JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
21 May 2014 (*)
(Community trade mark — Opposition proceedings — Application for the Community word mark ENI — Earlier Community figurative mark EMI — Likelihood of confusion — Similarity of the goods and services — Similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009 — Partial refusal of registration)
In Case T‑599/11,
Eni SpA, established in Rome (Italy), represented by D. De Simone and G. Orsoni, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by C. Negro and D. Botis, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Emi (IP) Ltd, established in London (United Kingdom), represented by S. Malynicz, Barrister,
ACTION brought against the decision of the First Board of Appeal of OHIM of 8 September 2011 (Case R 2439/2010-1), relating to opposition proceedings between Emi (IP) Ltd and Eni SpA,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 November 2011,
having regard to the response of OHIM lodged at the Court Registry on 29 March 2012,
having regard to the response of the intervener lodged at the Court Registry on 23 March 2012,
having regard to the reply lodged at the Court Registry on 26 June 2012,
having regard to the change in the composition of the Chambers of the General Court,
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, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 5 December 2007, the applicant, Eni SpA, 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 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 Registration as a mark was sought for the word sign ENI.
3 The goods and services in respect of which registration was sought are in Classes 1 to 4, 6, 7, 9, 11, 14, 16 to 19, 22, 25 and 35 to 45 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.
4 Community trade mark application No 6488076 was published in Community Trade Marks Bulletin No 17/2008 of 28 April 2008.
5 On 25 July 2008, the intervener, Emi (IP) Ltd, 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 mark applied for in respect of certain goods and services covered by that mark.
6 The opposition was based on the following earlier trade marks:
– the Community word mark EMI, registered on 1 March 2006 under the number 4197315, designating goods and services in Classes 9, 16, 35, 38, 41 and 42;
– the Community figurative mark, reproduced below, registered on 9 October 2008 under the number 6167357, designating goods and services in Classes 9, 16, 28, 35, 38, 41 and 42:
7 On 17 September 2009, the applicant restricted the list of goods and services covered by Community trade mark application No 6488076 for the first time.
8 Before restricting that application for the second time on 15 December 2009, the applicant submitted, on 27 October 2009, a request for its division, maintaining the Community trade mark application in respect of certain goods and services in Classes 25 and 35 corresponding, for each of those classes, to the following description:
– Class 25: ‘Clothing, footwear, headgear’;
– Class 35: ‘Advertising in the oil, fuel and lubricant, energy production and distribution and transport sectors’.
9 In view of those factors, the intervener maintained its opposition only as regards the goods in Class 25 specified in paragraph 8 above.
10 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
11 Consequently, the Opposition Division reviewed the opposition based on the earlier Community figurative mark including the word element ‘emi’ and thereafter retained only the following service in Class 35: ‘The bringing together for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase clothing, footwear and headgear’.
12 On 14 October 2010, the Opposition Division upheld the opposition by refusing registration of the mark applied for in respect of all the goods concerned in Class 25 and allowed Community trade mark No 6488076 to proceed to registration in respect of the remaining services in Class 35.
13 On 10 December 2010 the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
14 By decision of 8 September 2011 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal and ordered the applicant to pay to the intervener the sum of EUR 550 in respect of the costs incurred in the appeal proceedings. It found that the Opposition Division had been right to uphold the opposition, owing to the existence of a likelihood of confusion as a result of the similarity of the goods covered by the mark applied for, namely the clothing, footwear and headgear, and the service protected by the earlier Community figurative mark, that is to say the retail service in respect of the goods at issue, and owing to the visual and phonetic similarity of the signs at issue.
Forms of order sought
15 The applicant claims that the Court should:
– annul the contested decision and consequently require OHIM to take the necessary measures to comply with the Court’s decision;
– order OHIM to pay the costs.
16 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
17 The intervener contends that the Court should:
– uphold the contested decision;
– order the applicant to pay the costs.
Law
Preliminary considerations
18 It is important to point out that, as is apparent from the contested decision, the Board of Appeal, like the Opposition Division, based the rejection of the application for registration of the mark applied for in respect of clothing, footwear and headgear in Class 25 on the existence of a likelihood of confusion between the mark applied for and the earlier Community figurative mark EMI, as the earlier Community word mark EMI was not taken into account in support of that rejection.
19 It follows that the present action must be assessed in the light solely of the earlier Community figurative mark EMI (‘the earlier mark’).
