JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
8 October 2014 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark DODIE — Earlier national word mark DODOT — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Power to alter decisions)
In Case T‑77/13,
Laboratoires Polive, established in Levallois-Perret (France), represented by A. Sion, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Arbora & Ausonia, SLU, established in Barcelona (Spain), represented by R. Guerras Mazón, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 31 October 2012 (Case R 1949/2011-2) relating to opposition proceedings between Arbora & Ausonia, SLU and Laboratoires Polive,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 31 January 2013,
having regard to the response of OHIM lodged at the Court Registry on 21 May 2013,
having regard to the response of the intervener lodged at the Court Registry on 23 May 2013,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1 On 24 January 2007, the applicant, Laboratoires Polive, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under 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 DODIE.
3 The goods in respect of which registration was sought are in Classes 3, 5 and 10 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 3: ‘Toiletries for babies, shampoos and hair lotions, lotions for cosmetic purposes, cleaning preparations, soap, perfumes, oils for toilet purposes, tooth paste, cosmetic creams, bath products, impregnated or not impregnated tissues for cosmetic purposes, pomades for cosmetic purposes, cotton for cosmetic purposes’;
– Class 5: ‘Hygienic products for babies, tissues impregnated with hygienic lotions, napkins for babies, physiological serum, milk sterilising preparations, pomades for medical purposes, dietetic substances adapted for medical use, food for babies, medical dressings, disinfectants for hygienic purposes, cotton for medical purposes’;
– Class 10: ‘Feeding bottles, feeding bottle valves, feeding bottle teats, feeding bottle handles, dummies for babies, teething rings, breast pumps, breast-nursing pads, thermometers for medical purposes, medical apparatus for babies, orthopaedic articles for babies’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 34/2007 of 16 July 2007.
5 On 15 October 2007, the intervener, Arbora & Ausonia, SLU, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based, inter alia, on the following earlier rights:
– the earlier Spanish word mark DODOT, registered under No 2601120 on 30 August 2005 (‘the Spanish mark’), covering, inter alia, the goods in Classes 3, 5, 10 and 16, which correspond, for each of those classes, to the following description:
– Class 3: ‘Perfumery and cosmetics, essential oils, shampoos, soaps and dentifrices, creams and lotions for the care of the skin and hair, cleansing wipes, wipes impregnated with liquid soap with or without perfume and wipes impregnated with cleansing products, moisturisers and cosmetics; cosmetic kits’;
– Class 5: ‘Medical sanitary products, plasters, materials for dressings, dressings, disinfectants for hygiene purposes (excluding disinfectant soaps), sanitary towels, compresses, panty-liners (sanitary products), tampons for menstruation, sterilised gauzes, incontinence pants, sanitary pants, absorbent pants for incontinents; food for babies, portable cases for medicines, tissues impregnated with pharmaceutical lotions’;
– Class 10: ‘Sheets for incontinents, baby bottles, teats and closings of baby bottles’;
– Class 16: ‘Nappies and nappy pants of paper and cellulose; tissues, napkins, toilet tissues and tablecloths of paper and cellulose; bibs of paper, toilet paper; paper and articles of paper, cardboard and articles of cardboard, forms; printed matter; books, printed publications in general, pencils, ball-point pens and other writing implements, calendars, instructional and educational material’;
– the application for the Community word mark DODOT, filed on 30 April 2004 under No 3780715 (‘the application for the Community trade mark DODOT’), covering, inter alia, the goods in Classes 16, 24 and 25, which correspond, for each of those classes, to the following description:
– Class 16: ‘Babies’ nappies, nappy pants of paper and cellulose; tissues, napkins, toilet tissues and tablecloths of paper and cellulose; bibs of paper, toilet paper; paper and paper articles, cardboard and cardboard articles, printed matter; books, printed publications in general, pencils, ball-point pens and other writing implements, calendars, instructional and educational material’;
– Class 24: ‘Textiles and fabrics including those intended for the manufacture of nappies, elastic woven material, towels of textile, tissues for make-up removal and face towels of textile’;
– Class 25: ‘Nappies and nappy pants of textile, clothing, footwear, headgear; bibs, not of paper, pocket handkerchiefs (clothing)’.
