertakings (see, to that effect, Representation of a cowhide, paragraph 35 and the case-law cited, and judgment of 13 December 2007 in Case T‑242/06 Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), not published in the ECR, paragraph 51). Since it does not have any particular link with the goods at issue and, as the applicant submits, is not commonly used in the sector concerned, the word ‘seven’ must be regarded as possessing an average degree of inherent distinctiveness as regards the goods at issue.
38 In any event, in the light of the case-law cited in paragraph 27 above, the fact that the word ‘seven’ may have only a very weak distinctive character does not affect the finding that that word is not insignificant in the overall impression produced by the earlier trade marks, since it is clear, in the light of the considerations set out in paragraph 34 above, that that word is likely to attract consumers’ attention and be remembered by them.
39 So far as the trade mark applied for is concerned, the word ‘seven’ is at the beginning of the sign. The consumer will generally pay greater attention to the beginning of a word sign than to the end. The first part of a trade mark tends to have a greater visual and phonetic impact on the consumer than the final part (see, to that effect, Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 51, and Case T‑472/08 Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA) [2010] ECR II‑0000, paragraph 62). Therefore, that word will attract the attention of the relevant public more than the additional words ‘for’, ‘all’ and ‘mankind’.
40 Moreover, it should be observed that, although the presence of those additional words in the trade mark applied for is not insignificant in the overall visual impression produced by that mark, in particular since the result is, as OHIM points out, to give the mark a different structure and length from those of the earlier trade marks, it cannot however obscure the visual similarity between the signs at issue resulting from the fact that the word element ‘seven’ in the earlier trade marks is reproduced in full in the trade mark applied for.
41 As regards the figurative elements of the earlier trade marks, given their essentially ornamental function noted in paragraph 34 above, the fact that those elements are not reproduced in the trade mark applied for does not dispel all visual similarity between the signs at issue.
42 Therefore, although the earlier trade marks include figurative elements whilst the trade mark applied for is a word mark, and even though the additional word elements of the trade mark applied for do not appear in the earlier trade marks, it must be held that the presence of the common element ‘seven’ at the beginning of the marks at issue means it cannot be denied that there is a certain degree of visual similarity between those marks (see, to that effect, judgment of 11 May 2010 in Case T‑492/08 Wessang v OHIM – Greinwald (star foods), not published in the ECR, paragraph 47).
43 Phonetically, it cannot be disputed that there is some similarity between the word elements ‘seven’ and ‘seven for all mankind’ of the signs at issue since they share the word ‘seven’, which is pronounced identically in both cases.
44 In that regard, it should be pointed out that, contrary to the intervener’s contention, it is unlikely that the relevant public would perceive the numeral 7 at the beginning of earlier Community trade mark No 591206 separately and pronounce it in English, and therefore pronounce that trade mark as ‘seven seven’, since that element is practically merged with the letter ‘s’ in the word ‘seven’ and is thus very difficult to perceive on its own.
45 Moreover, the difference between the signs at issue, owing to the presence in the trade mark applied for of the three additional words ‘for’, ‘all’ and ‘mankind’, although it produces a remarkable series of words, is not sufficient of itself to dispel the phonetic similarity created by the element common to both marks, namely the word element ‘seven’, all the more so since, according to the case-law cited in paragraph 39 above, the word element ‘seven’, at the beginning of the trade mark applied for, will attract the attention of the relevant public more.
46 Furthermore, the fact that the figurative components are left out of account when comparing the phonetic aspects of the signs makes the similarities between the signs stand out more clearly than in the visual comparison (see, to that effect, Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 40).
47 Therefore, contrary to the Board of Appeal’s findings, the presence of the common word element ‘seven’ is sufficient in the present case for a finding that there is some phonetic similarity between the signs at issue.
48 Conceptually, the marks at issue are composed of words in the English language; the word element ‘seven’, corresponding to the numeral 7, and the expression ‘for all mankind’. As the applicant maintains, the expression ‘for all mankind’ could easily be perceived by the English-speaking section of the relevant public as indicating the public for whom the trade mark is intended, in the present case, the general public. In that context, the expression ‘for all mankind’ must be regarded as having only a low degree of distinctiveness for the goods concerned. The conceptual scope of the trade mark applied for will therefore be mainly determined by the word ‘seven’, understood as being the main word to which the words ‘for all mankind’ apply. Therefore, there is some conceptual similarity between the marks at issue, at the very least so far as the English-speaking section of the relevant public is concerned.
49 Moreover, contrary to what OHIM and the intervener maintain, although the expression ‘for all mankind’ evokes the alleged ‘philosophical concept’ mentioned by those parties, it does not however give the trade mark applied for a conceptual content that is so different from that of the earlier trade marks that it excludes any conceptual link between the marks at issue resulting from the appearance in both of the word element ‘seven’; that is so even in the case of the English-speaking section of the relevant public. As was held in the preceding paragraph, as regards the sector concerned, that expression will easily be perceived by the relevant public as indicating the public for whom the goods in question are intended, and not as conveying an original and unusual message. Therefore, contrary to the Board of Appeal’s findings, there is some conceptual similarity between the marks at issue so far as the section of the relevant public having sufficient knowledge of English is concerned.
