JUDGMENT OF THE GENERAL COURT (Second Chamber)
18 May 2011 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark POLO SANTA MARIA – Earlier Benelux figurative mark showing the silhouette of a polo player – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑376/09,
Glenton España, SA, established in Madrid (Spain), represented by E. Armijo Chávarri and A. Castán Pérez-Gómez, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
The Polo/Lauren Company, LP, established in New York, New York (United States), represented by R. Black, R. Guthrie, Solicitors, and S. Malynicz, Barrister,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 18 June 2009 (Case R 594/2008-2) in relation to opposition proceedings between The Polo/Lauren Company, LP, and Glenton España, SA,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood, President, F. Dehousse (Rapporteur) and J. Schwarcz, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Court Registry on 25 September 2009,
having regard to the response of OHIM lodged at the Court Registry on 12 January 2010,
having regard to the response of the intervener lodged at the Court Registry on 23 December 2009,
further to the hearing on 1 December 2010,
gives the following
Judgment
Background to the dispute
1 On 9 August 2004, the applicant – Glenton España, SA (‘Glenton España’) – 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark for which registration was sought is the following figurative sign:
3 The goods and services in respect of which registration was sought include goods in Classes 18 and 25 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 which correspond, for each of those classes, to the following description:
– Class 18: ‘Leather and imitations of leather; goods made from these materials, not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;
– Class 25: ‘Clothing; footwear; headgear’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 19/2005 of 9 May 2005.
5 On 28 June 2005, the intervener – The Polo/Lauren Company, LP (‘Polo/Lauren’) – filed a notice of opposition under Article 42 of Regulation No 40/94 (now 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, in particular, on the following earlier Benelux figurative trade mark:
7 That mark was registered at the Benelux Trademarks Office on 5 October 2000, under number 695570, in respect of goods in Classes 18 and 25 within the meaning of the Nice Agreement and corresponding, for each of those classes, to the following description:
– Class 18: ‘leather and imitations of leather and thereof made products as far as not included in other classes; animal skins, trunks and valises; umbrellas, parasols and walking sticks; whips and saddlery’;
– Class 25: ‘Clothing; footwear; headgear’.
8 The grounds relied on in support of the opposition were those referred to in Articles 8(1)(a) and (b), 8(4) and 8(5) of Regulation No 40/94 (now Articles 8(1)(a) and (b), 8(4) and 8(5) of Regulation No 207/2009).
9 On 7 February 2008, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 40/94. It found, in essence, that, in the light of the identical nature or strong similarity of the goods, the similarities between the signs at issue and the high degree of distinctiveness, acquired through use, of the earlier mark, there was a likelihood of confusion between the marks at issue.
10 On 1 April 2008, the applicant filed a notice of appeal before OHIM under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the decision of the Opposition Division.
11 By decision of 18 June 2009 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal in part, rejecting the opposition in so far as it was directed against certain goods in Class 18 referred to in the application for a Community trade mark, namely ‘whips’, ‘harness’ (referred to in the English version of that application) and ‘saddlery’. The Board of Appeal rejected the appeal as to the remainder, thus upholding the opposition in respect of the other goods in Classes 18 and 25. The Board of Appeal found, first, that the goods in Classes 18 and 25 covered by the trade mark application were either identical or highly similar to the goods in those classes covered by the earlier mark. Secondly, the Board of Appeal found that the relevant public consisted of the general public, or persons practising equestrian sports, in the Benelux countries. It explained that the public in question – consisting of French-speakers or Dutch-speakers – displayed a level of attention which was at least average and might even be somewhat higher for some more costly items. Thirdly, the Board of Appeal found that the signs at issue had a certain degree of visual similarity and significant conceptual similarity. Fourthly, it stated that the earlier mark had an enhanced distinctiveness in relation to goods in Classes 18 and 25, with the exception of ‘whips’, ‘harness’ (referred to in the English version of the application for the Community trade mark) and ‘saddlery’. The Board of Appeal concluded from this that there was a likelihood of confusion which could not be ruled out by the fact that the relevant public might be slightly more attentive when purchasing some of the goods referred to in the application for a Community trade mark. By contrast, with regard to the ‘whips’, ‘harness’ (referred to in the English version of the application for the Community trade mark) and ‘saddlery’ in Class 18, the Board of Appeal found that there was no likelihood of confusion between the two marks at issue. Fifthly, the Board of Appeal explained that the registration of the Community trade mark SANTA MARIA POLO CLUB SOTOGRANDE (which contains a figurative element which is identical to that of the trade mark applied for) was of no relevance to the present case. In particular, the Board of Appeal stated that the above mark was not identical to the mark applied for. The same applied to the argument that the earlier mark coexisted with other marks incorporating a similar figurative element.
