JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
27 September 2012 (*)
(Community trade mark – Opposition proceedings – Application for the Community trade mark PUCCI – Earlier national figurative and word marks Emidio Tucci and E. TUCCI – Application for the earlier Community figurative mark Emidio Tucci – Relative grounds for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation No 207/2009 – Genuine use of the earlier mark – Article 42(2) and (3), and Article 15(1)(a) of Regulation (EC) No 207/2009 – Unfair advantage taken of the distinctive character or the repute of the earlier mark – Article 8(5) of Regulation No 207/2009)
In Case T‑39/10,
El Corte Inglés, SA, established in Madrid (Spain), represented by E. López Camba, J.L. Rivas Zurdo and E. Seijo Veiguela, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Emilio Pucci International BV, established in Baarn (Netherlands), represented by P. Roncaglia, G. Lazzeretti, M. Boletto and E. Gavuzzi, lawyers,
ACTION brought against the decision of the First Board of Appeal of OHIM of 29 October 2009 (Case R 173/2009-1), relating to opposition proceedings between El Corte Inglés, SA and Emilio Pucci International BV,
THE GENERAL COURT (Sixth Chamber),
composed of H. Kanninen (President), N. Wahl and S. Soldevila Fragoso (Rapporteur), Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 29 January 2010,
having regard to the response of OHIM lodged at the Registry on 20 May 2010,
having regard to the response of the intervener lodged at the Registry on 27 May 2010,
having regard to the decision of 5 July 2010 refusing leave to submit a rejoinder,
having regard to the change in the composition of the Chambers of the General Court,
having regard to the decision of 12 April 2012 rejecting the application for a stay of the proceedings submitted jointly by the applicant and the intervener,
having regard to the letters of the parties of 13 and 16 April 2012 indicating that they would not attend at the hearing,
further to the hearing on 18 April 2012, at which none of the parties was present,
gives the following
Judgment
Background to the dispute
1 On 16 September 2004, the intervener, Emilio Pucci International BV, 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 in respect of which registration was sought was the word sign PUCCI.
3 The goods in respect of which registration was sought fall within Classes 3, 9, 14, 18, 25 and 28 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 to the following description:
– Class 3: ‘Soaps, perfumery, toilet water, eau de cologne, essential oils, cosmetics including foundations, lipsticks, eye shadows and mascaras, shaving preparations, personal deodorants, bath and shower gels and preparations, powders, creams and lotions for hair, face and body, shampoos’;
– Class 9: ‘Optical instruments and apparatus including spectacles, eyeglasses, spectacles cases’;
– Class 14: ‘Jewellery including rings, key-rings, buckles, ear rings, cuff links, bracelets, charms, brooches, necklaces, tie pins, ornamental pins, medallions; horological and chronometric instruments and apparatus including watches, watch cases, alarm clocks; nutcrackers of precious metals, their alloys or coated; candlesticks of precious metals, their alloys or coated; jewellery boxes of precious metals, their alloys or coated’;
– Class 18: ‘Leather and imitations of leather; travelling bags, travelling sets (leatherware), trunks and valises, garment bags for travel, vanity-cases (not fitted), rucksacks, shoulder bags, handbags, attaché-cases, briefcases, pouches, pocket wallets, purses, key-holders, card holders; umbrellas’;
– Class 25: ‘Clothing and underwear including sweaters, shirts, T-shirts, suits, hosiery, belts (clothing), scarves, neck ties, shawls, waistcoats, skirts, raincoats, overcoats, suspenders, trousers, jeans, pullovers, frocks, jackets, winter gloves, dressed gloves (clothing), tights, socks, bathing suits, bath robes, pyjamas, night dresses, shorts, pocket squares (clothing); high-heeled shoes, low heeled shoes, sandals, boots, slippers, tennis shoes; hats, caps, headbands’;
– Class 28: ‘Gymnastic and sporting articles, namely ski accessories’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 2/2006 of 9 January 2006.
5 On 7 April 2006, the applicant, El Corte Inglés, SA, filed a notice of opposition, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), in respect of the registration of the mark applied for, in relation to all the goods referred to in paragraph 3 of the present judgment.
6 The opposition was based on the following earlier marks:
– The Spanish figurative mark filed on 13 August 1977 and registered on 30 May 1984 under No 855782 for ‘clothing, including boots, shoes and slippers’ (Class 25), and the Spanish figurative mark filed on 16 June 1994 and registered on 5 December 1994 under No 1908876 for ‘bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; and dentifrices’ (Class 3), reproduced below:
– The Spanish figurative mark filed on 19 May 1997 and registered on 20 November 1997 under No 2092891 for ‘precious metals and their alloys and goods in precious metals or coated therewith (not included in other classes); jewellery, precious stones; horological and chronometric instruments’ (Class 14); the Spanish figurative mark filed on 19 May 1997 and registered on 20 November 1997 under No 2092896 for ‘games, playthings; gymnastic and sporting articles (not included in other classes); decorations for Christmas trees’ (Class 28); and the Spanish figurative mark filed on 13 June 1997 and registered on 20 November 1997 under No 2096048 for ‘sunglasses’ (Class 9), reproduced below:
– The Spanish word mark E. TUCCI filed on 21 September 1978 and registered on 5 March 1984 under No 887 528 for clothes and footwear (Class 25);
– The Community figurative trade mark application No 3 679 594 filed on 20 February 2004 for goods in Classes 3, 9, 14, 25 and 28.
