JUDGMENT OF THE GENERAL COURT (First Chamber)
16 September 2013 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark GITANA – Earlier Community figurative mark KiTANA – Proof of genuine use of the earlier mark – Article 42(2) and (3) of Regulation (EC) No 207/2009 – Relative ground for refusal – Likelihood of confusion – Identity or similarity of the goods – Similarity of the signs – Article 8(1)(b) of Regulation No 207/2009 – Partial refusal of registration)
In Case T‑569/11,
Gitana SA, established at Pregny‑Chambésy (Switzerland), represented by F. Benech, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the intervener before the General Court, granted leave to substitute itself for the other party to the proceedings before the Board of Appeal of OHIM, being
Teddy SpA, established at Rimini (Italy), represented by S. Rizzo, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 4 August 2011 (Case R 1825/2007-1), relating to opposition proceedings between Rosenruist – Gestão e serviços, Lda and Gitana SA,
THE GENERAL COURT (First Chamber),
composed of J. Azizi, President, M. Kancheva and E. Buttigieg (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 4 November 2011,
having regard to the response lodged by OHIM at the Court Registry on 8 March 2012,
having regard to the response lodged by the intervener at the Court Registry on 22 February 2012,
having regard to the order of 7 June 2012 authorising the substitution of Teddy SpA for Rosenruist – Gestão e serviços, Lda,
having regard to the change in the composition of the chambers of the General Court,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 11 February 2003, the applicant, Gitana SA, 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 is the following figurative sign:
3 The goods in respect of which registration was sought are, inter alia, in Classes 18 and 25 of the Nice Agreement of 15 June 1957 concerning the international classification of goods and services for the purposes of the registration of marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 18: ‘Leather and imitations of leather, goods made of these materials and not included in other classes; trunks and travelling bags; travelling bags; sports bags; sail bags; umbrellas and parasols’;
– Class 25: ‘Clothing, shoes, headgear; water sports clothing’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 38/2004 of 20 September 2004.
5 On 15 December 2004, Rosenruist – Gestão e serviços, Lda filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), against registration of the trade mark sought in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier figurative sign reproduced below:
7 That sign is the subject of the following earlier rights (together, ‘the earlier marks’):
– the earlier Community figurative mark registered on 20 February 2002 under number 1 609 312 (‘the earlier Community mark’), for goods falling, after a partial revocation on 31 October 2008 (see paragraph 14 below), within Class 25 and corresponding to the following description: ‘[clothing], skirts, trousers, [shirts], jackets, overcoats, waterproof clothing, sweaters and pullovers, bomber jackets, hats, scarves, headscarves, stockings, gloves, belts, shoes, boots, sandals, clogs, slippers’;
– the earlier international figurative mark, registered on 12 July 1990 under reference W00 555 706, having effect in Germany, Spain, France, Austria and Portugal (‘the earlier international mark’), for ‘bags, satchels, coin purses, wallets, suitcases, trunks, empty toiletry bags, document holders, umbrellas, handbags’, in Class 18, and ‘clothing, skirts, trousers, shirts, jackets, coats, waterproof clothing, sweaters and pullovers, bomber jackets, hats, scarves, headscarves, stockings, gloves, belts for clothing, shoes, boots, sandals, clogs, slippers’, in Class 25;
– the earlier Italian figurative mark registered on 12 July 1990 under number 531 768 (‘the earlier Italian mark’) for ‘bags, purses, coin purses, wallets, travelling bags, trunks, make-up bags and empty vanity cases, document holders, umbrellas, handbags’, in Class 18, and ‘clothing, skirts, trousers, shirts, jackets, overcoats, waterproof clothing, sweaters and pullovers, bomber jackets, hats, scarves, headscarves, stockings, gloves, belts for clothing, shoes, boots, sandals, clogs, slippers’, in Class 25.
8 The ground put forward in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
9 On 17 May 2006, during the opposition proceedings, the applicant submitted a request for proof of the genuine use of the earlier marks relied on in support of the opposition, for the purposes of Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009). The Opposition Division therefore called on Rosenruist – Gestão e serviços to furnish that proof, with the exception of proof of use of the earlier Community mark.