20 The applicant puts forward three pleas in law in support of its action. By its first plea, it submits, first, that the contested decision is vitiated by a failure to state the reasons regarding the question of the similarity of the goods and the service at issue and, secondly, that the Board of Appeal made an error of assessment on that point, inter alia as regards its understanding of the case-law applicable in that regard. By its second plea, the applicant submits that OHIM misinterpreted and erroneously applied the case-law resulting from the judgment of the Court of Justice in Case C‑418/02 Praktiker Bau- und Heimwerkermärkte [2005] ECR I‑5873. Lastly, the applicant submits, in its third plea, that the Board of Appeal was mistaken about the similarity of the signs at issue and the likelihood of confusion between the mark applied for and the earlier mark.
21 OHIM and the intervener dispute the applicant’s pleas.
22 Before ruling on those pleas as such, it is important to bear in mind that 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.
23 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 which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (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).
24 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).
25 It is in the light of the foregoing considerations that the applicant’s pleas must be examined, bearing in mind that it is important to analyse separately the question whether the statement of reasons for the contested decision is sufficient or not and the question whether an error of assessment may have been made by the Board of Appeal, since the former goes to an issue of infringement of an essential procedural requirement within the meaning of Article 263 TFEU, whereas the latter goes to the substantive legality of that decision and is concerned with infringement of a rule of law relating to the application of the Treaty within the meaning of Article 263 TFEU (see, to that effect, Case C‑367/95 P Commission v Sytraval and Brink’s France [1998] ECR I‑1719, paragraph 67, and judgment of 12 July 2012 in Case T‑389/11 Gucci v OHIM — Chang Qing Qing (GUDDY), not published in the ECR, paragraph 17).
26 What the applicant puts forward as its first plea thus consists, in fact, of two separate pleas, which will be examined as such.
The first plea, alleging a failure to state reasons
27 The applicant submits that the contested decision is vitiated by a failure to state reasons on account of the fact that the Board of Appeal referred only to a single judicial decision, in the context of an ‘extremely concise’ argument.
28 That argument cannot succeed.
29 It is true that under Article 75 of Regulation No 207/2009, decisions of OHIM are required to state the reasons on which they are based. That duty to state reasons has the same scope as that under Article 296 TFEU, pursuant to which the reasoning of the author of the act must be shown clearly and unequivocally. That duty has two purposes: to allow interested parties to know the justification for the measure taken so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision (judgment of 19 May 2010 in Case T‑464/08 Zeta Europe v OHIM (Superleggera), not published in the ECR, paragraph 47; see also, to that effect, Case C‑447/02 P KWS Saat v OHIM [2004] ECR I‑10107, paragraphs 63 to 65).
30 However, it is settled case-law that the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the lines of reasoning articulated by the parties before them (see GUDDY, paragraph 16 and the case-law cited). It is therefore sufficient if the institution concerned sets out the facts and the legal considerations having decisive importance in the context of the decision (see, to that effect, Case C‑350/88 Delacre and Others v Commission [1990] ECR I‑395, paragraph 16, and Case T‑198/01 Technische Glaswerke Ilmenau v Commission [2004] ECR II‑2717, paragraphs 59 and 60).
31 It must be pointed out that, in the present case, the Board of Appeal fully complied with the obligation to state reasons incumbent upon it, as it based its analysis that the clothing, footwear and headgear, on the one hand, and the retail service in respect of those goods, on the other, were similar on the case-law resulting from the judgment in Case T‑116/06 Oakley v OHIM — Venticinque (O STORE) [2008] ECR II‑2455, paragraphs 42 to 62), which concerned the same goods and services as in the present case (paragraphs 18 and 19 of the contested decision).
32 Consequently, the applicant was indeed informed of the reason why the Board of Appeal found that the goods and the service at issue were similar, thus allowing it the opportunity of challenging the merits of that finding before the Courts of the European Union, which it has done. Therefore, although it is concise, the statement of reasons for the contested decision is nevertheless sufficient in the light of the requirements of Article 296 TFEU. The argument that the statement of reasons is insufficient on account of the reference to a single judicial decision seeks, in reality, to dispute that that case-law is established and, consequently, to dispute the merits of the reason, and not whether it is sufficient having regard to the obligation to state reasons. It must therefore be rejected.
The second and third pleas, relating, in essence, to the absence of similarity between the goods and the service at issue
33 The applicant submits, as was stated in paragraph 20 above, that the Board of Appeal made an error of assessment in the comparison of the goods and the service at issue. It also maintains that OHIM vitiated its decision by an error of law in making that comparison, contrary to the judgment in Praktiker Bau- und Heimwerkermärkte.
