JUDGMENT OF THE GENERAL COURT (Second Chamber)
28 January 2014 (*)
(Community trade mark – Opposition proceedings – International registration designating the European Community Carrera panamericana – Earlier Community figurative mark CARRERA – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Obligation to state reasons – Article 75 of Regulation No 207/2009)
In Case T‑600/11,
Schuhhaus Dielmann GmbH & Co. KG, established in Darmstadt (Germany), represented by W. Göpfert, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Carrera SpA, established in Caldiero (Italy),
ACTION brought against the decision of the First Board of Appeal of OHIM of 15 September 2011 (Case R 1989/2010‑1), relating to opposition proceedings between Carrera SpA and Schuhhaus Dielmann GmbH & Co. KG,
THE GENERAL COURT (Second Chamber),
composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 25 November 2011,
having regard to the response lodged at the Court Registry on 15 May 2012,
having regard to the change in the composition of the Chambers of the General Court,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 The applicant, Schuhhaus Dielmann GmbH & Co. KG, requested protection for the word mark Carrera panamericana from the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), relying on international registration W00937791 of 10 August 2007 designating the European Community.
2 The goods in respect of which the international registration was obtained are in, inter alia, Classes 18 and 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose 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 18: ‘Beach bags, bags for sports, bags for campers, shopping bags, handbags, bum bags, rucksacks, particularly carry-bags, valises, traveling trunks, vanity cases, school bags, parasols, umbrellas’;
– Class 25: ‘Clothing, footwear, headgear, belts’.
3 The international registration was published in Community Trade Marks Bulletin No 60/2007 of 29 October 2007.
4 On 14 February 2008, Carrera SpA filed a notice of opposition pursuant to Article 42 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended, (now Article 41 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)) against registration of the mark applied for in respect of the goods referred to in paragraph 2 above.
5 The opposition was, inter alia, based on the earlier Community figurative mark registered under the number 1590884, which designates goods in Class 25 corresponding to the following description: ‘Clothing, including belts and footwear’ and is reproduced below:
6 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
7 On 24 August 2010, the Opposition Division partially upheld the opposition by refusing protection of the mark applied for in respect of the goods ‘beach bags, bags for sports, bags for campers, shopping bags, handbags, bum bags, rucksacks, particularly carry-bags, school bags’ in Class 18 and the goods ‘clothing, footwear, headgear, belts’ in Class 25. By contrast, it rejected the opposition as regards the goods ‘valises, travelling trunks, vanity cases, parasols, umbrellas’ in Class 18.
8 On 14 October 2010, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
9 By decision of 15 September 2011 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. In particular, it found that the goods covered by the mark applied for, with regard to which the Opposition Division had upheld the opposition, and those covered by the earlier mark were, in part, identical and, in part, similar. As regards the comparison of the marks at issue, the Board of Appeal found that those marks exhibited a medium degree of visual and phonetic similarity and, for the Spanish-speaking public, a high degree of conceptual similarity, as the word ‘carrera’ means ‘race’ in Spanish, whereas, for the non-Spanish‑speaking public, that word was purely fanciful. The Board of Appeal concluded that there was a likelihood of confusion between the earlier mark and the mark applied for.
Forms of order sought
10 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
11 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
The evidence submitted for the first time before the Court
12 First, OHIM submits that Annexes 14 to 24 to the application are new documents inasmuch as they were not produced before OHIM. Those documents are therefore inadmissible.
13 Annexes 14 to 19 and 22 to 24 to the application are extracts from websites which were printed after the adoption of the contested decision. Annex 20 consists of an article taken from a German newspaper, which was printed from that newspaper’s website after the adoption of the contested decision. Annex 21 is an article taken from a German magazine, which appeared before the adoption of the contested decision, but was printed from that magazine’s website after the adoption of that decision.
