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EuG COURT OF FIRST INSTANCE (Fifth Chamber) T179/07 dated 24 September 2008 – ANVIL vs Aprile

(Community trade mark – Opposition proceedings – Application for the Community figurative mark Aprile – Earlier national word mark ANVIL – Relative ground for refusal – Lack of likelihood of confusion – Obligation to state reasons – Rights of the defence – Articles 8(1)(b), 73 and 74 of Regulation (EC) No 40/94)

In Case T179/07,

Anvil Knitwear, Inc., established in New York, New York (United States), represented by G. Würtenberger, R. Kunze and T. Wittmann, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Laitinen and O. Mondéjar Ortuño, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Aprile e Aprile Srl, established in Argelato (Italy),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 22 March 2007 (Case R-1076/2006-2), relating to opposition proceedings between Anvil Knitwear, Inc. and Aprile e Aprile Srl,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fifth Chamber),

composed of M. Vilaras (Rapporteur), President, M. Prek and V. Ciucă, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the Court of First Instance on 23 May 2007,

having regard to the response lodged at the Registry of the Court of First Instance on 17 September 2007,

having regard to the oral procedure, the hearing fixed for 10 April 2008 not having taken place as neither of the parties appeared,

gives the following

Judgment

 Background to the dispute

1        On 28 April 2004, Aprile e Aprile Srl filed an application for 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.

2        Registration as a trade mark was sought for the figurative sign reproduced below, which is ochre, black, red, beige, green, yellow, ivory and blue in colour:

 

3        The goods in respect of which registration was sought are in Classes 18 and 25 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 to the following descriptions:

–        ‘Leather and imitations of leather, and goods made of these materials including bags, handbags, clutch-bags, pouches, travelling cases, vanity cases, make-up bags, backpacks, satchels, gents’ handbags, trunks, suitcases, travelling bags, pocket wallets, purses, key cases, briefcases, umbrellas and sunshades, parasols and walking sticks; whips, harness and saddlery; animal skins, hides’ (Class 18);

–        ‘Clothing including apparel, suits, underpants, boxers, briefs, costumes, bathing suits, beach clothes, bikinis, bonnets, shirts, smocks, blouses, jerseys, singlets, T-shirts, polo shirts, knitwear, jumpers, sweaters, cardigans, pullovers, breeches, shorts, trousers, tracksuits, pyjamas, nightdresses, jackets, stuff jackets, overalls, scarves, headscarves, neckties, suspenders, hats, berets, headgear, footwear, shoes and boots’ (Class 25).

4        The trade mark application was published in Community Trade Marks Bulletin No 11/2005 of 14 March 2005.

5        On 14 June 2005, the applicant, Anvil Knitwear, Inc., filed a notice of opposition under Article 42(1) of Regulation No 40/94 against registration of the mark applied for.

6        The opposition was based on the applicant’s word mark ANVIL, previously registered in Germany in respect of goods in Class 25 of the Nice Agreement and corresponding to the following description: ‘clothing, footwear, headgear’. The opposition was directed against all the goods referred to in the trade mark application.

7        The ground relied on in support of the opposition was the likelihood of confusion between the trade mark applied for and the earlier mark within the meaning of Article 8(1)(b) of Regulation No 40/94.

8        By decision of 26 June 2006, the Opposition Division of OHIM rejected the opposition. In substance, the Opposition Division found that the mark applied for and the earlier mark were neither identical nor similar and that, therefore, one of the conditions necessary for the application of Article 8(1)(b) of Regulation No 40/94 had not been fulfilled.

9        On 7 August 2006, the applicant filed a notice of appeal under Articles 57 to 62 of Regulation No 40/94 against the decision of the Opposition Division.

10      By decision of 22 March 2007 (‘the contested decision’), notified to the applicant on 23 March 2007, the Second Board of Appeal dismissed the applicant’s appeal.

11      Like the Opposition Division, the Board of Appeal concluded that the mark applied for and the earlier mark were neither identical nor similar and that, consequently, one of the conditions necessary for the application of Article 8(1)(b) of Regulation No 40/94 had not been fulfilled.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision;

–        allow the opposition and refuse the application for registration of the mark applied for;

–        order OHIM to pay the costs.