34 It must be pointed out that the Board of Appeal, as regards the comparison of the goods and the service at issue, stated, first, that the applicant had, in accordance with Rule 2(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, and with the case-law resulting from the judgment in Praktiker Bau- und Heimwerkermärkte, specified in a detailed manner the goods which it intended to protect by the mark applied for, namely clothing, footwear and headgear (paragraph 17 of the contested decision). It then stated that the Court, in O STORE, had held that retail services related to those goods and the goods themselves were similar (paragraph 18 of the contested decision), before finding, lastly, that it was necessary to draw the same conclusion in the present case (paragraph 19 of the contested decision).
35 The applicant puts forward five arguments in support of its plea relating to the existence of an error of assessment in the comparison of the goods and the service at issue: first, the Board of Appeal overlooked the finding in paragraph 46 of O STORE according to which the goods and services in question differed by their nature, purpose and method of use; secondly, the Court, in paragraph 58 of that judgment, found that there was, between those goods and services, only ‘a certain degree of similarity’, whereas, in the contested decision the Board of Appeal referred to a ‘strong similarity’; thirdly, the Court based its decision on the complementarity between the goods and services in question and the fact that they were generally marketed in the same sales outlets, although the simple sharing of distribution channels does not in itself make it possible to conclude that there is similarity, or a very low degree of similarity, especially where, as is the case here, the applicant and the intervener intend to market the goods and services under their respective institutional brands; fourthly, by not taking into account the fact that the applicant and the intervener had separate core businesses, namely the marketing of energy and automotive products, on the one hand, and the publishing and offering for sale of audio-visual contents on the other, and therefore very different potential customers, the Board of Appeal applied the case-law resulting from the judgment in O STORE in the abstract, thereby contradicting the wording of the Guidelines concerning proceedings before OHIM (‘the OHIM Guidelines’), which state, in particular, that each case must be ‘dealt with on its own merits’; fifthly, OHIM’s decision-making practice contradicts the reasoning applied by the Board of Appeal in the contested decision.
36 As regards the first argument, its lack of any proper foundation is apparent from an examination of the contested decision itself. The Board of Appeal expressly referred to paragraphs 42 to 62 of O STORE (paragraph 18 of the contested decision), which presupposes, implicitly but necessarily, that it wished to apply the whole of the analysis adopted by the General Court in that case, including that containing an attenuation concerning the similarity of the goods and services at issue in paragraph 46 of that judgment. It follows that, far from having failed to have regard to the fact that the goods and services in question differed by their nature, purpose and method of use, the Board of Appeal accepted that reasoning, but also the reasons why the Court did not stop there, before concluding, in paragraph 19 of the contested decision, that the service and the goods at issue are similar, in line with what the Court held in paragraphs 61 and 62 of O STORE.
37 The applicant’s second argument is also unfounded, because it has no factual basis. Although it is true that, in paragraph 58 of O STORE, the Court found that there was ‘a certain degree [of similarity]’ between, on the one hand, retail and wholesale services concerning clothing, headwear, footwear, athletic bags, backpacks and knapsacks and wallets and, on the other, those goods themselves, it is, by contrast, incorrect to state that the Board of Appeal found, in the contested decision, that there was a ‘strong similarity’ between, on the one hand, clothing, footwear and headgear and, on the other, the bringing together for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase clothing, footwear and headgear. It simply found, by applying the case-law resulting from that judgment, that retail services relating to the goods concerned and those goods themselves were ‘similar’ (paragraph 18 of the contested decision), a conclusion which the Court also reached in paragraph 62 of O STORE, in which it also used the adjective ‘similar’.
38 The applicant’s third and fourth arguments, which it is appropriate to examine together, must also be rejected.
39 It is, first of all, incorrect to claim that the Board of Appeal carried out an abstract analysis of the comparison of the goods and the service at issue, because, on the contrary, as the Court has already pointed out in paragraph 34 above, the Board of Appeal stated, in paragraph 17 of the contested decision, that the applicant had complied with the requirements of Rule 2(2) of Regulation No 2868/95 by specifying in a detailed manner the goods which it intended to protect by the mark applied for, namely clothing, footwear and headgear. In view of the fact that the earlier mark covered ‘the bringing together for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase clothing, footwear and headgear’, the Board of Appeal was right to apply the case-law resulting from O STORE and find that the goods and the service at issue are similar.
