Court of Justice of the European Communities (including Court of First Instance Decisions)

JUDGMENT OF THE COURT OF FIRST INSTANCE (Fourth Chamber)

8 February 2007 (*)

(Community trade mark - Opposition proceedings - Application for the figurative Community trade mark NARS - Earlier figurative national marks including the word element MARS - Relative ground for refusal - Likelihood of confusion - Absence of similarity between the signs - Article 8(1)(b) of Regulation (EC) No 40/94)

In Case T-88/05,

Quelle AG, established in Fürth (Germany), represented by H. Lindner, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Laitinen and A. Folliard-Monguiral, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being

Nars Cosmetics, Inc., established in New York, New York (United States), represented by M. de Justo Bailey, lawyer,

ACTION for annulment of the decision of the Second Board of Appeal of OHIM of 17 December 2004 (Case R 379/2004-2), relating to opposition proceedings between Quelle AG and Nars Cosmetics, Inc.,

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

composed of H. Legal, President, I. Wiszniewska-Białecka and E. Moavero Milanesi, Judges,

Registrar: C. Kristensen, Administrator,

having regard to the application lodged at the Registry of the Court of First Instance on 22 February 2005,

having regard to the response of OHIM lodged at the Registry on 30 June 2005,

having regard to the response of the intervener lodged at the Registry of the Court on 11 July 2005,

further to the hearing on 20 September 2006,

gives the following

Judgment

 Background to the dispute

1        On 4 October 1999 Mr F. Nars filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended.

2        The trade mark applied for is the following figurative sign:

3        The goods in relation to which registration of the trade mark was sought belong to Classes 3, 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:

-        Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;

-        Class 18: ‘Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;

-        Class 25: ‘Clothing, footwear, headgear’.

4        In the course of the procedure, the application for registration of the trade mark was transferred to Nars Cosmetics, Inc.

5        The application for the Community trade mark was published in Community Trade Marks Bulletin No 33/2000 of 25 April 2000.

6        On 20 July 2000 Quelle filed a notice of opposition to registration of the mark in question in respect of all the goods in Class 25 referred to by the application for registration, alleging a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

7        The opposition was based on all the goods covered by German registrations Nos 926 493 and 940 032 of the following figurative trade mark:

8        Registration No 926 493 was granted on 8 January 1975 for ‘footwear, in particular sports footwear’ in Class 25, and registration No 940 032 was granted on 19 January 1976 for ‘sportswear’, also in Class 25.

9        On 5 March 2001 the intervener submitted a request for the applicant to furnish proof of use of the marks on which the opposition was based, pursuant to Article 43 of Regulation No 40/94.

10      On 19 June 2001 the applicant submitted, as evidence of use of each of the marks relied on in the opposition, two statutory declarations relating to its annual turnover between 1995 and 2000 from the sale of sports footwear and of sports trousers, and also two pages of extracts from catalogues and two pairs of sports trousers.

11      By decision of 6 April 2004, the Opposition Division of OHIM rejected the opposition on the ground that the evidence provided by the applicant was not sufficient to prove the use of the earlier marks. Consequently, the Opposition Division did not go on to assess the likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 40/94.

12      On 19 May 2004 the applicant filed a notice of appeal at OHIM against the decision of the Opposition Division. On 4 August 2004 it filed a statement setting out the grounds of the appeal and additional evidence relating to genuine use of the earlier marks. On 6 August 2004 it lodged a further statement.

13      By decision of 17 December 2004 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the Opposition Division’s decision in so far as the decision found that there was no proof of genuine use of the earlier trade marks, without ruling on the admissibility of the new evidence submitted with the grounds of appeal. The Board of Appeal then went on to examine the substance of the case and found that the opposing signs were neither visually nor conceptually similar and that, in spite of their phonetic similarity, confusion was highly unlikely. Consequently, the Board of Appeal rejected the opposition.

 Forms of order sought

14      In its application, the applicant claims that the Court should:

-        annul the contested decision;

-        annul the decision of the Opposition Division;

-        uphold the opposition and reject application for registration No 1 333 657;

-        order OHIM to pay the costs.

