JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
18 May 2011 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative trade mark McKENZIE – Earlier Community figurative and word marks McKINLEY – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑502/07,
IIC – Intersport International Corp. GmbH, established in Ostermundigen (Switzerland), represented by P. Steinhauser, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral and D. Botis, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court, being
The McKenzie Corporation Ltd, established in Ponteland Village, Newcastle Upon Tyne (United Kingdom), represented by D. Alexander QC, R. Kempner and O. Delafaille, Solicitors,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 15 October 2007 (Case R 1425/2006-2) relating to opposition proceedings between The McKenzie Corporation Ltd and IIC – Intersport International Corp. GmbH,
THE GENERAL COURT (Seventh Chamber),
composed of N.J. Forwood (Rapporteur), President, E. Moavero Milanesi and I. Labucka, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court on 31 December 2007,
having regard to the response of OHIM lodged at the Registry of the Court on 21 April 2008,
having regard to the response of the intervener lodged at the Registry of the Court on 11 April 2008,
further to the hearing on 16 December 2009,
gives the following
Judgment
Background to the dispute
1 On 23 April 2002, the intervener, The McKenzie Corporation Ltd., 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 under 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 and goods made of these materials; articles made from leather or imitation leather; leather goods; trunks and travelling bags; articles of luggage; articles of baggage; bags; cases; attaché cases; briefcases; suitcases; valises; handbags; shoulder bags; casual bags; rucksacks; backpacks; school bags; satchels; gym bags; sports bags; tote bags; shopping bags; holdalls; bags for clothing; shoe bags; beach bags; hip bags; pouches; purses; wallets; billfolds; card cases; passport cases; cheque book covers; filo-faxes; key fobs; key cases; luggage tags; cosmetic bags; vanity cases; document cases, portfolios, belts; umbrellas; parasols and walking sticks; parts and fittings for all the aforementioned goods’;
– Class 25: ‘Clothing; footwear; shoes, boots and sandals; headgear; hats’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 24/2003 of 17 March 2003.
5 On 16 June 2003, the applicant, IIC-Intersport International Corp. GmbH, filed a notice of opposition to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009).
6 The opposition was based on the following earlier marks:
– the Community figurative mark McKINLEY, applied for on 28 March 2000 and registered on 5 June 2001 under the number 1579796, in the form:
– the Community word mark McKINLEY, applied for on 19 April 2002 and registered on 4 July 2003 under the number 2661304.
7 The earlier Community figurative mark covers goods coming within Classes 18, 20, 22, 25 and 28 and corresponding, in respect of each of those classes, to the following description:
– Class 18: ‘Bags for campers, bags for climbers, beach bags, hand bags, rucksacks and parts thereof, namely pack frames, bicycle bags, huckaback baby carriers, rucksack rain covers, rifle cases, hunting bags, bivouac sacks’;
– Class 20: ‘Sleeping bags for camping, mattresses (not included in other classes), stools, chairs, tables, benches for fishing, plastic boxes, cases (not of metal) for camping tableware’;
– Class 22: ‘Tents, nets, ropes, tow, sailcloth, ship’s sails, fishing nets’;
– Class 25: ‘Articles of clothing, shoes and boots, gloves, caps, hip-boots and hi-waders for fishing, clothing articles for trekking, for mountaineering, for climbing, for hunting, for fishing, for horse riding’;
– Class 28: ‘Sporting and gymnastic articles, fishing articles’.
8 The earlier Community word mark covers goods coming within Classes 12, 18, 20, 22, 25 and 28 and corresponding, for each of those classes, to the following description:
– Class 12: ‘Cycles, in particular bicycles for trail and off-road riding, satchels for cycles’;
– Class 18: ‘Sports and travelling bags, backpacks, rucksacks for mountaineers, sling bags for carrying children, rain protective covers for bags; beggar’s bags, game bags and rucksacks for hunters; saddlery’;
– Class 20: ‘Inflatable and non-inflatable camping mattresses, camping tables and chairs, easy chairs, non-metallic benches; sleeping bags for camping; cushions and pillows; bivouac bags; boxes of wood or plastic; non-metallic pales and stakes for camping tents’;
– Class 22: ‘Ropes, strings, nets, tents, especially for camping, tarpaulins, sails’;
– Class 25: ‘Clothes, shoes, gloves and knitted caps, fishing boots, articles of clothing for hiking, mountain touring, mountain climbing, hunting, fishing and horse riding’;
– Class 28: ‘Sports and gymnastics articles, fishing tackle, cases and covers for fishing rods; creels for fishing.’