7 The grounds put forward in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(5) of Regulation No 207/2009).
8 On 28 November 2008, the Opposition Division rejected the opposition in its entirety and the applicant lodged an appeal with OHIM against that decision on 28 January 2009.
9 By decision of 29 October 2009 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. First, it held that the applicant had provided sufficient proof of the genuine use of the trade marks referred to only for the clothing and footwear included in Class 25 and covered by the Spanish figurative mark registered under No 855782 (‘the earlier mark’). Secondly, with regard to the likelihood of confusion, it found that the marks at issue would be perceived as being different by the relevant public because of the word element ‘emidio’ of the earlier mark, their different length and the different initial letters of the surnames making up those marks. Likewise, it stated that only the goods in Class 25 covered by the mark applied for were identical or similar to the goods covered by the earlier mark and that certain goods in Class 18 covered by the mark applied for were slightly similar to those goods. Therefore, even if it considered that the earlier mark is well-known in Spain for men’s clothing and footwear, it found that the visual and phonetic differences between the two marks were sufficient to preclude a likelihood of confusion between the marks at issue. Third, with regard to the damage to the reputation of the earlier mark, the Board of Appeal held, for the purposes of assessing whether the use of the mark applied for would take unfair advantage of the reputation of the earlier trademark or be detrimental to it, that, because of the differences between those marks, the relevant public would not establish a link between them. Furthermore, it noted that the applicant had provided no arguments as to how the use of the mark applied for would have such consequences. Finally, the Board of Appeal stated that, even if the application to register the figurative Community trade mark for the goods in Classes 3, 9, 14, 25 and 28 were to be granted, the Board’s findings would not differ.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision in its entirety;
– order OHIM and the intervener to pay the costs incurred by the applicant.
11 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
12 The intervener contends that the Court should:
– dismiss the action and uphold the contested decision;
– order the applicant to pay the costs incurred by the intervener.
Legal context
13 In support of its action, the applicant raises three pleas in law, alleging, in essence, (i) infringement of Article 42(2) and (3), and Article 15(1)(a) of Regulation No 207/2009, (ii) infringement of Article 8(1)(b) of Regulation No 207/2009, and (iii) infringement of Article 8(5) of that regulation.
The first plea in law: infringement of Article 15(1)(a) and Article 42(2) and (3) of Regulation No 207/2009
14 By its arguments, the applicant disputes the findings of the Board of Appeal that it had not established that there was effective and consistent use of the earlier marks over time for goods other than clothing and footwear. On the contrary, it considers that the proof of genuine use of the Emidio Tucci trade mark for goods in Classes 3, 9, 14 and 18 was established by the certificates which contain references to ‘accessories’ or to ‘articles related to fashion’, which include articles that are complementary to suits or shirts such as, for example, perfume (Class 3), sunglasses (Class 9), tie pins (Class 14) or wallets and briefcases (Class 18). Likewise, it considers that the documents submitted are proof of the use of that trade mark for articles in Class 28, such as rackets or golf clubs.
15 Furthermore, it considers that the use of the sign E. TUCCI has been established, since, even if it does not appear in the documentation submitted, the way it is shown does not constitute a substantial variation of the earlier trade mark as registered.
16 OHIM and the intervener dispute the applicant’s arguments.
17 In accordance with settled case-law, it is apparent from Article 42(2) and (3) of Regulation No 207/10, read in the light of the 10th recital in the preamble to that regulation and from Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, that the ratio legis of the requirement that the earlier mark must have been put to genuine use if it is to be capable of being used in opposition to a Community trade mark application is to restrict the number of conflicts between two marks, where there is no good commercial justification deriving from active functioning of the mark on the market. However, the purpose of those provisions is not to assess commercial success or to review the economic strategy of an undertaking, nor are they intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (see, to that effect, Case T‑203/02 Sunrider v OHIM – Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraphs 36 to 38 and the case-law cited).
18 There is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, Case C‑40/01 Ansul [2003] ECR I‑2439, paragraph 43). Furthermore, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (VITAFRUIT, paragraph 17 above, paragraph 39; see also, to that effect and by analogy, Ansul, paragraph 37).
19 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly the usages regarded as warranted in the economic sector concerned as a means of maintaining or creating a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (VITAFRUIT, paragraph 17 above, paragraph 40; see also, by analogy, Ansul, paragraph 18 above, paragraph 43).
20 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (VITAFRUIT, paragraph 17 above, paragraph 41, and Case T‑334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 35).
21 To examine, in a particular case, whether an earlier trade mark has been put to genuine use, a global assessment must be carried out, which takes into account all the relevant factors of the particular case. That assessment entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by a high intensity or some settled period of use of that mark or vice versa (VITAFRUIT, paragraph 17 above, paragraph 42, and HIPOVITON, paragraph 20 above, paragraph 36).
22 Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned (Case T-39/01 Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT) [2002] ECR II-5233, paragraph 47, and Case T-356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II-3445, paragraph 28).