13      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

14      In support of its action, the applicant relies on three pleas alleging infringement, first, of Article 8(1)(b), secondly, of Article 73 and, thirdly, of Article 74 of Regulation No 40/94.

15      In addition, the applicant refers to the arguments which it submitted in the proceedings before OHIM, in particular in its pleadings of 14 June 2005, 19 July 2005 and 26 October 2006, which it regards as an integral part of the subject-matter of these proceedings.

 The applicant’s reference to the pleadings it submitted before OHIM

16      According to the case-law, in order to ensure legal certainty and the proper administration of justice, for an action to be admissible, the basic legal and factual particulars on which the action is based must be indicated coherently and intelligibly in the application itself, even if only in summary form (see Case T209/01 Honeywell v Commission [2005] ECR II-5527, paragraph 56, and the case-law cited).

17      Whilst the body of the application may be supported and supplemented on specific points by references to extracts from documents annexed to it, a general reference to other documents, even those annexed to the application, cannot make up for the absence of the essential submissions in law which must appear in the application (see Honeywell v Commission, paragraph 16 above, paragraph 57, and the case-law cited).

18      In the present case, the applicant makes a general reference, in its application, to the arguments it put forward in the pleadings submitted before OHIM, which are in the file relating to the proceedings before the Board of Appeal, which was forwarded to the Court pursuant to Article 133(3) of the Rules of Procedure of the Court of First Instance. In accordance with the above case-law, the Court does not have to seek in those pleadings the arguments to which the applicant may be referring or examine them, as such arguments are inadmissible.

19      The Court is of the opinion that it is necessary to begin by examining the second plea, then, the first plea, and, lastly, the third plea put forward by the applicant.

 The second plea, alleging infringement of Article 73 of Regulation No 40/94

 Arguments of the parties

20      The applicant submits that the Board of Appeal infringed Article 73 of Regulation No 40/94, which lays down both the duty to state the reasons on which OHIM decisions are based and the rights of the defence. First, the Board of Appeal failed to set out the reasons on which the contested decision is based. Secondly, it did not examine the arguments put forward by the applicant in its observations of 26 October 2006, which amounts to denying it the right to be heard.

21      In addition, the Board of Appeal did not give the reasons for the contested decision objectively. The applicant criticises the assertions in paragraph 19 of the contested decision that, first, no sane person with sound powers of sight and hearing would ever confuse the words ‘aprile’ and ‘anvil’; secondly, the similarities between those words are comparable to those between the English words ‘elephant’ and ‘entertainment’; thirdly, it is inevitable that some words have the same letters in the same sequence; and, lastly, reading and writing would soon become impossible if confusion occurred merely because some words have the same letters in common. Those assertions of the Board of Appeal give a negative impression of the distinctiveness of the earlier trade mark and severely impair that distinctiveness, particularly because the contested decision has been published and is thus available to third parties.

22      OHIM disputes the applicant’s arguments.

 Findings of the Court

23      The applicant’s head of claim alleging infringement of the rights of the defence must be examined first. In that regard, it should be pointed out that, pursuant to the second sentence of Article 73 of Regulation No 40/94, 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 Case T-317/05 Kustom Musical Amplification v OHIM (Shape of a guitar) [2007] ECR II-427, paragraphs 24, 26 and 27, and the case-law cited).

24      In the present case, it is common ground that OHIM gave the applicant the opportunity to submit its observations, both before the Opposition Division and the Board of Appeal. Furthermore, the applicant does not claim that the Board of Appeal based the contested decision on factual or legal material with regard to which it was not given the opportunity to make its point of view known. The mere fact that the final position of the Board of Appeal as regards the lack of similarity between the marks at issue does not correspond to that expressed by the applicant before the departments of OHIM in no way constitutes, according to the case-law referred to in the preceding paragraph, an infringement of the applicant’s right to be heard. Therefore, that head of claim must be rejected.