9 The ground relied upon 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), that is to say, the likelihood of confusion between the mark applied for and the two earlier marks.
10 On 6 September 2006, the Opposition Division upheld the opposition in part in respect of all the goods coming within Class 18, with the exception of ‘leather and imitations of leather [ as the raw material necessary to manufacture certain goods], belts; parasols’, and in respect of all goods in Class 25.
11 On 3 November 2006, the intervener filed a notice of appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the decision of the Opposition Division.
12 By decision of 15 October 2007 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal and rejected the opposition in its entirety. In particular, it confirmed the reasoning and conclusions of the Opposition Division with regard to the similarity of the goods in question, with the exception of the comparison between the ‘belts’ referred to in the trade mark application and the ‘articles of clothing’ covered by the earlier marks. With regard to the similarity of the signs in issue, the Board of Appeal considered the degree of visual similarity to be weak and that, subject to the presence of the element ‘McK’ in each of those signs, they were phonetically and conceptually different. It concluded from this that, while the degree of attention given to the purchase of the goods at issue is not excessively great, the relevant public was sufficiently informed and circumspect not to believe that there might be an economic link between all the proprietors of trade marks containing the elements ‘McK’, notwithstanding the similar or identical nature of the goods in question.
Forms of order sought by the parties
13 The applicant claims that the Court should:
– annul the contested decision and confirm the decision of the Opposition Division.
14 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
15 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility
Application to have the decision of the Opposition Division confirmed
16 OHIM considers that the head of claim whereby the applicant asks the Court to confirm the decision of the Opposition Division is inadmissible.
17 Since, at the hearing, the applicant withdrew its head of claim asking the Court to confirm the decision of the Opposition Division, it is not necessary to rule on the admissibility of that head of claim.
Documents submitted for the first time before the Court
18 OHIM takes the view that Annexes 3, 4 and 5 to the application were not submitted at the stage of the administrative proceedings before it and must for that reason be declared inadmissible at the present stage of proceedings, in accordance with the second clause of Article 74(1) of Regulation No 40/94 (now the second clause of Article 76(1) of Regulation No 207/2009) and Article 135(4) of the Rules of Procedure of the Court.
19 According to the documents before the Court, the applicant did not, during the administrative proceedings before OHIM, submit the documents annexed to the application to which OHIM refers, that is to say, with regard to Annex 3, two pages of the applicant’s website (www.mckinley.de) containing examples of the goods in respect of which the earlier marks are used; with regard to Annex 4, the publication of the national registrations in the Benelux countries and in Germany of the figurative mark McKINLEY; and, with regard to Annex 5, the international registration of the word mark McKINLEY. Consequently, those factual documents must be declared inadmissible for the purposes of the present proceedings.
20 Those documents, which were produced for the first time before the Court, cannot 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 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009) and, accordingly, it is not the Court’s function to re-examine the facts in the light of documents produced for the first time before it. The abovementioned documents must therefore be excluded, and it is not necessary to assess their probative value (see, to that effect, Case C-29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 54, and Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19 and the case-law cited).
Plea alleging breach of Article 8(1)( b) of Regulation No 40/94
21 In support of its action, the applicant puts forward a single plea in law, alleging misapplication of Article 8(1)(b) of Regulation No 40/94. While observing that the sign McKENZIE is phonetically, visually and conceptually similar to the earlier Community word and figurative marks McKINLEY, it criticises the Board of Appeal for failing to take into account, when examining the marks in question, the differences in pronunciation of the words, and therefore of the marks, from country to country and from region to region depending on the language or dialect spoken, for not correctly considering the manner in which the relevant public interprets the marks at issue, and for not taking sufficient account of the reputation of the mark McKINLEY in a considerable part of the Member States of the European Union.
22 OHIM and the intervener contest the substance of the applicant’s arguments. OHIM contends in particular that the mark applied for contains no figurative element and is limited to the word ‘McKENZIE’, written in a standard font. According to OHIM, the mark should therefore be considered to be a word mark.