23 In the present case, in view of the request submitted by the intervener on 14 December 2006, the Spanish figurative marks registered under the numbers 855782, 1908876, 2092891, 2092896 and 2096048 and the Spanish word mark (‘the earlier Spanish marks’) were subject to proof of use. It follows from paragraph 26 of the contested decision, which the applicant has not challenged, that the relevant period to establish the proof of the use of the earlier Spanish trade marks was that which runs from 9 January 2001 to 8 January 2006. On the other hand, the Community trade mark application is not subject to any proof of use.
24 Moreover, it is clear from the proof of use presented by the applicant that many documents date from a period prior to the relevant period. Those documents cannot be taken into consideration to establish the genuine use of the earlier Spanish trade marks and must, therefore, be excluded.
25 In that regard, the applicant claims, on the basis of case-law of the Court of Justice, that the fact that a mark had been used prior to a given period may constitute evidence that the mark was put to genuine use during the relevant time as well, as a ‘logical continuation’. It is true, as the applicant points out, that the Court held, when interpreting Article 12(1) 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), concerning revocation, that that did not expressly preclude, in assessing the genuineness of use during the relevant period, account being taken, where appropriate, of any circumstances subsequent to submission of the application for revocation. Such circumstances may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that period (order in Case C-259/02 La Mer Technology [2004] ECR I-1159, paragraph 31).
26 Nevertheless, the Court of Justice made that statement having clearly indicated that Directive 89/104 made the classification of genuine use of the trade mark consequential on consideration of only the circumstances which pertain during the relevant period and which therefore predate the filing of the application for revocation (order in La Mer Technology, paragraph 25 above, paragraph 30). Therefore, taking into consideration subsequent, or even prior, circumstances, as the applicant seeks to do in the present case, is necessarily subject to the presentation of documents showing use of the mark at issue during the relevant period.
27 In the present case, as the Board of Appeal held at paragraph 30 of the contested decision, the documents dating from the relevant period provide sufficient proof of genuine use of the earlier mark for men’s clothing and footwear (Class 25). However, those documents do not prove the use of the Spanish figurative marks registered under the numbers 1908876, 2092891, 2092896 and 2096048 for the goods in Classes 3, 9, 14 and 28, in so far as they do not contain any specific evidence concerning the goods in question, as is the case of sunglasses in Class 9 and tennis rackets and golf clubs in Class 28, or they contain evidence but are not dated or are prior to the relevant period, as is the case of perfume and aftershave lotions in Class 3 and watches and tie pins in Class 14.
28 With regard to the goods in Class 18, as the intervener contends, none of the earlier Spanish marks designates those goods. It is therefore not relevant to assess the use of those marks for such goods.
29 Those findings cannot be invalidated by the applicant’s argument that the references to ‘accessories’ or to ‘articles related to fashion’, as goods distributed under the trade mark Emidio Tucci in the certificates of the Royal Spanish Football Federation and the Madrid Chamber of Commerce and Industry, are sufficient to prove the use of that mark for goods in Classes 3, 9, 14, 18 and 28.
30 In that regard, it should be noted that, in accordance with the case-law cited in paragraph 22 above, genuine use of a mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of actual and sufficient use of the trade mark on the market concerned. In the present case, as noted in paragraphs 14, 27 and 29 above, the applicant merely classified the goods in Classes 3, 9, 14 and 28 into vague categories, namely ‘accessories’ and ‘articles related to fashion’, without providing any specific evidence to prove the use of the earlier figurative marks for the goods in Classes 3, 9 and 14 during the relevant period. Accordingly, the Board of Appeal rightly found that genuine use of the earlier figurative marks for those goods had not been proved.
31 With regard to the goods in Class 28, it is true that the applicant provided a photograph, the date of which is not visible, which reproduces the image of two tennis rackets beside a polo shirt and a pullover bearing the figurative mark Emidio Tucci, and another, taken from a website and printed on 20 February 2004, relating to the 2003-2004 advertising campaign in which the actor George Clooney plays golf and wears a suit, in which that figurative mark appears on the right side. However, examination of those two photographs indicates that the tennis rackets and the golf club carried by Mr Clooney are purely illustrative or suggestive elements and are not goods designated by the mark at issue. The rackets are used in order to suggest in the mind of the consumer the sporting nature of the goods shown in the photograph, whereas, as OHIM rightly submitted, the image of Mr Clooney playing golf and wearing a suit is intended to transmit to the consumer the idea of an outfit that is so comfortable and elegant it could be used to play golf. Thus, in the absence of other evidence to establish that the Spanish figurative mark registered under number 2092896 was used to designate in the market sporting articles such as tennis rackets and golf clubs, it must be held, as the Board of Appeal did in paragraph 28 of the contested decision, that genuine use of that mark for goods in Class 28 has not been proved.
32 Finally, with regard to the earlier Spanish word mark, the applicant acknowledges that it did not provide documents substantiating its genuine use of the goods in Class 25 on the market during the relevant period. Nevertheless, as indicated in paragraph 15 above, it considers that the way it is shown does not constitute a substantial variation of the earlier mark as registered.
33 By these arguments, the applicant alleges, in essence, an infringement of Article 15(1)(a) of Regulation No 207/2009. It should be noted that, under those provisions combined with Article 42(2) and (3) of Regulation No 207/2009, proof of genuine use of an earlier national or Community trade mark, which forms the basis of an opposition against a Community trade mark application, also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of that mark in the form under which it was registered (see Case T‑29/04 Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 30 and the case‑law cited).
