JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
18 March 2015 (*)
(Community trade mark — Opposition proceedings — Application for the Community figurative mark RIENERGY Cola — Earlier Community figurative mark Coca-Cola and earlier Community word mark COCA-COLA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑384/13,
Intermark Srl, established in Stei (Romania), represented initially by Á. László, and subsequently by B. Bozóki, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by A. Pohlmann, and subsequently by M. Fischer, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
The Coca-Cola Company, established in Atlanta, Georgia (United States), represented by L. Alonso Domingo, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 6 May 2013 (Case R 1116/2012-2), relating to opposition proceedings between The Coca-Cola Company and Intermark Srl,
THE GENERAL COURT (Sixth Chamber),
composed of S. Frimodt Nielsen, President, F. Dehousse (Rapporteur) and A.M. Collins, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 26 July 2013,
having regard to the response of OHIM lodged at the Court Registry on 19 November 2013,
having regard to the response of the intervener lodged at the Court Registry on 15 November 2013,
having regard to the decision of 4 March 2014 not to allow the lodging of a reply,
further to the hearing on 26 November 2014,
gives the following
Judgment
Background to the dispute
1 On 9 November 2010, the applicant, Intermark Srl, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign:
3 The goods and services in respect of which registration was sought are in Classes 32 and 35 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 32: ‘Beers, mineral water, aerated water, non-alcoholic drinks, fruit drinks and fruit juice, syrups and other preparations for making beverages’;
– Class 35: ‘Advertising; Business management; Business administration; Office functions’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 13/2011 of 20 January 2011.
5 On 15 April 2011, the intervener, The Coca-Cola Company, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.
6 The opposition was based, inter alia, on the following earlier marks:
– the Community figurative mark, filed on 5 January 2010 and registered on 24 May 2010 under the number 8792475, represented below:
– the Community word mark COCA-COLA, filed on 24 November 2009 and registered on 4 May 2010 under the number 8709818.
7 The earlier marks were registered, inter alia, for goods in Class 32 corresponding to the following description: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
8 Earlier mark No 8709818 was also registered, inter alia, for services in Class 35 corresponding to the following description: ‘Advertising; business management; Business administration; Office functions’.
9 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.
10 On 17 April 2012, the Opposition Division upheld the opposition in its entirety.
11 On 15 June 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
12 By decision of 6 May 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It found, in essence, that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, given the reputation of the earlier marks for the goods in Class 32, the identity of the goods and services and the similarity of the signs at issue. It also took the view that it was not necessary to analyse the ground of opposition under Article 8(5) of that regulation.
Forms of order sought
13 The applicant claims that the Court should:
– uphold the action;
– alter the contested decision;
– order the opposition to be rejected;
– order the registration of the sign as a Community trade mark in its entirety;
– or, if necessary, annul the contested decision and refer the case back to OHIM for a fresh examination and a new decision;
– order OHIM to pay the costs.
14 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
15 At the hearing, the applicant withdrew its fourth head of claim that the Court should order the registration of the sign as a Community trade mark in its entirety, a point of which formal note was taken.
Law
Admissibility of certain documents produced before the General Court
16 OHIM and the intervener contest the admissibility before the General Court of the documents attached to the application as Annex A.4 — which consist of a printout relating to the word ‘cola’ from the ‘Wikipedia’ website and a figurative representation of a mark incorporating the word ‘cola’ — inasmuch as those documents were not produced before OHIM.
17 At the hearing, the applicant stated that the documents reproduced in Annex A.4 to the application were aimed at responding to the arguments set out by the Board of Appeal in paragraph 27 of the contested decision. The applicant takes the view that the production of those documents is therefore admissible.
18 In that regard, it is common ground that the documents reproduced in Annex A.4 to the application were not produced before OHIM. The purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. That principle applies particularly in respect of the Board of Appeal’s findings, in paragraph 27 of the contested decision, regarding the coexistence of earlier marks on the market. Accordingly, the abovementioned documents must be excluded and there is no need to assess their probative value (see, to that effect, judgment of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, ECR, EU:T:2005:420, paragraph 19 and the case-law cited).