40 Secondly, it is incorrect to state that, in O STORE, the Court based its analysis ‘only’ on the alleged complementarity between the goods and services in question and on the fact that they ‘are generally sold in the same sales outlets’. Although that ground was upheld by the Court in paragraph 51 of O STORE, in accordance with the settled case-law cited in that paragraph, it is far from constituting the only factor in its reasoning, which is detailed in paragraphs 42 to 62 of that judgment. In particular, the Court stated, in paragraph 53 of the judgment, that the goods covered by the earlier mark, namely, inter alia, clothing, headwear and footwear, were identical to those to which the applicant’s services in the case in question related and, in paragraph 54 of that judgment, that such services, which are provided with the aim of selling certain specific goods, would make no sense without the goods.
41 The same reasoning is capable of being applied to the present case, as the Board of Appeal correctly stated in paragraphs 18 and 19 of the contested decision, and that is not precluded by fact that the applicant and the intervener carry out their respective core business activities in very distinct sectors because the present case concerns goods, and a service intended to facilitate the purchase of goods, which have no link to the business activities in question other than, on the one hand, the mark applied for and, on the other, the earlier mark.
42 Lastly, the applicant errs in invoking an infringement of the OHIM Guidelines, which state, in essence, first, that the risk of confusion is unlikely between retail services and particular goods except in very particular circumstances, such as when the respective trade marks are identical or almost so and well established in the market and, secondly, that each case that arises will be dealt with on its own merits.
43 In the first place, it is important to bear in mind that the OHIM Guidelines are merely a set of consolidated rules setting out the line of conduct which OHIM proposes to adopt, which means that they constitute a self-imposed restriction on OHIM, in that it must comply with the rules of conduct which it has itself laid down. That self-imposed restriction however necessarily presupposes that those guidelines comply with the applicable legal provisions (see, to that effect, judgment of 16 June 2010 in Case T‑487/08 Kureha v OHIM — Sanofi-Aventis (KREMEZIN), not published in the ECR, paragraph 39 and the case-law cited). Consequently, those guidelines may not in any way contravene the interpretation which the Courts of the European Union have given of a legal rule, in the present case Article 8(1)(b) of Regulation No 207/2009. The applicant cannot therefore reasonably rely on extracts from the OHIM Guidelines in order to request that the Court should disregard the case-law resulting from O STORE.
44 In the second place, it must, in any event, be stated that the Board of Appeal complied with the wording of the OHIM Guidelines by examining the present case ‘on its own merits’, which led it to conclude correctly that the goods and the service at issue are similar. Although the applicant submits that the mark applied for, on the one hand, and the earlier mark, on the other, were not ‘well-established in the market’ within the meaning of the OHIM Guidelines, the markets being, in the present case, that for items of clothing and that for retail services in respect of clothing, it is sufficient to state that the illustrations provided in the OHIM Guidelines are not exhaustive, as is clearly proved by the use of the words ‘such as’, which precede those illustrations.
45 The fifth argument in support of the plea alleging that there was an error of assessment by the Board of Appeal will be examined after the review of the legality of the examination, by that board, of the similarity of the goods and the service at issue.
46 The applicant also puts forward the plea that the Board of Appeal’s interpretation and application of Praktiker Bau- und Heimwerkermärkte fail to have regard for the wording of that judgment and, more broadly, could render irrelevant, in their entirety, the Nice Agreement and the legal framework governing the Community trade mark.
47 It is important, at the outset, to consider the substance of that judgment and to state the grounds on which the Board of Appeal referred to it.
48 The Court of Justice, in the judgment in Praktiker Bau- und Heimwerkermärkte, which was delivered following a request for a preliminary ruling from the Deutsche Patent- und Markenamt (German Patent and Trade Mark Office) concerning the interpretation of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), ruled, first, that the concept of ‘services’ within the meaning of Directive 89/104 included services provided in connection with retail trade in goods (paragraph 39 of the judgment), which, moreover, already corresponded to OHIM’s practice relating to Regulation No 40/94 (paragraph 37 of the judgment) and, secondly, that it was not necessary, as regards ‘retail services’, to specify in detail the service(s) for which the registration of a Community trade mark was sought, whereas the goods or types of goods to which those services related had to be specified (paragraphs 46, 49 and 50 of the judgment). Asked to rule on the possibility of regarding specific goods and the retail service(s) relating to those goods as similar, the Court of Justice held that that question was hypothetical because it was not indispensable to the resolution of the dispute in the main proceedings and therefore declared it inadmissible (paragraphs 53 to 58 of the judgment).
