JUDGMENT OF THE COURT OF FIRST INSTANCE (First Chamber)
15 October 2008 (*)
(Community trade mark – Opposition proceedings – Applications for the Community word marks Ferromix, Inomix and Alumix – Earlier Community word marks FERROMAXX, INOMAXX and ALUMAXX – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94)
In Joined Cases T‑305/06 to T-307/06,
Air Products and Chemicals, Inc., established in Allentown, Pennsylvania (United States), represented by S. Heurung and C. Probst, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Laitinen and D. Botis, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Messer Group GmbH, established in Sulzbach (Germany), represented by W. Graf v. Schwerin and J. Schmidt, lawyers,
ACTIONS brought against three decisions of the Second Board of Appeal of OHIM of 12 September 2006 (Joined Cases R 1270/2005-2 and R 1408/2005-2; R 1226/2005-2 and R 1398/2005-2; R 1225/2005-2 and R 1397/2005-2), concerning opposition proceedings between Air Products and Chemicals, Inc. and Messer Group GmbH,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (First Chamber),
composed of V. Tiili (Rapporteur), President, F. Dehousse and I. Wiszniewska-Białecka, Judges,
Registrar: C. Kristensen, Administrator,
having regard to the applications lodged at the Registry of the Court of First Instance on 13 November 2006,
having regard to the responses of OHIM lodged at the Registry of the Court of First Instance on 28 February 2007,
having regard to the responses of the intervener lodged at the Registry of the Court of First Instance on 9 March 2007,
having regard to the joining of the present cases for the purposes of the oral procedure and of the judgment,
further to the hearing on 9 July 2008,
gives the following
Judgment
Background to the case
1 On 20 May 2003 the intervener, Messer Griesheim GmbH, now Messer Group GmbH, filed three applications for Community trade marks 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.
2 The trade marks in respect of which registration was sought are the word marks Ferromix, Inomix and Alumix.
3 The goods in respect of which registration was sought fall within Classes 1 and 4 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 1: ‘Gases and gas mixtures, including in liquid or soluble form, for the thermal treatment of materials; welding and cutting gases; protective gases’;
– Class 4: ‘Liquid and gaseous fuels’.
4 Those applications were published in Community Trade Marks Bulletin No 8/2004 of 23 February 2004.
5 On 21 April 2004 the applicant, Air Products and Chemicals, Inc., filed three oppositions, under Article 42 of Regulation No 40/94, to the registration of the trade marks applied for.
6 With regard to the trade mark application Ferromix, the opposition was based on Community trade mark registration No 1 286 632, filed on 23 August 1999 and registered on 4 September 2000, of the word mark FERROMAXX, designating inter alia goods in Class 1 (‘Gases and gas mixtures for the welding, cutting and thermal spraying of carbon and ferritic alloy steels’).
7 With regard to the trade mark application Inomix, the opposition was based on Community trade mark registration No 1 286 582, filed on 23 August 1999 and registered on 28 August 2000, of the word mark INOMAXX, designating inter alia goods in Class 1 (‘Gases and gas mixtures for welding, cutting and thermal spraying of stainless steel’).
8 With regard to the trade mark application Alumix, the opposition was based on Community trade mark registration No 1 286 616, filed on 23 August 1999 and registered on 29 August 2000, of the word mark ALUMAXX, designating inter alia goods in Class 1 (‘Gases and gas mixtures for welding, cutting and thermal spraying of aluminium and aluminium alloys’).
9 The oppositions were directed against all the goods described in the applications for Community trade marks, that is, the goods in Classes 1 and 4. They were based on the goods in Class 1 covered by the earlier trade marks.