34 In the present case it should be noted, first, that the applicant does not specify the figurative trade mark that it considers to be substantially equivalent to the earlier Spanish word mark. Nevertheless, given that the earlier mark is registered for goods in Class 25 and that, as is apparent from paragraph 27 above, it is the only one for which use has been proved, specifically for men’s clothing and shoes, it must be held that the mark that the applicant considered to be equivalent to the earlier Spanish word mark is the earlier mark.
35 Second, it must be held that, contrary to the claim of the applicant, the documents submitted do not prove the use of the earlier trade mark. It follows from Article 15(1)(a) of Regulation No 207/2009 that a finding that the distinctive character of the mark as registered has been altered requires an assessment of the distinctive and dominant character of the added elements, carried out on the basis of the intrinsic qualities of each of those elements, as well as of the relative position of the various elements within the arrangement of the mark (judgment of 10 June 2010 in Case T‑482/08 Atlas Transport v OHIM – Hartmann (ATLAS TRANSPORT), not published in the ECR, paragraph 31).
36 However, it also follows from the case-law that Article 15(1)(a) of Regulation No 207/2009 does not allow the proprietor of a registered trade mark to avoid his obligation to use that mark by relying on his use of a similar mark covered by a separate registration (Case T‑194/03 Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II‑445, paragraph 50).
37 In the present case, the fact that the earlier Spanish word mark constitutes a different registration of the earlier mark suffices to reject the argument of the applicant as unfounded (see, to that effect, BAINBRIDGE, paragraph 36 above, paragraph 51). In any event, the replacement of the first name Emidio, which has a highly distinctive character in the eyes of the relevant Spanish public (see paragraph 60 below), with the capital letter ‘E’ followed by a full stop constitutes a substantial alteration of the distinctive character of the earlier Spanish word mark, such that the two marks cannot be considered to be equivalent overall.
38 Having regard to all of the above, it must be held that the Board of Appeal was entitled to find, at paragraph 30 of the contested decision, that the applicant had only proved genuine use of the earlier mark for men’s clothing and shoes in Class 25. Accordingly, the first plea must be rejected.
The second plea in law: infringement of Article 8(1)(b) of Regulation No 207/2009
39 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 is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and because of 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. In addition, 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.
40 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. Under that 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 concerned 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 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).
41 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue 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).
42 Where the protection of the earlier trade mark extends to the entirety of the Community, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, it should be noted that, in order for registration of a Community trade mark to be refused, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists only in part of the Community (see, to that effect, 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 76 and the case-law cited).
43 In the present case, the applicant disputes the Board of Appeal’s finding, according to which there is no likelihood of confusion between the signs at issue. It asserts that the marks that must be compared are PUCCI and Emidio Tucci and that the goods at issue are those in Classes 3, 9, 14, 18, 25 and 28. In that regard, it claims that it has proved the genuine use of all the marks referred to in the opposition proceedings and that the goods that are the subject-matter of the proceedings must be considered to be identical. Furthermore, it states that the application for a Community trade mark did not require proof of use.
44 In contrast, it does not dispute the finding of the Board of Appeal relating to the earlier mark, according to which the relevant public consists of the average Spanish consumer who is reasonably well informed and reasonably observant and circumspect (paragraph 34 of the contested decision).
45 It should be noted that, as is apparent from paragraph 38 above, proof of use of the earlier Spanish marks was only established for the earlier mark and with regard to men’s clothing and shoes in Class 25. Furthermore, as indicated in paragraph 28 above, none of the earlier Spanish marks covers products in Class 18. Consequently, contrary to what the applicant claims, the other earlier Spanish marks, as well as the goods covered by them, are not relevant for the purposes of establishing the existence of a likelihood of confusion between the signs at issue.
46 With regard to Community trade mark application No 3679594, presented for all the goods and services in Classes 1 to 45, it must be noted that the General Court, in the judgment of 27 September 2012, in Case T‑373/09 El Corte Inglés v OHIM (Emidio Tucci), not published in the ECR, confirmed the decision of the Second Board of Appeal concerning the refusal to register that application for the goods in Classes 3, 18, 24 and 25, as well as materials for cleaning purposes and steel wool in Class 21. Likewise, in the judgment of 27 September 2012, in Case T‑357/09 Pucci International v OHIM (Emidio Tucci), not published in the ECR, the General Court annulled the decision of the Second Board of Appeal concerning the registration of that mark for spectacles in Class 9, for jewellery in Class 14 and for toilet paper in Class 16. Consequently, it is not appropriate to take that trade mark application into account, nor the goods covered by it nor, more specifically, the goods in Classes 3, 9, 14 and 25, expressly referred to by the applicant during the opposition proceedings before OHIM. By contrast, contrary to what is stated in paragraph 18 of the contested decision, in so far as the decision of the Second Board of Appeal did not prevent the registration of that mark for goods in Class 28, they could be taken into consideration to establish the existence of a likelihood of confusion between the signs at issue.