23 As a preliminary point, it should be noted that OHIM’s argument regarding the nature of the trade mark applied for must be understood as meaning that that mark is to be regarded as a word mark for the purposes of the comparison of the signs at issue and for the purposes of the assessment of the likelihood of confusion. According to OHIM, the mark applied for contains only a weak figurative element consisting in the raised letter ‘c’ and is limited essentially to the element ‘McKenzie’, written in a standard font. That point of view is confirmed by the intervener, which refers, in its statement in intervention, to the mark applied for as a word mark.
24 According to 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’ and ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’.
25 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 that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).
26 For the purposes of applying Article 8(1)(b) of Regulation No 40/94, 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).
27 With regard to the comparison of the goods, the Board of Appeal’s conclusion concerning the similarity of the goods at issue is not disputed in the present case. The Board of Appeal confirmed the reasoning and the conclusions of the Opposition Division, which had stated that the goods referred to in the trade mark application and certain goods covered by the earlier trade marks were identical or ‘very similar’, that the goods referred to in the trade mark application and other goods covered by the earlier trade marks were of average or weak similarity, and that the goods referred to in the trade mark application and other goods covered by the earlier trade marks were not similar. However, unlike the Opposition Division, it concluded that the ‘belts’ referred to in the trade mark application and the ‘articles of clothing’ covered by the earlier marks were ‘very similar’ or identical.
28 In addition, concerning the relevant public with reference to which the analysis of the likelihood of confusion must be carried out, it is not disputed that this is constituted by the ‘average Community consumer’.
Comparison of the signs at issue
29 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 those 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 assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and case-law cited).
30 The Board of Appeal took the view that the first three letters of the mark applied for, forming the ‘McK’ element, could not constitute the distinctive and dominant element of that mark, because the relevant public – which can distinguish between, inter alia, all the names beginning with the element ‘McK’ among the many family names of Scottish or Irish origin having that combination of letters – would not focus on the prefix ‘Mc’. Furthermore, a distinction could be drawn between the signs at issue on the basis of how the letter combinations ‘inley’ and ‘enzie’ are pronounced, it not being possible for the distinct sound of the signs as a whole to be counterbalanced by the common group of letters ‘McK’. Conceptually, the Board of Appeal concedes that the signs overlap with regard to the prefix ‘Mc’ (meaning ‘son of’). Being accustomed to the presence of Scottish or Irish names in everyday life, the relevant public would be able to distinguish between them in such a way as not to believe that an economic link might exist between all the proprietors of marks containing the prefix ‘McK’, notwithstanding the similar or identical character of the goods at issue.
31 The applicant claims that, in the word elements ‘McKinley’ and ‘McKenzie’, the emphasis is on the same syllable, that is, their second syllable. Even if the relevant public tried to pronounce the marks as English words, there is a strong likelihood that the letters ‘i’ and ‘e’ would be pronounced in the same way, given the influence of the national (or local) language. Furthermore, the final part of the earlier marks, that is, the ending ‘ey’, and the final part of the mark applied for, that is, the ending ‘ie’, are pronounced identically. Accordingly, the only phonetic difference between the signs results from the pronunciation of the letter ‘l’ in the earlier marks and the letter ‘z’ in the mark applied for. That difference does not, however, remove the phonetic similarity of those signs for the relevant public. Moreover, on a visual level, the differences between the letters ‘i’ and ‘e’ and between the letters ‘l’ and ‘z’, while somewhat more conspicuous, are not capable of neutralising the phonetic and conceptual similarities. Although the last three letters of the marks at issue differ, that does not at all detract from the fact that the global impression will be based on the elements ‘McKin’ and ‘McKen’, which are the decisive elements. By stating that the marks at issue comprise eight letters, equally divided into three syllables, the applicant concludes that the marks at issue are phonetically, visually and conceptually similar, since the relevant public will assume that the two marks are of Scottish origin. The sign McKENZIE, like McKINLEY, would be perceived as the name of a mountain and that would confirm the conceptual similarity of those marks.