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.
8 On 2 August 2011, the Opposition Division rejected the opposition in its entirety, inter alia, on the ground that there was no likelihood of confusion between the marks at issue.
9 On 22 September 2011, the intervener filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 31 October 2012 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the decision of the Opposition Division and upheld the opposition in part, on the basis that there was a likelihood of confusion between the marks at issue as regards the goods referred to in paragraph 3 above, other than the ‘thermometers for medical purposes, medical apparatus for babies, orthopaedic articles for babies’ in Class 10. It dismissed the appeal as to the remainder.
11 For the purposes of its examination of the likelihood of confusion, the Board of Appeal confined itself to comparing the trade mark applied for with the Spanish mark. It found, inter alia, in essence, that:
– the relevant public was the general public in Spain, except in the case of certain goods related to health in Classes 5 and 10, which were aimed at a more attentive public;
– the Spanish mark had a normal degree of inherent distinctiveness and could enjoy enhanced distinctiveness through the use made of it in relation to ‘nappies and nappy pants’ only;
– the goods covered by the marks at issue were either identical or similar to varying degrees: high, average or low;
– a visual similarity between the signs at issue, the length and first three letters of which were the same, could not be excluded even though the signs at issue had different endings and were neither very long nor very short;
– the phonetic similarity between the signs was ‘somewhat lower than average’ in view of their different endings, in particular;
– the signs at issue were not conceptually similar since they were devoid of meaning from the perspective of the relevant public;
– there was a likelihood of confusion between the mark applied for and the Spanish mark so far as concerned the goods in Classes 3, 5 and 10 that were identical or similar to a high or average degree.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition in its entirety;
– order OHIM to pay the costs.
13 OHIM and the intervener contend that the Court should:
– dismiss the action for annulment in its entirety;
– order the applicant to pay the costs.
Law
14 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
15 The applicant disputes, inter alia, the Board of Appeal’s conclusion that the marks’ different endings were not sufficient to exclude any likelihood of confusion.
16 OHIM and the intervener reply, in essence, that the Board of Appeal was fully entitled to conclude that there was a likelihood of confusion between the signs at issue.
17 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not be registered if, because of its identity with, or similarity to, the 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. Moreover, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which 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 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 that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the 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 designated (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 case-law cited).
The relevant public
19 According to 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 judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and case-law cited).
20 In the present case, the Board of Appeal held, in paragraph 18 of the contested decision, first, that since the earlier right to be compared to the trade mark applied for was the Spanish mark, the territory with regard to which the perception of the marks at issue by the consumer had to be taken into account was Spain. Secondly, in paragraph 24 of the decision, it observed that the goods covered by the trade mark applied for were aimed at the general public, consisting of consumers deemed to be reasonably well informed and reasonably observant and circumspect, except in the case of certain goods related to health in Classes 5 and 10, which were aimed at a public with a higher level of attention.
21 The applicant disputes the Board of Appeal’s assessment that the relevant public’s level of attention is average for most of the goods in question. According to the applicant, in the case of personal care products and, in particular, baby care products, the level of attention of consumers is higher.
22 As regards the relevant territory, the Board of Appeal’s conclusions as to the Member State of the relevant public must be upheld since the Board of Appeal examined the likelihood of confusion on the basis of the Spanish mark.
23 As regards the level of attention of the relevant public, the applicant’s argument that that public’s level of attention is higher cannot be accepted. Although, as the applicant claims, parents pay a higher degree of attention when purchasing products for babies and young children because of the importance they attach to the nutrition and health of babies, it must nevertheless be held, in view of the wide range of the goods in question, that while the group of average consumers for that category of goods will also include careful parents, it will not in any way consist exclusively of such consumers (judgment of 16 September 2009 in Hipp & Co v OHIM — Laboratorios Ordesa (Bebimil), T‑221/06, EU:T:2009:330, paragraph 40).
24 An exception may be made in the case of certain goods covered by the marks at issue related to health, in Classes 5 and 10.
