JUDGMENT OF THE COURT OF FIRST INSTANCE (Seventh Chamber)
23 September 2009 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark FILDOR – Earlier national semi-figurative mark PHILDAR – Earlier national word mark FILDOR – Earlier international word and semi-figurative marks PHILDAR – Relative ground for refusal – Likelihood of confusion – Articles 8(1)(b), 62 and 73 of Regulation (EC) No 40/94 (now Articles 8(1)(b), 64 and 75 of Regulation (EC) No 207/2009))
In Case T‑99/06,
Phildar SA, established in Roubaix (France), represented by E. Baud, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Comercial Jacinto Parera, SA, established in Barcelona (Spain),
ACTION against the decision of the Second Board of Appeal of OHIM of 16 January 2006 (Case R 245/2004‑2), relating to opposition proceedings between Phildar SA and Comercial Jacinto Parera, SA,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Seventh Chamber),
composed of N.J. Forwood, President, D. Šváby (Rapporteur) and E. Moavero Milanesi, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 30 March 2006,
having regard to the response lodged at the Registry of the Court on 13 June 2006,
further to the hearing on 15 January 2009,
gives the following
Judgment
Background to the dispute
1 On 26 May 1998 Comercial Jacinto Parera, SA, filed an application for the Community word trade mark FILDOR with 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 goods in respect of which registration was sought fall within Classes 22 to 26 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:
– ‘Ropes, strings, nets, tents, awnings, tarpaulins, sails, sacks and bags; padding and stuffing materials (horsehair, kapok, feathers, seaweed); natural or synthetic fibrous textile materials’ (Class 22);
– ‘Yarns and threads of all kinds presented in skeins, reels, balls and other forms’ (Class 23);
– ‘Textiles and knitted fabrics, bed covers and table cloths, soft furnishings’ (Class 24);
– ‘Clothing and footwear’ (Class 25);
– ‘Lace and embroidery, ribbons and braid, buttons and snap fasteners, hooks and eyes, pins and needles, artificial flowers’ (Class 26).
3 The Community trade mark application was published in the Community Trade Marks Bulletin of 19 March 1999.
4 On 15 June 1999, the applicant, Phildar SA, formerly Les Fils de Louis Mulliez SA, filed a notice of opposition to that application for registration under Article 42(1) of Regulation No 40/94 (now Article 41(1) of Regulation No 207/2009), on the basis of Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009) (opposition proceedings B 165 235). The opposition was based on the following earlier rights of the applicant:
– French word trade mark No 744 927 FILDOR registered on 22 April 1968;
– International semi-figurative trade mark No 217 674, reproduced below, registered on 25 February 1979 with effect in Germany, Italy, Austria, Portugal and the Benelux countries:
– International word trade mark No 311 325 PHILDAR registered on 1 April 1986 with effect in Germany, Spain, Italy, Austria, Portugal and the Benelux countries;
– French colour semi-figurative trade mark No 97 660 080, reproduced below, registered on 22 January 1997:
5 The earlier marks were registered for the goods in, respectively, Classes:
– 22 to 26 corresponding to the following description:
– ‘Ropes, strings, nets, tents, awnings, tarpaulins, sails, sacks and bags; padding and stuffing materials (horsehair, kapok, feathers, seaweed)’ (Class 22);
– ‘Knitting yarns and threads of all kinds and all kinds of yarns made with natural, artificial or synthetic fibres, cotton, wool, angora’ (Class 23);
– ‘Textiles, knitted fabrics, bed covers and table cloths, soft furnishings’ (Class 24);
– ‘Clothing in general, stockings, tights, socks, clothing woven with stitches and knitted, underclothing, corsets, ties, braces, gloves, boots, shoes and slippers’ (Class 25);
– ‘Lace and embroidery, ribbons and braid; buttons and snap fasteners, hooks and eyes, pins and needles; artificial flowers’ (Class 26).
– 22 to 26 and corresponding inter alia to the following description: ‘Ropes, strings, nets, tents, awnings, tarpaulins, sails, sacks and bags; padding and stuffing materials (horsehair, kapok, feathers, seaweed); raw fibrous textile materials. Knitting wool pure or mixed; yarn for haberdashery. Fabrics, bed covers and table cloths, handkerchiefs, household lingerie, tapestry; stockings, socks, underclothing, lingerie for women in nylon and rayon; ready-made clothing, underclothing and tracksuits; boots, shoes and slippers; lace and embroidery, ribbons and braid; buttons and snap fasteners, hooks and eyes, pins and needles; artificial flowers.’
– 23 to 26 and corresponding inter alia to the following description: ‘Woollen or animal hair thread and yarn, silk thread and yarn, hemp, linen, jute, rayon, fibres thread and yarn, cotton thread and yarn, haberdashery. Woollen or animal hair fabric, silk fabric, hemp, linen, jute, rayon, fibres fabric, cotton fabric, household linen. Confectioned clothing of all kinds, underclothing, hosiery, gloves, corsets. Embroidery, lace trimmings, braids, buttons, lace trimming ribbons, haberdashery, needles and pins.’
– 22 to 26 and corresponding inter alia to the following description:
– ‘Ropes, strings, nets, tents, awnings, packing sacks and bags (envelopes and pouches) of textile packaging, sacks and bags for the transport and storage of materials in bulk, padding and stuffing materials (except of rubber or plastic), raw fibrous textile materials, textile fibres’ (Class 22);
– ‘Yarns and threads for textile use, knitting wool (pure or mixed), linen thread and yarn or all kinds of yarns made with natural, artificial or synthetic fibres, cotton (yarns of all kinds), wool, angora’ (Class 23);
– ‘Fabrics, bed and table covers, textile goods not included in other classes: sheets, pillowcases, bed covers, table cloths, serviettes, handkerchiefs, household linen, dishcloths, not woven fabrics, felt, woven fabrics, knitted fabrics, fabrics for manufacture, upholstery fabrics, tapestry, curtains’ (Class 24);
– ‘Ready-made clothing, knitwear and hosiery, underclothing, underwear, pyjamas, dressing gowns, skirts, frocks, trousers, jackets, coats, shirts of all kinds, neckties, scarves, gloves, belts, hats, waterproofed clothing, clothing for sports, footwear, socks, stockings, tights, boots, shoes and slippers; clothing of all kinds for men, women and kids’ (Class 25);
– ‘Lace and embroidery, ribbons and braid, hooks and eyes, pins and needles, artificial flowers’ (Class 26).