Substance
19 The applicant puts forward a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
20 The applicant submits, in essence, that the Board of Appeal erred in finding that there was a likelihood of confusion between the signs at issue. In particular, the applicant argues that the degree of similarity between the signs is so low as to preclude a finding that there is a likelihood of confusion, even though the goods and services are identical or similar. Visually, the applicant is of the view that there are more differences than similarities between the signs at issue. The differences relate, in particular, to the presence of the word ‘coca’ in the earlier marks, the presence of the word ‘rienergy’ and a graphic element in the mark applied for, and the shape of the background, orientation, script and contour of the word elements. Phonetically, the applicant takes the view that the signs at issue are different and there is no reason for the relevant public not to pronounce the word ‘rienergy’. Conceptually, the applicant states that the word ‘cola’, considered by the vast majority of the relevant public to be generic, is descriptive of the goods in Class 32. The word ‘rienergy’, although it is fanciful, refers to the word ‘energy’, which is linked to the concept of energy. Consequently, the applicant maintains that the signs at issue, taken together, are dissimilar. In addition, the applicant refers to decisions of the Courts of the European Union, of OHIM and of the Institut national de la propriété industrielle (INPI) (National Institute for Industrial Property) in France which the Board of Appeal ought to have taken into consideration. Lastly, the applicant disputes the accuracy of the statement that the word element ‘cola’ is not devoid of any distinctive character for the goods in Class 32. In conclusion, the applicant submits that there is no likelihood of confusion in the present case, even if the enhanced distinctiveness of the earlier trade marks in respect of the goods in Class 32 is taken into account.
21 OHIM contends that the Board of Appeal did not err in concluding that there was a likelihood of confusion between the signs at issue. In particular, it takes the view that, in visual terms, the signs at issue have the element ‘cola’ in common. Moreover, the mark applied for and earlier trade mark No 8792475 have the same colour scheme and the same font is used for their word elements. The word ‘rienergy’ plays only a secondary role. Phonetically, OHIM submits that the marks are similar, inasmuch as the word ‘cola’ is pronounced in the same way and it is unlikely that the word ‘rienergy’ will be pronounced, given its position and its small size. Conceptually, OHIM takes the view that the presence of the word ‘cola’ refers to the idea of a brown carbonated drink for a section of the relevant public and is neutral for the remaining members of that public. The word ‘rienergy’ does not prompt any conceptual association. Owing to its size, the role of that word is, moreover, limited. In addition, OHIM notes that the earlier marks have an enhanced degree of distinctiveness in the territory of the European Union in respect of drinks, on account of their reputation. As regards the likelihood of confusion, OHIM points out that, even though the word element ‘cola’ may have a weak distinctive character in part of the European Union and in respect of certain goods, that element must not be disregarded. Given the circumstances of the case, OHIM maintains that there is a likelihood of confusion between the signs at issue. It takes the view that the precedents to which the applicant refers are not relevant in the present case.
22 The intervener disputes the applicant’s arguments and submits, in essence, that the Board of Appeal was right to find that there was a likelihood of confusion between the signs at issue. In particular, as regards the visual aspect, the intervener maintains that the Board of Appeal was correct in finding that there are similarities between the signs at issue, inter alia the presence of the word ‘cola’. On the other hand, the word ‘rienergy’ is negligible. As regards the phonetic aspect, the intervener states, inter alia, that the Board of Appeal confined itself to pointing out a certain ‘degree of similarity’. As regards the conceptual aspect, the intervener maintains that the signs at issue are similar, at least for a section of the relevant public, to the extent that they have the word ‘cola’ in common. In conclusion the intervener maintains that, in view of the identity of the goods and services and the distinctiveness of the earlier marks, there is a likelihood of confusion between the signs at issue. It takes the view that the precedents cited by the applicant are not relevant in the present case.
23 It must be pointed out at the outset that, as was stated by the parties at the hearing, the mark applied for was represented incorrectly in the contested decision. Although the mark applied for is oriented vertically in the application for registration, it was represented with a horizontal orientation by the Board of Appeal. However, there is nothing to support the inference that that formal error affects the lawfulness of the contested decision. Furthermore, the applicant has not provided any specific evidence in that regard. In particular, the Board of Appeal did not refer to the incorrect orientation of the mark applied for in its reasoning. Furthermore, the Board of Appeal itself pointed out that the Opposition Division had found that there was a difference between the signs at issue in view of ‘the position of the words “Coca Cola” and “Cola”, which are written horizontally in the earlier mark and vertically in the contested mark’ (paragraph 8 of the contested decision). That reference tends to show that the Board of Appeal was fully aware in its assessment of the vertical orientation of the mark applied for.
24 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)(i) of Regulation No 207/2009, ‘earlier trade marks’ means, inter alia, Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
25 According to settled case-law, the risk that the public may 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 relevant public’s perception of the signs and goods or services in question and taking into account 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 covered (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited). Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgment of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and judgment of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 25).