47 With regard to the goods in Class 18, it should be noted that, even if the Community trade mark application was made for all the goods and services in Classes 1 to 45, the goods in Class 18 were not expressly mentioned by the applicant, either during the proceedings before OHIM or in its pleadings, among the goods for which the registration of that Community trade mark had been sought and on which it based the opposition. In any event, since the Board of Appeal refused the registration of that Community mark for the goods in Class 18 and the General Court confirmed that decision in the judgment in Emidio Tucci, paragraph 46 above, it is not appropriate to take them into consideration in order to prove the existence of a likelihood of confusion between the signs at issue.
48 In the light of all the foregoing, it must be held that only men’s clothing and shoes, in Class 25 and covered by the earlier mark, and the goods in Class 28 covered by the Community trade mark application, are relevant in order to establish a likelihood of confusion between the signs at issue.
The similarity of the signs
49 The applicant considers, contrary to what the Board of Appeal found at paragraph 37 of the contested decision, that the signs at issue will be perceived by the relevant public as being similar. It claims that, according to the case-law, in the case of marks consisting of a first name and surname, the former is generally less important than the second, which dominates the overall impression given by the earlier mark and retains an independent distinctive role within it. Thus, it considers that, in the present case, the sole component of the mark applied for ‘pucci’ could be perceived as a surname and that, from the point of view of the relevant Spanish public, it creates a confusion with the surname Tucci that makes up the earlier Spanish marks, as only the first letter of those two words is different.
50 OHIM and the intervener dispute the applicant’s arguments.
51 The global assessment of the likelihood of confusion in relation to the visual, phonetic or conceptual similarity of the signs at issue must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that 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 case-law cited).
52 The 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, cited in paragraph 51 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 the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 51 above, 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, inter alia, 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 it (Nestlé v OHIM, paragraph 43).
53 It should be noted that the trade mark applied for contains a single word mark, ‘pucci’, whereas the earlier trade mark is composed of two elements, the first name Emidio, which is not Spanish and which, as the Board of Appeal pointed out in paragraph 38 of the contested decision, is unusual from the point of view of the relevant Spanish public, and the surname Tucci, which will be perceived by that public as being of Italian origin.
54 As the applicant asserted in its pleadings, according to the case-law, the Italian consumer will generally attribute greater distinctiveness to the surname than to the forename in the marks at issue (Case T-185/03 Fusco v OHIM – Fusco International (ENZO FUSCO) [2005] ECR II‑715, paragraph 54). The General Court applied a similar conclusion concerning Spanish consumers, having established that the first name that appeared in the mark in question was relatively common and, therefore, not very distinctive (Case T-40/03 Murúa Entrena v OHIM – Bodegas Murúa (Julián Murúa Entrena) [2005] ECR II-2831, paragraphs 66 to 68).
55 Nevertheless, it is also clear from the case-law that that rule, drawn from experience, cannot be applied automatically without taking account of the specific features of each case (judgment of 12 July 2006 in Case T‑97/05 Rossi v OHIM – Marcorossi (MARCOROSSI), not published in the ECR, paragraph 45). In that regard, the Court of Justice has held that account had to be taken, in particular, of the fact that the surname concerned was unusual or, on the contrary, very common, which is likely to have an effect on its distinctive character. Account also had to be taken of whether the person who requests that his first name and surname, taken together, be registered as a trade mark is well known (Case C‑51/09 P Becker v Harman International Industries [2010] ECR I‑5805, paragraphs 36 and 37). Likewise, according to the case-law cited in the previous paragraph, the distinctive character of the first name is a fact that should play a role in the implementation of that rule based on experience.
56 In the present case, the unusual nature of the first name Emidio from the point of view of the relevant public attributes to it a distinctive character at least as significant as the surname Tucci and precludes the applicant’s conclusion, according to which the surname Tucci will dominate the overall impression given by the earlier mark. The earlier mark will therefore be perceived by the relevant public as a whole and will be associated by it with the identification of a person of Italian origin or having links with Italy. Consequently, the argument relating to the dominant nature of the component ‘tucci’ must be rejected.
57 That conclusion cannot be called into question by the applicant’s argument that the surname Tucci will retain an independent distinctive role within the earlier mark. According to the case-law, a surname does not retain an independent distinctive role in every case solely because it will be perceived as a surname. The finding with respect to such a role may, therefore, be based only on an examination of all the relevant factors of each case (Becker v Harman International Industries, paragraph 55 above, paragraph 38), but such factors have not been included in the arguments submitted by the applicant.
58 In view of the above, the applicant’s arguments relating to the dominant character of the surname Tucci and its independent distinctive role within the earlier mark must be rejected as unfounded.
59 Consequently, a comparison should be made between the signs at issue, PUCCI and Emidio Tucci, taking account of the overall impression given by them.
60 Visually, the overall impression given by the earlier mark is clearly different to that given by the mark applied for. First, the earlier mark consists of two elements and is longer than the mark applied for, which consists of a single element. Secondly, the first name Emidio, contained in the earlier mark, which is, contrary to what the Board of Appeal contends at paragraph 39 of the contested decision, sufficiently legible in the eyes of the relevant public in spite of the fact that the earlier mark is represented in the form of a signature, is unusual from the point of view of the relevant public, and therefore has a highly distinctive character. Its presence in the earlier mark constitutes, therefore, an important element of differentiation in relation to the mark applied for. Finally, the first letter of the second element of the earlier mark and of the sole element of the mark applied for, namely ‘t’ and ‘p’, are different.