32 OHIM and the intervener take issue with the applicant’s arguments.
33 In the examination of the visual similarity of the marks at issue, it should first be noted that, with regard to the comparison of the mark applied for, comprising the element ‘McKenzie’, with the earlier Community word mark, consisting of the word ‘McKinley’, the two marks are written in a standard font. As regards the earlier Community figurative mark, this combines the word element ‘McKinley’ with a figurative element made up of a triangle which, according to the applicant, is a symbolic drawing of a mountain.
34 Second, it must be stated that the word elements at issue have the same number of letters, that is to say, eight letters, commence in the same way, that is, with the prefix ‘Mc’, and contain five identical letters – ‘m’, ‘c’, ‘k’, ‘e’ and ‘n’ – four of which are in the same position in those elements. It follows that those signs contain similar elements. In addition, with regard to the applicant’s assertion at the hearing that the overall assessment is based on the elements ‘McKin’ and ‘McKen’ as decisive elements, the particular importance of the first part of the word elements of the trade marks at issue must be acknowledged, the Court having found that consumers normally attach more importance to the first part of words (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).
35 In the present case, however, the Board of Appeal took the view, correctly, that the relevant public recognised the prefix ‘Mc’ as a prefix to many Scottish or Irish family names which constitute trade marks, particularly in the clothing sector. The attention of the relevant public will not focus specifically on that prefix. Consequently, that element does not constitute the dominant element of the marks at issue.
36 By contrast, the relevant public will take into account the final parts of the signs at issue, that is to say, the elements ‘Kenzie’ or ‘enzie’ and ‘Kinley’ or ‘inley’, which are visually different in a number of significant respects. In conclusion, the elements ‘McKenzie’ and ‘McKinley’ display a weak degree of visual similarity.
37 As regards the visual comparison of the mark applied for, that is to say, a word mark, with the earlier Community figurative mark, 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 those two types of mark have a 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).
38 However, in relation to the mark applied for and the earlier Community figurative mark, the degree of visual similarity is even weaker still, since the latter mark contains a figurative element which is similar in size to the word element ‘McKinley’ and represents a symbolic mountain. The visual differences between those marks are thus more pronounced.
39 On a phonetic level, the applicant contends that the endings ‘ie’ and ‘ey’ of the signs at issue are pronounced in the same way and that the pronunciation of the syllable ‘Ken’ in the word element ‘McKenzie’ is ‘very similar’ to that of the syllable ‘Kin’ in the word element ‘McKinley’. However, even if those word elements were pronounced as English words, their endings would not be pronounced in the same way. It must therefore be held, following the Board of Appeal, that the distinction between those signs lies in the pronunciation of the elements ‘inley’ and ‘enzie’. Consequently, the Board of Appeal acted correctly in law in finding that the differing pronunciation of the elements ‘inley’ and ‘enzie’ counterbalanced the identical pronunciation of the element ‘McK’ present in each of the signs at issue. There is therefore only an average degree of phonetic similarity.
40 On a conceptual level, it must be pointed out that the relevant public recognises the prefix ‘Mc’, signifying ‘son of’, as a prefix to many Scottish or Irish family names. That public will therefore regard the word elements of the marks at issue as Celtic family names of no conceptual significance, unless the name is the particularly well-known name of a famous person (Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraph 57, upheld by the Court of Justice in Case C‑361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I‑643. However, the applicant has not shown that such a situation exists in the present case.
41 Thus, if the relevant public associates the word elements of the marks at issue with Scottish or Irish family names, it will link them with particular families, given that those family names are different. Consequently, the trade marks in question are not conceptually similar.
42 Furthermore, and as pointed out by the Board of Appeal, it is possible that certain persons may link the element ‘McKinley’ with the name of the highest mountain in North America. The association of that element with the name of a mountain is all the more conspicuous with regard to the earlier Community figurative mark McKINLEY, since it contains the drawing of a symbolic mountain. By contrast, the fact that the element ‘McKenzie’ is identical to the name of a mountain situated in Australia is little known to the relevant public. Thus, even supposing that a section of the relevant public may associate the element ‘McKinley’ with the name of a mountain, the elements at issue would be conceptually distinct, since one of the two does not have a clear and specific semantic content for the relevant public. The Board of Appeal thus acted correctly in law in taking the view that those marks were conceptually different.
The likelihood of confusion
43 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice-versa (Case C-39/97 Canon [1998] ECR I-5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).