25      The applicant submits, however, that the reasons for the contested decision indicate that in actual fact its observations were not taken into consideration by the Board of Appeal at all. With that claim, the applicant in actual fact alleges that the Board of Appeal did not give sufficient reasons for the contested decision. That claim must therefore be taken into consideration in the context of the head of claim alleging infringement of the obligation to state reasons, which should be examined next.

26      For the purposes of that examination, it must be pointed out that under the first sentence of Article 73 of Regulation No 40/94, decisions of OHIM are to state the reasons on which they are based. According to the case-law, that duty has the same scope as that enshrined in Article 253 EC and its purpose is to allow interested parties to know the reasons for the measure so as to enable them to protect their rights and to enable the Community judicature to exercise its power to review the legality of the decision (see Joined Cases T-124/02 and T-156/02 Sunrider v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II-1149, paragraphs 72 and 73, and the case-law cited).

27      It is apparent from the same case-law that the question whether a statement of reasons satisfies those requirements is to be assessed with reference not only to its wording but also to its context and the whole body of legal rules governing the matter in question (see VITATASTE, paragraph 26 above, paragraph 73, and the case-law cited).

28      In the present case, the relative ground for refusal relied upon by the applicant in support of its opposition was that referred to in Article 8(1)(b) of Regulation No 40/94. For the purposes of applying that provision, a likelihood of confusion presupposes both that the mark applied for and the earlier mark are identical or similar, and that the goods or services covered in the application for registration are identical or similar to those in respect of which the earlier mark is registered. Those conditions are cumulative and thus, if there is no similarity between the earlier mark and the mark applied for, it may correctly be concluded that there is no likelihood of confusion, whatever the reputation of the earlier mark and regardless of the degree of identity or similarity of the goods or services concerned (see, to that effect, Case C-106/03 P Vedial v OHIM [2004] ECR I9573, paragraphs 51 and 54).

29      In paragraph 16 of the contested decision, the Board of Appeal stated, very emphatically, its finding that the earlier mark and the mark applied for were neither identical nor similar (‘the gulf between the two marks is so great that they could hardly be further removed from each other’). In giving reasons for that finding, the Board of Appeal carried out, in paragraphs 17 to 19 of the contested decision, a comparative examination of the two marks at issue and, although it noted some ‘banal’ similarities between the earlier mark and the word element ‘aprile’ in the mark applied for, it came to the conclusion that no one ‘would ever confuse the words “aprile” and “anvil”‘and that, moreover, the figurative element of the mark applied for means that ‘even the negligible similarities between the marks would sink below the threshold of the customer’s awareness’ (paragraph 19 of the contested decision).

30      Having regard to the case-law mentioned in paragraphs 26 to 28 above, that statement of reasons is sufficient to allow the applicant to know the reasons why the contested decision was taken and to allow the Court to exercise its power of review.

31      As regards the applicant’s claim that the observations it submitted before OHIM were not taken into consideration, it must be pointed out that the context in which a decision is taken, which is characterised, in particular, by exchanges between the author of the decision and the party concerned, may make the requirements imposed by the duty to state reasons more stringent in certain circumstances (Case T-16/02 Audi v OHIM (TDI) [2003] ECR II-5167, paragraph 89). It is therefore conceivable that in some cases the arguments submitted by one of the parties to the proceedings before OHIM will require a specific response.

32      However, the Boards of Appeal cannot be required to provide an account that follows exhaustively and one by one all the reasoning articulated by the parties before them. The reasoning may therefore be implicit on condition that it enables the persons concerned to know why the decision of the Board of Appeal was taken and provides the competent court with sufficient material for it to exercise its power of review (see, by analogy, Joined Cases C204/00 P, C205/00 P, C211/00 P, C213/00 P, C217/00 P and C219/00 P Aalborg Portland and Others v Commission [2004] ECR I-123, paragraph 372, and Case C-3/06 P Groupe Danone v Commission [2007] ECR I-1331, paragraph 46).