10 On 8 September 2006, Rosenruist – Gestão e serviços produced various documents in order to demonstrate that the earlier international and Italian marks had been put to genuine use.
11 On 30 October 2007, the Opposition Division upheld the opposition in part, refusing registration of the trade mark sought in respect of the goods in Classes 18 and 25, with the exception of ‘leather and imitations of leather’ on the ground that there was a likelihood of confusion with the earlier Community mark.
12 On 20 November 2007, the applicant lodged an appeal with OHIM under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009) against the Opposition Division’s decision in so far as it refused registration of the trade mark sought for goods in Classes 18 and 25. It also requested the suspension of the proceedings until the outcome of revocation proceedings No 2116C against the earlier Community mark, pending before OHIM. Lastly, it requested that the opposing party provide proof of the genuine use of the earlier Community mark.
13 By decision of 17 July 2008, the Board of Appeal suspended the proceedings pending the outcome of the revocation proceedings against the earlier Community mark.
14 By decision of 31 October 2008, the Cancellation Division declared the earlier Community mark revoked so far as the goods in Class 18 were concerned, that mark remaining registered in respect of the goods in Class 25. The opposing party brought an appeal against that decision, which was dismissed by the Board of Appeal on 17 March 2010 (Case R 2/2009-1). Since that decision has not been appealed before the General Court, it has become definitive.
15 On 2 February 2011, the opposition proceedings resumed.
16 By decision of 4 August 2011 (‘the contested decision’), the Board of Appeal of OHIM partially upheld the appeal in respect of a part of the goods in Class 18, namely the ‘trunks and travelling bags; travelling bags; sports bags; sail bags; umbrellas and parasols’ referred to in the trade mark application, and dismissed it in respect of the other goods, holding that, having regard to the fact that those goods were identical or similar to the goods covered by the earlier Community mark and that the signs at issue were visually and phonetically similar, there was a likelihood of confusion between the marks at issue (points 42 and 43 of the contested decision). The Board of Appeal also rejected the request for proof of use of the earlier Community mark submitted by the applicant, since the five-year period referred to in Article 42(2) of Regulation No 207/2009 had not expired at the date of publication of the application for the contested trade mark (points 16 and 17 of the contested decision). Lastly, the Board of Appeal held that the opposing party had not produced evidence of sufficient use so far as concerns the goods in Class 18 covered by the earlier international mark and the earlier Italian mark. It therefore rejected the opposition in so far as it was based on those marks (points 59 and 60 of the contested decision).
Forms of order sought
17 The applicant claims that the Court should:
– annul the contested decision in so far as it upheld the opposition and refused the trade mark application in respect of ‘goods made of leather and imitations of leather and not included in other classes’ in Class 18, and ‘clothing, shoes, headgear; water sports clothing’ in Class 25;
– order OHIM to pay the costs;
– authorise the registration of the trade mark sought in respect of all the goods in Classes 18 and 25.
18 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The admissibility of Annexes A 7 to A 10 to the application
19 In the response, OHIM disputes the admissibility of the documents attached as Annexes A 7 to A 10 to the application on the ground that those documents were adduced for the first time before the General Court.
20 The General Court notes in this connection that the annexes at issue consist in pages printed from the internet site, and in extracts from books and a press article concerning boats with the name ‘Gitana’. Those documents were produced by the applicant in order to prove the renown and repute of the gitana sign in relation to the history of the Rothschild family in the field of boats and boat races.
21 The documents at issue are included, in part, in the file of the proceedings before OHIM, forwarded to the General Court. Pages 93 to 96 of Annex A 7 to the application correspond to pages 257 to 258 of the documents in that file and pages 108, 109, 113 to 115, 116 to 119, 166, 167, 169 to 170 and 172 to 173 of Annex A 9 to the application correspond to pages 263, 269, 270 to 273, 274, 276, 277 to 278 and 279 to 280 of that file.
22 Consequently, it must be held that Annexes A 8 and A 10, and Annexes A 7 and A 9 in so far as they do not correspond to the documents in the file of the proceedings before OHIM, were produced for the first time before the General Court and therefore cannot be taken into consideration in this action. The purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be excluded, 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).