44 The Board of Appeal took the view that, in the clothing or fashion sectors, it is common to use signs composed of family names. According to it, the intervener has proved the existence of several marks containing, inter alia, the prefix ‘Mc’ which are present on the national and Community markets. In addition, the relevant public is accustomed to the presence of Scottish or Irish family names in daily life and is able to distinguish between the marks at issue. While the attention paid by the relevant public when buying the goods in question is not excessively high, that public is sufficiently well informed and circumspect as not to believe that there might be an economic link between all the proprietors of marks containing the element ‘McK’, notwithstanding the similar or identical character of the goods in question.
45 The applicant argues, in essence, that the relevant public will associate the mark applied for with the earlier marks since it will think that those marks are part of the same ‘family’. In addition, the applicant takes the view that, because of the phonetic, conceptual and visual similarity of the marks at issue, there is a likelihood of confusion. Account should also be taken of the reputation of the earlier marks. In that regard, in order to demonstrate the importance of the mark McKINLEY for the group of companies to which it belongs, it refers to Annexes 3, 4 and 5 to the application and to the annual reports of that group for the years 2002 and 2003, which are also annexed to the application, and observes that the earlier marks have a reputation as trademarks for goods that are related with sporting goods, including goods for climbing and trekking.
46 OHIM and the intervener dispute the applicant’s arguments. OHIM acknowledges that the Board of Appeal did not expressly deal with the issue of the reputation of the earlier marks in the contested decision although, according to the principle of functional continuity, it was obliged to re-examine all the claims put forward by the opposing party even in the absence of an express application by the applicant to that effect. However, a procedural irregularity cannot justify the annulment of a decision unless it is shown that, had it not been for the irregularity, the decision might have been substantially different. The applicant, however, has not submitted any compelling arguments in that regard and has not sufficiently substantiated its claim regarding the reputation of the earlier marks.
47 It should be noted, as a preliminary point, that Article 4 of Regulation No 40/94 (now Article 4 of Regulation No 207/2009) provides that a Community trade mark may consist of any signs capable of being represented graphically, including personal names. Articles 7 (now Article 7 of Regulation No 207/2009) and 8 of that regulation, concerning refusal of registration, do not distinguish between signs of a different type. The assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, between such signs must therefore be made according to the same principles as those concerning any other sign. That does not, however, exclude the possibility that the fact that a sign is made up of the name of a person may have a bearing on the perception of that sign by the relevant public (Case T-185/03 Fusco v OHIM – Fusco International (ENZO FUSCO) [2005] ECR II‑715, paragraph 45).
48 In addition, according to the case-law, in the clothing or fashion sectors, which include the goods coming within Classes 25 and those coming within Class 18, it is common to use signs consisting of patronymics (Case T-169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraph 83, and Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579). Therefore, the relevant public will not believe that there is an economic link between all the proprietors of trade marks beginning with the prefix ‘mc’. The relevant public will for that reason not think that the undertakings marketing the goods in question under the mark applied for are economically linked or identical to those marketing those goods under the earlier marks.
49 With regard to the applicant’s argument that there is a likelihood of confusion by reason of the phonetic, conceptual and visual similarities between the signs at issue, it must be pointed out that, in the present case, taking into account the low degree of visual similarity between the earlier Community word mark and the mark applied for (see paragraph 36 above) and the even lower degree of similarity between the earlier Community figurative mark and the mark applied for (see paragraph 38 above), and in view of the average degree of phonetic similarity between the earlier marks and the mark applied for, the elements of visual and phonetic similarity are not sufficient to create a likelihood of confusion. Moreover, the average degree of phonetic similarity between those marks is less significant in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (judgment of 8 February 2007 in Case T‑88/05 Quelle v OHIM – Nars Cosmetics (NARS), not published in the ECR, paragraph 69 and the case-law cited).
50 That is the position with regard to the goods in the present case. The goods coming within Classes 18 and 25 which are covered by the trade mark application are sold through the usual distribution channels for clothes, shoes and clothing accessories, namely shops. The relevant public will therefore evaluate them visually. Moreover, while oral communication concerning the goods and the mark cannot be excluded, the choice of an item of clothing, pair of shoes or clothing accessory is generally made by looking at them. Therefore, the visual perception of the marks in question will generally occur prior to purchase. The visual aspect is, for that reason, of greater importance in the overall assessment of the likelihood of confusion (Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHMI – Naulover (NLSPORT, NLJEANS, NLACTIVE et NLCollection) [2004] ECR II‑3471, paragraph 50).