61 That conclusion cannot be called into question by the judgment of 25 October 2006 in Case T‑13/05 Castell del Remei v OHIM – Bodegas Roda (ODA), not published in the ECR, referred to by the applicant, as the circumstances examined in that judgment are not comparable to those in the present case. In that judgment, the similarity between the marks at issue arose from the fact that the most important part of the earlier international mark, in terms of letters and sounds, was identical to the entirety of the mark applied for (ODA, paragraph 54). By contrast, in the present case, even if the last part of the earlier mark, that is, ‘ucci’, coincides with that of the mark applied for, the first name Emidio, which is one of the most distinctive elements of the earlier mark and which is positioned at the beginning of that mark, is not present in the mark applied for. That important difference contributes to offsetting the similarity resulting from the fact that the final part of the two marks is identical.
62 Phonetically, the overall impression given by the two marks at issue is also different. From the point of view of the relevant public, the earlier mark consists of five syllables, ‘e’, ‘mi’, ‘dio’, ‘tu’ and ‘cci’, whereas the mark applied for only consists of two, ‘pu’ and ‘cci’. As the Board of Appeal stated at paragraph 40 of the contested decision, the identical pronunciation of the last syllable is largely offset by the differences of pronunciation that result from the presence of the element ‘emidio’ in the earlier mark.
63 Conceptually, the Board of Appeal confirmed the decision of the Opposition Division according to which the comparison of the marks at issue was not relevant as they had no meaning for the average consumer. That conclusion was not contested by the parties, the applicant merely asserting that the element ‘pucci’ of the mark applied for could also be perceived as a surname, without drawing any specific conclusion from that assertion.
64 As is apparent from paragraph 19 of the contested decision, the same considerations apply to the Community trade mark application.
65 In view of the above, the Board of Appeal correctly found, at paragraphs 19 and 42 of the contested decision, that the earlier mark and the mark applied for, on the one hand, and the Community mark and the mark applied for, on the other, were different visually and phonetically.
The similarity of the goods
66 The applicant disputes the comparison between the goods in Class 25 and those in Classes 18 and 28. First, it considers that, according to the case-law, there is a close connection between clothing, shoes and headgear in Class 25, and clothing accessories, such as goods made of leather and imitations of leather not included in other classes in Class 18, which allows them to be considered as similar. Second, it asserts that the clothing covered by the earlier mark also includes sports clothing, which are marketed by the same distribution channels as the sporting articles, which allows them to be considered as similar also.
67 OHIM and the intervener dispute the applicant’s arguments.
68 With regard to the comparison between the goods in Class 25 covered by the earlier mark, men’s clothing and shoes, and those in Class 18 covered by the mark applied for, the applicant seeks, in essence, to prove their complementary nature and, therefore, their similarity.
69 It should be noted that the Board of Appeal, first, in paragraph 43 of the contested decision, stated that the applicant had not contested the findings of the Opposition Division concerning the similarity between the goods in Class 25 covered by the earlier mark and ‘leather and imitations of leather; trunks; umbrellas’ covered by Class 18, considering that those goods were not similar. Secondly, the Board of Appeal, in paragraph 46 of the contested decision, considered that, since the goods in Class 25 were often sold with the other goods in Class 18, namely ‘travelling bags, travelling sets (leatherware), valises, garment bags for travel, vanity-cases (not fitted), rucksacks, shoulder bags, handbags, attache-cases, briefcases, pouches, pocket wallets, purses, key-holders, card holders’, there was a slight similarity between them.
70 The applicant did not dispute before the Board of Appeal the findings of the Opposition Division concerning the similarity between the goods in Class 25 covered by the earlier mark and ‘leather and imitations of leather; trunks; umbrellas’ covered by Class 18.
71 Under Article 135(4) of the Rules of Procedure of the General Court, the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal. The task of the General Court in the present proceedings is to review the legality of decisions of the Boards of Appeal. Therefore, the Court’s review cannot go beyond the factual and legal context of the dispute as it was brought before the Board of Appeal (Case T‑66/03 ‘Drie Mollen sinds 1818’ v OHIM – Nabeiro Silveria (Galáxia) [2004] ECR II‑1765, paragraph 45). Likewise, the applicant does not have the power to alter before the General Court the terms of the dispute as delimited in the respective claims and allegations submitted by itself and by the intervener (Case C‑412/05 P Alcon v OHIM [2007] ECR I-3569, paragraph 43, and Case C‑16/06 P Les Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 122).
72 The applicant’s arguments regarding ‘leather and imitations of leather; trunks; umbrellas’ must, therefore, be rejected as inadmissible.
73 With regard to the other goods in Class 18, namely ‘travelling bags, travelling sets (leatherware), valises, garment bags for travel, vanity-cases (not fitted), rucksacks, shoulder bags, handbags, attache-cases, briefcases, pouches, pocket wallets, purses, key-holders, card holders’, the applicant claims that they are complementary to the clothing and shoes in Class 25 and covered by the earlier mark. In that regard, it should be noted that, according to the case-law, complementary goods are those which are closely connected in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods. By definition, goods intended for different publics cannot be complementary (easyHotel, paragraph 41 above, paragraphs 57 and 58 and the case‑law cited).