23 OHIM’s claim that Annexes A 7 and A 9 are inadmissible is rejected as to the remainder.
Preliminary considerations
24 First, it is apparent from the contested decision that the rejection by the Board of Appeal of the application for registration of the trade mark sought in respect of goods other than ‘trunks and travelling bags; travelling bags; sports bags; sail bags; umbrellas and parasols’ in Class 18 is based on the assessment that there is a likelihood of confusion between the trade mark sought and the earlier Community mark, the opposition having been rejected in so far as it was based on the earlier international and Italian marks.
25 The present action must therefore be assessed in the light solely of the earlier Community mark.
26 Second, even if the applicant does not expressly submit that the Board of Appeal infringed a provision of Regulation No 207/2009, its arguments to the effect that the opposing party has not produced sufficient evidence to demonstrate genuine use of the earlier marks must be construed as a plea alleging infringement by the Board of Appeal of Article 42(2) and (3) of Regulation No 207/2009. Likewise, the arguments with which it asks the General Court to declare that the Board of Appeal incorrectly concluded that there was a likelihood of confusion between the trade mark sought and the earlier marks must be construed as a plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
Infringement of Article 42(2) and (3) of Regulation No 207/2009
27 The applicant submits that, in response to its request submitted before the Opposition Division, the opposing party has not provided sufficient evidence of the genuine use of the earlier marks either for the goods in Class 18, or for the ‘hats, shoes, boots, sandals, clogs and slippers’ in Class 25.
28 For the reasons set out in paragraph 24 above, the applicant’s argument must be examined solely in the light of the earlier Community mark which, after the partial revocation, only covers the goods in Class 25 (see paragraph 14 above). This plea by the applicant is therefore ineffective in so far as it relates to the alleged absence of proof of use of the earlier Community mark for the goods in Class 18.
29 Moreover, it is sufficient to observe that under Article 42(2) of Regulation No 207/2009 the opposing party is obliged to provide, at the applicant’s request, proof of genuine use of the earlier mark only ‘provided the earlier Community trade mark has at [the date of publication of the application for registration] been registered for not less than five years’. Consequently, where the earlier mark relied on in support of the opposition has been registered for less than five years before the publication of the application for registration of a Community trade mark, proof of genuine use cannot thus yet be required and the earlier marks must be deemed to have been used (see, to that effect, Case T-186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II-1887, paragraphs 67 and 68, and judgment of 15 September 2009 in Case T‑446/07 Royal Appliance International v OHIM – BSH Bosch und Siemens Hausgeräte (Centrixx), not published in the ECR, paragraph 17).
30 In the present case, it is common ground that, at the date of publication of the trade mark application on 20 September 2004, it had been less than five years since the registration of the earlier Community mark, which took place on 20 February 2002.
31 The Board of Appeal therefore did not err when it held, in points 16 and 17 of the contested decision, that the request for proof of use of the earlier Community mark was not admissible.
Infringement of Article 8(1)(b) of Regulation No 207/2009
32 The applicant submits that the Board of Appeal erred in holding that the ‘goods made of these materials [leather and imitations of leather] and not included in other classes’ covered by the trade mark sought and in Class 18 were similar to the goods covered by the earlier Community mark in Class 25. In addition, it claims that, having regard to the visual, phonetic and conceptual differences between the signs at issue, there is no likelihood of confusion.
33 It must be recalled that, 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 will not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
34 In addition, it is settled case-law that 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 that same line of case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods and services covered (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).
35 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).
36 The assessment by the Board of Appeal of the likelihood of confusion between the marks at issue must be examined in the light of the foregoing considerations.
The relevant public
37 The public concerned, as the Board of Appeal correctly observed (see points 20 to 22 of the contested decision), consists – having regard to the goods concerned, namely goods from leather and imitations of leather, travel goods, clothing, footwear and headgear – of the average consumer who is reasonably well informed and reasonably circumspect. Furthermore, since the relevant earlier mark in the present case is a Community trade mark, the relevant territory is that of the European Union, as the Board of Appeal held at point 20 of the contested decision. That is not disputed by the applicant.
The comparison of the goods
38 The Board of Appeal correctly confirmed the Opposition Division’s decision in so far as the latter found that the goods in Class 25 covered by the trade mark sought were identical to the goods in Class 25 covered by the earlier Community mark.