51 The same applies with regard to sale by mail-order or via the internet, which implies, at least to the same extent as sale in a shop, marketing which calls for a visual evaluation of the product purchased by the consumer, whether the goods concerned are clothes, shoes or clothing accessories, and which does not generally allow assistance to be sought from a salesperson. Where the sale can be discussed over the telephone, it usually takes place only after the consumer has consulted the catalogue and looked at the goods. The fact that those goods may, in some circumstances, be the subject of discussion between consumers is therefore irrelevant, since, at the time of purchase, the goods in question, and therefore the marks which are affixed to them, are visually perceived by consumers (NARS, paragraph 69).
52 If, on the basis of all of the foregoing considerations, the likelihood of confusion between the mark applied for and the earlier marks can be excluded, even with regard to identical goods, that is because of the principle that the earlier marks do not, per se or on the basis of the public’s recognition of them, have a high degree of distinctiveness. However, the applicant argues that the earlier marks have acquired a reputation in the European Union by reason of their use.
53 In that regard, OHIM correctly states that the Opposition Division concluded that the applicant had not provided proof that the mark McKINLEY had acquired a high level of distinctiveness on the basis of its reputation. At the time of its appeal before the Board of Appeal, the applicant did not dispute that assessment by the Opposition Division, as the OHIM case-file makes clear. For its part, the Board of Appeal reached its finding on the likelihood of confusion and annulled the Opposition Division’s decision without, however, expressly addressing the question of the high level of distinctiveness based on the reputation of the earlier marks.
54 It must be added, by way of information, that Annexes 3 to 5 to the application, intended to prove the reputation of the earlier marks, cannot be taken into account in reviewing the decision of the Board of Appeal, given that those documents have been declared inadmissible for the purposes of the present proceedings (see paragraph 19 above).
55 OHIM, however, recognises first (see paragraph 46 above) that, according to the principle of functional continuity, the Board of Appeal is obliged, when dealing with an appeal, to conduct a new, full examination of the merits of the opposition, both in law and in fact (see, to that effect, Case T‑308/01 Henkel v OHIM – LHS (UK) (KLEENCARE) [2003] ECR II‑3253, paragraphs 29 and 32, and Case T‑215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II‑711, paragraphs 96 to 110). Where the Board of Appeal wishes to reject the opposition, it must re-examine all the arguments put forward by the opposing party, even in the absence of an express application by that party to that effect (see, in this connection, VIPS, paragraph 110).
56 Thus, in the absence of an express withdrawal by the opposing party of its arguments concerning the reputation of the earlier marks, the Board of Appeal ought to have examined and, if appropriate, rejected the arguments to that effect put forward by the applicant in the course of the proceedings before the Opposition Division, explaining, at least in summary fashion, the reasons why the evidence submitted during the proceedings before the Opposition Division did not make it possible for it to conclude that the earlier trade marks were highly distinctive by reason of an acquired reputation.
57 In that regard, it is apparent from the positions taken by OHIM and the applicant at the hearing that the Board of Appeal either did not examine or take into consideration the arguments and the documentary evidence put forward by the applicant, or that it tacitly accepted the findings of the Opposition Division in that regard, while failing to give any reasons for its decision to that effect.
58 Thus, the Board of Appeal may have committed either a breach of a legal rule, that is to say, Article 62(1) of Regulation No 40/94 (now Article 64(1) of Regulation No 207/2009) by not examining the arguments and documentary evidence concerning the reputation of the earlier trade marks, or an infringement of the obligation to state reasons laid down by Article 73 of that regulation (now Article 75 of Regulation No 207/2009), which constitutes an essential procedural requirement and must be distinguished from the question of whether the reasoning is well founded, which goes to the substantive legality of the contested decision (see, to that effect, Case C‑367/95 P Commission v Sytraval and Brink’s France [1998] ECR I‑1719, paragraph 67, and the judgment of 8 July 2009 in Case T‑33/06 Zenab v Commission, not published in the ECR, paragraph 76).