6 The applicant was invited to prove the use of its earlier rights. It supplied relevant documents, including product catalogues and samples.
7 By decision of 21 February 2001, the Opposition Division found, first, that there was no evidence of use of the applicant’s two international registrations. As regards the earlier French word trade mark FILDOR, the Opposition Division found that its use was limited to the following goods: ‘clothing, in particular, clothing made of tricot, of natural (wool, cotton) or synthetic fibres; buttons; knitting yarns and threads of all kinds and all kinds of yarns made with natural artificial or synthetic fibres, cotton, wool, angora’. Since it considered that the trade mark applied for and the earlier French trade mark FILDOR are identical, it allowed the opposition and refused the Community trade mark application in respect of the following goods: ‘yarns and threads of all kinds presented in skeins, reels, balls and other forms (Class 23); knitted fabrics (Class 24); clothing, footwear (Class 25); buttons and snap fasteners, hooks and eyes (Class 26)’. Secondly, with regard to the other goods covered by the trade mark application, the Opposition Division rejected the opposition and allowed the application because those goods were not similar to those protected by the earlier French word trade mark FILDOR. Lastly, the Opposition Division deemed it ‘useless’ to examine the opposition based on the French registration of the semi-figurative sign PHILDAR, taking the view that the goods for which use of that trade mark had been proved were identical to those of the earlier French registration FILDOR.
8 Both parties appealed against that decision of the Opposition Division. It is apparent from the applicant’s appeal that it did not dispute the Opposition Division’s finding concerning the non-use of its international trade marks.
9 By decision of 9 October 2002 the Fourth Board of Appeal of OHIM annulled the decision of the Opposition Division on the grounds, first, that sufficient use of the earlier French trade mark FILDOR had not been proved and, secondly, that the Opposition Division had been wrong not to take account of the registration of the French semi-figurative mark PHILDAR for all the goods which it protected. According to the Board of Appeal the latter trade mark was not subject to the use requirement at the time of publication of the application for registration of the Community trade mark FILDOR. It therefore remitted the case to the Opposition Division for a comparison between the application for the Community trade mark FILDOR and the earlier French semi-figurative trade mark PHILDAR. It is common ground that the applicant has not challenged that decision of the Board of Appeal before the Court of First Instance.
10 By decision of 20 February 2004, the Opposition Division, first, repeated the findings made in its previous decision in respect of the use of the applicant’s earlier trade marks. Secondly, it declared that, ‘for reasons of procedural economy’, it would take into consideration only the earlier French semi-figurative trade mark PHILDAR, because it was not subject to the use requirement. Lastly, as the Opposition Division considered there to be a likelihood of confusion between the trade marks at issue because all the goods they designated were identical and because, although the trade marks were visually different, they were phonetically very similar and conceptually similar, it rejected the application for registration of the Community trade mark.
11 On 2 April 2004, Comercial Jacinto Parera filed a notice of appeal against that decision of the Opposition Division.
12 By decision of 16 January 2006 (‘the contested decision’), the Second Board of Appeal of OHIM annulled that decision of the Opposition Division and rejected the opposition in its entirety. The Board of Appeal, in essence, found, with regard to the goods at issue, that some of the goods designated in the trade mark application were identical to, and others were similar to, those protected by the earlier semi-figurative trade mark PHILDAR. As regards the comparison of the signs, the Board of Appeal found that the trade marks in question were visually different but that there was some phonetic similarity. In its view a conceptual comparison could not be taken into account in the present case. The Board of Appeal then found that the goods in Classes 22 to 26 against which the opposition was directed were generally sold in such a way as to permit a visual comparison of the trade marks at issue and as a consequence it held that the visual aspect of the marks predominated over any phonetic similarity for the purpose of assessing likelihood of confusion. The Board of Appeal therefore concluded that there was no likelihood of confusion on the part of the relevant public between the trade marks in question.
Forms of order sought
13 The applicant claims that the Court should:
– annul the contested decision;
– in the alternative, remit the case to OHIM for consideration of the opposition ‘notably on the basis of the earlier French word trade mark FILDOR’;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– declare inadmissible the head of claim concerning remitting the case to OHIM;
– dismiss the remainder of the application;
– order the applicant to pay the costs.
Law
Admissibility of the second head of claim
15 OHIM requests that the applicant’s second head of claim should be declared inadmissible in so far as it requests the Court to issue directions to remit the case to OHIM’s adjudicating bodies for a decision on the opposition.
16 In that regard, it must be borne in mind that, under Article 63(6) of Regulation No 40/94 (now Article 65(6) of Regulation No 207/2009), OHIM is required to take the necessary measures to comply with the judgment of the Community judicature. Therefore, the Court of First Instance is not entitled to issue directions to OHIM. It is for OHIM to draw the consequences of the operative part of the judgment which the Court of First Instance will give and of the grounds on which it is based (see judgment of 19 November 2008 in Case T‑269/06 Rautaruukki v OHIM (RAUTARUUKKI), not published in the ECR, paragraph 13 and the case-law cited).
17 The applicant’s second head of claim must therefore be rejected as inadmissible.
Admissibility of the new evidence annexed to the application
Arguments of the parties
18 OHIM contends that Annexes 20 to 22 to the application are inadmissible. It maintains that they were not submitted to the Board of Appeal and must therefore be discounted pursuant to Article 135(4) of the Rules of Procedure of the Court of First Instance.
19 The applicant has not submitted any pleas in that connection.
Findings of the Court
20 First of all, it should be pointed out that, in Annexes 20 to 22 of its application, the applicant has included a number of documents intended to prove, first, that goods bearing the trade mark PHILDAR are sold through a network of exclusive shops selling only PHILDAR branded products or, as regards a minor part of its business in those goods, through multibrand shops exclusively in ‘corners’ on which the PHILDAR sign is also affixed and, secondly, that the earlier French semi-figurative trade mark PHILDAR was widely known. In those annexes, the applicant included a study of the PHILDAR brand image, an extract from a standard ‘PHILDAR’ franchise agreement and an extract from a pre-contractual information document sent to the applicant’s franchisees. It is common ground that those documents were not submitted in the proceedings before OHIM.