14 Those documents, which have been produced for the first time before the Court and in respect of which the applicant does not submit that they seek to substantiate or dispute the accuracy of a well-known fact, cannot therefore be taken into consideration. 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 (Case C‑16/06 P Les Éditions Albert René v OHIM [2008] ECR I‑10053, paragraphs 137 to 138, and judgment of 10 November 2011 in Case C‑88/11 P LG Electronics v OHIM, not published in the ECR, paragraph 25). Accordingly, the abovementioned documents must be excluded from consideration, 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).
15 Secondly, OHIM submits that the applicant’s argument alleging that the marks at issue have ‘peacefully co-existed’ on the German market since September 2010 is inadmissible on the ground that it was not put forward before the Board of Appeal.
16 As the applicant’s argument is based on a fact which was submitted for the first time before the Court, it must be rejected as inadmissible. As has been pointed out in paragraph 14 above, the purpose of actions brought before the General Court is to review the legality of decisions of the Boards of Appeal within the meaning of Article 65 of Regulation No 207/2009. Facts which are relied upon before the Court without having previously been submitted before the departments of OHIM can affect the legality of such a decision only if OHIM should have taken them into account of its own motion. In that regard, it follows from Article 76(1), in fine, of that regulation, under which, in proceedings relating to relative grounds for refusal of registration, OHIM is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought, that OHIM is not required to take into account, of its own motion, facts which were not put forward by the parties. Such facts cannot, therefore, call into question the legality of a decision of the Board of Appeal (Case T‑296/02 Lidl Stiftung v OHIM – REWE‑Zentral (LINDENHOF) [2005] ECR II‑563, paragraph 31).
Substance
17 In support of its action, the applicant puts forward formally a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). In the context of that plea, it disputes, first, the assessment of the similarity of the marks carried out by the Board of Appeal on the ground that the Board of Appeal erred in finding that there was a likelihood of confusion. Secondly, the applicant alleges that the Board of Appeal failed to comply with its obligation to state reasons.
18 By that single plea, the applicant in essence puts forward two pleas in law alleging, first, infringement of the obligation to state reasons and, secondly, infringement of Article 8(1)(b) of Regulation No 40/94.
The first plea, alleging infringement of the obligation to state reasons
19 The applicant submits that the Board of Appeal failed to comply with its obligation to state the reasons for the contested decision. First, the Board of Appeal provided an insufficient statement of reasons for its finding that there is a medium degree of visual and phonetic similarity between the marks at issue and for the finding that the figurative elements of the earlier mark highlight the term ‘carrera’. Secondly, the applicant alleges that the Board of Appeal did not state the reasons for the finding that the term ‘carrera’ leads to confusion between the marks at issue.
20 OHIM does not put forward any specific argument in this respect.
21 Article 75 of Regulation No 207/2009 provides that ‘[d]ecisions of [OHIM] shall state the reasons on which they are based’. According to the case-law, the obligation upon OHIM to state reasons for its decisions, laid down in Article 75 of Regulation No 207/2009, has the same scope as that which derives from Article 296 TFEU, which requires the disclosure, in a clear and unequivocal manner, of the reasoning followed by the institution which adopted the measure in question. That duty has two purposes: to allow interested parties to know the justification for the measure so as to enable them to protect their rights and to enable the Courts of the European Union to exercise their power to review the legality of the decision. That duty can be fulfilled without necessarily responding expressly and exhaustively to all of the arguments put forward (order of 25 November 2010 in Case C‑216/10 P Lufthansa AirPlus Servicekarten v OHIM, not published in the ECR, paragraphs 39 and 40).
22 In particular, when OHIM refuses registration of a sign as a Community trade mark, it must, in order to state the reasons for its decision, indicate the ground for refusal, absolute or relative, which precludes that registration and the provision from which that ground is drawn, and set out the facts which it found to be proved and which, in its view, justify application of the provision relied on (Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 46).