10 The oppositions were based on the grounds contained in Article 8(1)(b) of Regulation No 40/94.
11 By decisions of 6 October 2005 (INOMAXX/Inomix and ALUMAXX/Alumix) and 13 October 2005 (FERROMAXX/Ferromix), the Opposition Division upheld the oppositions in respect of the goods in Class 1 covered by the applications for Community trade marks, and rejected them in respect of the goods in Class 4 covered by those applications. It held, essentially, that the marks were visually and phonetically similar and that the goods in Class 1 were identical or highly similar goods and, therefore, that a likelihood of confusion was not excluded.
12 On 14 October 2005 (INOMAXX/Inomix and ALUMAXX/Alumix) and 27 October 2005 (FERROMAXX/Ferromix), the applicant filed three appeals with OHIM under Articles 57 to 62 of Regulation No 40/94 against the decisions of the Opposition Division.
13 On 22 November 2005 (INOMAXX/Inomix and ALUMAXX/Alumix) and 23 November 2005 (FERROMAXX/Ferromix), the intervener filed three appeals with OHIM under Articles 57 to 62 of Regulation No 40/94 against the decisions of the Opposition Division.
14 By decisions of 12 September 2006 (‘the contested decisions’), the second Board of Appeal dismissed the applicant’s appeals and upheld the intervener’s appeals. It therefore annulled the decisions of the Opposition Division and rejected the applicant’s oppositions in their entirety. It found that the goods were partly identical (Class 1) and partly highly similar (Class 4). With regard to the comparison of the signs, it found that the similarities between the marks in question were essentially limited to a secondary, if not negligible, element (‘ferro’, ‘ino’ and ‘alu’ respectively), descriptive of certain characteristics of the goods concerned, and that the signs in dispute were significantly different in visual, phonetic and conceptual terms. It concluded that, taking into account the lack of inherent distinctiveness of the common element and the high degree of awareness and attention of the relevant public, the signs in question created general impressions which were sufficiently different from each other to rule out a likelihood of confusion or association in the mind of the relevant public, even if the signs were to be registered for identical or highly similar goods in Classes 1 and 4.
Forms of order sought by the parties
15 The applicant claims, in Cases T-305/06 to T-307/06, that the Court should:
– annul the contested decisions;
– dismiss the applications for registration of the marks Ferromix, Inomix and Alumix;
– notify the judgment to OHIM;
– order the intervener to bear the costs.
16 At the hearing, the applicant amended its pleas concerning costs and now applies for OHIM to be ordered to pay the costs.
17 OHIM contends, in Cases T-305/06 to T-307/06, that the Court should:
– dismiss the action;
– order the applicant to bear the costs incurred by OHIM.
18 The intervener contends, in Cases T-305/06 to T-307/06, that the Court should:
– uphold the contested decisions;
– dismiss the action;
– notify the judgment to OHIM;
– order the applicant to bear the costs.
19 At the hearing, the applicant withdrew its second and third heads of claim, of which the Court took formal notice. The intervener also withdrew its third head of claim, of which the Court took formal notice.
Law
Admissibility of the general reference by the intervener to the pleadings submitted by it to OHIM
20 The intervener refers to its written observations submitted to OHIM on 17 January 2005 and 10 and 29 March 2006, in their entirety, which it annexed to its responses in the proceedings before the Court.
21 It should be recalled in that regard that, according to settled case-law, under Article 44(1) of the Rules of Procedure of the Court of First Instance, which applies to intellectual property matters by virtue of Articles 130(1) and 132(1) of those rules, although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (see Joined Cases T-350/04 to T-352/04 Bitburger Brauerei v OHIM – Anheuser-Busch (BUD, American Bud and Anheuser Busch Bud) [2006] ECR II‑4255, paragraph 33 and the case-law cited). That case-law can be transposed to the response of the other party to opposition proceedings before a Board of Appeal who intervenes before the Court of First Instance, pursuant to Article 46 of the Rules of Procedure, which, by virtue of the second subparagraph of Article 135(1) of those rules, applies in matters of intellectual property (Case T-115/02 AVEX v OHIM – Ahlers (a) [2004] ECR II-2907, paragraph 11).