39 So far as concerns the goods in Class 18 covered by the trade mark sought, the Board of Appeal divided them into two groups. It held that the goods in the first group, namely ‘goods made of these materials [leather and imitations of leather] and not included in other classes’, were, in accordance with the case‑law, similar to the goods in Class 25 covered by the earlier Community trade mark, in particular in so far as those goods were often sold at the same sales outlets. On the other hand, the Board of Appeal annulled the Opposition Division’s decision so far as concerns the goods in the second group in Class 18, namely the ‘trunks and travelling bags; travelling bags; sports bags; sail bags; umbrellas, parasols’ which, in the Board of Appeal’s view, were not similar to the goods in Class 25 covered by the earlier Community mark.
40 The applicant disputes that assessment on the ground that there is no similarity between the ‘goods made of these materials [leather and imitations of leather] and not included in other classes’ in Class 18 and covered by the trade mark sought and the goods covered by the earlier Community mark in Class 25.
41 In that regard, the General Court is of the view that, contrary to what the applicant claims, the Board of Appeal correctly concluded that the ‘goods made of these materials [leather and imitations of leather] and not included in other classes’ in Class 18, covered by the trade mark sought, were similar to the goods covered by the earlier Community mark in Class 25.
42 The Board of Appeal’s assessment directly reflects the consistent case‑law that the goods in the first group in Class 18, namely ‘goods made of these materials [leather and imitations of leather] and not included in other classes’, such as a handbags, coin purses or wallets, are often sold with goods in Class 25 at sales outlets in both major retail establishments and more specialised shops. That is a factor which must be taken into account in assessing the similarity of those goods (see, to that effect, Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 45; judgments of 10 September 2008 in Case T-96/06 Tsakiris‑Mallas v OHIM – Late Editions (exē), not published in the ECR, paragraph 31, and of 16 December 2009 in Case T-483/08 Giordano Enterprises v OHIM – Dias Magalhães & Filhos (GIORDANO), not published in the ECR, paragraph 23).
43 It must also be recalled that, as OHIM and the intervener correctly contend, the General Court has confirmed that there is a slight similarity between ‘women’s bags’ and ‘women’s shoes’ (Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraph 68).
44 The existence of a slight similarity has also been accepted by the General Court in respect of the relationship between all the goods designated by the earlier mark in Class 25 and the ‘goods made of these materials [leather and imitations of leather] and not included in other classes’ in Class 18 designated by the trade mark applied for (PiraÑAM diseño original Juan Bolaños, paragraph 42 above, paragraphs 46 and 47).
45 Moreover, in respect of the relationship between the ‘goods in leather and imitations of leather’ in Class 18 covered by the trade mark sought and the goods in Class 25 covered by the earlier mark, it is apparent also from settled case-law that the ‘goods in leather and imitations of leather’ include clothing accessories such as ‘bags or wallets’ made from that raw material and which, as such, contribute, with clothing and other clothing goods, to the external image (‘look’) of the consumer concerned, that is to say coordination of its various components at the design stage or when they are purchased. Furthermore, the fact that those 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 support the impression that the same undertaking is responsible for the production of those goods. It follows that some consumers may perceive a close connection between clothing, footwear and headgear in Class 25 and certain ‘goods made of these materials [leather and imitations of leather] and not included in other classes’ in Class 18 which are clothing accessories. Consequently, clothing, shoes and headgear in Class 25 bear more than a slight degree of similarity to a category of ‘goods made of these materials [leather and imitations of leather] and not included in other classes’ in Class 18 consisting of clothing accessories made of those materials (see, to that effect, PiraÑAM diseño original Juan Bolaños, paragraph 42 above, paragraphs 49 to 51; exē, paragraph 42 above, paragraph 32; and GIORDANO, paragraph 42 above, paragraphs 25 to 27).
46 Consequently, the contested decision was correct to conclude, in essence, that there was a slight similarity between the ‘goods made of these materials [leather and imitations of leather] and not included in other classes’ in Class 18 and to which the trade mark application relates and the goods covered by the earlier Community mark in Class 25.
