JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
6 October 2011 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark ‘GSS GALILEO SISTEMAS Y SERVICIOS’ – Earlier Community word marks ‘GALILEO’ – Earlier Community figurative mark ‘powered by Galileo’ – Earlier Community figurative marks ‘GALILEO INTERNATIONAL’ – Relative ground for refusal – Lack of 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‑488/08,
Galileo International Technology, LLC, established in Bridgetown (Barbados), represented by S. Malynicz, Barrister, M. Blair and K. Gilbert, Solicitors,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño and P. Bullock, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Galileo Sistemas y Servicios, SL, established in Madrid (Spain),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 28 August 2008 (Case R 403/2006-4), concerning opposition proceedings between Galileo International Technology, LLC and Galileo Sistemas y Servicios, SL,
THE GENERAL COURT (Eighth Chamber),
composed of L. Truchot, President, M.E. Martins Ribeiro and H. Kanninen (Rapporteur), Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the Court on 14 November 2008,
having regard to the response lodged at the Court Registry on 2 July 2009,
further to the hearing on 5 May 2011,
gives the following
Judgment
Background to the dispute
1 On 21 September 2001, Galileo Sistemas y Servicios, SL filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to 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 mark in respect of which registration was sought is the following figurative sign:
3 After the restriction made during the proceedings before OHIM, the goods and services in respect of which registration was sought are in, inter alia, Classes 9 and 38 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 9: ‘Nautical, surveying and life-saving apparatus and instruments; apparatus and instruments for signalling, in particular antennae and radio beacons’;
– Class 38: ‘Telecommunications’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 73/2002 of 16 September 2002.
5 On 16 December 2002, the applicant, Galileo International Technology LLC, filed a notice of opposition to registration of the trade mark applied for in respect of the goods and services 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 two earlier Community word marks GALILEO:
– the first filed on 1 April 1996 under No 170 167 and not yet registered at the date the applicant filed the notice of opposition, because of an appeal pending against the opposition decision relating to the application for that mark, which covers, inter alia, goods in Class 9 of the Nice Agreement, including goods corresponding to the following definition: ‘Electrical and electronic communication apparatus’;
– the second registered on 1 October 2003 under No 2 157 501 for goods and services in, inter alia, Classes 9 and 38 of the Nice Agreement.
7 The opposition was also based on the earlier Community figurative mark registered on 20 January 2000 under No 516 799 covering goods and services in, inter alia, Classes 9 and 38 of the Nice Agreement, reproduced below:
8 The opposition was also based on two earlier Community figurative marks, reproduced below:
– the first registered on 4 March 1999 under No 330 084 covering, inter alia, goods in Class 9 of the Nice Agreement, including goods corresponding to the following definition: ‘Electrical and electronic communication apparatus’;
– the second registered on 9 March 2004 under No 2 159 069 covering goods and services in, inter alia, Classes 9 and 38 of the Nice Agreement.
9 Lastly, the opposition was based on earlier signs protected in various Member States, namely a non-registered trade mark, a trade name and a sign, all used in the course of trade for the specified goods and services.
10 The grounds put forward in support of the opposition were those referred to in Article 8(1)(b) and Article 8(4) and (5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(4) and (5) of Regulation No 207/2009).
11 On 26 January 2006, the Opposition Division upheld the opposition, solely on the basis of Article 8(1)(b) of Regulation No 40/94, and rejected the application for registration of a Community trade mark for the goods and services referred to in paragraph 3, finding, in essence, that there was a likelihood of confusion between the mark applied for and (i) the earlier Community word mark registered under No 2 157 501 and (ii) the Community figurative mark registered under No 330 084.
12 On 24 March 2006, Galileo Sistemas y Servicios, SL lodged an appeal at OHIM pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
13 By decision of 28 August 2008 (‘the contested decision’) the Fourth Board of Appeal of OHIM upheld that appeal and annulled the Opposition Division’s decision.
14 The Board of Appeal considered, concerning the comparison of the goods and services, that the services in Class 38 covered by the mark applied for were identical, or at least similar, to those covered by the Community word mark and the two earlier Community figurative marks registered under Nos 2 157 501, 516 799 and 2 159 069 respectively. The Board added that the ‘apparatus and instruments for signalling, in particular antennae and radio beacons’ in Class 9 covered by the mark applied for were similar to the ‘electrical and electronic communication apparatus’ covered by the Community word mark filed under No 170 167 and the earlier Community figurative mark registered under No 330 084, although that was not the case for the ‘nautical, surveying and life-saving apparatus and instruments’ also in Class 9 covered by the mark applied for. Those goods were, according to the Board, different from the goods and/or services covered by the earlier marks.