25 Indeed, according to the case-law, both health professionals and end consumers of goods and services related to the state of their health display a high level of attention (see, to that effect, judgments of 21 October 2008 in Aventis Pharma v OHIM — Nycomed (PRAZOL), T‑95/07, EU:T:2008:455, paragraph 29; 8 July 2009 in Procter & Gamble v OHIM — Laboratorios Alcala Farma (oli), T‑240/08, EU:T:2009:258, paragraph 50; and 15 December 2009 in Trubion Pharmaceuticals v OHIM — Merck (TRUBION), T‑412/08, EU:T:2009:507, paragraph 28).
26 Therefore, it must be held that the Board of Appeal was right in taking the view that the relevant public’s level of attention was average for most of the goods in question and higher for goods related to health.
Comparison of the goods
27 The Board of Appeal confirmed, in paragraph 30 of the contested decision, the Opposition Division’s assessment that the goods covered by the mark applied for were in part identical and in part similar to those covered by the earlier marks.
28 In particular, in paragraph 54 of the contested decision, the Board of Appeal classified the goods covered by the mark applied for in the following four groups, depending on their identity to or degree of similarity with the goods covered by the Spanish mark:
– identical goods, namely:
– all the goods in Class 3;
– ‘hygienic products for babies, physiological serum, food for babies, medical dressings, disinfectants for hygienic purposes and cotton for medical purposes’, in Class 5;
– ‘feeding bottles, feeding bottle teats’ in Class 10;
– highly similar goods, namely: ‘tissues impregnated with hygienic lotions, napkins for babies’, in Class 5;
– goods similar to an average degree, namely:
– ‘milk sterilising preparations, pomades for medical purposes and dietetic substances adapted for medical use’, in Class 5;
– ‘feeding bottle valves, feeding bottle handles, dummies for babies, teething rings, breast pumps, breast-nursing pads’, in Class 10;
– goods similar to a low degree, namely: ‘thermometers for medical purposes, medical apparatus for babies, orthopaedic articles for babies’, in Class 10.
29 The Opposition Division’s assessment, which the Board of Appeal endorsed and the parties do not contest, must be confirmed.
Comparison of the signs
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 produced 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 overall 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 judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and case-law cited).
Visual similarity
31 The Board of Appeal held, in paragraphs 40 and 41 of the contested decision that, visually, in view of the fact that consumers generally pay greater attention to the beginning of a mark than to its ending, the marks at issue were similar in that their first three letters, placed at the beginning of both signs, were the same. It also stated that, although the differences stemming from the final two letters of those marks could admittedly not be neglected in the overall impression produced by the marks, they were not sufficient to exclude the visual similarity of signs that were neither very long nor very short.
32 The applicant argues that the final parts of the two signs, consisting of the letters ‘ot’ and the letters ‘ie’, respectively, are very different and cannot be confused by the relevant public, particularly in view of the fact that the signs at issue consist of five letters and are therefore short.
33 In this connection, although, as OHIM and the intervener contend, the consumer normally attaches more importance to the first part of words, it should nevertheless be noted that that does not apply in all cases nor call into question the principle that the examination of the similarity of trade marks must take into account the overall impression produced by them (judgments of 9 September 2008 in Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, ECR, EU:T:2008:319, paragraph 38, and of 23 September 2011 in NEC Display Solutions Europe v OHIM — C More Entertainment (see more), T‑501/08, EU:T:2011:527, paragraph 38).
34 In the present case, it must be observed that the final part of the mark applied for, where the diphthong ‘ie’ appears, is very unusual in Spanish and will attract more attention from the relevant public. Similar considerations apply to the final part ‘ot’ of the Spanish mark, which is likewise not common in that language.
35 Those factors support the conclusion that, contrary to what the Board of Appeal found, the marks at issue, considered as a whole, display a relatively low degree of visual similarity.
Phonetic comparison
36 The Board of Appeal held, in paragraphs 43 to 46 of the contested decision, that phonetically, the signs at issue, pronounced according to the rules of the Spanish language, displayed a ‘somewhat lower than average’ similarity, which must be understood as meaning that, in the Board of Appeal’s view, they are similar to some extent.
37 The applicant argues that the pronunciation of the final parts of the marks at issue is very different, in the light, in particular, of the rules of pronunciation of Spanish.