22 It is not for the Court of First Instance to take on the role of the parties by seeking to identify the relevant pleas and arguments in the documents to which they refer (judgment of 17 April 2008 in Case T-389/03 Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), not published in the ECR, paragraph 19). Therefore, the intervener’s response, in so far as it refers to the pleadings submitted by it to OHIM, is inadmissible to the extent that the general reference which it contains cannot be linked to the arguments developed in the response.
Substance
23 The applicant relies on a single plea in support of its action, alleging infringement of Article 8(1)(b) of Regulation No 40/94. It maintains that there is a likelihood of confusion between the marks in question.
24 OHIM and the intervener dispute that there is a likelihood of confusion.
25 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall 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. In addition, under Article 8(2)(a)(i) of Regulation No 40/94, ‘earlier trade marks’ means Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
26 According to settled case-law, there is a likelihood of confusion if there is a risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings.
27 According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, and taking into account all factors relevant to the case, in particular the interdependence between the similarity of the signs and that of the goods or services identified (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and case-law cited).
28 For the purposes of that global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26).
29 In the present case, the marks on which the oppositions were based are Community trade marks. Therefore, the relevant territory for the assessment of the likelihood of confusion is the territory of the European Union as a whole.
The relevant public
30 The applicant does not contest the definition of the relevant public as such, but the degree of attention which the Board of Appeal gave to it, which, according to the applicant, then influenced the assessment of the similarity of the marks in question.
31 According to the Board of Appeal, the goods in question are chemical substances, namely gases used for welding, cutting and for the thermal treatment of materials. It is common ground that such specialised goods are principally intended for professionals working in the wider metallurgical sector, and in particular the welding industry. However, the Board of Appeal found, on the basis of the evidence submitted by the applicant, that there also exist smaller gas cylinders intended for use at home by hobby welders. According to the Board of Appeal, those hobby welders represent a not insignificant part of the relevant public.
32 The Board of Appeal also considered that, taking into account the technical complexity and the risks involved in using welding gases, it could be assumed that even an average hobby welder possessed a minimum amount of the specialised technical knowledge required in order to carry out such a hazardous activity in complete safety. It found that, consequently, even if his level of awareness and attention could not be in any way compared to that of the professional welder, it could reasonably be assumed that the average hobby welder possessed the minimum of specialised technical knowledge required for carrying out completely safely a technically complex and hazardous activity, such as metal welding, and that his level of attention, when choosing and using hazardous products such as welding gases, would be rather high.
33 The applicant claims that having a basic knowledge of welding techniques cannot be considered as being the same as displaying a relatively high degree of attention when purchasing welding gas.
34 The Court notes that it is common ground that the relevant public consists not only of professional welders but also of hobby welders. It is also common ground that the level of attention of the professionals must be considered as high. With regard to the hobby welders who use the goods concerned, their level of attention should be considered as higher than that of a consumer of goods for everyday use, given the possible hazards involved in using those products. However, the level of attention of hobby welders cannot be considered to be as high as that of professionals.
35 Consequently, it must be held that the Board of Appeal correctly defined the relevant public and its level of attention.
Similarity of the goods
36 It is not disputed that the goods covered by the marks in question are partially identical and partially highly similar. With regard to the goods in Class 1, the Opposition Division and the Board of Appeal considered them to be identical. With regard to the goods in Class 4 claimed in relation to the trade marks applied for, the Opposition Division found that they were not similar to the goods in Class 1 covered by the earlier marks. However, the Board of Appeal found that the goods were highly similar. Neither the intervener nor the other parties contest those findings of the Board of Appeal. Therefore, it is not necessary to examine further the similarity of the goods concerned.
Comparison of the signs
37 According to settled case-law, the global assessment of the likelihood of confusion must, in so far as concerns the visual, phonetic or conceptual similarity of the signs in question, be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components (see Case T-292/01 Phillips‑Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47 and case-law cited).