15 Concerning the comparison of the signs, the Board of Appeal found that the earlier Community word mark filed under No 170 167 and the mark applied for were not similar, in so far as the ‘galileo’ component was not dominant within the overall impression of the sign of the mark applied for. It added that the earlier Community figurative marks and the mark applied for were not similar.
16 Therefore, the Board of Appeal concluded that there was no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 40/94 and stated in particular in that regard that that conclusion would not be different even if the services in question were considered identical. Moreover, it considered that, in the present case, the ground for opposition referred to in Article 8(4) had to be rejected and that referred to in Article 8(5) of Regulation No 40/94 did not apply.
Forms of order sought
17 The applicant claims that the Court should:
– annul the contested decision;
– order Galileo Sistemas y Servicios, SL and OHIM to pay the costs.
18 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
19 In support of its action, the applicant relies on two pleas, alleging infringement of Article 8(1)(b) of Regulation No 40/94 and a procedural error regarding Article 8(4) and (5) of Regulation No 40/94.
Plea alleging infringement of Article 8(1)(b) of Regulation No 40/94
20 The applicant submits that there is a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94, between the earlier marks and the mark applied for. It claims that the ‘nautical, surveying and life-saving apparatus and instruments’ covered by the mark applied for are, contrary to what was held by the Board of Appeal, identical, or at least similar, to the ‘electrical and electronic communication apparatus’ covered by the Community word mark filed under No 170 167 and the Community figurative mark registered under No 330 084. Moreover, it submits that the signs compared are similar, contrary to what the Board of Appeal concluded.
21 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 may 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.
22 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 line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and taking into account all factors relevant to the 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 case-law cited).
23 Concerning the relevant public, it is settled case-law that, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. 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 (see Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and case-law cited).
24 In the present case, the earlier marks which the Board of Appeal compared with the mark applied for are Community trade marks. The relevant territory for analysing the likelihood of confusion is thus the territory of the European Union, as the Board of Appeal correctly found.
25 Moreover, the Board of Appeal concluded that the relevant public consisted of the average consumer, who was reasonably well informed and reasonably observant and circumspect. That conclusion has not been disputed before the Court, but the parties agreed, at the hearing, that, for the nautical, surveying and life-saving goods and instruments in Class 9, the average consumer will have a slightly higher attention level than normal, owing to the specific nature of those goods.
26 Concerning the comparison of the signs, the global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, inter alia, 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 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 case-law cited).
27 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 above in paragraph 26, paragraph 41 and 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 component (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 may be the case, in particular, where that component is likely by itself to dominate the image of that mark which the relevant public retains, with the result that all the other components of the mark are negligible in the overall impression created by the mark (Nestlé v OHIM, paragraph 43).
28 First, the Board of Appeal compared the mark applied for with the earlier Community word mark filed under No 170 167, namely the word sign GALILEO, in paragraph 28 of the contested decision. It should be observed that the latter mark is identical to the earlier Community word mark registered under No 2 157 501 and that the reasoning set out by the Board of Appeal as regards the first of those two marks applies in every respect to the second.
29 Second, the Board of Appeal compared the mark applied for with the earlier Community figurative mark ‘powered by Galileo’, in paragraphs 29 to 33 of the contested decision, and with the two earlier Community figurative marks GALILEO INTERNATIONAL, in paragraphs 34 to 38 of the contested decision.
30 Concerning the comparison of the mark applied for with the earlier Community word marks GALILEO, the first filed under No 170 167 and the second registered under No 2 157 501, the applicant submits that the Board of Appeal failed to carry out a global assessment of the signs in question, having failed to consider the phonetic and conceptual similarities of those signs and having solely carried out a visual analysis thereof. According to the applicant, had the Board of Appeal carried out a global assessment, it would have had to conclude that the signs in question were phonetically identical, to find, concerning the conceptual analysis, that the average consumer understands the term ‘gss’ as meaning ‘galileo sistemas y servicios’, and to consider that the term ‘galileo’, common to the signs in question, is dominant.