15      By letter lodged at the Court Registry on 31 August 2005, the applicant informed the Court that it wished to withdraw the first head of claim, in so far as it sought the annulment of the contested decision in total, and also the second head of claim, and that it now claimed that the Court should:

-        annul the second and third points of the operative part of the contested decision;

-        uphold the opposition and reject application for registration No 1 333 657;

-        order OHIM to pay the costs.

16      During the hearing, the applicant withdrew the claim for the opposition to be upheld and for the application for registration to be rejected, and the Court took formal notice of that.

17      OHIM and the intervener claim that the Court should:

-        dismiss the action;

-        order the applicant to pay the costs.

 Law

18      In their pleadings, the applicant and the intervener submit, respectively, two pleas in law and two arguments in support of their claims. As the applicant withdrew two of its heads of claim sought in its letter of 31 August 2005, it thereby abandoned one of its pleas in law. During the hearing, the intervener for its part withdrew an argument relating to the absence of genuine use of the earlier marks. Furthermore, the applicant, during the hearing, withdrew from its application an item of evidence submitted for the first time before the Court which had not been submitted to OHIM in the course of the administrative procedure. Consequently, it is necessary to examine only the infringement of Article 8(1)(b) of Regulation No 40/94 on the basis of the items of evidence already submitted before OHIM.

 Arguments of the parties

19      The applicant submits that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 between its earlier trade marks, MARS, and the mark applied for.

20      As its earlier marks are registered in Germany, the likelihood of confusion must be assessed from the point of view of the relevant public in Germany, consisting of reasonably well-informed and reasonably observant and circumspect average consumers.

21      As the goods are in part similar and in part identical, it is necessary for there to be a certain dissemblance between the marks in order to exclude the likelihood of confusion.

22      As regards the comparison of the signs, visually, the word elements of the mark applied for are predominant. It is true that the figurative element of the earlier marks creates a different impression from that created by the mark applied for, but that element is not decisive for a consumer when purchasing everyday consumer goods, the word element being the easiest way of referring to the mark and the element of the mark which is most likely to be remembered, while the figurative elements are not used when the applicant’s marks are referred to in speech. In the case of the marks relied on in the opposition, therefore, the public will retain the word element ‘mars’.

23      Furthermore, optically, the word element of the mark NARS could be read as ‘mars’. As the letters of the mark applied for interlock and the first letter of the sign NARS is linked to the second, taken together, the two letters form visually the letter ‘m’.

24      As regards the phonetic comparison, the Board of Appeal erred in its assessment, first, that in the case of words consisting of four letters, the first letter is significant and, second, that the differences in pronunciation are clearly audible in German. Only if the word ‘mars’ and the word ‘nars’ are spoken simultaneously and articulated with precision can the consumer perceive the phonetic differences between the two signs. However, the assumption of such pronunciation is theoretical and alien to the normal behaviour of the average consumer. In ordinary speech the word elements of the two opposing marks sound the same. Furthermore, the average consumer does not perceive such a fine distinction in pronunciation and naturally makes allowances for minor inaccuracies, particularly where it is a question of a mark and a word (‘mars’) he is familiar with. There is thus considerable phonetic similarity between the marks.

25      On a conceptual comparison, the well-known meaning of the word ‘mars’ leads the consumer to correct the word ‘nars’ so as to identify it with the word ‘mars’. Therefore, there is no conceptual difference between the word elements of the opposing signs.

26      As regards the likelihood of confusion, that must be assessed taking into account, first, the fact that the consumer’s level of attention in respect of the goods in question, which are ordinary consumer goods, is not very high and, second, the fact that the relevant public only rarely has the chance to make a direct comparison of marks and therefore has to rely on its imperfect recollection of them. Assessment of the likelihood of confusion also presupposes a certain interdependence of the factors to be taken into account because, according to the case-law, where goods are identical, the effect of any differences between the signs in question is reduced. In addition, mere phonetic similarity may be sufficient to give rise to a likelihood of confusion, particularly where the goods covered by the opposing marks are very similar and one of the marks is highly distinctive.