38 OHIM and the intervener contend that the Board of Appeal’s reasoning as to phonetic similarity is correct.
39 In this connection, it must be observed that the marks at issue both consist of a single word made up of two syllables, namely, ‘do’ and ‘dot’ in the case of the Spanish mark and ‘do’ and ‘die’ in the case of the mark applied for. Accordingly, the applicant is incorrect in claiming, in essence, that the trade mark applied for is made up of the three syllables ‘do’, ‘di’ and ‘ie’.
40 However, the applicant is justified in claiming that the rules of pronunciation of Spanish should be applied when comparing the marks at issue phonetically, which the other parties confirm. According to those rules, when pronouncing the word ‘dodot’, the tonic stress falls on the vowel of the second syllable, that is, on the second letter, ‘o’ since there is no graphic accent and the word in question ends with a consonant other than ‘n’ or ‘s’, which will be pronounced in a more or less marked manner depending on the region of Spain concerned. By contrast, following those same rules, when pronouncing the word ‘dodie’, the tonic stress falls on the first syllable, that is, on the letter ‘o’, since there is no graphic accent and the word ends with a diphthong. Should the Spanish consumer, when confronted with the word ‘dodie’, which he does not recognise as belonging to his language, break up the diphthong ‘ie’, the tonic stress would not fall on the last vowel, ‘e’, but on the penultimate one, ‘i’. Similarly, even if the consumer attempts to pronounce the word ‘dodie’ as if it were a word in one of the main foreign languages known by him and, in so doing, places the tonic stress on a vowel other than the letter ‘o’, the intonation would fall on the part of the trade mark applied for that differs from the Spanish mark.
41 It follows that, notwithstanding the same initial sequence of letters ‘d’, ‘o’ and ‘d’ in the marks at issue, the rhythm of pronunciation of each of the marks is different, or at least, the intonation falls on the parts of the marks at issue that are different. Those factors reduce very significantly the similarity created by the initial sequence of letters. Moreover, account must also be taken of the fact that, when pronouncing the word ‘dodie’, the Spanish consumer will have particular difficulty with the, very unusual, presence of a diphthong at the end of the word, whereas that is not the case with the word ‘dodot’.
42 Consequently, contrary to what the Board of Appeal found, it must be held that the marks at issue are similar to a low degree, if not to a very low degree, phonetically.
Conceptual comparison
43 In paragraph 47 of the contested decision, the Board of Appeal held that neither of the signs at issue had a meaning from the perspective of the public in the relevant territory and that the two marks had no concept in common.
44 The Board of Appeal’s conclusions in that regard, which, moreover, the parties do not call in question, must be upheld.
Conclusion as to the similarity of the signs
45 In the light of the foregoing considerations, it must be concluded that the signs at issue are similar to only a low degree, without it being necessary to rule on the question, which is the subject of disagreement between the parties, whether those signs are particularly short, which, according to the applicant, would result in their differences being of greater significance, nor on the relevance of the decisions of OHIM and the decision of a Spanish court, relied on by the applicant.
Likelihood of confusion
46 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
47 In the present case, the Board of Appeal held that there was a likelihood of confusion as regards the goods covered by the trade mark applied for in the first three groups identified by it (see paragraph 28 above), in view of the similarity of the signs and the identity of or the similarity between those goods and the goods covered by the Spanish mark.
48 The applicant argues that there is no likelihood of confusion since the signs are sufficiently different.
49 In this connection, it must be held that the low degree of similarity of the signs does not support the conclusion that there is a likelihood of confusion in the present case, notwithstanding the similarity, if not the identity of the goods, which the Board of Appeal rightly found, and even having regard to the public, which does not display a particularly high degree of attention.
50 That conclusion is not called in question by the intervener’s other arguments.
51 In this connection, the intervener contends, in the first place, that the inherent distinctiveness of the mark DODOT is high, and that it is not clear from the contested decision whether the Board of Appeal took into account the additional evidence it submitted, at the time of its appeal against the Opposition Division’s decision, in order to demonstrate the enhanced distinctiveness of the Spanish mark because of the public’s recognition of it.