38 The applicant considers that the opposing signs are similar, whereas OHIM and the intervener plead that there is no similarity between them.
39 The opposing signs are the following:
Earlier marks | Marks applied for |
FERROMAXX | Ferromix |
INOMAXX | Inomix |
ALUMAXX | Alumix |
40 The marks concerned are word marks which can each be regarded as consisting of two parts, the prefixes ‘ferro’, ‘ino’ or ‘alu’, and the suffixes ‘maxx’ or ‘mix’.
41 With regard to the prefix ‘ferro’, the Board of Appeal considered that it would be perceived by the relevant public as a common abbreviation of the word ‘iron’ (chemical symbol ‘Fe’), or, as indicated in the specification of the applicant’s goods, of the expression ‘carbon and ferritic alloy steels’. That was also true for those Member States where other expressions were used in everyday language to describe iron, such as the word ‘Eisen’ in German.
42 With regard to the prefix ‘ino’, the Board of Appeal considered that the word ‘inox’ was a commonly known synonym for the expression ‘stainless steel’, even in the Member States where other expressions were used in everyday language to describe stainless steel, and that the prefix ‘ino’ would be immediately perceived by the relevant public as an abbreviation of the word ‘inox’.
43 With regard to the prefix ‘alu’, the Board of Appeal found that it would be perceived by the relevant public as a common abbreviation of the word ‘aluminium’ (chemical symbol ‘Al’), including in those Member States where a different word existed to describe that material.
44 According to the Board of Appeal, when those prefixes were used in relation to the gases used, for example, to weld metals, where the type of gas used depends on the material to be welded together, they would be perceived by the relevant public as a descriptive component of the characteristics of the chemical gases concerned. The applicant indeed itself displayed on its website its range of shielding gases, explaining that the FERROMAXX gases were intended to be used for carbon and alloy steels, INOMAXX gases for stainless steel and ALUMAXX gases for aluminium. The Board of Appeal therefore took the view that the inherent distinctiveness of those prefixes within the signs in dispute, considered as a whole, was extremely limited, not to say non-existent.
45 The applicant disputes the contention that for the relevant public, in particular non-specialised hobby welders, those prefixes are descriptive, since the goods concerned do not consist of alloy steel, stainless steel or aluminium. Hobby welders are not in a position to know that different types of gas can be used to weld different types of materials.
46 The applicant’s argument on that point must be rejected. It is clear that even hobby welders can recognise in those prefixes the meanings which OHIM gave to them. Hobby welders must be aware of the existence of different types of gas for welding different types of materials. Equally, the prefixes concerned are so common that even persons having no connection with metallurgy would be able to recognise those meanings.
47 Consequently, it must be held that the Board of Appeal was not wrong in considering that the prefix ‘ferro’ refers to the expression ‘carbon and ferritic alloy steels’, the prefix ‘ino’ to the expression ‘stainless steel’ and the prefix ‘alu’ to the word ‘aluminium’. Therefore, the finding of the Board of Appeal that those components are descriptive of the goods concerned and thus possess only an inherently weak distinctive character must also be upheld.
48 With regard to the suffixes ‘maxx’ and ‘mix’, the Board of Appeal found that they too were not particularly distinctive. According to the Board of Appeal, even though there was a slight misspelling because of the double ‘x’, the suffix ‘maxx’ contained in the earlier marks had a laudatory connotation to the extent that it clearly evoked a maximum level of performance, efficiency and quality. That finding was corroborated by the applicant’s website, which stated: ‘Our unique Maxx range of shielding gases has been designed following rigorous testing under real working conditions …’, and that ‘they offer the highest levels of performance to maxximise [sic] your productivity, reduce rejects and improve your working environment …’. With regard to the suffix ‘mix’, that was a common English term which was widely used in the European Union, in particular to create the names of trade marks. According to the Board of Appeal, when it was used in conjunction with chemical products for welding activities, where the ‘gas mixtures’ used varied according to the materials to be welded and the desired welding characteristics, it merely informed the consumer that the product concerned was a particular mixture of chemical substances designed for a specific purpose.