33      The Court finds that the applicant has not specified the arguments, allegedly submitted in its observations, which the Board of Appeal did not take into consideration. Furthermore, a reading of the applicant’s observations in the file relating to the proceedings before OHIM indicates that, before the departments of OHIM, the applicant relied on the alleged similarity between the word element of the mark applied for and the earlier mark, the identity and partial similarity of the goods covered by the two marks and the alleged reputation of the earlier mark.

34      As regards the alleged similarity between the marks Aprile and ANVIL, as has been pointed out above, the Board of Appeal gave sufficient reasons for its decision by stating that, despite some similarities between those two words, which were described as banal and negligible, the words were different. It is therefore apparent from the contested decision that that part of the applicant’s line of argument was examined by the Board of Appeal, but that it was, at the very least implicitly but clearly, rejected.

35      The applicant’s argument relating to the alleged reputation of the earlier mark was not disregarded by the Board of Appeal either. As is apparent from paragraph 20 of the contested decision, the Board of Appeal took that argument into consideration, but, having regard to its conclusion as to the lack of similarity between the marks at issue, it rejected it as irrelevant. Lastly, the Board of Appeal’s failure to compare the goods concerned does not constitute an infringement of the obligation to state reasons in the present case. That issue was also irrelevant and did not necessitate a specific response in the light of the Board of Appeal’s conclusion as to the lack of similarity between the marks at issue.

36      The applicant also submits that the terms used in the contested decision impair the distinctiveness of the earlier mark since they give the impression that the scope of that mark’s protection is very limited. The applicant thus seems to allege that the Board of Appeal went beyond the parameters of an ‘objective’ statement of reasons for its decision by using inappropriate expressions which could harm the image and the distinctiveness of the earlier mark.

37      However, the allegedly inappropriate nature of the Board of Appeal’s assertions relating to the lack of similarity between the mark applied for and the earlier mark, even if it were proved, cannot, per se, call into question the adequacy of the statement of reasons for the contested decision. Furthermore, and contrary to what the applicant maintains, no general conclusion regarding the distinctiveness of the earlier mark, viewed in the abstract, can be drawn from those assertions.

38      That is all the more the case in that no relevant argument may be drawn from the contested decision in assessing possible similarities between the earlier mark and other marks, because, according to settled case-law, that issue must be assessed solely on the basis of Regulation No 40/94, as interpreted by the Community judicature, and not on the basis of a possible previous decision-making practice of OHIM (Case C173/04 P Deutsche SiSi-Werke v OHIM [2006] ECR I551, paragraph 48; see also, to that effect, Case C-412/05 P Alcon v OHIM [2007] ECR I3569, paragraph 65).

39      It is apparent from all of the above that the head of claim alleging infringement of the obligation to state reasons must also be rejected as unfounded, as must the second plea in its entirety.

 The first plea, alleging infringement of Article 8(1)(b) of Regulation No 40/94

 Arguments of the parties

40      The applicant submits that there are similarities between the marks at issue. Both the earlier mark and the word element of the mark applied for consist of a single word, beginning with the letter ‘a’ and also including, at the end, the sequence ‘il’. Both words, moreover, have almost the same number of letters. According to the applicant, those similarities show that the word element of the mark applied for and the earlier mark are similar. However, the Board of Appeal reached the opposite conclusion, holding that the similarities between the two words referred to above are comparable to those between the English words ‘elephant’ and ‘entertainment’.

41      The applicant submits that the case-law according to which OHIM’s previous decision-making practice is not relevant to an assessment of the legality of decisions of OHIM Boards of Appeal prohibits a fortiori the results of a comparison between the words ‘elephant’ and ‘entertainment’, which have not even been the subject of an OHIM decision, from being taken into consideration. In any event, those two words do not even remotely resemble the marks at issue.

42      Furthermore, the argument in the contested decision (paragraph 19), relating to the limited number of characters in the alphabet, would render Article 8(1)(b) of Regulation No 40/94 meaningless and would exclude any likelihood of confusion even if both the marks and the relevant goods or services were identical.