21 In that regard, it should be recalled that the purpose of the action brought before the Court is to review the legality of the decisions of the Boards of Appeal of OHIM in accordance with Article 63 of Regulation No 40/94. It is therefore not the Court’s function to re-evaluate the factual circumstances in the light of evidence adduced for the first time before it. To admit such evidence is contrary to Article 135(4) of the Rules of Procedure of the Court of First Instance, which prohibits the parties from changing the subject-matter of the proceedings before the Board of Appeal (see RAUTARUUKKI, paragraph 16 above, paragraph 20 and the case-law cited).
22 It must therefore be held that the applicant cannot, in order to establish that the goods protected by its earlier French semi-figurative trade mark PHILDAR are distributed by an exclusive network or that that trade mark is well known, rely on evidence which it has adduced, for the first time, in Annexes 20 to 22 to its application. Facts which are relied on before the Court without previously having been submitted in the proceedings before OHIM can affect the lawfulness of a decision of the Board of Appeal only if OHIM ought to have taken account of them of its own motion. As follows from the final clause in Article 74(1) of Regulation No 40/94 (now the final clause of Article 76(1) of Regulation No 207/2009), which states that, in proceedings relating to relative grounds for refusal of registration, OHIM’s examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought, OHIM is not required to take account, of its own motion, of facts which were not submitted by the parties. Accordingly, such facts cannot call into question the lawfulness of a decision of a Board of Appeal (Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraph 25; see also, to that effect, RAUTARUUKKI, paragraph 16 above, paragraphs 21 and 22).
23 Annexes 20 to 22 of the application must therefore be declared inadmissible and it is not necessary to assess their probative value.
Substance
24 In support of its action, the applicant advances pleas in law alleging (i) infringement of Article 8(l)(b) of Regulation No 40/94, (ii) infringement of Article 73 of that regulation (now Article 75 of Regulation No 207/2009), in that the Board of Appeal did not give it the opportunity to comment on the mode of purchase of the goods in question and (iii) infringement of Article 62(1) of that regulation (now Article 64(1) of Regulation No 207/2009), in that the Board of Appeal rejected the opposition solely on the basis of the earlier French semi-figurative trade mark PHILDAR and failed to examine, in particular, the earlier French word trade mark FILDOR. In the alternative, the applicant requests that the Court of First Instance, for that reason, remit the case to the Board of Appeal.
The first plea: infringement of Article 8(1)(b) of Regulation No 40/94
– Arguments of the parties
25 The applicant claims, in essence, that the FILDOR trade mark applied for and the earlier French semi-figurative trade mark PHILDAR are visually and phonetically very similar. In that regard, it maintains that the Board of Appeal did not take into account that the word element ‘phildar’ is the dominant element of the latter trade mark. The applicant submits that the figurative element of that trade mark is negligible because it is descriptive, or at least not very distinctive, in relation to the goods at issue. Furthermore, the Board of Appeal failed to take into consideration the inherent distinctiveness of that French semi-figurative trade mark. The applicant disputes the Board of Appeal’s finding that there is no likelihood of confusion between the trade marks at issue.
26 The applicant claims, in the alternative, that, even if the Court of First Instance were to find that the trade marks at issue were not visually similar, it should take into account the fact that the phonetic similarities between them outweigh the visual dissimilarities. The applicant maintains that the Board of Appeal erred in its analysis of the modes of purchase of the goods at issue. It also submits that the contested decision is contrary to opposition proceedings No B 99 681.
27 OHIM contends that the trade marks at issue are visually dissimilar, that, although they have some similarities on the phonetic level, their aural differences are clearly perceptible and that there are no elements to find or exclude conceptual similarity. OHIM maintains that the Board of Appeal rightly took account of the ‘objective’ marketing factors and concluded that more weight would be given to the visual perception of the trade marks. OHIM submits that the Board of Appeal implicitly took into account the normal degree of distinctiveness of the earlier mark.
28 OHIM maintains that the Board of Appeal was right to conclude that there was no likelihood of confusion. Furthermore, the alleged contradiction with the decision given in opposition proceedings No B 99 681 is irrelevant.
– Findings of the Court
29 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 must not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
30 The existence of a likelihood of confusion on the part of the public must therefore be assessed globally, taking into account all factors relevant to the circumstances of the case (see judgment of 15 March 2007 in Case C‑171/06 P T.I.M.E. ART v OHIM, not published in the ECR, paragraph 33 and the case-law cited).
31 That global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind in particular their distinctive and dominant components (see T.I.M.E. ART v OHIM, paragraph 30 above, paragraph 34 and the case-law cited).
32 It also implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services covered. 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. Accordingly, it is necessary to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the assessment of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services identified (see T.I.M.E. ART v OHIM, paragraph 30 above, paragraph 35 and the case-law cited).
33 In the present case, it must be pointed out, first, that the applicant does not dispute the Board of Appeal’s finding, in paragraph 16 of the contested decision, that some of the goods covered by the application for the trade mark FILDOR are identical to those protected by the earlier semi-figurative mark PHILDAR and others are similar. Nor does the applicant dispute that, having regard to the goods at issue, the relevant public is constituted of average consumers with a normal degree of attention. In addition, it does not challenge the finding, in paragraph 17 of the contested decision, that the relevant territory for the purpose of comparing the signs at issue is France, as the earlier semi-figurative mark PHILDAR is a French trade mark.
34 Secondly, as regards the comparison of the trade marks at issue, it is apparent from the contested decision that the Board of Appeal considers them to be dissimilar from a visual standpoint but considers there to be some similarity from an aural perspective. In particular, the visual dissimilarity stems, according to the Board of Appeal, from the fact that there is a graphic element in the earlier mark PHILDAR, the number of letters is different and three of the letters themselves are different (‘p’, ‘h’ and ‘a’). The Board of Appeal stated that a conceptual comparison cannot be taken into account in the present case (paragraphs 19 to 23 of the contested decision). Furthermore, the Board of Appeal rejected the reference to opposition proceedings No B 99 681 as not pertinent (paragraph 24 of the contested decision).