Forms of order sought
12 Glenton España claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
13 OHIM and Polo/Lauren contend that the Court should:
– dismiss the action;
– order Glenton España to pay the costs.
Law
Admissibility of the documents produced for the first time before the Court
14 OHIM and Polo/Lauren contend that the results obtained through the use of an internet search engine and produced by Glenton España in Annexes 2 and 3 to the application initiating proceedings were presented for the first time before the Court and are therefore inadmissible. Glenton España stated at the hearing that it had presented those documents for illustrative purposes.
15 It should be noted that the documents in question contain extracts from websites which were indeed produced for the first time before the Court. According to Glenton España, those documents are intended to show that the words ‘santa maria’ will be easily recognisable for consumers in the Benelux countries, who will probably associate them with the commercial origin of the mark applied for or the geographical origin of the goods covered by that mark. In that connection, it should be borne in mind that, according to settled case-law, the purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal for the purposes of Article 65 of Regulation No 207/2009 and, accordingly, it is not the Court’s function to review the facts in the light of documents produced for the first time before it. The above documents must therefore be disregarded, without it being necessary to assess their probative value (see, to that effect, Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case-law cited).
Substance
16 Glenton España essentially raises a single plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It disputes the assessment made by the Board of Appeal regarding the similarity of the signs at issue and claims that the Board erred in finding that there was a likelihood of confusion.
17 OHIM and Polo/Lauren dispute Glenton España’s arguments.
18 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 is to include the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a) 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.
19 According to established 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 line of authority, the likelihood of confusion must be assessed globally, in accordance with the perception which the relevant public has of the signs and goods or services in question, account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
20 In the present case, it should first of all be noted that, as the parties confirmed at the hearing, the contested decision is not disputed in so far as it rejected the opposition in respect of certain goods covered by the trade mark application. By the same token, the parties do not dispute that the goods in respect of which registration was refused (‘the goods concerned by the present action’) are identical to those covered by the earlier mark.
21 Moreover, as the Board of Appeal stated in paragraph 19 of the contested decision, the opposition was based on the earlier mark registered at the Benelux Trademarks Office. It is therefore consumers in the Benelux countries who should be taken into account for the purposes of determining whether there is a likelihood of confusion between the marks at issue.
22 Lastly, it should be noted that the goods concerned by the present action are for everyday use. As the Board of Appeal found, in essence, the relevant public is therefore made up of the average consumer, taken to be reasonably well informed and reasonably observant and circumspect with respect to the goods concerned by the present action. Glenton España does not contest that finding but argues that, in reality, the Board of Appeal attributed to the relevant public a level of attention that was closer to that of the less careful or less attentive consumer (see paragraph 56 below).
23 In the light of those considerations, a comparison must be made of the signs at issue, and an assessment of the likelihood of confusion.
Comparison of the signs
24 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
25 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 OHIM v Shaker, paragraph 24 above, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (Nestlé v OHIM, paragraph 43).
26 Glenton España claims, in essence, first of all, that the Board of Appeal attributed exclusive and overriding value to the figurative element common to the signs at issue.
27 In that regard, it should be observed that, in its comparison of the signs at issue, the Board of Appeal did indeed take into account the fact that those signs both included a picture of a horseman wielding a polo mallet. Nevertheless, as OHIM and the intervener correctly state, the Board of Appeal also took into account the other components of the sign applied for. Specifically, the Board of Appeal also referred to the figurative elements representing a ‘horse shoe’ and a ‘brace of intersecting polo mallets’, the words ‘polo’ and ‘santa maria’ and the ‘colours used in the mark [applied for]’. As regards the words ‘santa’ and ‘maria’, the Board of Appeal found, when assessing visual similarity, that they ‘[were] in a prominent position and provide[ed] a visual difference as compared with the earlier mark’ (paragraphs 28 and 30 of the contested decision).
28 In those circumstances, it cannot be maintained that the Board of Appeal undertook a comparison of the signs at issue in which it took into account only the figurative element common to both.
– The visual comparison
29 As regards the visual comparison of the signs at issue, Glenton España claims that the similarity between the signs is faint, particularly in view of the additional word and figurative elements in the mark applied for. Moreover, the distinctive character of the earlier mark is not relevant in this context.