49 The Board of Appeal referred to Praktiker Bau- und Heimwerkermärkte in paragraph 17 of the contested decision, stating that the applicant had complied with Rule 2(2) of Regulation 2868/95 and with that judgment because it had specified in a detailed manner the goods concerned, namely clothing, footwear and headgear.
50 It is apparent from the foregoing, first, that the Board of Appeal fully complied with the requirement referred to in paragraph 50 of Praktiker Bau- und Heimwerkermärkte and, secondly, that it could not have failed to comply with that judgment by finding that the goods in Class 25 concerned by the mark applied for and the service in Class 35 protected by the earlier mark were similar, because, as has been pointed out in paragraph 48 above, the Court of Justice specifically refrained from ruling on the question of the similarity of the goods and services.
51 The claim that a finding of such similarity is contrary to ‘the law’ and the Nice Agreement relates to a mere assertion of principle and must, as such, be held to be inadmissible.
52 The applicant’s argument relating to the existence of a ‘schizophrenic solution’ before OHIM, on the ground that Communication No 3/01 of the President of OHIM of 12 March 2001 concerning the registration of Community trade marks for retail services excluded the existence of a likelihood of confusion between retail services and particular goods, whereas, in Communication No 7/05 of 31 October 2005, which has the same subject-matter, the President of OHIM required retail services to be specified in relation to the goods to be sold, has no effect on the lawfulness of the contested decision.
53 It is important to state that such communications, although they may, as the case may be, bind OHIM in the area of self-imposed restrictions, must, in any event, comply with the applicable legal provisions, as is apparent from the case-law referred to in paragraph 43 above. Next it must be pointed out that that is indeed the case here as Communication No 3/2001 in no way states, as the applicant submits, ‘that no likelihood of confusion could arise between retail services and products’, but that that likelihood is ‘unlikely’, ‘except in very particular circumstances, such as when the respective trade marks are identical or almost so and well-established in the market’ and that it is necessary, in any event, to deal with each case ‘on its own merits’. Communication No 7/05 simply echoes paragraph 50 of Praktiker Bau- und Heimwerkermärkte.
54 It is apparent from Praktiker Bau- und Heimwerkermärkte, as the applicant admits in paragraph 43 of the application, that retail services for specific products and those products themselves are similar, as the Court held in O STORE in connection with clothing, footwear and headwear and as the Board of Appeal rightly found in paragraphs 17 and 18 of the contested decision. In contrast to what the applicant maintains, such an interpretation does not in any way give an applicant for a Community trade mark the ‘possibility to have protection for all goods just by filing one class — class 35’, because, on the contrary, the goods or types of goods concerned by retail services must be precisely identified for those services in order to be capable of being registered by OHIM.
55 Lastly, the examples referred to by the applicant in connection with services in classes other than Class 35 do not concern the scope of the case-law resulting from Praktiker Bau- und Heimwerkermärkte, which related only to a retail service or retail services in Class 35.
56 It follows from the foregoing that the Board of Appeal did not make an error of assessment or err in law in finding that the goods and the service at issue are similar.
57 In view of the foregoing finding, the applicant cannot reasonably rely, in the fifth argument of its second plea, on OHIM’s previous decisions (see, to that effect, Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraphs 73 to 79 and the case-law cited).
58 The second and third pleas must therefore be rejected.
The fourth plea, alleging that the signs at issue are not similar and that there is no likelihood of confusion
59 It is appropriate to examine the question of the comparison of the signs at issue and that of the likelihood of confusion in turn.
The comparison of the signs
60 The signs at issue are a word mark, the mark applied for, and a figurative mark, the earlier mark. The latter consists of the word element ‘emi’, whereas the mark applied for consists of the term ‘eni’.
61 It should be noted at the outset that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, 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 appreciation of such 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 Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and case-law cited).
62 In the present case, the Board of Appeal found that the signs at issue were visually and phonetically similar, but excluded a conceptual similarity on the ground that neither of the words in question had any meaning for the relevant public, namely the public of the Member States of the European Union.