43      Furthermore, by putting the emphasis on the figurative element of the mark applied for, the Board of Appeal gave too much weight to the visual comparison of the trade marks concerned. To accept that the addition of a figurative element to the word element of a trade mark applied for, which is identical or similar to an earlier word mark, is sufficient for an opposition brought on the basis of that earlier mark to be rejected would be to call into question the distinctive character and therefore the very existence of the earlier mark.

44      Moreover, the applicant submits that the considerations in Case C120/04 Medion [2005] ECR I-8551, paragraphs 29 to 31, can be applied to the present case. The word element ‘aprile’ certainly has an independent distinctive role in the mark applied for. Since the goods at issue, fashion items, are not exclusively bought on sight but also on the basis of oral recommendations, the names of the companies concerned and the word elements in their trade marks are of greater importance for consumers than the figurative elements of those marks. Consequently, the relevant consumer will pay attention above all to the word element of the mark applied for and not to its various figurative aspects, which require extensive and time-consuming examination and might be perceived as merely decorative.

45      In any event, whatever the relevant consumer’s visual perception of the figurative element of the mark applied for, there is also a likelihood of confusion for that consumer on the phonetic level, when he comes across the two marks at issue in advertisements or in orally-expressed recommendations to buy.

46      Lastly, since the Board of Appeal recognised that there is a similarity – even if it is banal, limited or negligible – between the word element of the mark applied for and the earlier word mark, it should have made a global assessment of the likelihood of confusion between those marks by examining the other aspects connected with the partial identity and similarity of the goods concerned and the high degree of distinctiveness of the earlier mark, referred to by the applicant. By failing to examine those aspects and make a global assessment of the likelihood of confusion, the contested decision infringed Article 8(1)(b) of Regulation No 40/94.

47      OHIM disputes the applicant’s arguments.

 Findings of the Court

48      As was pointed out in the context of the examination of the second plea, the Board of Appeal dismissed the applicant’s appeal against the decision of the Opposition Division on the ground that the marks at issue are neither identical nor similar. By its first plea, the applicant challenges that finding by claiming, in substance, that there is a similarity between those marks on account of an alleged similarity between the earlier mark and the word element ‘aprile’ of the mark applied for.

49      According to settled case-law, in order to assess the degree of similarity between two or more marks in opposition, it is necessary to determine the degree of visual, phonetic and 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 C361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-643, paragraph 37, and Case C-334/05 P OHIM v Shaker [2007] ECR I4529, paragraph 36).

50      In the context of consideration of the likelihood of confusion, 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 (OHIM v Shaker, paragraph 49 above, paragraphs 41 and 42).

51      In the present case, the mark applied for is a composite mark which includes both a coloured coat of arms, consisting of an escutcheon with a fess bearing three roses, supported on both sides by two lions bearing flags and standing on a terrace and the word ‘aprile’, written in a small, fanciful gothic script beneath the heraldic image. The earlier mark is the word sign ANVIL.

52      It is true that, in paragraph 17 of the contested decision, the Board of Appeal highlighted the figurative element of the mark applied for, which, according to the Board of Appeal, is ‘evocative, visually complex, and likely to leave a lasting impression on the consumer’s mind’. However, the Board of Appeal did not fail to take into consideration the word element ‘aprile’ of that mark but, on the contrary, compared it and the earlier mark.

53      The applicant therefore errs in claiming that the Board of Appeal, in essence, failed to have regard to the case-law referred to in paragraph 50 above. It is apparent from a reading of paragraph 19 of the contested decision that the Board of Appeal did not rule out any similarity between the two marks at issue on the ground that the word element ‘aprile’ of the mark applied for was not the dominant element of that mark, but on the ground that that word element could not be confused with the earlier mark although they have some letters in common.

54      Consequently, to deal with the applicant’s present plea, it is necessary to ascertain whether that assessment by the Board of Appeal is sound. If that analysis should lead to the conclusion that there is a similarity between Aprile and ANVIL, it will also be necessary to examine, as a final step, the overall impression resulting, in the case of the mark applied for, from the combination of a word element, which has a similarity with the earlier mark, and a figurative element, before it can be concluded that there is a similarity between the mark applied for and the earlier mark (see, to that effect, Case C-193/06 P Nestlé v OHIM [2007], not published in the ECR, paragraph 41).