30 In that regard, it should be borne in mind that Glenton España does not dispute the finding made by the Board of Appeal that there is some similarity between the signs at issue. To that extent, Glenton España’s arguments do nothing to cast doubt on the lawfulness of the contested decision.
31 Furthermore, first, it should be noted that the signs at issue have in common a figurative element representing a polo player. In addition, in both of those signs, the horse is in motion and the polo player is holding a mallet.
32 Secondly, it should be observed that that figurative element is the sole component of the earlier mark and that, because of its central position and its size, it occupies a not insignificant part of the mark applied for.
33 Thirdly, although the polo players featured in the signs at issue are not seen from the same angle and the positions of both horse and rider are also different, those points of dissimilarity should – as the Board of Appeal found – be regarded as minor. Indeed, in both cases, the relevant consumer will distinctly identify, and remember, a polo player. In the case of the mark applied for, that finding is further supported by the presence of the word element ‘polo’ and by the figurative elements portraying a horse shoe and crossed polo mallets.
34 Fourthly, according to the case-law, when a composite mark consists of one component juxtaposed with another trade mark, that latter mark, even where it is not the dominant component in the composite mark, can still have an independent distinctive role in the composite mark. In such a case, the composite mark and the other mark may be regarded as similar (see, to that effect, Case C‑120/04 Medion [2005] ECR I‑8551, paragraphs 30 and 37; see, also, Joined Cases T‑5/08 to T‑7/08 Nestlé v OHIM – Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe) [2010] ECR II‑0000, paragraph 60). It should be pointed out that Medion concerned a situation in which the earlier mark had been reproduced identically in the later mark. Nevertheless, it must be held that, in the event that the earlier mark is not reproduced identically in the later mark, it is still possible that the signs at issue are similar on account of the similarity between the earlier mark and one element of the later mark which has an independent distinctive role (Golden Eagle and Golden Eagle Deluxe, paragraph 60). In the present case, since the figurative element representing a polo player cannot be regarded as wholly negligible in relation to the overall impression conveyed by the mark applied for, and in view of the similarity between that element and the earlier mark, the mark applied for and the earlier mark cannot be regarded as entirely dissimilar – which moreover Glenton España does not suggest.
35 Fifthly, the Board of Appeal emphasised, in paragraph 28 of the contested decision, the distinctive character of the ‘image of the polo player’ for the goods concerned by the present action. That figurative element is the sole component of the earlier mark and is one of the elements which go to make up the mark applied for. In that regard, it must be held that the distinctiveness of the sole figurative element constituting the earlier mark, which is similar to one of the figurative elements of the mark applied for, is relevant to the assessment of the visual similarity of the signs at issue (see, to that effect, Golden Eagle and Golden Eagle Deluxe, paragraph 34 above, paragraph 61). In the present case, Glenton España does not dispute the evidence which Polo/Lauren produced before OHIM in order to establish the distinctive character of the earlier mark for the goods in Class 25. In that regard, therefore, the finding made by the Board of Appeal cannot be disputed. As regards the other goods – in Class 18 – concerned by the present action, and contrary to the unsubstantiated assertions made by Glenton España, there is nothing to suggest that they are directly linked to polo playing. In that context, the distinctiveness of the representation of a polo player is, in relation to the Class 18 goods concerned by the present action, intrinsically enhanced because, in relation to those goods, the representation of a polo player has an imaginative content.
36 Sixthly, whilst the words ‘santa’ and ‘maria’ also play a not insignificant role in the mark applied for, as a result of their position and size, they are still not dominant elements in the mark, particularly in view of the figurative element representing a polo player; nor does Glenton España claim that they are.
37 Seventhly, as, in essence, the Board of Appeal correctly found, it must be held that, whilst the colours used in the mark applied for make it different from the earlier mark, they do not dominate the image of the mark applied for to the extent that the figurative element representing a polo player becomes insignificant.
38 In the light of all of those factors, it must be held that the Board of Appeal did not err in finding that there was some visual similarity between the signs at issue. Furthermore, particularly in view of the distinctive character of the sole figurative component of the earlier mark, which is similar to one of the figurative elements in the mark applied for, it must be held that – contrary to the assertions made by Glenton España – the similarity between the signs at issue cannot be described as faint.
– The phonetic comparison
39 Glenton España claims that the Board of Appeal did not undertake a phonetic comparison of the signs at issue. It submits that there is a clear difference between the marks owing to the fact that the earlier mark can be communicated orally by describing the sign, whilst the mark applied for can be referred to orally by voicing the word element ‘santa maria polo’.