27      In the present case, the Board of Appeal was wrong to presume that the goods in question were sold ‘on sight’ alone. The word version of the mark is the most often used, both in sales discussions and by virtue of the fact that sports footwear and clothing is often the subject of discussion among the younger generation.

28      Moreover, the earlier marks are highly distinctive in the relevant territory, Germany, owing to their intensive use since 1995, evidenced in particular by statements detailing its annual turnover in Germany between 1995 and 2000 in respect of the sale of sports footwear and of sports trousers bearing the mark MARS. Furthermore, the applicant is one of the largest mail order companies and its MARS marks have a reputation to match. Therefore, the mark applied for must differ to a greater extent from the earlier marks than if heightened distinctiveness had not been proved, particularly as the goods in the present case are identical. However, that is not the case, as shown by the comparison of the signs carried out above.

29      The applicant concludes that, as the goods in question are identical and the signs have a high level of phonetic and conceptual similarity, and as the earlier marks are highly distinctive, the likelihood of confusion is proven and any visual differences between the conflicting signs are not sufficient to overcome it.

30      OHIM contends that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

31      With regard to the comparison of the goods, it is common ground that the goods covered by the applicant’s registrations are included in the description of the goods in the application for registration in question.

32      As regards the comparison of the signs, at the visual level, the opposing marks exhibit significant differences. The mark applied for is an artistically presented word mark consisting of four intertwined letters, ‘n’, ‘a’, ‘r’ and ‘s’, whereas the earlier marks are composed of, first, a figurative element, a dark globe and within it two white curved lines through which an arrow-like figure cuts, which could suggest a planet and a spacecraft, and, secondly, a word element, the word ‘mars’ in block letters just beneath the spherical motif. The figurative element of the earlier marks must be included in the comparison because the consumer, when confronted with a composite mark of that kind, sees it as a whole. In addition, the figurative element, due to its size and dominant position visually, attracts at least as much attention as the word element.

33      The word elements of the conflicting marks consist of four letters, of which only the first is different. However, if the first letter of ‘nars’ could, in some circumstances, be perceived as an ‘m’ because it is interlocked with the following letters, an ‘h’, which does not appear in the earlier marks, would also have to be seen in that mark. The opposing marks are therefore visually clearly dissimilar.

34      As regards the phonetic comparison, OHIM concedes that there is some similarity in the word elements of the opposing marks.

35      Conceptually, the opposing marks are entirely different. The earlier marks lead the consumer to think immediately of the planet Mars, a meaning which is accentuated by the spherical figure accompanying the word, whereas the mark applied for consists of an arbitrary word which might, but will not necessarily, be identified by some consumers as a name.

36      Consequently, OHIM is of the opinion that there is no visual or conceptual similarity between the marks.

37      As regards the likelihood of confusion, OHIM submits that, in spite of the phonetic similarity of the opposing signs, the relevant public will not focus exclusively on the word element and ignore the figurative element, and denies that, when assessing the meaning of the signs in the conceptual respect, the public will tend to correct ‘nars’ to ‘mars’. The visual impact created by the marks, by contrast, is of great importance, particularly in relation to clothing, which is rarely purchased on the basis of oral recommendation. As the dominant and distinctive features of a sign are more easily memorised by consumers and the figurative elements in composite marks, consisting of a word and a device, may be considered to be dominant, the pronounced visual differences between the marks at issue exclude any possibility of confusion.

38      Furthermore, the average consumer is used to being confronted with a variety of marks in the clothing sector and therefore, in the present case, will not be inclined, according to OHIM, to make a semantic adjustment when confronted with the mark NARS.

39      In addition, the conceptual and visual differences between the conflicting marks to a large extent counteract the phonetic similarities between them. Moreover, the applicant has not proven that the goods in question were marketed in such a way that purchasing decisions were made solely on the basis of phonetic elements.

40      Thus, for OHIM, the low overall degree of similarity of the conflicting signs excludes any likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, even if it has to be admitted that the applicant’s marks are highly distinctive.