49 The suffix ‘maxx’ indeed has a laudatory connotation in so far as it refers to the word ‘maximum’, therefore to a maximum level of performance and efficiency. Contrary to what is argued by the applicant, the distinctiveness of that component is also weak, despite the presence of the double ‘x’ at the end. Equally, the suffix ‘mix’ clearly refers to specific mixtures of chemical substances, as is corroborated by the fact that the description of the goods concerned includes the expression ‘gas mixtures’. Therefore, its distinctiveness is also weak.
50 Therefore it must be held that the Board of Appeal was correct to find that the relevant public would perceive the signs in question as the joining in one word of two inherently weak components, each of them descriptive, or at least evocative, of the essential characteristics of the goods concerned. Accordingly, it must be held that the word marks in dispute do not contain any dominant component and must be compared as a whole.
51 When comparing the marks in question, the Board of Appeal found that there were significant visual and phonetic differences between them which to a large extent counterbalanced the similarity arising from the presence of the common descriptive component (‘ferro’, ‘ino’ or ‘alu’).
52 That finding cannot be accepted. The beginning of each mark applied for, which is perceived and heard first, is identical to the beginning of each of the respective earlier marks (‘ferro’, ‘ino’ or ‘alu’). In addition, the final components ‘maxx’ and ‘mix’ begin with the letter’m’ and end with the letter ‘x’. The fact that the letter in between the letters ‘m’ and ‘x’ is not the same (‘a’ and ‘i’), plus the fact that the earlier marks contain an additional ‘x’ at the end, are not sufficient to rule out any visual or phonetic similarity between the marks in question. In any case, the presence of the double ‘x’ has no effect at all on the phonetic comparison.
53 Therefore, it must be concluded that the marks in question are visually and phonetically similar.
54 With regard to the conceptual comparison, the Board of Appeal found that the common descriptive elements contributed towards accentuating the importance of the other components of the marks in question, that is, the components ‘maxx’ and ‘mix’, the conceptual connotations of which were totally different.
55 The Court notes that the marks in question are conceptually different in some respects. The connotations of the components ‘maxx’ and ‘mix’ lead to a certain differentiation. However, given that the beginnings of the marks are identical in meaning and that the mark as a whole refers either to a metal having a maximising effect (or a gas having a maximising effect, used for a specific metal), or to a mixture of metals (or a mixture of gases, used for a specific metal), the meanings are not so far apart as to render the differences sufficient to nullify the visual and phonetic similarities.
56 Accordingly, it must be held that the marks in question, assessed globally, are similar. Consequently, the Board of Appeal’s finding that the similarities between the marks in question are restricted essentially to a secondary or even negligible component (‘ferro’, ‘ino’ or ‘alu’), descriptive of certain characteristics of the goods concerned, and that there are significant visual, phonetic and conceptual differences between the signs, cannot be accepted.
Likelihood of confusion
57 A global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular similarity between the trade marks and similarity between the goods or services designated by them. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C-39/97 Canon [1998] ECR I‑5507, paragraph 17).
58 The Board of Appeal held that, taking into account the lack of inherent distinctiveness of the common elements ‘ferro’, ‘ino’ and ‘alu’ and the higher degree of awareness and attention of the relevant public, the general impressions created by the signs at issue were sufficiently different to dispel a likelihood of confusion or association in the mind of the relevant public, even if the signs were to be registered for identical or highly similar goods in Classes 1 and 4.
59 With regard to the weak distinctiveness of the common components and of the earlier marks as a whole, it should be recalled that the finding of a weak distinctive character for the earlier trade mark does not preclude a finding that there is a likelihood of confusion. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, Canon, paragraph 24), it is only one of a number of elements entering into that assessment. Even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (Case T‑134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II-5213, paragraph 70; see, to that effect, Case T-112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraph 61).