74 According to the case-law, aesthetic complementarity between goods may give rise to a degree of similarity within the meaning of Article 8(1)(b) of Regulation No 207/2009. Such aesthetic complementarity must involve a true aesthetic necessity, in the sense that one product is indispensable or important for the use of the other and consumers consider it ordinary and natural to use those products together (Case T-169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraphs 60 and 62, and Case T-150/04 Mülhens v OHIM – Minoronzoni (TOSCA BLU) [2007] ECR II‑2353, paragraph 36). That aesthetic complementarity is subjective and is determined by the habits and preferences of consumers, to which producers’ marketing strategies or even simple fashion trends may give rise (SISSI ROSSI, paragraph 61).
75 However, the mere existence of aesthetic complementarity between the goods is not sufficient to conclude that there is a similarity between them. For that, the consumers must consider it usual that the goods are sold under the same trade mark, which normally implies that a large number of the producers or distributors of the goods are the same (SISSI ROSSI, paragraph 74 above, paragraph 63, and TOSCA BLU, paragraph 74 above, paragraph 37).
76 According to the case-law, goods such as shoes, clothing, hats or handbags may, in addition to their basic function, have a common aesthetic function by jointly contributing to the external image (‘look’) of the consumer concerned (Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 49). In the present case, the same conclusion may be drawn for shoulder bags, attache-cases, briefcases, pouches, pocket wallets, purses, key-holders and card holders in Class 18 and covered by the mark applied for.
77 The perception of the connections between those products must therefore be assessed by taking account of any attempt at coordinating presentation of that look, that is to say coordination of its various components at the design stage or when they are purchased. That coordination may exist in particular between men’s clothing and footwear (Class 25) and the various clothing accessories which complement them, such as shoulder bags, attache-cases, briefcases, pouches, pocket wallets, purses, key-holders and card holders (Class 18). Any such coordination depends on the consumer concerned, the type of activity for which that look is put together, in particular for work, sport or leisure, or the marketing strategies of the businesses in the sector. Furthermore, the fact that the goods are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (see, to that effect, PiraÑAM diseño original Juan Bolaños, paragraph 76 above, paragraph 50).
78 In the present case, some consumers will perceive a close connection between men’s clothing and footwear in Class 25 and covered by the earlier mark, and shoulder bags, attache-cases, briefcases, pouches, pocket wallets, purses, key-holders and card holders (Class 18 and covered by the mark applied for), and may therefore be led to believe that the same undertaking is responsible for the production of those goods. Therefore, as the applicant argues, the goods designated by the earlier mark and falling within class 25 show a degree of similarity with those goods in Class 18 and covered by the mark applied for which cannot be classified as slight (see, to that effect, PiraÑAM diseño original Juan Bolaños, paragraph 76 above, paragraph 51).
79 Consequently, the arguments of the applicant must be accepted with regard to the goods referred to in paragraph 78 above.
80 With regard to the comparison between the goods in Class 25 covered by the earlier mark and those in Class 28 covered by the mark applied for, the gymnastic and sporting articles, namely ski accessories, the applicant claims that these are complementary.
81 In that regard, it should be noted that the use of the earlier mark was proved for men’s clothing and shoes. Even if clothing and footwear intended for sport could be considered as being included in that general description (see, to that effect, Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraphs 35 to 39, and judgment of 16 September 2009 in Case T‑400/06 Zero Industry v OHIM – zero Germany (zerorh+), not published in the ECR, paragraph 36), no evidence of use was presented by the applicant for clothing and footwear intended for sport. Consequently, it must be held that the proof of use of those products has not been established and that they cannot, therefore, be considered among the products in Class 25 in order to examine the existence of a likelihood of confusion between the two marks at issue.
82 It follows from the above that there is no connection between the goods in Class 25 covered by the earlier mark and the goods in Class 28 covered by the earlier mark that would allow them to be considered as being similar. Consequently, the arguments of the applicant in that regard must be rejected as unfounded.
83 Finally, with regard to the comparison between the goods in Class 28 covered by the Community trade mark application and those in Class 28 covered by the mark applied for, the applicant states that a complete comparison cannot be carried out until the decision of refusal or granting of the mark applied for becomes final. Accordingly, first, even if the Second Board of Appeal did not refuse the application for registration of that mark for the goods in Class 28, the applicant did not draw any conclusion as to whether those goods and the goods covered by the mark applied for were identical or similar. Furthermore, the Board of Appeal considered, at paragraph 19 of the contested decision, that even if the registration was accepted for those goods, the same outcome would be reached as for the earlier mark, as the marks at issue are different. Consequently, since the issue relating to the similarity of those goods was neither raised by the applicant nor expressly ruled upon by the Board of Appeal in the contested decision, and as the marks at issue are different, there is no need to assess the existence of a likelihood of confusion between those marks in relation to those goods and it is not necessary to rule on whether the signs at issue are identical or similar.