41      The intervener begins by comparing the signs in question. Visually, the difference between the opposing marks is striking. The most characteristic and distinctive element of the earlier marks is the graphic representation of a planet, accompanied by the word ‘mars’ in a secondary position, identifying the planet depicted, whilst the mark applied for has as its principal characteristic the surname of its original proprietor, the business name of the present proprietor, which, irrespective of the stylised representation, can be understood by consumers only as the word ‘nars’.

42      With regard to the phonetic aspect, which is the least important in the present case by reason of the nature of the goods concerned, the intervener observes that the first letter of the word ‘mars’, ‘m’, is a phoneme consisting of a labial consonant, whereas the first letter of the word ‘nars’ is ‘n’, a phoneme consisting of a nasal alveolar consonant. Therefore these two elements are pronounced differently and the difference in pronunciation is heard perfectly in German, all the more so because the conflicting signs are monosyllables. Those signs are thus clearly dissimilar at the phonetic level.

43      Conceptually, the earlier marks evoke for the consumer the idea of the planet Mars or a similar subject. By contrast, the mark applied for either evokes no specific meaning or evokes the name of a person or an undertaking of foreign origin; it is therefore a fantasy term, which is not disputed by the applicant. Consequently, the signs are entirely dissimilar.

44      Second, the intervener observes that an overall comparison of the conflicting signs shows that, irrespective of the degree of similarity between the goods concerned, the likelihood of confusion on the part of the average consumer is very slight, or even non-existent. The arbitrary meaning of the earlier marks in the visual, phonetic and conceptual respects is so clear and unmistakable that the clearly substantial differences between them and the mark applied for make any confusion unlikely.

45      In particular, as the goods in question are mainly fashion items and considering that the average consumer does not buy a Class 25 item without seeing it, the visual and conceptual elements are preponderant and oral comparison is not particularly relevant.

46      That predominance of the visual and conceptual elements in the mind of the consumer confronted with the goods concerned has the effect of excluding any phonetic similarity, which is moreover only minor and secondary. Thus, the fact that the German consumer is familiar with the concept of the planet Mars has the effect of attracting his attention even more to the predominant differences between the opposing signs; he will not correct the phonetic perception of a mark which he understands as a name of foreign origin to make it coincide with that of another mark which is arbitrary and has a clear common meaning with which he is familiar.

47      In any case, the difference in pronunciation is, at least, sufficiently perceptible to the German consumer for the differences between the signs to prevail on an overall comparison.

48      Finally, the distinctiveness of the earlier marks is no greater than average. First, neither the reputation nor the awareness of the earlier marks was claimed as a basis for the opposition. Second, the evidence produced by the applicant to prove the greater distinctiveness of the earlier marks on account of their use was submitted belatedly, during the procedure before the Board of Appeal, and cannot therefore be accepted. Third, the earlier marks cannot have greater distinctiveness than that which they intrinsically have, namely the average distinctiveness of an arbitrary mark.

49      Therefore the Board of Appeal rightly rejected the opposition, finding that there was no likelihood of confusion.

 Findings of the Court

50      As set out in Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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. Furthermore, under Article 8(2)(a)(ii) and (iii) of Regulation No 40/94, earlier trade marks is to be taken to mean trade marks registered in a Member State or trade marks registered under international arrangements with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

51      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, in accordance with the perception which the average consumer has of the signs and goods or services in question, taking into account all factors relevant to the circumstances of the case (Case T-162/01 LaboratoriosRTB v OHIM - Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II-2821, paragraphs 30 to 32, and Case T-206/04 Rodrigues Carvalhais v OHIM - Profilpas (PERFIX) [2006] ECR II-0000, paragraph 28).

52      For the purposes of that global appreciation, the average consumer of the products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26, and Case T-153/03 Inex v OHIM - Wiseman(Representation of a cowhide) [2006] ECR II-0000, paragraph 24) and that the consumer only rarely has the chance to make a direct comparison between the different marks but has to place his trust in the imperfect image of them that he has retained in his mind (Case T-99/01 Mystery Drinks v OHIM - Karlsberg Brauerei (MYSTERY) [2003] ECR II-43, paragraph 32).