52 It should be recalled that, according to the case-law, as is apparent from recital 8 in the preamble to Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous factors, and in particular on the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a high distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgment of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24; judgment in Canon, cited in paragraph 46 above, EU:C:1998:442, paragraph 18; and judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 20).
53 However, in the present case, first, the Board of Appeal’s conclusion, set out in paragraph 26 of the contested decision, that the Spanish mark has a normal degree of inherent distinctiveness since it is devoid of meaning in relation to the goods covered by it, must be upheld. Indeed, the intervener does not raise any specific argument to call into question the Board of Appeal’s conclusion in that regard.
54 Secondly, it must be pointed out that, in paragraph 29 of the contested decision, the Board of Appeal considered what would happen were account to be taken of the additional evidence produced before it by the intervener for the purpose of demonstrating that the Spanish mark enjoyed enhanced distinctiveness through the use made of it. In this connection, the Board of Appeal took the view that, even in that situation, enhanced distinctiveness would exist only in relation to ‘nappies and nappy pants’, in Class 16. It must be pointed out that, in the comparison of the goods carried out by the Board of Appeal, which the intervener does not call in question and which the General Court has confirmed, those goods were not taken into account.
55 Thirdly, and in any event, even if the Spanish mark has enhanced distinctiveness, that cannot compensate for the fact that there is no likelihood of confusion between the signs at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009, in view of the visual and phonetic differences (see, to that effect, judgment of 5 December 2012 in Consorzio vino Chianti Classico v OHIM — FFR (F.F.R.), T‑143/11, EU:T:2012:645, paragraph 59). Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment (see, to that effect, judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 70).
56 The intervener contends, in the second place, that since the opposition was also based on the application for the Community trade mark DODOT (see paragraph 6 above), the relevant public could also consist of consumers in Member States other than the Kingdom of Spain, which would support a finding of a higher degree of phonetic similarity.
57 In this connection, it must be observed that the intervener appears to be asking the General Court also to take into account, for the purposes of dismissing the action, an earlier right other than the Spanish mark, even though the latter was the only earlier right in relation to which the Board of Appeal examined the likelihood of confusion. In paragraph 79 of the contested decision, the Board of Appeal confined itself to observing that the goods covered by the application for the Community trade mark DODOT were, at most, similar to a low degree to the ‘thermometers for medical purposes, medical apparatus for babies, orthopaedic articles for babies’ covered by the trade mark applied for, in respect of which the opposition based on the Spanish mark had to be rejected.
58 It follows that, regardless of the level of similarity, including phonetic similarity, between the mark applied for and the sign covered by the application for the Community trade mark DODOT, any consideration of that point would not affect the legality of the contested decision. Therefore, the General Court cannot uphold the intervener’s argument on that point.
59 In any event, it should be observed that the application for the Community trade mark DODOT concerned goods other than those covered by the Spanish mark.
Conclusions on the outcome of the action
60 In the light of all the foregoing considerations, the contested decision must be annulled, in accordance with the applicant’s first head of claim.
61 As regards the applicant’s second head of claim, that the opposition be rejected in its entirety, it should be observed that this is a request for alteration of the contested decision.
62 In this connection, it should be recalled that the power of the Court to alter decisions pursuant to Article 65(3) of Regulation No 207/2009 does not have the effect of conferring on the Court the power to carry out an assessment on which the 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 Court, after reviewing the assessment made by the Board, 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 (judgment of 5 July 2011 in Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraph 72).
63 In the present case, the conditions for the exercise of the Court’s power to alter decisions are clearly not satisfied. The Board of Appeal did not examine whether there was a likelihood of confusion between the mark applied for and any of the other earlier rights relied on by the intervener. Therefore, this head of claim must be rejected.
Costs
64 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.
65 Since OHIM has been largely unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the applicant. The intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Ninth 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 31 October 2012 (Case R 1949/2011-2);
2. Dismisses the action as to the remainder;
3. Orders OHIM to bear its own costs and to pay those incurred by Laboratoires Polive;
4. Orders Arbora & Ausonia, SLU to bear its own costs.
Delivered in open court in Luxembourg on 8 October 2014.
[Signatures]