31 In that regard, it should be observed that, in paragraph 28 of the contested decision, the Board of Appeal found that the word ‘galileo’, which constitutes both the earlier Community word mark filed under No 170 167 and one of the components of the composite mark applied for, was phonetically and visually identical in those marks. However, it considered that the earlier Community word mark and the mark applied for could not be regarded as being similar, since the word ‘galileo’ was not dominant in the overall impression of the mark applied for.
32 It is true that that analysis by the Board of Appeal in paragraph 28 of the contested decision, besides being cursory from a phonetic point of view, is, as the applicant submits, incomplete, since it does not include any elements for comparison from a conceptual point of view.
33 In paragraph 28 of the contested decision, it is apparent that the Board of Appeal did not carry out a global assessment of the similarity between the mark applied for and the earlier Community word mark filed under No 170 167 (see, to that effect, OHIM v Shaker, cited above in paragraph 26, paragraph 40).
34 However, it should be observed that, when assessing the similarity between the mark applied for and the earlier Community figurative marks in so far as they also contain the word ‘galileo’, the Board of Appeal, in paragraphs 31, 32, 36 and 37 of the contested decision, carried out a detailed phonetic and conceptual comparison of the word ‘galileo’ with the components of the mark applied for. In doing this, it carried out, admittedly only at that stage but in the contested decision nonetheless, a comparison of the mark applied for with the earlier Community word mark filed under No 170 167 and composed of the single word ‘galileo’.
35 It is not apparent from the elements of that comparison that the Board of Appeal committed any error of assessment in concluding that the mark applied for and the earlier Community word mark filed under No 170 167 are not similar.
36 Indeed, as the Board of Appeal found in paragraphs 31 and 36 of the contested decision, from a phonetic point of view the letters ‘g’, ‘s’ and ‘s’ of the mark applied for are the main elements which will be taken into account by the relevant public, and it is only on the rare occasions when the expression ‘galileo sistemas y servicios’ is voiced in full that that public will discern the word ‘galileo’, which also appears in the earlier Community word marks. Moreover, although that word constitutes those marks in itself, it has only a secondary nature in the mark applied for and is very different from the other word elements which make up that mark, account being taken of their length and sounds.
37 In the same way, from a conceptual point of view, as is also apparent from paragraphs 32 and 37 of the contested decision, the word ‘galileo’ will be perceived solely as one of the elements of the expression ‘galileo sistemas y servicios’ forming the mark applied for, that expression constituting the meaning of the dominant element ‘gss’ by referring to systems and services from an entity whose name incorporates the name of the 16th century Italian astronomer and mathematician. It is only in instances where the meaning of the abbreviation ‘gss’ is expressed that the relevant public will perceive the link with that astronomer.
38 Moreover, as the Board of Appeal also observed in paragraphs 27, 31 and 35 of the contested decision, the mark applied for, which is a composite mark, is made up not only of the word ‘galileo’, but also of a stylised sign which could resemble a hash sign, the letters ‘g’, ‘s’ and ‘s’ and the expression ‘sistemas y servicios’, which the earlier Community word marks do not have. Those marks consist of only the word ‘galileo’. Furthermore, the letters ‘g’, ‘s’ and ‘s’, in view of their typeface and the fact that they are written in capital letters, occupy an important place in the mark applied for. The fact that the word ‘galileo’ appears in each of the signs in question is not therefore sufficient for them to be considered visually similar.
39 The applicant’s heads of complaint as regards the comparison of the mark applied for with the earlier Community word mark filed under No 170 167, and likewise with the Community word mark registered under No 2 157 501, must therefore be rejected.
40 Concerning the comparison of the mark applied for with the earlier Community figurative marks, the applicant submits that the Board of Appeal, although it compared the signs from a visual, phonetic and conceptual point of view, wrongly concluded that those signs were phonetically and conceptually distinct from each other. Concerning the comparison both with the Community figurative mark ‘powered by Galileo’ and with the Community figurative mark GALILEO INTERNATIONAL, the Board of Appeal should not have restricted its analysis of the mark applied for to the abbreviation ‘gss’. Moreover, it should not have considered that, phonetically, the expression ‘galileo sistemas y servicios’ would not be pronounced, nor taken mainly into account, from a conceptual point of view, that the letters ‘g’, ‘s’ and ‘s’ were meaningless without the expression ‘galileo sistemas y servicios’.