35 As regards the applicant’s argument alleging that the Board of Appeal did not mention the dominant element in the earlier semi-figurative French trade mark PHILDAR, it must be borne in mind that, according to settled case-law, 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. It is only if all the other components of a composite mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraphs 41 and 42).
36 Furthermore, with regard to the assessment of the dominant character of one or more given components of a complex 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 complex mark (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 35).
37 First, it must be stated that, in the present case, as is apparent from the OHIM file, according to the information in respect of the earlier French semi-figurative trade mark PHILDAR published in the French Official Bulletin of Intellectual Property, the ‘word PHILDAR is written in white and the figurative element (a stylised wool ball) is depicted in green against a navy-blue background’.
38 Secondly, it must be pointed out that the Board of Appeal did not rule on the dominant element of the earlier semi-figurative trade mark PHILDAR. It is nevertheless apparent from its assessment, in paragraph 19 of the contested decision, of the similarity of the signs that it did not regard either the figurative element or the word element of that earlier mark as negligible, since it referred to both those elements to state that that mark differs visually from the mark applied for. It may be inferred, applying the case-law cited in paragraph 35 above, that the Board of Appeal did not regard any one of the components of that earlier trade mark as being capable on its own of dominating the image the relevant public retains of that mark in such a way that all the other components of the mark are negligible in the overall impression it produces.
39 The applicant, however, submits that the graphic element of that earlier trade mark, namely the image of a stylised ball of wool, is negligible on account of the fact that it is descriptive, or at least not very distinctive, in relation to the goods at issue.
40 It must be borne in mind, in that regard, that according to the case-law the assessment of the distinctiveness of a sign must be carried out having regard to the goods which form the basis of the opposition (Case T‑186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 54).
41 The Court considers, first, that the graphic element of the earlier semi-figurative trade mark PHILDAR is not without some originality. Secondly, that element occupies the same space as the word element ‘phildar’, namely the centre of the earlier mark. Even if some consumers were to see a ‘ball of wool’ in that graphic element, that would not be sufficient to make that element descriptive of the goods designated by the earlier semi-figurative trade mark – first, since the categories of goods covered by that mark are worded in such a way that they also include goods which do not have a sufficiently close link with the image of the ‘ball of wool’ and, second, in view of the fact that the image of the ball stands out clearly from the whole on account of the contrast in colour as against the rest of the mark, with the result that it is, in all likelihood, memorised by consumers in the same way as the word ‘phildar’, particularly since it is a relatively simple stylised form.
42 In that regard, it must be added that, according to the case-law, the weak distinctive character of an element of a complex mark does not necessarily mean that that element cannot constitute a dominant element where, owing, in particular, to its position in the sign or its size, it may make an impression on consumers and be remembered by them (judgment of 16 May 2007 in Case T‑491/04 Merant v OHIM – Focus Magazin Verlag (FOCUS), not published in the ECR, paragraph 49). It follows, a fortiori, that the weak distinctive character of an element of a complex mark does not necessarily mean that that element must be regarded as negligible.
43 Accordingly, the Board of Appeal was right to take account, in its assessment of the similarity of the trade marks at issue, both of the word element and the graphic element of the earlier semi-figurative mark PHILDAR. In the present case, that graphic element obviously constitutes, as OHIM points out, an additional element of visual differentiation. It must be regarded as retaining an autonomous distinctive position without thereby constituting the dominant element of the earlier mark.
44 Having regard to the presence of that graphic element in the earlier mark and to the differences noted by the Board of Appeal between the word ‘fildor’ and ‘phildar’, the Board of Appeal was right to find that the trade marks at issue are visually different. None of the applicant’s arguments can call that finding into question.
45 The applicant’s argument as regards the alleged conflict between the contested decision and opposition proceedings No B 99 681 must be rejected as irrelevant.
46 In that regard, it must be pointed out that, according to the applicant, there is a contradiction between, on the one hand, the Board of Appeal’s taking into account the figurative element of the earlier mark PHILDAR and, on the other hand, the Opposition Division’s conclusion in opposition proceedings No B 99 681 and, more specifically, its finding that, in a Spanish trade mark consisting of the word FILDOR together with a ‘ball of thread’ design, that design was ‘mainly descriptive’ and did not have any special distinctive character.
47 It must be borne in mind that the legality of decisions of the Boards of Appeal is to be assessed purely by reference to Regulation No 40/94, as interpreted by the Community Courts, and not OHIM’s practice in earlier decisions (Case T‑129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II‑2251, paragraph 61).
48 In any event, the fact remains that the applicant has not proved the existence of situations comparable to that of the present case.
49 The marks at issue in opposition proceedings No B 99 681 can be distinguished from those at issue in the present case in so far as what was at issue in those opposition proceedings was not the semi-figurative trade mark PHILDAR but a word mark PHILDAR. Furthermore, the ‘ball of thread’ design to which the applicant refers and which is combined with the word ‘fildor’ in the Spanish trade mark forming the subject-matter of opposition proceedings No B 99 681, differs from the ‘ball of wool’ design of the semi-figurative mark PHILDAR in the present case.
50 Contrary to the applicant’s contention, it cannot therefore be held that the two decisions in question are contradictory.
51 Secondly, as regards the aural comparison between the marks at issue, the Board of Appeal found, in paragraph 21 of the contested decision, that the signs at issue are pronounced ‘fildar’ and ‘fildor’, differing only in the letter ‘a’ and ‘o’ in the second syllable. Nevertheless, according to the Board of Appeal, when the signs are pronounced as a whole by a native French speaker, those differences can be detected in the final syllable of the words. Therefore, taking account of the identical sound of the first syllable ‘fil’ of both signs and the identical sound of the first and last letters of the second syllable – ‘d’ and ‘r’ – of both marks, the Board of Appeal concluded that the signs are phonetically close to one another but that the perceptible phonetic difference between the vowels ‘a’ and ‘o’ will limit that aural similarity.
52 The Court holds that that assessment by the Board of Appeal is correct and is not invalidated by the applicant’s claim that the marks are very similar aurally in so far as both the vowels ‘a’ and ‘o’ are weak vowels, all the more so since they are enclosed between the same consonants, and that they will therefore pass unnoticed and not remove the strong phonetic similarity. First, it must be held that the Board of Appeal was right to take account of the way the signs are pronounced by the French-speaking public, which may conceivably perceive the differences in question. Secondly, contrary to what the applicant claims, the Board of Appeal did not find that the phonetic similarities were removed by the differences in pronunciation connected with the vowels ‘a’ and ‘o’, but merely stated that the differences limit those similarities. The fact remains that the Board of Appeal accepted that the marks were, to a certain extent, phonetically close to one another.