40 In that regard, it is sufficient to note – without there being any need to rule on the question whether the Board of Appeal erred in finding that it was not possible to compare the signs in the case before it – that, in any event, if such a comparison were possible (as Glenton España claims), the earlier mark could be communicated orally using a description of the sign involving the word ‘polo’, as OHIM correctly points out. In those circumstances, the argument that, phonetically, those signs are totally different is unsustainable.
– The conceptual comparison
41 As regards the conceptual comparison of the signs at issue, the Board of Appeal noted that there was a significant overlap between the marks in question. The Board concluded from this that there was a high degree of conceptual similarity between the signs at issue.
42 Glenton España accepts that the marks in question both refer to the sport of polo. Glenton España claims, however, that the word element ‘santa maria polo’ introduces an additional distinguishing element, in particular by indicating the place of origin or commercial origin of the mark.
43 First, it should be observed that there is some conceptual similarity between the signs at issue owing to the figurative element common to both marks, representing a polo player. Although the two representations of a polo player are not absolutely identical, Glenton España does not dispute that, on seeing the figurative elements in question, the relevant consumer will distinctly identify a polo player.
44 Secondly, it should be observed that, as the Board of Appeal noted, the mark applied for also contains word and figurative elements which increase the likelihood that the relevant consumer will associate that mark, conceptually, with polo playing. In particular, the mark applied for contains figurative elements representing two crossed polo mallets, a horse shoe and the word element ‘polo’.
45 Thirdly, as regards Glenton España’s argument that the word element ‘santa maria polo’ introduces an additional distinguishing element by referring to the ‘Santa Maria Polo Club’, a Spanish polo club, it is sufficient to note that no detailed evidence was submitted in good time to show that that polo club is known to the relevant public, a point made by the Board of Appeal. In any event, it should be observed that – as OHIM correctly stated – the meaning that Glenton España attributes to the word element ‘santa maria polo’ also relates to polo. That element does not, therefore, diminish the conceptual similarity between the signs at issue.
46 Fourthly, Glenton España’s arguments relating to possible alternative meanings of the word elements ‘santa maria’ are based on documents which are inadmissible (see paragraph 15 above).
47 In the light of all those factors, it must be held that the Board of Appeal did not err in finding that there was a high degree of conceptual similarity between the signs at issue.
The likelihood of confusion
48 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, the similarity of the trade marks and the similarity of the goods or services concerned. 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 (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).
49 Furthermore, as is apparent from the eighth recital in the preamble to Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements and, in particular, on the public’s recognition of the trade mark on the market in question. The more distinctive the earlier mark, the greater will be the likelihood of confusion and therefore marks with highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 24; Canon, paragraph 48 above, paragraph 18; and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 20).
50 In the present case, the Board of Appeal held, in essence, that, in view of the visual and conceptual similarities between the signs at issue, the identical nature of the goods concerned by the present action and the distinctiveness of the earlier mark in relation to those goods, there was a likelihood of confusion. According to the Board of Appeal, that conclusion is not affected by the coexistence of the earlier marks referred to by Glenton España.
51 Glenton España claims, first of all, that the Board of Appeal erred in basing its comparison of the marks at issue on the assumption that the figurative element representing a polo player was the dominant element. Second, Glenton España disputes the distinctive character of the earlier mark by reason, in particular, of the existence of Community marks containing a similar figurative element. In addition, Glenton España argues that, in reality, the Board of Appeal attributed to the relevant public a level of attention that was closer to that of the less careful or less attentive consumer. Lastly, Glenton España relies on the coexistence of an earlier trade mark, which it claims is ‘virtually’ identical to the mark applied for.
52 First, it should be noted that there is some visual similarity and significant conceptual similarity between the marks at issue. Furthermore, supposing for the sake of argument that there are certain phonetic differences between the marks at issue – if, as Glenton España claims, such a comparison were possible – it must be held that the goods covered by the marks in question are usually sold in shops where consumers choose those goods themselves and must therefore rely primarily on the image of the trade mark applied to those goods. In those circumstances, visual similarity between the signs will as a general rule be more important (see, to that effect, Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II‑3471, paragraph 49).
53 Secondly, it should be noted that the goods covered by the present action are identical. The corollary of that identity is that the scope of any differences between the signs in question is reduced (see, to that effect, Case T‑133/05 Meric v OHMI – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 74, and judgment of 17 April 2008 in Case T‑389/03 Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), not published in the ECR, paragraph 98).