59 On the assumption that the Board of Appeal failed to address the question of the reputation of the earlier marks, it would not have complied with its obligation under Article 62(1) of Regulation No 40/94, and would therefore have committed a procedural error. However, in accordance with settled case-law, if, in the particular circumstances of the case, an error could not have had a decisive effect on the outcome, the argument based on such an error is nugatory and thus cannot suffice to justify annulment of contested decision (see Case T‑126/99 Graphischer Maschinenbau v Commission [2002] ECR II-2427, paragraph 49 and the case-law cited, and judgment of 12 September 2007 in Case T‑140/06 Philip Morris Products v OHIM (Shape of a cigarette packet), not published in the ECR, paragraph 72).
60 When examining consequently whether, in the absence of that error, the Board of Appeal’s decision would have been different, it is necessary to bear in mind that the more distinctive the earlier mark, the greater will be the likelihood of confusion (Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 24). Marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 20 and the case-law cited).
61 With regard to the distinctive character of the earlier marks by reason of their reputation, it is settled case-law that, since the reputation of a mark is largely a purely conjectural matter, it is for the parties to provide sufficient precision in their argument in order to enable OHIM to rule on their argument in a comprehensive manner. Second, the assessment of reputation is based, in principle, on matters of fact which it is for the parties to present. If the party bringing the opposition proceedings intends to rely on the fact that its mark is well known, it is required to put forward facts and, if necessary, evidence to enable OHIM to determine the truth of such a claim (Case T-66/03 ‘Drie Mollen sinds 1818’ v OHIM – Nabeiro Silveira (Galáxia) [2004] ECR II‑1765, paragraph 32, and Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II‑287, paragraph 30).
62 As the applicant has not submitted to the Board of Appeal more factual information and evidence than it submitted to the Opposition Division, that is to say, a catalogue, the annual reports of the group to which the applicant belongs for 2002 and 2003, and extracts from a website, the Board of Appeal would have been unable to examine whether the earlier marks had a reputation on the basis of other factual information or evidence. The documents mentioned above are, however, clearly irrelevant for the purposes of establishing that reputation, since they show only that the mark McKINLEY has been used, without indicating the extent of use of the earlier marks or for how long they have been used, or for that matter the applicant’s market share.
63 Thus, the Board of Appeal would have been in a position only to confirm the Opposition Division’s assessment. On the assumption that the error consisted in the failure to examine the reputation of the earlier marks, that plea is therefore ineffective.
64 The same applies with regard to the issue whether the earlier marks have an inherent distinctive character. Being obliged, like the Opposition Division, to assess of its own motion whether the earlier marks have a high level of inherent distinctiveness, the Board of Appeal would also have been unable to make a different assessment to that of the Opposition Division. The Board of Appeal had only the same information at its disposal as the Opposition Division in order to examine whether such distinctiveness existed. Consequently, it did not commit any error in law in that regard.
65 With regard to the view that the Board of Appeal infringed its obligation to state reasons, it should be observed that the same principles as those applicable in the context of Article 253 EC also apply in the context of Article 73 of Regulation No 40/94 (Case T-168/04 L & D v OHIM – Sämann (Aire Limpio) [2006] ECR II‑2699, paragraphs 113 and 114).
66 However, since the annulment of the contested decision on the ground of failure to state reasons could give rise, in the present case, only to another substantially identical decision, the applicant has no legitimate interest in securing that annulment on such a ground (see, to that effect, Case T-95/06 Federación de Cooperativas Agrarias de la Comunidad Valenciana v CPVO – Nador Cott Protection (Nadorcott) [2008] ECR II‑31, paragraph 126 and case-law cited).
67 It follows from all of the foregoing that the Board of Appeal did not misapply Article 8(1)(b) of Regulation No 40/94 and that the sole plea in law must be rejected.
68 Accordingly, the action must be dismissed.
Costs
69 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM and the intervener have applied for costs and the applicant has been unsuccessful, the latter must be ordered to pay the costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders IIC-Intersport International Corp. GmbH to pay the costs.
Forwood | Moavero Milanesi | Labucka |
Delivered in open court in Luxembourg on 18 May 2011.
[Signatures]