55      Since the earlier mark has been registered in Germany, the Court must, like the Board of Appeal (paragraph 16 of the contested decision), take into account, for the purposes of that assessment the perceptions of German consumers who buy leather goods or articles of clothing. As those goods are targeted at the general public, the relevant public thus consists of reasonably well informed and reasonably observant and circumspect, average German consumers.

56      In comparing the marks at issue, the Board of Appeal, first, in paragraph 19 of the contested decision, compared the words ‘aprile’ and ‘anvil’ both visually and phonetically. The Board of Appeal, in essence, concluded that the two words in question, each considered as a whole, were not similar as the fact that they both began with ‘a’ and included the sequence ‘il’ indicated only a ‘banal’ and ‘negligible’ similarity.

57      The finding that the two words in question are not similar must be upheld. Visually, the fact that both of them begin with the same letter ‘a’ is not sufficient to conclude that they are similar, because in German a large number of very different words begin with an ‘a’. The same is true of the presence of the sequence of letters ‘il’ in both words. First, the presence of that sequence is not unusual. It often appears in German words (anpeilen, austilgen, Brille, Bild, Milch, trillern, wild, etc.). Secondly, it is placed near the end of the two words in question and will not be the first thing to catch the relevant public’s attention. Lastly, both words in question contain, between the initial letter ‘a’ and the sequence ‘il’, two completely different sequences (‘nv’ and ‘pr’ respectively), which help to give a very different overall visual impression of each word.

58      Phonetically, the fact that both words begin with ‘a’ is not determinative, as a large number of German words begin with that sound. Furthermore, the presence of the sequence ‘il’ is not sufficient to give the impression that the two words concerned, taken as a whole, are phonetically similar. The perception of those words in terms of phonetics is dominated by the sequences ‘nv’ and ‘pr’ respectively, which follow the initial ‘a’ and create a sound which is very striking, but is different in each case. In addition, the fact that the earlier mark, ANVIL, contains only two syllables, whilst German speakers pronounce ‘aprile’ as three syllables (a-pri-le), makes those two words even more distinct from an phonetic perspective.

59      The contested decision did not make a conceptual comparison of the two words at issue. However, that omission does not constitute an error since the word ‘anvil’ has no meaning in German and the applicant did not claim, nor a fortiori prove, that the relevant public would attach it to any specific concept.

60      It is true that the same word does have a meaning in English (anvil), but, as it is a word not commonly used nowadays, its meaning is not understood by German consumers and that includes those German consumers who have some knowledge of English. That is particularly so because the corresponding word in German (Amboss) is very different. It follows that the German public will perceive the earlier mark as an arbitrary or fanciful word and will not see in it any reference to a specific concept, thus excluding any possibility of a conceptual similarity between that mark and the word element of the mark applied for.

61      It is apparent from the above considerations that the word element of the mark applied for and the earlier mark are not similar. That conclusion applies a fortiori to the overall comparison of the mark applied for with the earlier mark. In that regard, the Board of Appeal, after finding that the figurative element of the mark applied for was evocative, visually complex and likely to leave a lasting impression on the consumer’s mind, added, in paragraph 19 of the contested decision, that that figurative element created ‘such a powerful and resonant impact’ that even the negligible similarities between the word elements of the marks at issue would sink below the threshold of the customer’s awareness.

62      When the figurative element of the mark applied for is also taken into account, the difference between the two marks at issue is accentuated. Visually, that figurative element, on account of its large size (approximately 10 times as high as the word element), catches the relevant consumer’s attention first and contributes to an overall visual impression of the mark applied for which is very different from that of the earlier mark, which does not include a figurative element.

63      Phonetically, any inclusion of a reference to the figurative element in an oral description of the mark applied for would only accentuate the difference in relation to the earlier mark. Lastly, conceptually, the figurative element of the mark applied for (in essence a coat of arms) refers to heraldry and to people who carry arms, such as knights or the nobility and, consequently, it is likely to connect that mark, in the minds of the relevant public, with a particular concept, unlike the earlier mark.