41 It should, however, be held that, concerning the comparison of the mark applied for with the earlier Community figurative mark ‘powered by Galileo’, it does appear that, phonetically, the relevant public will pronounce the dominant verbal element of each of the marks in question, namely the letters ‘g’, ‘s’ and ‘s’ for the mark applied for and the expression ‘powered by galileo’ for the earlier mark. Apart from the letter ‘g’, there is no commonality between the elements ‘gss’ and ‘powered by galileo’. The expression ‘galileo sistemas y servicios’ includes, it is true, the dominant element of the earlier Community figurative mark, namely the element ‘galileo’, but those words only contribute in a limited way to the overall impression given by the mark applied for, since they will not be pronounced or are at most shown in order to clarify the meaning of the letters ‘g’, ‘s’ and ‘s’.
42 Conceptually, the dominant elements of the mark applied for and the earlier figurative mark ‘powered by galileo’ do not convey the same meaning, the abbreviation ‘gss’ which appears in the mark applied for having no meaning whatsoever, whereas the expression ‘powered by galileo’ which appears in the Community figurative mark refers to the idea of being propelled or driven by Galileo, the Italian astronomer. It is only in instances where the meaning of the abbreviation ‘gss’ is expressed that the relevant public will perceive the reference to that astronomer. However, that perception will be lessened by the very different meaning of the expression ‘sistemas y servicios’ which is associated with it.
43 Visually, the mark applied for and the earlier figurative mark ‘powered by Galileo’ include words written very differently, whose letters are neither depicted in the same way nor in the same colour. Nor are the figurative elements included in the signs in question similar, the one consisting of a small globe, the other of a large stylised sign which may resemble a hash sign.
44 Concerning the comparison of the mark applied for with the earlier Community figurative marks GALILEO INTERNATIONAL, it is correct that, phonetically, the dominant elements of those signs only have the letter ‘g’ in common, that otherwise they are very different in terms of sound and length, and that the word ‘galileo’, which appears in each of those signs, will be noticed only on the rare occasions when the meaning of the abbreviation ‘gss’ is expressed in full.
45 Conceptually, the word ‘galileo’ will only be perceived as an element of the expression ‘galileo sistemas y servicios’ which constitutes the meaning of the dominant element ‘gss’ and refers to systems and services from an entity whose name incorporates the name of the 16th century Italian astronomer and mathematician. On the other hand, the public will understand the words ‘galileo international’ as referring to an entity whose name incorporates the name of the Italian astronomer and which is concerned with a business covering several countries.
46 Visually, the two signs in question also include the very distinct dominant elements ‘gss’ and ‘galileo international’, which have only the letter ‘g’ in common and which are written differently, the letters being depicted in a way which is unique to each sign. Nor are the figurative elements included in the signs in question similar, the one consisting of a globe and the other of a stylised sign which may resemble a hash sign.
47 Although it is true, as the applicant submits, that a consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the mark (see, to that effect, Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 47; Case T‑312/03 Wassen International v OHIM – Stroschein Gesundkost (SELENIUM-ACE) [2005] ECR II‑2897, paragraph 37; and Case T‑363/06 Honda Motor Europe v OHIM – Seat (MAGIC SEAT) [2008] ECR II‑2217, paragraph 30), it must be recognised that, in the present case, in view of its dominant position and its length, the public will recall the mark applied for by using the element ‘gss’ rather than the words ‘gss galileo sistemas y servicios’.
48 It is not therefore apparent that the Board of Appeal committed, in paragraphs 29 to 38 of the contested decision, any error of assessment in its comparison of the mark applied for with the earlier Community figurative marks, namely the mark ‘powered by Galileo’ and the marks GALILEO INTERNATIONAL.
49 Both from the point of view of the average consumer who is reasonably well informed and reasonably observant and circumspect and from that of the average consumer having a slightly higher attention level, the difference between the mark applied for and the earlier marks is sufficient for a finding, following a global assessment, that the signs constituting the marks at issue, each considered as a whole and taking into account in particular their distinctive and dominant elements, are not similar (see, to that effect, Case T‑211/03 Faber Chimica v OHIM ‑ Nabersa (Faber) [2005] ECR II‑1297, paragraph 50).