53 Furthermore, as regards the applicant’s claim that there was a conflict in relation to opposition proceedings No B 99 681, in which it was found that the marks PHILDAR and FILDOR were almost identical aurally, it must be pointed out that, in contrast to the present case, in which the relevant territory is France and the consumers are French speakers, those opposition proceedings concerned Spain and Spanish-speaking consumers. In France the pronunciation of the suffixes of the marks at issue is more marked than in Spain and, therefore, the aural similarity is less strong and consumers more easily perceive the different pronunciation of the letters ‘a’ and ‘o’ in the words ‘phildar’ and ‘fildor’.
54 As regards the conceptual comparison, it is sufficient to point out that the applicant has not called into question the Board of Appeal’s conclusion that there are no elements to find or to exclude conceptual similarity between the signs (paragraph 22 of the contested decision). In its response OHIM concurred with that conclusion. In so far as it changed its position at the hearing and maintained that the marks are conceptually different, it must be held that that is a new and therefore inadmissible argument.
55 It is apparent from all of the foregoing that the Board of Appeal was correct in concluding, in paragraph 23 of the contested decision, that the signs at issue were dissimilar from a visual point of view but that there was some similarity from an aural perspective and that conceptual comparison could not be taken into account in this case.
56 The applicant has nevertheless called into question the final assessment as to the likelihood of confusion between the trade marks at issue in so far as the Board of Appeal took account of the circumstances in which those marks generally appear on the market.
57 In that regard, the applicant maintains, in the alternative, even if the Court were to find that the marks at issue are not visually similar, it should take into consideration that the phonetic similarities between those marks outweigh the visual dissimilarities. In that respect it maintains that, when ascertaining which element, the visual or the phonetic, is of primary importance for the relevant public, the Board of Appeal erred in its analysis of the modes of purchase of the goods because those modes of purchase do not correspond to reality. That analysis is, according to the applicant, also contrary to the principle of global assessment of the likelihood of confusion and to the function of trade marks.
58 It is important to state that the Board of Appeal admits, in paragraph 25 of the contested decision, that in making a global assessment of the signs at issue, it is possible that the mere aural similarity between the trade marks may create a likelihood of confusion. It refers, in that regard, to the settled case-law of the Court of Justice (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 28) and the Court of First Instance (Case T‑99/01 Mystery Drinks v OHIM – Karlsberg Brauerei (MYSTERY) [2003] ECR II‑43, paragraph 42, and Case T‑135/04 GfK v OHIM – BUS (Online Bus) [2005] ECR II‑4865, paragraph 79). However, the Board of Appeal takes the view that, in determining what weight to attach to the aural similarity between the signs, it is appropriate to consider the probable modes of purchase of the goods against which the opposition is directed.
59 In order to determine the weight to attach to the aural similarity between the marks at issue, the Board of Appeal therefore carried out, in paragraphs 26 to 29 of the contested decision, a very detailed product-by-product analysis to assess the probable modes of purchase of the goods in Classes 22 to 26 against which the opposition was directed.
60 As regards the goods at issue in Class 22 (see the first indent of paragraph 2 above), the Board of Appeal found that it was unlikely that most of the rather bulky goods listed therein would be purchased purely on an oral basis. It thus stated that most of those goods would be purchased from among a range of branded goods displayed in showrooms, catalogues and shops in which a visual comparison of the goods would be possible. Sales of those goods would not, according to the Board of Appeal, generally be made over the counter. As regards, in particular, ‘strings’ in Class 22, the Board of Appeal found that, even though they are likely to be purchased over the counter in hardware stores, brand choice is likely to be of less significance to the relevant public than quantity and quality criteria. Thus, it is only when consumers of those goods are shown over the counter the different kinds of strings that meet their quality and quantity requirements, that they will be able to compare visually the marks that identify the manufacturers of the different goods. Accordingly, the visual element of the mark applied for will, according to the Board of Appeal, be of primary importance to consumers of the aforementioned goods (paragraph 26 of the contested decision).
61 As regards all the goods in Class 23 mentioned in the trade mark application (see the second indent of paragraph 2 above), the Board of Appeal found that they are sometimes sold over the counter in small to medium-sized haberdashery stores or even haberdashery departments of larger shops. However, according to the Board of Appeal, consumers will focus primarily on the colour, quantity and quality choices of the various yarns or threads and will usually wish to examine several samples before making their purchase selection. Thus the oral element of a mark in relation to these goods is of very limited importance (paragraph 27 of the contested decision).
62 As regards the goods in Class 26 mentioned in the trade mark application (see the last indent of paragraph 2 above), the Board of Appeal stated that the same comments applied mutatis mutandis. In particular, as regards the ‘artificial flowers’ in that class, the Board of Appeal stated that they would usually be on display or in catalogues and would not be purchased purely on an oral basis. In any event, according to the Board of Appeal, the trade mark borne by those goods is likely to be of little importance to consumers, who will be influenced by the outward appearance of the goods (paragraph 28 of the contested decision).
63 Lastly, as regards the goods in Classes 24 and 25 covered by the trade mark application (see the third and fourth indents of paragraph 2 above), the Board of Appeal found that they are items for which consumers would tend to focus on the product itself and would generally examine the product and the mark fairly closely before making a purchase selection (paragraph 29 of the contested decision).
64 In view of the foregoing, the Board of Appeal found that the visual aspect of the marks predominated over any aural similarity for the purpose of assessing likelihood of confusion (paragraph 30 of the contested decision). Therefore, according to the Board of Appeal, although some of the goods at issue are identical, and others are similar, and although there is phonetic similarity between the marks in question, the visual dissimilarity outweighs those elements. Accordingly, the Board of Appeal found that there was no likelihood of confusion on the part of the relevant public between the marks at issue (paragraph 30 of the contested decision).
65 The applicant disputes that the Board of Appeal’s assessment of the marketing conditions of the goods at issue is correct and moreover submits that the reality as regards those marketing conditions could have been easily substantiated and explained to the Board of Appeal if that issue had been discussed before it. The applicant maintains in that regard that the Board of Appeal does not refer to any evidence to arrive at its finding concerning the methods of sale of the goods at issue.