53      With respect to the consumer’s level of attention when purchasing the goods concerned, in so far as the goods covered by the mark for which registration is sought and against which the opposition has been lodged are sports clothing and footwear and therefore everyday consumer goods (see, to that effect, Case T-104/01 Oberhauser v OHIM - Petit Liberto (Fifties) [2002] ECR II-4359, paragraph 29, and Joined Cases T-117/03, T-119/03 and T-171/03 New Look v OHIM - Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II-3471, paragraph 25), and given that the protection of the earlier MARS marks extends only to Germany, the likelihood of confusion must, in the present case, be assessed in relation to a reasonably well-informed and reasonably observant and circumspect German consumer.

54      In the present case, the similarity of the goods covered by the opposing signs is not in dispute.

55      As regards the comparison of the opposing signs, it must be borne in mind that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T-6/01 Matratzen Concord v OHIM - Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30, and Case T-317/03 Volkswagen v OHIM - Nacional Motor (Variant) [2006] ECR II-0000, paragraph 46). It is also necessary, in determining the degree of visual, phonetic and conceptual similarity, to assess, where appropriate, the importance to be attached to those different components, taking account of the category of goods or services in question and the circumstances in which they are marketed (Lloyd Schuhfabrik Meyer, paragraph 52 supra, paragraph 27, and Case T-57/03 SPAG v OHIM - Dann and Becker (HOOLIGAN) [2005] ECR II-287, paragraph 54).

56      The global assessment of the likelihood of confusion, as far as concerns the visual, phonetic or conceptual similarity of the conflicting signs, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components (Case T-292/01 Phillips-Van Heusen v OHIM - Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47, and Representation of a cowhide, paragraph 52 supra, paragraph 26).

57      Furthermore, it is settled case-law that a complex mark and another mark which is identical or similar to one of the components of the complex mark may be regarded as being similar where that component forms the dominant element within the overall impression given by the complex mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression given by it. That approach does not amount, however, to taking into consideration only one component of a complex trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole (MATRATZEN, paragraph 55 supra, paragraphs 33 and 34, and Representation of a cowhide, paragraph 52 supra, paragraph 27).

58      However, that does not mean that the overall impression created in the mind of the relevant public by a complex trade mark may not, in certain circumstances, be dominated by one or more of its components. 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 (MATRATZEN, paragraph 55 supra, paragraphs 34 and 35, and Case T-31/03 Grupo Sada v OHIM - Sadia (GRUPO SADA) [2005] ECR II-1667, paragraph 49).

59      At issue in the present case are, on the one hand, a figurative mark composed of a word element, ‘nars’, which is represented in a stylised manner, and, on the other hand, two identical figurative earlier marks, made up of a graphic element and a word element (complex marks), namely a dark globe and within it two white curved lines through which an arrow-like figure cuts and, below that, the word ‘mars’ in block letters.

60      Visually, clearly the graphic element of the earlier marks is dominant in view of its size and colour. It is, as OHIM rightly observes, five times larger than the word element of the marks and its contrasting black and white colours make it stand out clearly. It is, for those reasons, easily perceptible, whilst the word ‘mars’, although stylised, appears only as a caption which refers to that graphic element. By contrast, the mark applied for is composed only of the word ‘nars’ represented in a stylised manner.

61      There are thus clear visual differences between the opposing signs. The fact that their word elements differ only by one letter is not sufficient to cast doubt on that finding. First, they are in very different fonts. Secondly, it has been pointed out above that the graphic element of the earlier marks is dominant within the overall visual impression made by them and that a graphic element is not present in the representation of the mark applied for. The applicant’s claim that the stylised representation of the word ‘nars’ has the effect that the first letter of that word is perceived as an ‘m’ and not as an ‘n’ is not convincing either. If that perception were established, the whole word ‘nars’ would be perceived differently and its visual differentiation from the word ‘mars’ would be accentuated.