50 It follows from the foregoing that one of the essential conditions for applying Article 8(1)(b) of Regulation No 40/94 has not been satisfied (see, to that effect, Faber, cited above in paragraph 49, paragraph 51). It should be borne in mind that, 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 case-law cited).
51 Therefore, the plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 must be rejected, without there being any need to compare the goods referred to in paragraph 20.
Plea alleging a procedural error regarding Article 8(4) and (5) of Regulation No 40/94
52 According to the applicant, the Board of Appeal made a procedural error in failing to remit the case to the Opposition Division to examine the application of Article 8(4) and (5) of Regulation No 40/94. In the contested decision, the Opposition Division had not reached any finding on the application of those provisions, since it had previously allowed the opposition on the basis of Article 8(1)(b) of Regulation No 40/94. To say that there is a continuity of functions between the Opposition Division and the Board of Appeal, in reliance on Article 62(1) of Regulation No 40/94 (now Article 64(1) of Regulation No 207/2009), is not a satisfactory response to the plain infringement of an essential procedural requirement under Article 63(2) of Regulation No 40/94 (now Article 65(2) of Regulation No 207/2009).
53 At the hearing, the applicant added that not only had there been that procedural error but the contested decision should also be annulled because the Board of Appeal should also have relied on national rules and case-law in order to examine the opposition based on the earlier national marks. That argument, it claims, constitutes the second part of its annulment plea, alleging a procedural error, set out in the application.
54 It should be borne in mind that, under the first subparagraph of Article 48(2) of the Rules of Procedure of the General Court, no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which have come to light in the course of the procedure.
55 On the other hand, according to settled case-law, a plea which amplifies a plea put forward previously, whether directly or by implication, in the application initiating the proceedings, and which is closely connected therewith, must be declared admissible (see, by analogy, judgment of 28 April 2010 in Joined Cases T‑456/05 and T‑457/05 Gütermann and Zwicky v Commission, not published in the ECR, paragraph 199 and case-law cited).
56 In the present case, the argument expounded by the applicant at the hearing is separate from the argument put forward in support of the plea as set out in the application. According to the applicant’s summary in paragraph 41 of the application, its argument was concerned only with the procedural error alleging that the applicant had been denied the first tier of review by the Opposition Division.
57 Thus, it is not apparent that the argument expounded by the applicant at the hearing amplifies a plea put forward previously in the application, whether directly or by implication, and is closely connected therewith. Consequently, it must be dismissed as inadmissible.
58 Concerning the plea as put forward in the application, the applicant submits that the Board of Appeal should have remitted the case to the Opposition Division, which had never reached any finding on the application of Article 8(4) and (5) of Regulation No 40/94, as it had previously allowed the opposition on the basis of Article 8(1)(b) of Regulation No 40/94. To say that there is a continuity of functions between the Opposition Division and the Board of Appeal, in reliance on Article 62(1) of Regulation No 40/94, is not a satisfactory response to the plain infringement of an essential procedural requirement under Article 63(2) of Regulation No 40/94.
59 Under Article 62(1) of Regulation No 40/94, following the examination as to the allowability of the appeal, the Board of Appeal is to decide on the appeal. The Board of Appeal may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution. It follows from that provision that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (see Case T‑215/03 SIGLA v OHIM – Elleni Holding (VIPS) [2007] ECR II‑711, paragraph 96).
60 Where the Board of Appeal considers that one of the relative grounds for refusal put forward by the opposing party in his opposition and upheld by the Opposition Division in its decision is not well founded, the new, full examination of the merits of the opposition referred to in the previous paragraph necessarily entails an examination by the Board of Appeal, before annulling the Opposition Division’s decision, of whether it may be possible to uphold the opposition on the basis of another relative ground for refusal which was put forward by the opposing party before the Opposition Division but was not examined by it (see, to that effect, VIPS, cited above in paragraph 59, paragraph 97).
61 Therefore, in deciding, in paragraphs 40 to 43 of the contested decision, on the complaints raised as regards Article 8(4) and (5) of Regulation No 40/94, instead of remitting the case to the Opposition Division, the Board of Appeal did not err in law.
62 The plea alleging a procedural error must therefore be considered unfounded.
63 It follows from all the foregoing that the action must be dismissed.
Costs
64 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Galileo International Technology, LLC to pay the costs.
Truchot | Martins Ribeiro | Kanninen |
Delivered in open court in Luxembourg on 6 October 2011.
[Signatures]