63 Although the applicant invokes, in paragraph 14 of the application, in the context of the submission of its third plea, the ‘erroneous finding of similarity of [the] signs’, it nevertheless states, in paragraph 62 of the application, that the terms ‘eni’ and ‘emi’, which were once acronyms, ‘are certainly similar but not confusingly similar’. It must be concluded from that, that the applicant ultimately concurs with the Board of Appeal’s assessment concerning the visual and phonetic similarity of the signs at issue, which it is important to state is, in that regard, well founded.
64 The applicant disputes, in actual fact, only OHIM’s assessment relating to the impossibility of making a conceptual comparison.
65 The Board of Appeal arrived at that conclusion on account of the fact that the signs at issue had no meaning in any of the relevant languages (paragraph 25 of the contested decision).
66 The applicant disputes the Board of Appeal’s assessment, taking the view that the mark applied for and the earlier mark have each developed their own identity in the market and that, as their ‘personality’ sufficiently differentiates one from the other, they will be perceived by consumers as containing conceptual differences, irrespective of the original meaning of the three-letter sequences ‘e’, ‘n’, ‘i’ and ‘e’, ‘m’, ‘i’.
67 It is apparent from the case-law that conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs concerned. For there to be such a counteraction, however, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (see, to that effect Case T‑185/02 Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO) [2004] ECR I‑1739, paragraph 56 and the case-law cited).
68 The applicant refers, in that regard, to the concept of a well-known fact, which is distinct from that of a well-known mark (Case C‑16/06 P Les Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 96), in order to claim that the signs at issue have a clear conceptual meaning.
69 It must, however, be held that that concept is not applicable in the present case, having regard to the signs at issue and the definition of the relevant public.
70 The relevant public is the public of the Member States of the European Union, which consists, as the Board of Appeal correctly pointed out in paragraph 15 of the contested decision, of the general public and of professionals. If the relevant public is heterogeneous, it is necessary to take into consideration, in assessing the likelihood of confusion, the part of that public with the lowest level of attention, that is to say, in the present case, the general public (see, to that effect, judgment of 15 February 2011 in Case T‑213/09 Yorma’s v OHIM — Norma Lebensmittelfilialbetrieb (YORMA’S), not published in the ECR, paragraph 25).
71 It cannot reasonably be claimed that, for the general public of the European Union, the terms ‘eni’ and ‘emi’ are well known, as the painter Pablo Picasso (see, to that effect, PICARO, paragraphs 55 and 56) or the comic strip character Obelix (see, to that effect, Case T‑336/03 Éditions Albert René v OHIM — Orange (MOBILIX) [2005] ECR II‑4667, paragraph 79) may, for example, be.
72 The applicant therefore errs in attempting, in paragraph 76 of the application, to attribute a conceptual content to the signs at issue.
73 The Board of Appeal was therefore right to find that the signs at issue had no conceptual content at all for the general public of the European Union.
The likelihood of confusion
74 The applicant claims, in this connection, that the Board of Appeal erred in maintaining, in paragraph 32 of the contested decision, that it had not adduced any evidence to support the assertion that the mark applied for and the earlier mark were ‘longstanding trademarks recognised by end users’ and were each leaders in their sectors. It states that it submitted several documents proving the position of the mark applied for on the market.
75 The applicant’s argument alleging that the mark applied for and the earlier mark are well known on account of the applicant’s entrepreneurial history, on the one hand, and that of the intervener, on the other, cannot be accepted, nor can the considerations relating to the fact that those marks are at the head of the sectors in which the applicant and the intervener carry out their main business activities, because, as the Board of Appeal correctly pointed out, such an assertion has not been substantiated. Furthermore, it must be pointed out that the applicant is referring here to the markets relating to its and the intervener’s main business activities, although, contradictorily, in paragraph 31 of the application, it referred to the market for clothing goods and the market for retail services for clothing.
76 It is, moreover, important to bear in mind that a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74).
77 In view of the visual and phonetic similarities between the signs at issue and having regard to the fact that the service covered by the earlier mark, on the one hand, and the goods covered by the mark applied for, on the other, are also similar, the Board of Appeal did not err in finding that there was a likelihood of confusion between them.
78 Consequently, the Board of Appeal was right in upholding the decision of the Opposition Division refusing registration of the mark applied for in respect of clothing, footwear and headgear in Class 25.
79 The applicant’s fourth plea must therefore be rejected.
80 It follows from all of the foregoing that the applicant’s action must be dismissed in its entirety.
Costs
81 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.
82 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 (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Eni SpA to pay the costs.
Delivered in open court in Luxembourg on 21 May 2014.
[Signatures]