26 Furthermore, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. 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 engage in an analysis of its various details (see judgment of 8 December 2011 in Aktieselskabet af 21. november 2001 v OHIM — Parfums Givenchy (only givenchy), T‑586/10, EU:T:2011:722, paragraph 20 and the case-law cited).
27 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed, and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in his imperfect recollection of them. 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 (judgment of 23 October 2002 in Oberhauser v OHIM — Petit Liberto (Fifties), T‑104/01, ECR, EU:T:2002:262, paragraph 28, and judgment of 30 June 2004 in BMI Bertollo v OHIM — Diesel (DIESELIT), T‑186/02, ECR, EU:T:2004:197, paragraph 38).
28 In addition, 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 broader 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 a likelihood of confusion exists (see judgment of 17 April 2008 in Ferrero Deutschland v OHIM, C‑108/07 P, EU:C:2008:234, paragraphs 32 and 33, and judgment of 28 October 2010 in Farmeco v OHIM — Allergan (BOTUMAX), T‑131/09, EU:T:2010:458, paragraph 67).
29 It is in the light of the foregoing considerations that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined.
30 In the present case, the earlier marks are Community trade marks. Consequently, as the Board of Appeal found in paragraph 18 of the contested decision, a finding that is not disputed by the parties, the relevant territory is that of the European Union.
31 Furthermore, as the Board of Appeal pointed out in essence in paragraph 18 of the contested decision, a finding that is not disputed by the parties, the goods in Class 32 are everyday consumer goods and the services in Class 35 are services aimed at professionals. Consequently, the relevant public consists of average, reasonably well-informed and reasonably observant and circumspect consumers in respect of the goods in Class 32 and of professionals from the respective fields, whose level of attention is higher, in respect of the services in Class 35.
32 In the first place, as regards the similarity of the goods, it must be pointed out, as the Board of Appeal rightly stated in paragraph 19 of the contested decision, a finding that is not disputed by the parties, that the goods and services at issue are identical.
33 In the second place, as regards the similarity of the signs at issue, it must be borne in mind that 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 (see, judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333 paragraph 41 and the case-law cited). 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 (judgment in OHIM v Shaker, EU:C:2007:333, paragraph 42, and judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). 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 (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).
34 It must be pointed out at the outset, as was observed, in essence, by the Board of Appeal, that the word element ‘cola’, which occupies the greater part of the space in the mark applied for and is situated in the centre of that mark, is the dominant element in the mark. It is true that the word element ‘rienergy’ has distinctive character in respect of the goods and services at issue inasmuch as it is a ‘a fantasy word’, as the applicant observes. However, having regard to its very small size, which, moreover, makes it difficult to read, that element plays a subsidiary role in the mark applied for, even though it cannot be categorised as totally negligible in the overall impression created by that mark. The same is true of the figurative element situated above the word ‘rienergy’.
35 Furthermore, although it is true that the word ‘cola’ may be perceived by a section of the relevant public as descriptive of some beverages which were originally made from cola nuts, that assessment concerns only certain goods in Class 32, as the Board of Appeal pointed out, in essence, in paragraph 28 of the contested decision. Moreover, that word has no connection with the services in Class 35. It must also be borne in mind that the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element since, it may, inter alia, because of its position in the sign or its size, make an impression on consumers and be remembered by them (judgment of 13 June 2006 in Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, ECR, EU:T:2006:157, paragraph 32; see also, to that effect, judgment of 13 July 2004 in AVEX v OHIM — Ahlers (a), T‑115/02, ECR, EU:T:2004:234, paragraph 20, and judgment of 14 September 2011 in Olive Line International v OHIM — Knopf (O-live), T‑485/07, EU:T:2011:467, paragraph 85).
36 As far as the earlier marks are concerned, and even assuming that the word element ‘cola’ is descriptive of some or all of the goods in Class 32, as the applicant submits, it is not possible to hold that that element, in view, in particular, of its size and its position, is negligible in the overall impression created by those marks. In addition, in view of the fact that the word ‘coca’ also designates an original ingredient of the beverages at issue and contains the same number of letters as the word ‘cola’, those two words play a similar role in the earlier marks in respect of the goods in Class 32. Furthermore, it must be borne in mind that the word ‘cola’ has no connection with the services in Class 35. That word therefore has distinctive character, at least as regards earlier trade mark No 8709818.