23 In the contested decision, the Board of Appeal stated, as regards the visual and phonetic comparisons of the marks at issue, that the mark applied for fully incorporated the word ‘carrera’, which was the dominant element in the earlier mark, and that the figurative elements of the earlier mark were clearly subordinate and designed to highlight the word ‘carrera’ (paragraph 20 of the contested decision). The Board of Appeal added that the presence of the word ‘panamericana’ in the mark applied for reduced the visual and phonetic similarity, without, however, excluding it (paragraph 21 of the contested decision). At the stage of the conceptual comparison of the marks at issue, the Board of Appeal stated, inter alia, first, that the word ‘carrera’ evoked the notion of a ‘race’ for Spanish-speaking consumers and, secondly, that, non‑Spanish-speaking consumers probably perceived that term as purely fanciful (paragraphs 22 and 23 of the contested decision). The Board of Appeal found that there was a likelihood of confusion in view of the fact that the earlier mark was based on the word ‘carrera’, which is distinctive in the clothing sector, and in view of the use of the same word as the first component of the mark applied for (paragraph 26 of the contested decision).
24 Contrary to what the applicant claims, that statement of reasons is sufficient.
25 First, that statement of reasons allows both the applicant and the Court to understand that the finding, as regards the visual and phonetic comparisons, is based on the presence of the same word, in this case ‘carrera’, in the marks at issue.
26 Secondly, the finding that the word ‘carrera’ is the dominant element of the earlier mark is clearly based on the graphic presentation of that mark. In the light of the case-law referred to in paragraphs 21 and 22 above, the Board of Appeal was not, moreover, required to substantiate the finding that the figurative elements of the earlier mark were subordinate and designed to highlight the word ‘carrera’.
27 Thirdly, it is also apparent from that statement of reasons that the Board of Appeal explained, to the requisite legal standard, the reasons which led it to find that the consumer was likely to be misled regarding the existence of a connection between the two marks, as that finding was inter alia based on the presence of the word ‘carrera’ in the marks at issue and on the position which it occupies in each of those marks.
28 In the light of the foregoing considerations, the first plea must be rejected.
The second plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94
29 The applicant submits, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 40/94 in finding that there is a likelihood of confusion between the marks at issue.
30 OHIM disputes the applicant’s arguments.
31 Article 8(1)(b) of Regulation No 40/94 provides that upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
32 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).
33 It is in the light of those principles that the Board of Appeal’s assessment of the likelihood of confusion between the marks at issue must be examined.
– The relevant public and the comparison of the goods
34 First, the Board of Appeal found that the relevant public consisted of the average consumer of the goods concerned, namely the average buyer of clothing, belts and footwear in all the Member States. Secondly, as regards the comparison of the goods and services at issue, the Board of Appeal confirmed the Opposition Division’s assessment that, first, the goods in Class 25 referred to by the application for the trade mark were identical to those covered by the earlier mark and, secondly, the goods ‘beach bags, bags for sports, bags for campers, shopping bags, handbags, bum bags, rucksacks, particularly carry-bags, school bags’ in Class 18 referred to by the application for the trade mark were similar to those covered by the earlier mark.
35 Those assessments, which the applicant does not dispute, can, having regard to the nature and the use of the goods at issue, only be confirmed.
– The comparison of the signs
36 First, it must be borne in mind that the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not 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).
37 Secondly, 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 36 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 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).
38 Lastly, as regards the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 35, and Case T‑35/08 Codorniu Napa v OHIM – Bodegas Ontañon (ARTESA NAPA VALLEY) [2010] ECR II‑5405, paragraph 35).