64      It follows that the contested decision was right to find that the two marks at issue were neither identical nor similar and that, therefore, as one of the cumulative conditions set out in Article 8(1)(b) of Regulation No 40/94 had not been met, that article did not apply.

65      Having regard to the lack of similarity between the marks at issue, the applicant errs in claiming that the Board of Appeal should have carried out a global assessment of the likelihood of confusion in the present case, taking into account the partial identity and similarity of the goods covered by the marks at issue and the allegedly high degree of distinctiveness of the earlier mark. Such a global assessment is necessary only where both cumulative conditions for the application of Article 8(1)(b) of Regulation No 40/94 have first been met, and that is not the case here.

66      It follows from all of the above considerations that the first plea must be rejected.

 The third plea, alleging infringement of Article 74 of Regulation No 40/94

Arguments of the parties

67      The applicant submits that at no time in the proceedings before OHIM did Aprile e Aprile dispute the arguments and evidence submitted by the applicant. Having regard to Article 74 of Regulation No 40/94 and also taking into account the adversarial nature of opposition proceedings, the Board of Appeal should have based its decision on the uncontested facts relied on by the applicant, in particular the partial identity and similarity of the goods covered by the marks at issue and the high degree of distinctiveness of the earlier mark.

68      In so far as the Board of Appeal did not take that uncontested evidence into consideration, it failed to comply with its obligations under Article 74 of Regulation No 40/94.

69      OHIM disputes the applicant’s arguments.

 Findings of the Court

70      Under Article 74 of Regulation No 40/94, ‘in proceedings relating to relative grounds for refusal of registration, [OHIM] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought’.

71      That provision relates, in particular, to the factual basis of decisions of OHIM, that is, the facts and evidence on which those decisions may be validly based. Thus the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the facts and evidence which the parties have presented. However, the restriction of the factual basis of the examination by the Board of Appeal does not preclude it from taking 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 (see Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-1739, paragraphs 28 and 29, and the case-law cited).

72      Whilst it is apparent from Article 74(1) of Regulation No 40/94 that, in the course of opposition proceedings, OHIM cannot examine the facts of its own motion, that does not mean, however, that it is required to accept that points put forward by one party and not challenged by the other party to the proceedings are established. That provision only binds OHIM with regard to the facts, evidence and observations on which its decision is based.

73      In the present case, the arguments submitted by the applicant in connection with the present plea, alleging that the Board of Appeal failed to take into consideration the facts and evidence which it had submitted to prove the partial identity and similarity of the goods covered by the marks at issue and the allegedly high degree of distinctiveness of the earlier mark, must be rejected as irrelevant. The alleged failure, even were it assumed to be established, cannot call in question the assessment of the Board of Appeal, which, as has already been pointed out, correctly based its dismissal of the applicant’s appeal on the lack of identity or similarity between the marks at issue.

74      In so far as this plea is to be understood as meaning that the Board of Appeal should have found that the similarity between the marks at issue asserted by the applicant had been proved, since Aprile e Aprile had not disputed it, it must be rejected.

75      Such a line of argument misconstrues the meaning of Article 74 of Regulation No 40/94. As is apparent from the considerations and the case-law set out in paragraphs 70 to 72 above, while that provision precludes OHIM, in proceedings relating to relative grounds for refusal, from taking into consideration facts which were not put forward by the parties, with the exception of facts which are well known, it does not prevent it, on the basis of its assessment of the facts actually put forward by one of the parties, from arriving at a conclusion which is different from that desired by the party in question.

76      The existence or lack of similarity between two marks in opposition does not, as such, constitute a fact within the meaning of Article 74(1) of Regulation No 40/94, but the result of a factual assessment.

77      It follows from all of the foregoing that the third plea must be rejected, as must the action in its entirety.

 Costs

78      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, and OHIM has applied for costs, the applicant must be ordered to pay the costs.

On those grounds,

THE COURT OF FIRST INSTANCE (Fifth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Anvil Knitwear, Inc. to pay the costs.

 

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