37 It is apparent from those factors that the word ‘cola’ cannot be disregarded in a comparison of the signs at issue. That element constitutes the dominant element in the mark applied for and a non-negligible, or even distinctive, element in the earlier marks.
38 Lastly, the applicant does not call into question the Board of Appeal’s finding that the reputation of the earlier marks in respect of soft drinks is generally well known, especially when the mark is depicted ‘in its classic white cursive script on a red background’. That reputation is moreover borne out by the evidence which the intervener provided before OHIM.
39 First, as regards the visual aspect, the Board of Appeal correctly stated that there were a number of similarities between the mark applied for and earlier mark No 8792475. In particular, those two signs have in common the word ‘cola’, represented in white cursive script on a red background. The contour of the letters in the mark applied for cannot weaken the resemblance between the word elements of the signs at issue. Furthermore, the vertical representation of the word element in the mark applied for, even though that constitutes a difference in relation to the earlier mark, does not alter the fact that that element is the dominant element in the mark applied for and that the relevant public is still able to read it. The other elements of the mark applied for, in view of their small size, do not permit the inference that the differences between the signs at issue prevail over their similarities. Likewise, the presence of the word ‘coca’ in the earlier mark cannot alter the fact that the dominant element in the mark applied for is also present in the earlier mark or that they have the same colours. Consequently, the Board of Appeal did not err in finding that the signs at issue were more similar than dissimilar visually (paragraph 32 of the contested decision).
40 As regards the visual comparison between the mark applied for and earlier mark No 8709818, it must be pointed out that both signs have the word ‘cola’ in common. That word is the dominant element in the mark applied for and constitutes a distinctive element, at least as regards the services in Class 35 covered by earlier trade mark No 8709818. Consequently, the Board of Appeal did not err in finding, in paragraph 35 of the contested decision, that there was a certain degree of visual similarity between the two signs, in spite of the presence of other word or figurative elements.
41 Secondly, as regards the phonetic aspect, even if the word ‘rienergy’ in the mark applied for is pronounced by the relevant public, as the applicant submits in essence in its written pleadings, that cannot affect the Board of Appeal’s finding that, in view of the presence of the word ‘cola’ in the signs at issue, there is a ‘degree of similarity’ between those signs phonetically (paragraph 33 of the contested decision). It must, moreover, be borne in mind that the word ‘cola’ is the dominant element in the mark applied for and that the word ‘rienergy’ is only a subsidiary element.
42 Thirdly, as regards the conceptual aspect, it must be pointed out that even if the comparison between the signs at issue is of limited relevance with regard to some consumers, in this instance those who do not understand the word ‘cola’, that does not prevent, with regard to the consumers who understand that term, the conceptual similarities between the signs at issue from being taken into consideration (see, to that effect, judgment of 13 September 2010 in Travel Service v OHIM — Eurowings Luftverkehrs (smartWings), T‑72/08, EU:T:2010:395, paragraph 56 and the case-law cited). In the present case, the word ‘cola’, which is common to the signs at issue, may be understood by the relevant public as referring to cola nuts. In that sense, as the Board of Appeal correctly pointed out in paragraph 34 of the contested decision, there is a conceptual convergence between the signs at issue. As regards the addition, in the mark applied for, of the word ‘rienergy’, it is common ground that that word has no particular meaning. It is not therefore capable of weakening the conceptual similarity resulting from the presence of the word ‘cola’ in the signs at issue. In that regard, the applicant’s arguments that the word ‘rienergy’ refers directly to the concept of energy must be rejected. As the applicant admits in its written pleadings, the word ‘rienergy’ is a ‘fantasy word’. Furthermore, it must be borne in mind that the word ‘rienergy’ plays a subsidiary role in the mark applied for as the dominant element in that mark is the word ‘cola’.
43 In view of the foregoing, having regard, in particular, to the similarities between the signs at issue and the fact that the word ‘cola’ is the dominant element in the mark applied for and is also a non-negligible, or even distinctive, element in the earlier marks, the Board of Appeal did not err in finding, in essence, that those signs were similar overall.