39 In the contested decision, first, the Board of Appeal found that the marks at issue exhibited a medium degree of visual and phonetic similarity. It stated, in this respect, that the mark applied for fully incorporated the word ‘carrera’, which was the dominant element in the earlier mark and was highlighted by the figurative elements of that mark (paragraph 20 of the contested decision). The Board of Appeal added that the presence of the word ‘panamericana’ in the mark applied for reduced the visual and phonetic similarity without, however, excluding it (paragraph 21 of the contested decision). Secondly, as regards the conceptual comparison of the marks at issue, the Board of Appeal found that those marks were, for Spanish-speaking consumers, highly similar in view of the use of the Spanish word ‘carrera’ which means ‘race’. In particular, the Board of Appeal rejected the applicant’s argument that the mark applied for would remind Spanish-speaking consumers of a Mexican car race called the ‘carrera panamericana’, on the ground that that race had taken place, for the last time, in 1955. It added that the adjective ‘panamericana’ conferred a geographical connotation on the word ‘carrera’ and took the view that non‑Spanish-speaking consumers would probably perceive the word ‘carrera’ as a purely fanciful word (paragraphs 22 and 23 of the contested decision).
40 The applicant puts forward, in essence, three series of arguments in support of the present plea seeking to call into question, first, the finding that the word ‘carrera’ constitutes the dominant element of the earlier mark, secondly, the Board of Appeal’s findings in respect of the visual and phonetic comparisons and, thirdly, the conceptual comparison of the marks at issue carried out by the Board of Appeal.
41 In the first place, the applicant criticises the Board of Appeal for finding that the word ‘carrera’ constituted the dominant element of the earlier mark.
42 It must be borne in mind that the earlier mark consists of the word element ‘carrera’ and of a figurative element. The latter consists of a black geometric shape with an irregular contour in the centre of which the word ‘carrera’ is written in white capital letters.
43 The graphic presentation of the earlier mark is therefore centred on the word ‘carrera’, which is emphasised in white letters on a black background. The figurative element of the earlier mark serves primarily, as OHIM rightly states, as a background to highlight that word, which the relevant public will therefore perceive first. Furthermore, in referring to the earlier mark, the relevant public will tend to pronounce the word ‘carrera’ instead of describing the graphic form of that mark.
44 Consequently, the Board of Appeal was right to find that the word ‘carrera’ constituted the dominant element of the earlier mark both visually and phonetically.
45 That finding is not called into question by the applicant’s argument that the word ‘carrera’ is descriptive in respect of shoes and cannot therefore be considered to be the dominant element of the mark applied for. First, that argument, inasmuch as it relates to the mark applied for, is irrelevant since it is not capable of invalidating the finding that the word ‘carrera’ constitutes the dominant element of the earlier mark. In any event, it has no factual basis since the Board of Appeal did not treat the word ‘carrera’ as the dominant element of the mark applied for, but as the dominant element of the earlier mark. Secondly, that argument on the part of the applicant would have to be rejected as unfounded even if it were to be understood as meaning that the Board of Appeal could not regard the word element of the earlier mark as its dominant element on the ground that it is descriptive, having regard to the case-law according to which the descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark (see, to that effect, Case T‑472/08 Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA) [2010] ECR II‑3907, paragraph 49 and the case‑law cited). That argument is the result, as the Board of Appeal correctly pointed out, of a confusion between the Spanish words ‘carrera’ (race) and ‘correr’ (to run). The expression ‘footwear for running’ translates into Spanish as ‘calzado para correr’ and not as ‘calzado de carrera’. The word ‘carrera’ is not therefore, contrary to what the applicant submits, descriptive in respect of shoes.
46 In the second place, the applicant calls into question the finding that the marks at issue exhibit a medium degree of visual and phonetic similarity. In that regard, it criticises the Board of Appeal for finding that the addition, in the mark applied for, of the adjective ‘panamericana’ did not exclude visual and phonetic similarity. Furthermore, the Board of Appeal did not, first, take into consideration the factors which the applicant put forward regarding the length and number of the words, the number of syllables, the vowel sequences and the sequences of consonants and, secondly, carry out an overall assessment of the earlier mark.
47 As regards the visual comparison of the two marks, it must be noted, first of all, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see Case T‑359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II-1515, paragraph 43 and the case-law cited).