60 In addition, the argument of OHIM and of the applicant in that regard would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that, where the earlier mark is only of weak distinctive character, a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question (order of the Court of 27 April 2006 in Case C-235/05 P L’Oréal v OHIM, not published in the ECR, paragraph 45). Such a result would not, however, be consistent with the very nature of the global assessment which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 40/94 (judgment of 15 March 2007 in Case C-171/06 P T.I.M.E. ART v Devinlec and OHIM, not published in the ECR, paragraph 41, and PAGESJAUNES.COM, paragraph 71).
61 Regarding the intervener’s argument that welding gas of the type concerned is ordered only directly from the manufacturer and that there are no common sources of competing gases in contrast to other industries and no wholesale or resale trade, it need only be stated that that argument has not been substantiated in any way. What in any case matters are not the conditions under which the goods of the applicant or the intervener are marketed, but the descriptions of the goods covered by the earlier marks and by the marks applied for (see, to that effect, Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 67). In those descriptions, there is no limitation whatsoever of the place of sale, and it is not possible to deduce from the nature of the goods that they could not also be marketed, inter alia, alongside identical goods of another producer in a retail outlet.
62 In addition, with regard to the intervener’s argument that, first, welders refer primarily to manufacturers’ names in order to distinguish generally between the origin of different gases and, second, the names of the products concerned are of only secondary importance and not regarded as indications of origin but as indications of the intended use of the materials, since they contain descriptive elements, it need only be stated that that argument is tantamount to alleging that the marks applied for are precluded by absolute grounds for refusal and should not be registered, which is not, in the context of opposition proceedings, a matter which the Court is competent to determine.
63 It follows from all the foregoing considerations that, in the circumstances of the present case, there is a likelihood of confusion between the marks in question. Given that the goods in question are identical (Class 1) or highly similar (Class 4) and given the similarity between the marks in question, the high level of attention of the public concerned is not sufficient to rule out the likelihood that that public, and in particular the hobby welders which form part of it, may believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings.
64 Therefore, the applicant’s sole plea must be accepted and the contested decisions annulled.
Costs
65 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.
66 In the present case, OHIM and the intervener have been unsuccessful.
67 The applicant applied, in its application, for the intervener to be ordered to pay the costs. However, at the hearing, it amended its pleas and applied for OHIM to be ordered to pay the costs, which OHIM has contested.
68 According to settled case-law, the fact that the successful party did not ask for costs until the hearing does not preclude the Court from awarding them (Case 113/77 NTN Toyo Bearing and Others v Council [1979] ECR 1185; Case T-64/89 Automec v Commission [1990] ECR II‑367, paragraph 79; judgment of 16 November 2006 in Case T-278/04 Jabones Pardo v OHIM – Quimi Romar (YUKI), not published in the ECR, paragraph 75; and Case T-291/03 Consorzio per la tutela del formaggio Grana Padano v OHIM – Biraghi (GRANA BIRAGHI) [2007] ECR II-3081, paragraph 92).
69 Accordingly, OHIM must be ordered to pay, in addition to its own costs, the costs of the applicant. The intervener will bear its own costs.
On those grounds,
THE COURT OF FIRST INSTANCE (First Chamber)
hereby:
1. Annuls the decisions of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 12 September 2006 (Joined Cases R 1270/2005‑2 and R 1408/2005‑2; R 1226/2005‑2 and R 1398/2005‑2; R 1225/2005‑2 and R 1397/2005‑2);
2. Orders OHIM to bear its own costs and pay the costs of Air Products and Chemicals, Inc.;
3. Orders Messer Group GmbH to bear its own costs.
Delivered in open court in Luxembourg on 15 October 2008.
Tiili | Dehousse | Wiszniewska-Białecka |