66 Contrary to what is stated by the Board of Appeal, the applicant claims that it does not sell its goods in showrooms, hardware stores and haberdashery stores. It states in that regard that it has, since 1986, been a member and administrator of the French Franchise Federation and that it has since 1965 implemented a genuine network of shops exclusively selling PHILDAR branded products. That network is constituted mainly of franchisees (529 in France) using the PHILDAR shop sign and the applicant’s branches (66 in France). Lastly, the applicant states that as regards a minor part of its French business operations, it sells its products through multibrand shops, but only in ‘corners’ on which the PHILDAR sign is also affixed. Therefore, according to the applicant, consumers will never be in a position to compare visually the marks that identify the manufacturers of the different goods, contrary to what the Board of Appeal states in paragraph 26 of the contested decision.
67 OHIM, which supports the Board of Appeal’s position, maintains, in essence, that the applicant’s argument that the goods sold under the earlier mark are sold through exclusive distribution channels, thus precluding consumers from ever seeing a FILDOR product side by side with a PHILDAR product and comparing those marks visually, is unconvincing. It submits that, even though it is conceivable that the goods at issue may sometimes be sold in response to an oral order, those circumstances are relatively marginal and do not correspond to the ‘usual’ circumstances in which the goods covered by the marks are marketed.
68 The Court points out, in that regard, that, according to the case-law, only consideration of the ‘objective’ circumstances in which the goods covered by the marks are marketed is justified, in particular in order to determine the respective weight to be given to the visual, phonetic and conceptual aspects of the marks at issue (see, to that effect, Case T‑147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II‑11, paragraphs 104 and 105). Therefore, the ‘particular’ circumstances in which the goods covered by the marks are marketed are not relevant in analysing the likelihood of confusion.
69 As regards the applicant’s argument that, in essence, the goods sold under its earlier mark are sold through exclusive distribution channels, thus precluding consumers from ever seeing a FILDOR product side by side with a PHILDAR product and comparing those marks visually, it must be stated at the outset that that argument does not go beyond the confines of the dispute brought before the Board of Appeal even though it contains entirely new factual explanations with a view to disputing the correctness of the Board of Appeal’s statements relating to the methods of sale of the goods at issue.
70 Secondly, given that the Board of Appeal’s assessment of the likelihood of confusion between the marks at issue is – as is apparent from paragraphs 25 to 30 of the contested decision – closely linked to the question of the probable modes of purchase of the goods at issue and, more specifically, the significance of the aural element during a purchase, it is possible that the Board of Appeal’s conclusion in paragraph 30 of the contested decision, that the visual aspect predominates when those goods are purchased, may have a decisive influence on the finding concerning likelihood of confusion.
71 As regards the question of the probable methods of marketing the goods covered by the earlier mark, it must be stated, first, as OHIM rightly maintains, that the applicant’s argument that its goods are marketed exclusively through a separate network (see paragraph 66 above) relates to particular methods of marketing, which, in terms of the case-law cited in paragraph 68 above, are not relevant in analysing the likelihood of confusion.
72 Since the particular circumstances in which the goods covered by the marks are marketed may vary in time and depending on the wishes of the proprietors of the trade marks, the prospective analysis of the likelihood of confusion between two marks, which pursues an aim in the general interest, that is, the aim that the relevant public may not be exposed to the risk of being misled as to the commercial origin of the goods in question, cannot be dependent on the commercial intentions, whether carried out or not, and naturally subjective, of the trade mark proprietors (QUANTUM, paragraph 68 above, paragraph 104).
73 Therefore, in the present case, even if it had been proved that the goods covered by the earlier mark had, for a long period of time, been sold only through an exclusive sales network, that cannot result in the network acquiring the characteristics of a normal method for marketing the goods at issue. The ‘objective’ marketing circumstances to which QUANTUM, paragraph 68 above, refers, are the ‘usual’ circumstances in which the goods covered by the marks at issue are marketed, that is, those which it is usual to expect for the category of goods covered by those marks. Accordingly, it is irrelevant whether the goods of the applicant that are in question are sold by an exclusive network, in so far as it has not been proved that it is usual to expect that the categories of goods in question manufactured by the applicant’s competitors will, as a general rule, also be sold under such exclusive conditions.
74 In that regard, the Court cannot agree with the argument put forward by the applicant at the hearing that, where the proprietor of a mark decides, for strategic reasons, to sell its goods only through a network of franchises, there is no other usual ‘objective’ method for purchasing the goods in question. That claim fails to have regard to the fact that the goods covered by the earlier mark are everyday goods, which are by their very nature associated with ‘objective’ marketing circumstances.
75 Secondly, it is necessary to examine, leaving aside any specific marketing conditions mentioned by the applicant, the argument that consumers do not see FILDOR products side by side with PHILDAR products and therefore cannot compare those marks visually.
76 In that regard, it must be borne in mind that, according to settled case-law, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on the imperfect picture of them that he has retained in his mind (Lloyd Schuhfabrik Meyer, paragraph 58 above, paragraph 26, and MYSTERY, paragraph 58 above, paragraph 32).
77 It must be pointed out that that fact may have an influence on the weight to be given to the elements of similarity or dissimilarity of signs and therefore on the final assessment in respect of likelihood of confusion. In the present case, the Board of Appeal clearly failed to take account of that fact in its assessment of the likelihood of confusion. On the contrary, it based its assessment in paragraphs 26 to 29 of the contested decision on the idea that a visual comparison of the goods in question constitutes the rule or even that consumers will examine some of those goods and their trade marks fairly closely (paragraph 29 of the contested decision).
78 First, in respect of the goods in Class 22, it stated that such a comparative visual examination of the goods bearing the trade mark would be possible inter alia, in showrooms, on the basis of catalogues or in shops in general, or even, in respect of ‘strings’, over the counter in hardware stores (see paragraph 60 above). Secondly, with regard to the goods in Class 23, the Board of Appeal stated that, although they are products which are sometimes sold over the counter in haberdashery stores or in haberdashery departments of larger shops, consumers will usually wish to examine several samples before making their purchase selection (see paragraph 61 above). Thirdly, according to the Board of Appeal, the same considerations apply to the goods in Class 26. In particular, the ‘artificial flowers’ in that class would be on display or in catalogues and the trade marks borne by those goods are, according to the Board of Appeal, of little importance to consumers, who will be influenced by the outward appearance of the goods (see paragraph 62 above). Fourthly, as regards the goods in Classes 24 and 25, the Board of Appeal found that consumers examine both those products and their marks fairly closely before making a purchase selection (see paragraph 63 above).