62      Consequently, the Board of Appeal was right in finding that the opposing signs were not visually similar.

63      Phonetically, the letters ‘a’, ‘r’ and ‘s’ are common to the word elements of the conflicting signs, their only phonetic difference being related to their first letters. Although it is true that the consumer normally attaches more importance to the first part of words (Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM - González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraph 81), in the present case the differences in pronunciation between the first letters in question are not sufficient to counteract the similarity arising from the identity between the most significant parts, in terms of number of letters, of the conflicting signs. It must therefore be accepted that there is some similarity between the conflicting signs at the phonetic level.

64      Conceptually, the earlier marks clearly refer to the idea of the planet Mars. The word ‘mars’ is the only word element of the earlier marks and it appears as a caption referring to the graphic element of the marks, described in paragraph 59 above, which could be interpreted as the representation of a planet and a spacecraft. Furthermore, it is not disputed that the word ‘mars’ is perceived by the average German consumer as a word referring to a planet. Consequently, the earlier national marks are understood by the relevant public to that effect. As regards the word element of the mark applied for, ‘nars’, it has no meaning and no meaning is conferred on it by its stylised representation. That sign in point of fact suggests a name or a fantasy word. The use of names as marks being widespread in the clothing sector (see, to that effect, HOOLIGAN, paragraph 55 supra, paragraph 66), the mark applied for will be registered by the relevant public as a name or a fantasy word.

65      The average consumer will thus register the earlier marks as referring to the idea of the planet Mars and that applied for as referring to a name or a fantasy word. The Board of Appeal’s finding that the conflicting marks are conceptually dissimilar is therefore correct.

66      In the context of the overall assessment of the likelihood of confusion, it must thus be borne in mind that that likelihood must be assessed in relation to a reasonably well-informed and reasonably observant and circumspect German consumer, that the goods covered by the marks in question are identical and that the opposing signs are neither visually nor conceptually similar, but that there is some phonetic similarity between them.

67      It must also be pointed out that it is possible that mere phonetic similarity between two trade marks may create a likelihood of confusion (Lloyd Schuhfabrik Meyer, paragraph 52 supra, paragraph 28, and Case T-211/03 Faber Chimica v OHIM - Nabersa (Faber) [2005] ECR II-1297, paragraph 27). However, that finding is not in itself a sufficient basis for holding that the trade marks in question, each considered as a whole, are similar (MATRATZEN, paragraph 55 supra, paragraph 31, and Case T-390/03 CM Capital Markets v OHIM - Caja de Ahorros de Murcia (CM) [2005] ECR II-1699, paragraph 44). As has already been pointed out, the assessment of the similarity between two marks must be based on the overall impression given by the marks, taking account inter alia of their distinctive and dominant components...

68      Therefore, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the opposing signs do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market (Case T-129/01 Alejandro v OHIM - Anheuser Busch (BUDMEN) [2003] ECR II-2251, paragraph 57, and NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 53 supra, paragraph 49). The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing marks are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will as a general rule be more important. If on the other hand the product covered is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 53 supra, paragraph 49).

69      Likewise, the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (BASS, paragraph 56 supra, paragraph 55, and Case T-301/03 Canali Ireland v OHIM - Canal Jean (CANAL JEAN CO. NEW YORK) [2005] ECR II-2479, paragraph 55). That is the case with respect to the goods at issue here. Although the applicant states that it is a mail order company, it does not submit that its goods are sold outside normal distribution channels for clothing and shoes (shops) or without a visual assessment of them by the relevant consumer. Moreover, while oral communication in respect of the product and the trade mark is not excluded, the choice of an item of clothing or a pair of shoes is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 53 supra, paragraph 50). The same is true of catalogue selling, which involves as much as does shop selling a visual assessment of the item purchased by the consumer, whether clothing or shoes, and does not generally allow him to obtain the help of a sales assistant. Where a sales discussion by telephone is possible, it takes place usually only after the consumer has consulted the catalogue and seen the goods. The fact that those products may, in some circumstances, be the subject of discussion between consumers is therefore irrelevant, since, at the time of purchase, the goods in question and, therefore, the marks which are affixed to them are visually perceived by consumers.