48 In the present case, the parties agree that the earlier mark and the mark applied for have in common the same word ‘carrera’, which consists of the same letters and is phonetically identical. That word is the only word element and is, as has been pointed out in paragraph 44 above, the dominant element of the earlier mark. It is the first component of the mark applied for, followed by the adjective ‘panamericana’.
49 It is true that, unlike the earlier mark, the mark applied for consists of a sequence of two words, ‘carrera’ and ‘panamericana’, and also, as the applicant submits, of a sequences of nine syllables, in this case ‘car’, ‘re’, ‘ra’, ‘pa’, ‘na’, ‘me’, ‘ri’, ‘ca’ and ‘na’, and a sequence of nine vowels, in this case ‘a’ ‘e’, ‘a’, ‘a’, ‘a’, ‘e’, ‘i’, ‘a’ and ‘a’, whereas the earlier mark consists solely of the word ‘carrera’. Consequently, it cannot be disputed, as OHIM moreover admits, that, considered in their entirety, there are certain visual and phonetic differences between the marks.
50 However, in the light of the fact that the word ‘carrera’ is used in both marks, the differences pointed out in the preceding paragraph are not sufficient to alter the relevant consumer’s impression that those marks, when assessed globally, are visually and phonetically similar (see, to that effect, Case T‑460/07 Nokia v OHIM – Medion (LIFE BLOG) [2010] ECR II‑89, paragraphs 54 and 56 and the case-law cited).
51 The conclusion drawn in the preceding paragraph is a fortiori persuasive given that the word ‘carrera’ is the first element of the mark applied for. According to the case-law, and as the applicant admits, the first components of word marks may be more likely to catch the consumer’s attention than the components which follow (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).
52 Furthermore, as regards the applicant’s argument alleging that the Board of Appeal did not take into consideration the length and number of the words, the number of syllables, the vowel sequences and the sequences of consonants, it must be pointed out that, although it is true that the Board of Appeal did not comment expressly on those factors, that fact remains that, in paragraph 21 of the contested decision, it stated that the presence of the adjective ‘panamericana’ reduced the visual and phonetic similarity of the two marks at issue. In so doing, the Board of Appeal, first, took into consideration the effect of that word on the comparison of the marks at issue and, secondly, implicitly, but necessarily, rejected all of the abovementioned factors. What is more, contrary to what the applicant claims, it is apparent from that statement in paragraph 21 of the contested decision that the Board of Appeal carried out, at the stage of the visual and phonetic comparisons of the marks at issue, an overall assessment of the mark applied for, inasmuch as that mark consists of the words ‘carrera’ and ‘panamericana’.
53 In the light of the foregoing considerations, the Board of Appeal’s finding that the marks at issue exhibit a medium degree of visual and phonetic similarity must be upheld.
54 In the third place, the applicant disputes the Board of Appeal’s findings relating to the conceptual comparison of the two marks. It submits, first, that none of the meanings of the Spanish word ‘carrera’, which translates as ‘race’ and designates a famous sports car as well as numerous other marks, has any connection with the mark applied for. Secondly, the applicant alleges that the Board of Appeal did not take into account the fact that the car race which took place from 1950 to 1955 in Mexico and is known by the name of ‘carrera panamericana’ began again in 1988 and is therefore known to broad sections of the public. In the applicant’s submission, even if the consumer did not know that car race, he would identify the mark applied for as referring to the ‘panamericana’, also called ‘carretera panamericana’, which is a road network ‘link[ing] Alaska to Tierra del Fuego’. The two components of that expression are therefore inseparably linked and, consequently, the Board of Appeal erred in dissociating them.
55 First of all, the finding that the non-Spanish-speaking public will probably perceive the word ‘carrera’ as a purely fanciful word must be upheld. In those circumstances, it is not possible to carry out a conceptual comparison of the marks at issue with regard to the non‑Spanish‑speaking public.