79 The Court holds that the Board of Appeal erred in the abovementioned assessments, regardless of the fact that the applicant markets its goods in a specific way through exclusive distribution channels. While it is indeed conceivable, as the Board of Appeal maintains, that when the goods in question are first purchased a consumer may carry out a comparative examination of the various kinds of goods or, in the case of some, of samples thereof, it cannot be concluded from that that the consumer will repeat his comparative examination on the occasion of subsequent purchases, given that he is likely to make his choice on the basis of his positive or negative experience as a result of the initial purchase. It is precisely in that latter situation that the mark performs its essential function, namely that of identifying the commercial origin of the goods, thus enabling the consumer who acquired them to repeat the experience if it proves to be positive, or to avoid it if it proves to be negative, on the occasion of a subsequent acquisition (see, to that effect, judgment of 12 March 2008 in Case T‑341/06 Compagnie générale de diététique v OHIM (GARUM), not published in the ECR, paragraph 29).
80 Inasmuch as the consumer will not, in that situation, generally be in a position to directly compare the marks but must rely on the imperfect picture of them that he has retained in his mind, in accordance with the case-law cited in paragraph 76 above, it cannot be held, in the present case, as the Board of Appeal did in paragraph 30 of the contested decision, that the visual aspect predominates over any aural similarity for the purpose of assessing likelihood of confusion and thus that, despite the identity or similarity of the goods at issue, the visual dissimilarities outweigh the phonetic similarities.
81 The Court takes the view that, even if it is conceded that certain goods covered by the mark in question are usually sold in showrooms or shops where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the goods, that is to say, that they buy them in circumstances in which, as is apparent from the case-law, the visual similarity between the signs will as a general rule be more important (see, to that effect, Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II‑3471, paragraph 49), the fact remains that the aural aspect remains equally relevant in assessing the likelihood of confusion in the present case and the aural similarity cannot simply be disregarded.
82 In that regard, it must be pointed out, first, that the importance of certain visual dissimilarities may be diminished by the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks at issue but must rely on the imperfect picture of them that he has retained in his mind. Secondly, the consumer may be prompted, as submitted by the applicant, to choose goods from the categories in question in response to a television advertisement, for example, or because he has heard them being spoken about, in which cases he might retain the aural impression of the mark in question as well as the visual aspect. It has already been held that mere aural similarity may, in certain cases, lead to a likelihood of confusion (see paragraph 58 above). It is possible that the consumer might let himself be guided in his choice by the imperfect aural impression that he has retained of the earlier mark which may, inter alia, remind him of something in common with a ‘thread’. The importance of the aural aspect was mentioned only in respect of some of the goods concerned such as the ‘strings’ in Class 22, the various goods in Class 23 and those in Class 26, with regard to which the Board of Appeal accepted that they are generally sold over the counter, that is to say, orally (paragraphs 26 to 28 of the contested decision).
83 Furthermore, as regards the ‘artificial flowers’ in Class 26, it must be stated that the Board of Appeal’s finding that the trade mark affixed to those goods is likely to be of only ‘little importance’ is unfounded and, as the applicant maintains, is contrary to the function of trade marks. To accept that the consumer takes his decision to purchase solely in the light of the goods and their external appearance but pays no attention to their trade mark, would amount to stating that trade marks are of no use whatsoever (see, by analogy, judgment of 17 April 2008 Case T‑389/03 Dainichiseika Colour & Chemicals Mfg. v OHIM – Pelikan (Representation of a pelican), not published in the ECR, paragraph 100). It must also be stated that even the category ‘artificial flowers’ may cover relatively sophisticated goods, in respect of which the trade mark constitutes an important sign of quality which the consumer will not fail to take into account and remember. Therefore, it must be held that even in respect of those goods the aural aspect is more significant than in the situation envisaged by the Board of Appeal, in which the consumer undertakes no more than a comparative examination of their appearance.
84 Next, as regards the Board of Appeal’s assessment concerning the goods in Classes 24 and 25, principally ‘fabrics, clothing and footwear’, that consumers will examine both those products and the mark fairly closely before making a purchase, first, it must be stated, as regards the clothing sector, that it comprises goods which vary widely in quality and price. Whilst it is possible that the consumer is more attentive to the choice of mark where he or she buys a particularly expensive item of clothing, such an approach on the part of the consumer cannot be presumed without evidence with regard to all goods in that sector (see, to that effect, NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 81 above, paragraph 43). Secondly, those considerations apply, mutatis mutandis, to ‘footwear’ and ‘fabrics’. It follows that the abovementioned assessment by the Board of Appeal must be held to be incorrect and, as the applicant rightly maintains, it cannot be concluded therefrom that the aural aspect of the marks at issue is disregarded when those goods are purchased.
85 It follows from all the foregoing that, in the circumstances of the present case, mere visual dissimilarity is not sufficient to remove the risk of the public believing that the goods are being offered by the same undertaking or, as the case may be, by economically-linked undertakings.
86 In the light of that finding, there is no need to examine the applicant’s argument that the Board of Appeal failed to take into consideration the degree of distinctiveness of the earlier mark (paragraph 25 above).
87 It follows from all of the foregoing that the first plea must be upheld and, accordingly, the contested decision must be annulled.
88 The Court nevertheless deems it appropriate to analyse the applicant’s second plea also.
The second plea: infringement of Article 73 of Regulation No 40/94
– Arguments of the parties
89 The applicant claims, in essence, that it did not have the opportunity to present its comments on the assessment of the modes of purchase of the goods at issue. According to the applicant, the Board of Appeal relied, in analysing those modes of purchase, on facts which had never been addressed by any of the parties during the opposition proceedings or in the various decisions preceding the contested decision. The applicant maintains that the fact that it did not have the opportunity to present its comments is all the more detrimental because the Board of Appeal used its new, ‘original and unchallenged argumentation’ to reverse the preceding decision of the Opposition Division. The Board of Appeal thus infringed Article 73 of Regulation No 40/94.