47 That conclusion cannot be called into doubt by the applicant’s argument derived from an earlier decision of OHIM’s Cancellation Division which, the applicant states, accepted that handbags, wallets, document holders, brief cases and sports bags must be considered to be different from clothing and shoes.
48 It is settled case-law that the decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of OHIM take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (Case C-412/05 P Alcon v OHIM [2007] ECR I-3569, paragraph 65, and ARTHUR ET FELICIE, paragraph 22 above, paragraph 71).
The comparison of the signs
49 The marks to be compared in the present case are figurative marks consisting of composite signs each composed of a verbal element and a figurative element.
50 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 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).
51 In addition, 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, paragraph 50 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 50 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 might, in particular, be the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Nestlé v OHIM, paragraph 43).
52 In the present case, the Board of Appeal concluded that the marks at issue were visually and phonetically similar, while excluding conceptual similarity on the ground that the term ‘kitana’ had no particular meaning.
53 The applicant contests the Board of Appeal’s assessment and submits that the marks are not visually or phonetically similar in so far as they contain ‘radically different’ figurative elements and the first letters of the two marks, which are different and larger, therefore play a greater role in the perception of the relevant public, which is confirmed by a line of OHIM decisions. That difference of first letters also entails a difference from the phonetic point of view. The applicant argues that the assessment of the perception of the signs from the phonetic point of view by the German public is irrelevant in the present case in so far as the opposing party has not proved the use of its mark in Germany. On the other hand, the applicant acknowledges that the term ‘kitana’ has no particular meaning and concludes from this that the signs ‘convey quite different concepts’.
– The visual comparison
54 First, it must be held, as it was, in essence, by the Board of Appeal at points 31 and 32 of the contested decision, that the signs at issue are both composed of a six-letter word, the last five letters of which, ‘i’, ‘t’, ‘a’, ‘n’, ‘a’, are identical. The two words are written in capital letters, with the exception of the letter ‘i’ of the earlier mark KiTANA. The words differ in their first letters ‘g’ and ‘k’, written in larger type than the other letters. The two signs also contain a figurative element: a representation of five grey arrows in the background of the trade mark applied for and a representation of a stylised globe above the second letter ‘a’ of the earlier Community mark.
55 Second, the Board of Appeal was correct to observe, in point 33 of the contested decision, that the words ‘gitana’ and ‘kitana’ in the conflicting marks constituted their dominant elements, the figurative elements of both signs being decorative in character. Both the representation of the arrows in the mark applied for and the representation of the globe in the earlier Community mark may be regarded as rather banal and unimaginative, so that they are negligible in the overall impression which the relevant public may have of the signs. In addition, the arrows in the trade mark applied for are represented in pale tones, giving the impression of an image of a shadow, which diminishes their capacity to attract the attention of the consumer. The figurative elements of the signs at issue are therefore not likely to create the image of the marks which the relevant public will keep in mind and to influence in a significant way the overall impression produced by the signs. Consequently, it must be concluded that the figurative elements of the marks at issue are likely to be perceived by the consumer essentially as decorative elements and not as elements indicating the commercial origin of the goods.
56 In addition, it must be recalled that, where a mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will refer more easily to the goods at issue by quoting their name than by describing the figurative element of the mark (see judgment of 22 May 2008 in Case T-205/06 NewSoft Technology v OHIM – Soft (Presto! Bizcard Reader), not published in the ECR, paragraph 54 and the case-law cited). In the light of the characteristics of the figurative element of the earlier mark described in the preceding paragraph, the Board of Appeal was correct to hold in point 33 of the contested decision that that reasoning applied to the present case.
57 Moreover, as the intervener correctly contends, the fact that the terms ‘gitana’ and ‘kitana’ are not descriptive of the goods designated, and thus have intrinsic distinctive character in relation to those goods, consolidates their dominance in the overall assessment of the signs at issue (see judgment of 13 December 2007 in Case T-242/06 Cabrera Sánchez v OHIM – Industrias Cárnicas Valle (el charcutero artesano), not published in the ECR, paragraph 53, and Case T-472/08 Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA) [2010] ECR II-3907, paragraph 49).