84 In view of the above, it must be concluded, first, that there is a similarity between the goods in Class 25 covered by the earlier mark and some goods in Class 18, namely shoulder bags, attache-cases, briefcases, pouches, pocket wallets, purses, key-holders and card holders, covered by the mark applied for, and, second, that as the Board of Appeal found at paragraph 46 of the contested decision, the goods in Class 25 covered by the earlier mark and those in Class 28 covered by the mark applied for are not similar.
The likelihood of confusion
85 According to the case-law, the global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular the similarity between the trade marks and that between the goods or services covered. Accordingly, a low degree of similarity between the 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 VENADO with frame and Others, paragraph 42 above, paragraph 74).
86 In the present case, first, it follows from paragraph 65 above that the signs at issue are visually and phonetically different and, secondly, it follows from paragraph 84 above that only some products in Class 18 covered by the mark applied for are similar to the goods covered by the earlier trade mark in Class 25. According to settled case-law, that absence of similarity between the marks at issue cannot be offset, in the global assessment of the likelihood of confusion, by the fact that a portion of the goods designated are identical or similar and that they belong to the same sector of production and marketing, since the identity or similarity of the goods is not sufficient to support the finding that there is a likelihood of confusion (see, to that effect, Case T‑423/04 Bunker & BKR v OHIM – Marine Stock (B.K.R.) [2005] ECR II-4035, paragraph 76, and judgment of 13 June 2007 in Case T-167/05 Grether v OHIM – Crisgo (Thailand) (FENNEL), not published in the ECR, paragraph 74).
87 In those circumstances, the Board of Appeal was correct to find, at paragraph 48 of the contested decision, that there was no likelihood of confusion between the marks at issue.
88 That conclusion is unaffected by the argument of the applicant that the earlier mark has a reputation in Spain and therefore enjoys broader protection. The reputation of the earlier mark cannot compensate for the absence of similarity of the signs at issue which, as is clear from paragraph 86 above, is one of the conditions necessary in order to assess the likelihood of confusion between the signs at issue. A likelihood of confusion presupposes that the signs as well as the goods and services designated are identical or similar, and the reputation of a mark is one factor which must be taken into account when determining whether the similarity between the signs or between the goods and services is sufficient to give rise to a likelihood of confusion. Since, however, in the present case, the signs at issue cannot be regarded as identical or similar, the fact that the earlier mark is widely known or enjoys an extensive reputation in the European Union cannot alter the overall assessment of the likelihood of confusion (Case T‑311/01 Éditions Albert René v OHIM – Trucco (Starix) [2003] ECR II-4625, paragraph 61, and Case T‑336/03 Éditions Albert René v OHIM – Orange (MOBILIX) [2005] ECR II‑4667, paragraph 84; see also, to that effect, MARCOROSSI, paragraph 55 above, paragraph 47).
89 In the light of all the foregoing, the second plea must be rejected.
The third ground, alleging infringement of Article 8(5) of Regulation No 207/2009
90 The applicant disputes the finding of the Board of Appeal that the registration of the mark applied for in respect of the goods in Classes 3, 9, 14, 18 and 28 would take unfair advantage of, or be detrimental to, the earlier mark, registered for goods in Class 25 and considered as having a reputation by the Board of Appeal. Accordingly, first, it considers that the marks at issue are highly similar, that the goods covered by the earlier mark are identical or similar to those in Classes 3, 9, 14, 18 and 28 of the mark applied for and that many consumers will therefore believe that there is a direct connection between the goods covered by the mark applied for and those covered by the earlier mark. Second, it considers that the use of a mark similar to the earlier mark for goods that are competing or similar would take advantage of the repute of that mark, which has been in the trade for a long time and in the promotion of which its owner has made substantial investments, or would be detrimental to it because the goods covered by the mark applied for could present characteristics that are different to those covered by the earlier mark.
91 According to Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for must not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
92 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the Community, in the case of an earlier Community trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (Case T-215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II-711, paragraphs 34 and 35, and TOSCA BLU), paragraph 74 above, paragraphs 54 and 55).
93 According to the case-law, the purpose of Article 8(5) of Regulation No 207/2009 is not to prevent registration of any mark which is identical with a mark with a reputation or similar to it. The objective of that provision is, notably, to enable the proprietor of an earlier national mark with a reputation to oppose the registration of marks which are likely either to be detrimental to the repute or the distinctive character of the earlier mark, or to take unfair advantage of that repute or distinctive character (see judgment of 30 January 2008 in Case T‑128/06 Japan Tobacco v OHIM – Torrefacção Camelo (CAMELO), not published in the ECR, and the case-law cited).
94 In the present case, first, it should be pointed out that, in paragraph 36 of the contested decision, the Board of Appeal did not acknowledge the reputation of the earlier mark for the men’s clothing and footwear in Class 25.
95 Secondly, it should be noted, as is clear from paragraph 65 above, that the marks at issue are neither identical nor similar. As the second condition referred to in paragraph 92 above has not been satisfied, this plea must be rejected, without considering whether the applicant provided evidence proving that the use of the mark applied for would take unfair advantage or be detrimental to the reputation of the earlier mark.
96 In the light of all the foregoing the action must therefore be dismissed in its entirety.
Costs
97 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action;
2. Orders El Corte Inglés, SA to pay the costs.
Kanninen | Wahl | Soldevila Fragoso |
Delivered in open court in Luxembourg on 27 September 2012.
[Signatures]