90 OHIM maintains, in essence, that the Board of Appeal did not have to invite the parties to submit observations on the circumstances in which the goods are sold and their impact on the public’s perception of the signs.
– Findings of the Court
91 It must be pointed out, first, that, pursuant to the second sentence of Article 73 of Regulation No 40/94 (now the second sentence of Article 75 of Regulation No 207/2009), decisions of OHIM are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments. The general principle of protection of the right to defend oneself is enshrined in the law of Community trade marks by that provision. According to that general principle of Community law, a person whose interests are appreciably affected by a decision taken by a public authority must be given the opportunity to make his point of view known. The right to be heard extends to all the factual and legal material which forms the basis of the decision, but not to the final position which the authority intends to adopt (see judgment of 24 September 2008 in Case T‑179/07 Anvil Knitwear v OHIM – Aprile e Aprile (Aprile), not published in the ECR, paragraph 23 and the case-law cited).
92 In the present case, the Court takes the view that the contested decision contains not only the Board of Appeal’s final position on the circumstances in which the goods are sold and their impact on the public’s perception of the signs, but also factual material which, in the circumstances of the present case, formed the basis of the contested decision.
93 Admittedly, the Board of Appeal’s assessment, in paragraphs 26 to 29 of the contested decision, that the goods are normally sold in such a way that a visual inspection of the marks is possible, and its conclusion, in paragraph 30 of the contested decision, that the visual comparison of the signs should be given more weight than the aural comparison, which in the present case led to any likelihood of confusion being ruled out, must be regarded, as maintained by OHIM, as the Board of Appeal’s final position: according to the case-law cited in paragraph 91 above, that final position does not fall within the scope of the second sentence of Article 73 of Regulation No 40/94. However, the Board of Appeal’s statements, in the same paragraphs of the contested decision, that, in essence, the goods at issue are sold in showrooms, hardware stores or haberdashery stores, statements on which the Board of Appeal relied in its final position, are factual material to which that article applies.
94 In that regard, it must be pointed out, first, that, according to the case-law, the Board of Appeal may take into consideration, in addition to the facts expressly put forward by the parties to the opposition proceedings, facts which are well known, that is, which are likely to be known by anyone or which may be learnt from generally accessible sources (Case T‑185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraph 29 et seq.) or facts relating to the normal methods for marketing the goods, which may be equated with facts which are well known (see, by analogy, judgment of 10 September 2008 in Case T‑48/06 Astex Therapeutics v OHIM – Protec Health International (astex TECHNOLOGY), not published in the ECR, paragraph 43).
95 Secondly, it must be borne in mind that whether or not there is a marketing concept is of no consequence to the right conferred by the Community trade mark (see, to that effect, Case T‑355/00 DaimlerChrysler v OHIM (TELE AID) [2002] ECR II‑1939, paragraph 42, and Case T‑356/00 DaimlerChrysler v OHIM (CARCARD) [2002] ECR II‑1963, paragraph 46). Furthermore, since a marketing concept is purely a matter of choice for the undertaking concerned, it may change after a sign has been registered as a Community trade mark and it cannot therefore have any bearing on the assessment of likelihood of confusion in opposition proceedings. Therefore, the Board of Appeal is not required to examine such a concept of its own motion and does not have to ask the parties to comment in that regard.
96 Lastly, it must be pointed out that, according to settled case-law, in order to assess the degree of similarity between two or more marks at issue, it is necessary to determine the degree of visual, aural or conceptual similarity between them and, where appropriate, to evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (Case C‑361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I‑643, paragraph 37, and OHIM v Shaker, paragraph 35 above, paragraph 36).
97 It follows that, since likelihood of confusion must be assessed inter alia in the light of the circumstances in which the goods in the categories in question are marketed, which in part determine the importance of the visual, aural or conceptual aspects of the marks at issue, it was for the applicant, if it intended to do so, to put forward during the procedure before the Board of Appeal or the Opposition Division factual arguments and evidence regarding the ‘objective’ way of marketing the goods in question. As the applicant did not avail itself of the possibility of presenting its comments on those marketing methods, it cannot be held that it did not have the opportunity to make known its point of view in that regard.
98 Accordingly, it cannot be held that in those circumstances the Board of Appeal infringed Article 73 of Regulation No 40/94, particularly since the goods in question are relatively common, that is to say, the Board of Appeal could, with regard to those goods, have taken into consideration certain facts which are likely to be known by anyone or which may be learnt from generally accessible sources, in accordance with the case-law cited in paragraph 94 above, in particular in the absence of other information from the parties to the administrative procedure.
99 It is also important to state that, according to the case-law, consideration by the OHIM adjudicating bodies of the ‘objective’ circumstances in which the goods covered by the marks are marketed is fully justified, in particular in order to determine the respective weight to be given to the visual, phonetic and conceptual aspects of the marks at issue (T.I.M.E. ART v OHIM, paragraph 30 above, paragraph 59, and QUANTUM, paragraph 68 above, paragraphs 104 and 105).
100 In the present case, it is common ground that it was only in that context that the Board of Appeal took into consideration the probable modes of purchase of the goods at issue and, more specifically, the fact that they will be bought orally and, on that basis, made legal assessments relating to the importance to be given to the aural similarity between the marks.
101 In view of the foregoing considerations, it must be held that the contested decision does not infringe Article 73 of Regulation No 40/94 by failing to have regard to the applicant’s right to be heard, given that the applicant had the opportunity, inter alia before the Board of Appeal, to present its comments on the probable modes of purchase of the goods covered by the marks at issue.
102 Accordingly, the applicant’s second plea must be rejected.
103 Having regard to the finding in paragraph 87 above that the first plea must be upheld and, consequently, that the contested decision must be annulled, there is no need to examine the third and fourth pleas relied on by the applicant.
Costs
104 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.
105 Since OHIM has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant.
On those grounds,
THE COURT OF FIRST INSTANCE (Seventh Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 16 January 2006 (Case R 245/2004‑2);
2. Orders OHIM to pay the costs.
Delivered in open court in Luxembourg on 23 September 2009.
[Signatures]