50 Moreover, as the Board of Appeal noted in paragraph 29 of the contested decision, the section of the public having only a basic knowledge of English will easily understand the word ‘seven’, which forms part of a basic vocabulary, and will therefore be able to establish a certain conceptual link between the marks at issue inasmuch as those marks refer to the same numeral, that link being attenuated, however, but not excluded, by the presence of the expression ‘for all mankind’ in the mark applied for. Lastly, the marks at issue will not have any conceptual significance for the section of the relevant public having no knowledge of English.
51 In the light of the foregoing, it must be concluded that there is a certain overall similarity between the marks at issue, in view of the presence, in the mark applied for, of the word element ‘seven’, which is not insignificant in the overall impression produced by the earlier trade marks.
52 That finding is not affected by OHIM’s earlier decisions relied on by the intervener, even where they dealt with comparable circumstances and were representative of OHIM’s decision-making practice in such circumstances. It is settled case-law that the decisions which the Boards of Appeal of OHIM are led to take under Regulation No 207/2009, concerning registration of a sign as a Community trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of that regulation, as interpreted by the Courts of the European Union, and not on the basis of an alleged previous decision-making practice (Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraph 68, and Case T‑109/07 L’Oréal v OHIM – Spa Monopole (SPA THERAPY) [2009] ECR II‑675, paragraph 27).
53 The Board of Appeal therefore made an error of assessment in not recognising that there is a certain degree of similarity between the signs at issue. That fact influenced its examination of the likelihood of confusion, since it was precisely on the basis of that lack of similarity that it found there to be no likelihood of confusion, without even taking into consideration the alleged reputation of the earlier trade marks on the market.
54 The more distinctive the earlier mark, the greater will be the likelihood of confusion. Thus, marks with a highly distinctive character, either inherently or because of the reputation they possess on the market, enjoy more extensive protection than marks with a less distinctive character. The distinctive character of the earlier trade mark and, in particular, its reputation, must therefore be taken into account when assessing whether there exists a likelihood of confusion (see judgment of 17 April 2008 in Case C‑108/07 P Ferrero Deutschland v OHIM, not published in ECR, paragraphs 32 and 33 and the case-law cited, and the judgment of 28 October 2010 in Case T‑131/09 Farmeco v OHIM – Allergan (BOTUMAX), not published in the ECR, paragraph 67).
55 Moreover, it was also on the basis of that same lack of similarity that the Board of Appeal held that one of the conditions set out in Article 8(5) of Regulation No 207/2009, namely that the marks at issue must be identical or similar, was not met (BOTUMAX, paragraph 73), and rejected the opposition in so far as it was based on that provision. It follows that the Board of Appeal’s incorrect finding regarding the similarity of the signs at issue influenced its analysis of the two grounds on which the opposition was based and which are the subject of the two pleas put forward in support of the present action.
56 Accordingly, the first plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, and the second plea, alleging infringement of Article 8(5) of that regulation, must be upheld and, hence, the contested decision must be annulled. It is therefore necessary also to reject the intervener’s claims that the Court should, first, uphold the contested decision and, second, declare that the mark applied for may be registered, without it being necessary to rule on their admissibility.
57 Moreover, as regards the applicant’s claim that the Court, upholding the opposition, should refuse registration of the mark applied for in respect of goods in Classes 14 and 18, it should be noted that the power to alter decisions, granted to the General Court under Article 65(3) of Regulation No 207/2009, does not have the effect of conferring on the Court the power to substitute its own assessment for that of the Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (see, to that effect, Case C‑263/09 P Edwin v OHIM [2011] ECR I‑0000, paragraph 72).
58 In the present case, since the Board of Appeal based its decision solely on the lack of similarity between the signs at issue and rejected, for that reason alone, the two grounds on which the opposition was based, it is not for the Court, in the present case, to carry out an overall examination of the likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, or to assess whether the other conditions of Article 8(5) of that regulation, in particular the condition relating to the reputation of the earlier trade marks, are met.
59 Moreover, since the applicant also claims, in the alternative, that the Court should refer the case back to OHIM, it should be stated that, in an action brought before the General Court against the decision of a Board of Appeal, it is clear from Article 65(6) of Regulation No 207/2009 that OHIM is required to take the necessary measures to comply with the judgment of the Court.
60 Therefore, the contested decision must be annulled and the action must be dismissed as to the remainder.
Costs
61 Under Article 87(2) 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 OHIM has been unsuccessful, it must be ordered to pay the costs incurred by the applicant in the proceedings before the General Court, as applied for by the applicant.
62 The applicant also applied for OHIM to be ordered to pay the costs incurred by the applicant for the purposes of the proceedings before the Board of Appeal. In that connection, it should be recalled that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Therefore, since OHIM has been unsuccessful, it must also be ordered to pay the costs incurred by the applicant for the purposes of the proceedings before the Board of Appeal, as applied for by the applicant.
63 Since the intervener has been unsuccessful, it must bear its own costs.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 28 January 2010 (Case R 1514/2008‑2);
2. Dismisses the action as to the remainder;
3. Orders OHIM to pay the costs incurred by Seven SpA in the proceedings before the General Court and those incurred by Seven SpA for the purposes of the proceedings before the Board of Appeal;
4. Orders Seven For All Mankind LLC to bear its own costs.
Moavero Milanesi | Wahl | Soldevila Fragoso |
Delivered in open court in Luxembourg on 6 October 2011.
[Signatures]