56 However, the applicant submits that the word ‘carrera’ may remind even the relevant non-Spanish-speaking public of a famous sports car and that other marks use the same word in respect of other goods. First, in so far as the applicant refers to a famous sports car, in addition to the fact that it did not submit that argument before the Board of Appeal, it has failed to explain how that reference is capable of affecting the conceptual similarity of the marks at issue. Secondly, the applicant’s claim relating to the use of the word ‘carrera’ by other marks has not been proved by any admissible evidence (see paragraphs 13 and 14 above).
57 Next, as regards the Spanish-speaking public which will understand the Spanish word ‘carrera’ as meaning ‘race’, it is necessary to reject the applicant’s argument seeking to call into question the Board of Appeal’s finding that that public will not necessarily make the link between the expression ‘carrera panamericana’ and the Mexican car race referred to by the applicant. First, as the Board of Appeal pointed out, the car race known by the name of ‘carrera panamericana’ took place, for the last time, in 1955. In those circumstances, it is reasonable to take the view that, more than 50 years later, even a Spanish-speaking average consumer will no longer be aware of the existence of that race. Secondly, although the applicant submits that that race began again in 1988 and is therefore still known to the relevant public, it must be pointed out that the applicant did not produce any evidence of that claim before the Board of Appeal and confined itself to stating, in a single sentence, that that race has, since 1955, been resurrected as a classic car rally. The applicant cannot therefore complain that the Board of Appeal did not take into account the fact – even were it assumed to be established – that the ‘carrera panamericana’ is still known to the public on account of its resumption in 1988. The same is true of the argument alleging that the expression ‘carrera panamericana’ refers to a network of motorways.
58 Lastly, the Board of Appeal’s examination of the argument relating to the reference to the car race shows that, contrary to what the applicant submits, the Board of Appeal, with regard to the conceptual comparison, carried out an overall assessment of the marks at issue. Consequently, the applicant cannot complain that the Board of Appeal, contrary to the rules of grammar, split the ‘inseparable unit’ of which the mark applied for consists.
59 In those circumstances, it must be held that the Board of Appeal was right to find that the marks at issue exhibit a high degree of conceptual similarity for Spanish-speaking consumers.
– The likelihood of confusion
60 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I-5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T-103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74).
61 In the present case, it must be borne in mind, first, that the goods at issue are, in part, identical and, in part, similar. Secondly, the marks at issue exhibit a degree of visual and phonetic similarity which may be categorised as medium and, for Spanish-speaking consumers, a high degree of conceptual similarity, whereas, for non-Spanish-speaking consumers, the marks do not, conceptually, evoke anything specific.
62 In view of all of those considerations, the Board of Appeal did not err in law under Article 8(1)(b) of Regulation No 40/94 in finding that there was a likelihood of confusion between the marks at issue.
63 The finding set out in the preceding paragraph cannot be called into question by the decision of the Bundespatentgericht (Federal Patents Court, Germany) of 18 September 2010, which was produced by the applicant in the course of the proceedings before OHIM and is referred to in the application, according to which there was no likelihood of any confusion between the marks at issue. It is apparent from settled case-law that registrations already made in the Member States are only factors which may merely be taken into consideration, without being given decisive weight, for the purposes of registering a Community trade mark. The same considerations apply in relation to the case-law of the courts of the Member States (Case T-122/99 Procter & Gamble v OHIM (Soap bar shape) [2000] ECR II-265, paragraph 61, Case T‑337/99 Henkel v OHIM (Round red and white tablet) [2001] ECR II‑2597, paragraph 58).
64 It follows from the foregoing that the second plea must be rejected.
65 For all of the reasons set out above, the action must be dismissed in its entirety.
Costs
66 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Schuhhaus Dielmann GmbH & Co. KG to pay the costs.
Martins Ribeiro | Gervasoni | Madise |
Delivered in open court in Luxembourg on 28 January 2014.
[Signatures]