70      The mere phonetic similarity of the opposing marks does not therefore, in the present case, support the conclusion that there is a likelihood of confusion, particularly because, during the assessment of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, the conceptual differences which distinguish the opposing marks may be such as to counteract to a large extent the visual and phonetic similarities between those marks, provided that at least one of the marks at issue has, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately and the other mark has no such meaning or an entirely different meaning (BASS, paragraph 56 supra, paragraph 54, and MUNDICOR, paragraph 63 supra, paragraph 93). That is the case here, as is apparent from paragraphs 64 and 65 above.

71      In the light of all the foregoing considerations, it must be held that the Board of Appeal did not err in finding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

72      That finding is not affected by the fact that, according to the applicant, the earlier marks are highly distinctive.

73      It is true that the distinctive character of an earlier trade mark, whether stemming from the inherent characteristics of that mark or from its reputation, must be taken into account when determining whether the similarity between the goods or services covered by the opposing trade marks is sufficient to give rise to a likelihood of confusion (Case C-39/97 Canon [1998] ECR I-5507, paragraphs 18 and 24). That interpretation is borne out, in the context of Regulation No 40/94, by the seventh recital in the preamble to the regulation according to which the likelihood of confusion must be assessed in the light of, inter alia, the recognition of the trade mark on the market.

74      However, first, with respect to the alleged highly distinctive character of the earlier marks which was established by use, it is apparent from the case-file submitted in the proceedings before OHIM, and was confirmed by the applicant during the hearing, that that argument was not put forward before it. Article 74(1) in fine of Regulation No 40/94 provides 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. The Court has held that that provision required a Board of Appeal, in ruling on an appeal against a decision to terminate an opposition procedure, to base its decision only on the relative grounds for refusal on which the party concerned relied and on the related facts and evidence produced by that party (Case T-308/01 Henkel v OHIM - LHS (UK) (KLEENCARE) [2003] ECR II-3253, paragraph 32, and GRUPO SADA, paragraph 58 supra, paragraph 21). As well as that, neither the Opposition Division nor the Board of Appeal was under any duty to establish of its own motion the high degree of recognition supposedly acquired by the mark applied for (GRUPO SADA, paragraph 58 supra, paragraph 23). The argument is thus inadmissible.

75      Second, as regards the inherent distinctive character of the earlier marks, OHIM is required to examine that matter, if necessary of its own motion, once opposition proceedings have been brought. The assessment of inherent distinctive character does not presuppose any matter of fact which is up to the parties to establish. Moreover, that assessment does not require the parties to provide facts, arguments or evidence tending to establish that inherent distinctive character, since OHIM is able to detect and assess the existence thereof having regard to the earlier mark on which the opposition is based (HOOLIGAN, paragraph 55 supra, paragraph 32).

76      In the present case, it appears that the Board of Appeal’s decision does not expressly address that question, which can only be interpreted as meaning, implicitly, that OHIM did not attribute to the earlier marks a particularly high level of inherent distinctive character which it should then have pointed out of its own motion. In that regard, the decision is not unlawful. The high degree of distinctiveness of a trade mark in the light of its intrinsic qualities is not to be inferred from the mere fact that the trade mark is sufficiently original to function as a mark (see, to that effect, MYSTERY, paragraph 52 supra, paragraph 34). The earlier marks in question having the level of intrinsic distinctiveness of any mark which does not describe the goods it refers to, their level of distinctive character is not particularly high, and, given the inadmissibility of the arguments submitted in that respect, it is not proven that it was enhanced by use.

77      It follows that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94, must be dismissed, as well as the action as a whole.

 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, it must be ordered to pay the costs in accordance with the form of order sought by OHIM and the intervener.

         On those grounds,

THE COURT OF FIRST INSTANCE (Fourth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders the applicant to pay the costs.

Delivered in open court in Luxembourg on 8 February 2007.

* Language of the case: English.