54 Thirdly, the Board of Appeal did not – contrary to the assertions made by Glenton España – base its comparison of the marks in question solely on the figurative element common to both marks (see paragraph 27 above). The fact that, in its overall assessment of the likelihood of confusion, the Board of Appeal also stated, in paragraph 31 of the contested decision, that the ‘[figurative] feature in the mark applied for … is an eye-catching, independent central element of the contested sign that … could be confused with the sole device element of the earlier mark’ does not affect that conclusion. In that regard, the Board of Appeal found, in essence, and correctly, that the figurative element of the mark applied for, which was similar to the figurative element constituting the earlier mark, had a distinctive role in the composite sign applied for, yet without being the dominant element.
55 Fourthly, the Board of Appeal found, correctly, that the earlier mark has enhanced distinctiveness in relation to the goods concerned by the present action (see paragraph 35 above). The point, raised by Glenton España, that other Community marks containing a figurative element similar to that of the earlier mark have been registered does not affect that finding. As is clear from the evidence in the file, that argument was not presented, to that effect, during the proceedings before OHIM. Glenton España has mentioned the existence of those Community marks in order to support its argument that there was no likelihood of confusion. Glenton España did not, however, argue before OHIM that, owing to the existence of those earlier Community marks, the earlier mark did not have enhanced distinctiveness. Accordingly, the Court cannot review the legality of the decision in that regard. Moreover, Glenton España has not submitted any evidence showing that those Community marks did in fact coexist. In addition, it should be borne in mind, first, that it was demonstrated before OHIM that the earlier mark has a distinctive character in relation to the goods in Class 25, owing to the relevant public’s familiarity with it – evidence which was not challenged by Glenton España – and, secondly, that the representation of a polo player inherently has enhanced distinctiveness in relation to the goods covered by the present action.
56 Fifthly, Glenton España’s claim that, in reality, the Board of Appeal attributed to the relevant public a level of attention that was closer to that of the less careful or less attentive consumer is based on a misinterpretation of the contested decision. Glenton España’s position is essentially predicated on the assumption that, in its comparison of the marks at issue, the Board of Appeal took into consideration only the figurative element common to both marks. However, for the reasons set out in paragraphs 27, 28 and 54 above, that premiss is false. In any event, Glenton España’s arguments that, in the fashion sector, consumers pay greater attention to word elements in trade marks, or that the goods in question are sold in specialised establishments with the help of staff who advise the buyer, are not supported by any evidence produced in good time before OHIM. Moreover, the few examples cited by Glenton España in its written pleadings seem to show, rather, that the figurative representations of some marks in the fashion sector are elements that are essential for the purposes of identifying the origin of the goods in question, as OHIM correctly observed at the hearing.
57 Sixthly, as regards the coexistence of the earlier mark with a Community mark owned by Glenton España and similar to the mark applied for, it should be observed that, admittedly, it cannot be entirely ruled out that, in some cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the adjudicating bodies of OHIM found to exist between the two marks at issue. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds for refusal, the applicant for the Community trade mark has duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see judgment of 7 November 2007 in Case T‑57/06 NV Marly v OHIM – Erdal (Top iX), not published in the ECR, paragraph 97 and the case-law cited).
58 In the present case, however, it must first and foremost be held that the earlier marks in question and the marks at issue are not identical. Secondly, Glenton España has not shown that those marks did actually coexist. Lastly, Glenton España has not, in any event, in any way shown that the coexistence of the marks at issue was made possible by the absence of any likelihood of confusion (see, to that effect, Top iX, paragraph 57 above, paragraph 98).
59 In the light of all of those considerations, and taking into account the visual and conceptual similarities between the signs at issue, the identical nature of the goods covered by the present action and the enhanced distinctiveness of the earlier mark, it must be held that the Board of Appeal was correct in finding that, between the marks in question and in relation to the goods concerned, there was a likelihood of confusion on the part of the relevant public for the purposes of Article 8(1)(b) of Regulation No 207/2009.
60 Glenton España’s sole plea in law must therefore be rejected and, in consequence, the action must be dismissed in its entirety.
Costs
61 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Furthermore, whereas the applicant sought to rely, at the hearing, on Article 87(3) and (4) of the Rules of Procedure, there are no exceptional circumstances, or any other circumstances, to justify, in the present case, an order that each party bear its own costs.
62 In those circumstances, as 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 (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Glenton España, SA to pay the costs.
Forwood | Dehousse | Schwarcz |
Delivered in open court in Luxembourg on 18 May 2011.
[Signatures]