44 In the third place, as regards the likelihood of confusion, it must be borne in mind that there are a number of similarities, in particular visual, between the mark applied for and earlier mark No 8792475 and that that earlier mark enjoys a reputation in respect of some of the goods in Class 32, especially when it is depicted ‘in its classic white cursive script on a red background’, as was pointed out by the Board of Appeal. Not only will be the likelihood of confusion be greater the more distinctive the earlier mark (see the case-law cited in paragraph 28 above), but the fact that a mark is registered in colour or, on the contrary, does not designate any specific colour can also not be regarded as a wholly negligible element in the eyes of consumers (see judgment of 9 April 2014 in Pico Food v OHIM — Sobieraj (MILANÓWEK CREAM FUDGE), T‑623/11, ECR, EU:T:2014:199, paragraph 38 and the case-law cited). Consequently, the assessment of the likelihood of confusion in the present case, in the light, moreover, of the reputation of the earlier mark, must take into account not only the fact that the dominant element in the mark applied for reproduces one of the two word elements in the earlier mark, but also that the word element in question is depicted in the signs at issue in white cursive script on a red background. Lastly, it is necessary to take into account the fact that the goods at issue are identical. In those circumstances, in view of all of those factors, the Board of Appeal was correct in finding that there is a likelihood of confusion between the signs at issue for the relevant public as regards the goods in Class 32.
45 As regards the likelihood of confusion between the mark applied for and earlier mark No 8709818, it must be pointed out that it is true that the similarities between the two signs are less significant visually and that the relevant public consists of professionals as far as the services in Class 35 are concerned. However, it is also necessary to take into account the fact that the word element which is common to both of the signs is the dominant element in the mark applied for and is a distinctive element in the earlier mark as regards the services in Class 35, as was pointed out, in essence, by the Board of Appeal in paragraph 40 of the contested decision. Furthermore, it must be borne in mind that there is a certain degree of phonetic and conceptual similarity between the two signs. Consequently, having regard, in addition, to the fact that the services at issue are identical, the Board of Appeal did not err in finding that there is a likelihood of confusion between those two signs in respect of the services in Class 35.
46 That finding cannot be called into question by the applicant’s arguments relating to the decision-making practice of OHIM and the INPI and to decisions delivered by the Courts of the European Union in other cases.
47 First of all, it must be borne in mind that the decisions concerning the registration of a sign as a Community trade mark which the Boards of Appeal of OHIM take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of decisions of the Boards of Appeal 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 a previous decision-making practice (judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 65, and judgment of 2 May 2012 in Universal Display v OHIM (UniversalPHOLED), T‑435/11, EU:T:2012:210, paragraph 37). Furthermore, even if, by its arguments, the applicant is in fact alleging infringement of the principle of equal treatment or of sound administration, it must be borne in mind that respect for those principles must be consistent with respect for the principle of legality (judgment of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraph 75). Moreover, for reasons of legal certainty and of sound administration, the examination of any trade mark application must be stringent and full and be undertaken in each individual case (judgment in Agencja Wydawnicza Technopol v OHIM, EU:C:2011:139, paragraph 77). For the foregoing reasons, the Board of Appeal did not err in finding that the conditions laid down in Article 8(1)(b) of Regulation No 207/2009 were satisfied in the present case. It follows that the applicant cannot reasonably rely, for the purposes of casting doubt on the conclusion that the Board of Appeal came to in the contested decision, on OHIM’s previous decisions (see, to that effect, judgment in Agencja Wydawnicza Technopol v OHIM, EU:C:2011:139, paragraphs 78 and 79, and judgment in UniversalPHOLED, EU:T:2012:210, paragraph 39).
48 Secondly, it should be noted that, as is apparent from the case-law, the Community trade mark regime is an autonomous system with its own set of rules and objectives peculiar to it; it applies independently of any national system (judgment of 5 December 2000 in Messe München v OHIM (electronica), T‑32/00, ECR, EU:T:2000:283, paragraph 47). Consequently, the registrability of a sign as a Community trade mark must be assessed by reference only to the relevant EU rules. Accordingly, OHIM and, if appropriate, the Courts of the European Union are not bound by a decision given in a Member State, or indeed a third country, that the sign in question is registrable as a national mark (judgment of 27 February 2002 in Streamserve v OHIM (STREAMSERVE), T‑106/00, ECR, EU:T:2002:43, paragraph 47).
49 Lastly, it must be pointed out that the decisions of OHIM and the INPI relied on by the applicant related to signs that are different from those at issue in the present case. The same is true of the judgments delivered by the Courts of the European Union on which the applicant relies.
50 In view of all of those factors, the single plea in law put forward by the applicant must be rejected as unfounded and the action must therefore be dismissed in its entirety.
Costs
51 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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders Intermark Srl to pay the costs.
Frimodt Nielsen | Dehousse | Collins |
Delivered in open court in Luxembourg on 18 March 2015.
[Signatures]