58 Third, it must be stated, as the Board of Appeal has observed, that the dominant elements of the signs at issue, namely the terms ‘gitana’ and ‘kitana’, are similar from a visual point of view. Contrary to what the applicant claims, the fact that the signs differ by their first letters, written in larger characters, is not such as to reduce the visual similarity resulting from the group of five letters ‘itana’. Furthermore, as OHIM and the intervener correctly observe, the consumer’s attention is not always concentrated on the beginning of a word. Although the initial part of word marks may retain the consumer’s attention more than the following parts (see, to that effect, Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraph 81, and Case T-112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraphs 64 and 65), in the present case, the difference in the first letter of each sign is not sufficient to neutralise the similarity between all the other letters of the signs, constituting the largest part of the signs at issue (see, to that effect, judgment of 22 May 2012 in Case T-585/10 Aitic Penteo v OHIM – Atos Worldline (PENTEO), not published in the ECR, paragraph 67). The Board of Appeal was therefore correct to conclude that the signs are similar visually.
59 That finding cannot be called into question by the applicant’s argument, derived from OHIM’s decision-making practice, that the difference between the signs at issue is more noticeable on account of the fact that it is the result of their first letters. In accordance with the case-law cited at paragraph 48 above, the lawfulness of decisions of the Boards of Appeal of OHIM must be assessed solely on the basis of Regulation No 207/2009 and not on the basis of a previous decision-making practice.
– The phonetic comparison
60 The Board of Appeal concluded that, as a whole, the phonetic impression of the signs at issue will be highly similar because of the similarity of their first syllables and the fact that their second and third syllables are identical.
61 While disputing the findings of the Board of Appeal as regards the phonetic similarity of the first letters ‘g’ and ‘k’ of the signs, the applicant acknowledges a certain degree of phonetic similarity between the signs having regard to the fact that those signs have the group of letters ‘itana’ in common.
62 In that regard, clearly, as the Board of Appeal observed, the second and third syllables of the signs at issue are phonetically identical.
63 In respect of the phonetic comparison of the first syllables ‘gi’ and ‘ki’, it must be stated that the phonetic impression given by those syllables is highly similar in certain Member States of the European Union, the relevant territory in the present case, and, at the very least, similar in others. As the Board of Appeal observed in point 34 of the contested decision, the letters ‘g’ and ‘k’ are both occlusive velar consonants, the letter ‘g’ being a voiced occlusive velar consonant and the letter ‘k’ an unvoiced occlusive velar consonant. Consequently, and having regard to the fact that the letter ‘i’ is identical, the first syllables of the both terms produce a similar phonetic impression, at least for the German-speaking public.
64 In addition, the Court rejects the applicant’s argument that the assessment of the phonetic similarity of the signs made by the Board of Appeal in respect of the impression of the German-speaking public is not relevant in the present case, given that the intervener has not proved the use of the earlier mark in Germany. In that regard, clearly, as it was observed at paragraph 31 above, the intervener did not have to provide proof of genuine use of the earlier Community mark so far as concerns all of the European Union, including Germany. Furthermore, according to settled case-law, it follows from the unitary character of the Community trade mark, laid down in Article 1(2) of Regulation No 207/2009, that an earlier Community trade mark, such as that in the present case, is protected in the same way in all Member States and may be relied upon to challenge any application for registration of a Community trade mark which would prejudice that protection, even if this is only in relation to the perception of consumers in part of the European Union (judgment of 18 September 2008 in Case C-514/06 P Armacell v OHIM, not published in the ECR, paragraph 57). It follows, moreover, that the principle laid down in Article 7(2) of Regulation No 207/2009, namely that it is sufficient that an absolute ground for refusal obtains in only part of the Community for a trade mark application to be refused, applies, by analogy, also in the event of a relative ground for refusal under Article 8(1)(b) of Regulation No 207/2009 (see judgment of 27 November 2007 in Case T-434/05 Gateway v OHIM – Fujitsu Siemens Computers (ACTIVY Media Gateway), not published in the ECR, paragraph 36 and the case-law cited). Consequently, even if the perception of the German-speaking public accepted by the Board of Appeal were not relevant in the present case, that would not deprive the earlier Community mark of protection throughout the European Union, taking account of the perception of the two signs at issue which the relevant public may have in the other Member States of the European Union.
– The conceptual comparison
65 The Board of Appeal concluded that, conceptually, the signs were not similar, given that the term ‘gitana’ means ‘gypsy’ in Spanish and Italian whereas the term ‘kitana’ has no particular meaning in any of the European Union languages.
66 That assessment is not disputed by the applicant, who maintains that the signs at issue convey quite different ideas.
67 The General Court observes that, having regard to the fact that the term ‘kitana’ has no meaning in any of the European Union languages, which both parties accept, it is not possible to make a conceptual comparison of the signs (see, by analogy, Case T-364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR II-757, paragraph 101).
The likelihood of confusion
68 A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C-39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T-81/03, T-82/03 and T-103/03 Mast‑Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).
69 Having regard to the visual and phonetic similarities between the signs at issue and in the light of the fact that the goods designated by the marks at issue are in part identical and in part similar, the Board of Appeal did not err in law when it concluded that there was a likelihood of confusion between them. Thus the Board of Appeal was correct to confirm the decision of the Opposition Division refusing the registration of the trade mark sought except for ‘trunks and travelling bags; travelling bags; sports bags; sail bags; umbrellas and parasols’, goods in Class 18 which were held not to be similar to the goods designated by the earlier Community mark.
70 That finding cannot be called into question by the applicant’s argument as to the alleged repute or ‘notoriety’ of the gitana sign, which the applicant seeks to prove by the documents produced in Annexes A 7 to A 10 to the application.
71 In that regard, it must be recalled, first, that, as stated in paragraph 22 above, some of the evidence adduced by the applicant in support of its claim that the term ‘gitana’ enjoys a degree of repute is inadmissible.
72 Second, the repute of a trade mark is relevant, in the context of the assessment of the likelihood of confusion, only as regards the repute of the earlier mark (Case C‑498/07 P Aceites del Sur-Coosur v Koipe [2009] ECR I-7371, paragraph 84).
73 Third, as OHIM and the intervener correctly maintain, even if the ‘notoriety’ of the gitana sign were proved, it could in any event be taken into consideration only so far as it concerns the goods referred to in the trade mark application, which are the sole goods relevant in the present case. However, the applicant has not submitted evidence that the gitana sign enjoys a degree of repute for anything other than boats and boat races, which do not correspond to the goods in Classes 18 and 25 referred to in the trade mark application.
74 Fourth, that assessment is not called into question by the applicant’s argument that the goods designated by the trade mark sought are marketed through shops selling articles for skippers’ navigation and shops specialising in nautical activities. It is settled case-law that, as particular marketing strategies for goods covered by the marks can vary over time and depend on the wishes of the proprietors of those marks, the prospective assessment of the likelihood of confusion between two marks cannot be dependent on the marketing intentions of the proprietors of the marks, whether implemented or not, which are by their very nature subjective (judgment of 15 March 2007 in Case C‑171/06 P T.I.M.E. ART v OHIM, not published in the ECR, paragraph 59, and Case T-363/06 Honda Motor Europe v OHIM – Seat (MAGIC SEAT) [2008] ECR II-2217, paragraph 63). Thus, the use which the applicant intends to make of the trade mark sought is irrelevant in this context. In opposition proceedings, OHIM may only take account of the list of goods applied for as it appears in the trade mark application, subject only to any amendments thereto (judgment of 13 April 2005 in Case T-286/03 Gillette v OHIM – Wilkinson Sword (RIGHT GUARD XTREME sport), not published in the ECR, paragraph 33; see also, to that effect, PAM PLUVIAL, paragraph 67 above, paragraph 89).
75 It follows from all of the foregoing that the Board of Appeal correctly concluded that there was a likelihood of confusion between the marks at issue. Consequently, the applicant’s plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected as unfounded.
76 The applicant’s action must therefore be dismissed in its entirety and there is no need to rule on the admissibility of the applicant’s request seeking that the registration of the trade mark sought be authorised.
Costs
77 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.
78 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 (First Chamber)
hereby:
1) Dismisses the action;
2) Orders Gitana SA to pay the costs.
Delivered in open court in Luxembourg on 16 September 2013.
[Signatures]