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

JUDGMENT OF THE GENERAL COURT (Second Chamber)

3 June 2015 (*)

(Community trade mark — Invalidity proceedings — Community word mark LITHOFIX — Earlier national and international word marks LITHOFIN — Relative ground for refusal — Likelihood of confusion — Similarity of signs — Similarity of goods — No obligation for an examination to be carried out in relation to all the goods covered by the earlier mark — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009)

In Case T‑273/14,

Lithomex ApS, established in Langeskov (Denmark), represented by L. Ullmann, lawyer,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Bonne, acting as Agent,

defendant,

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

Glaubrecht Stingel GmbH & Co. KG, established in Wendlingen (Germany), represented by T. Krüger, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 17 February 2014 (Case R 2280/2012-5), relating to invalidity proceedings between Glaubrecht Stingel GmbH & Co. KG and Lithomex ApS,

THE GENERAL COURT (Second Chamber),

composed of M.E. Martins Ribeiro, President, S. Gervasoni (Rapporteur) and L. Madise, Judges,

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 30 April 2014,

having regard to the response of OHIM lodged at the Court Registry on 3 September 2014,

having regard to the response of the intervener lodged at the Court Registry on 5 September 2014,

further to the hearing on 4 March 2015,

gives the following

Judgment

 Background to the dispute

1        On 6 January 2009, the applicant, Lithomex ApS, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

2        The mark in respect of which registration was sought is the word sign LITHOFIX.

3        The goods in respect of which registration was sought are in Classes 19 and 31 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 19: ‘Building materials (non-metallic)’;

–        Class 31: ‘Agricultural, horticultural and forestry products’.

4        On 16 June 2009, the sign was registered as a Community trade mark under No 7504368.

5        On 24 June 2011, the intervener, Glaubrecht Stingel GmbH & Co. KG, applied to OHIM for a declaration that the Community mark was invalid in respect of goods in Class 19, pursuant to Article 53(1)(a) read in conjunction with Article 8(1)(b) of Regulation No 207/2009.

6        The earlier trade marks relied on in support of the application for a declaration of invalidity are as follows:

–        the word mark LITHOFIN, registered in Germany on 9 March 1979 under number 983212 and valid until 30 June 2017, for goods in Class 1 corresponding to the following description: ‘chemical preparations for the maintenance, except those containing soap, and the sealing of the surface of stone’;

–        the international word mark LITHOFIN, covering the Czech Republic, Hungary, Poland, Slovakia and Slovenia, registered on 13 October 1995 under number 646445 and valid until 13 October 2015, for goods in Class 1 corresponding to the following description: ‘Chemical products for maintenance (excluding those which contain soap) and for vitrification of surfaces made of stone’;

–        the international word mark LITHOFIN, covering the Benelux countries, Bulgaria, Denmark, Estonia, Spain, France, Italy, Latvia, Lithuania, Austria, Portugal, Romania, Finland and Sweden, registered on 12 June 1980 under number 453329 and valid until 12 June 2020, for goods in Class 1 corresponding to the following description: ‘Chemicals (excluding those which contain soap) for caring and vitrifying stone surfaces’.

7        By decision of 21 November 2012, the Cancellation Division rejected the application for a declaration of invalidity, holding that the goods were different.

8        On 13 December 2012, the intervener filed an appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

9        By decision of 17 February 2014 (‘the contested decision’), the Fifth Board of Appeal of OHIM upheld that appeal and declared the contested mark to be invalid in respect of all the goods in Class 19. In the interest of procedural efficiency, the Board of Appeal considered the application for a declaration of invalidity only in so far as it was based on the earlier mark registered in Germany (‘the earlier mark’). It held that, despite the relevant public’s level of attention being higher than average, there was a likelihood of confusion between the marks at issue with regard to goods in Class 19, in view of the similarity of the goods in question, the strong visual and aural similarity of the marks at issue and the average distinctiveness of the earlier mark.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        amend the contested decision, rejecting the appeal brought against the decision of the Cancellation Division of 21 November 2012;

–        order the intervener to pay the costs, including those incurred in the appeal proceedings before OHIM.

11      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

12      In support of the action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

13      Pursuant to Article 53(1)(a), read in conjunction with Article 8(1)(b) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application by the proprietor of an earlier trade mark 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. Moreover, under Article 8(2)(a)(ii) and (iii) of Regulation No 207/2009, the term ‘earlier trade marks’ is to be understood to mean trade marks registered in a Member State or trade marks registered under international arrangements which have effect in a Member State, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

14      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services concerned (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

15      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

16      The question whether the Board of Appeal was correct to hold that there was a likelihood of confusion between the marks at issue in the present case must be examined in the light of those considerations.

 The relevant public

17      As a preliminary point, it should be observed that the applicant does not dispute the Board of Appeal’s assessment that, for the purposes of considering the application for a declaration of invalidity on the basis of the earlier mark registered in Germany, the relevant territory is the territory of that Member State. Likewise, the applicant does not dispute the grounds of the contested decision which define the relevant public. On the other hand, the intervener contends that the relevant public has an average level of attention since the goods at issue are used on a daily basis. Nevertheless, it must be held that (as rightly stated by the Board of Appeal in paragraph 14 of the contested decision) taking into account the technical nature of the products at issue, the relevant public, which consists mainly of professionals, but also DIY enthusiasts, will have a higher level of attention than average.

 Comparison of the goods

18      The applicant disputes the assessments made by the Board of Appeal in the contested decision concerning the comparison between, on the one hand, goods in Class 1 covered by the earlier mark, namely ‘chemical preparations for the maintenance, except those containing soap, and the sealing of the surface of stone’ and, on the other hand, goods in Class 19 in respect of which registration of the mark LITHOFIX has been challenged, namely ‘building materials (non-metallic)’.

19      According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 23). Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

20      In addition, the fact that the goods at issue are often sold in the same specialist sales outlets is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (see, to that effect, judgment in PiraÑAM diseño original Juan Bolaños, cited in paragraph 19 above, EU:T:2007:219, paragraph 50). That assessment applies mutatis mutandis to services offered in those specialist sales outlets for the purpose, in particular, of maintaining and repairing those goods (judgment of 15 October 2014 in Skysoft Computersysteme v OHIM — British Sky Broadcasting Group and Sky IP International (SKYSOFT), T‑262/13, EU:T:2014:884, paragraph 23).

21      Goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking (see judgment in easyHotel, cited in paragraph 15 above, paragraph 57 and the case-law cited).

22      In the present case, after recalling that the mere fact of being registered for different goods classes was not sufficient to support a finding that goods were not similar, the Board of Appeal pointed out, in paragraph 19 of the contested decision, that stone sealing could consist, inter alia, of the application of a surface treatment to building structures constructed of natural stone to retard staining and corrosion. Consequently, the Board of Appeal found that sealing products were an essential complement to stone building materials, which are included in the broad definition of ‘building materials (non-metallic)’. Furthermore, the Board of Appeal considered that the goods covered by the contested mark included cement and mortar products which might be enriched by chemical additives, having similar sealing and insulating effects to the chemical preparations covered by the earlier mark. The Board of Appeal also pointed out that those products were sold next to each other on the shelves of DIY stores and that it could not be excluded that they were actually produced by the same undertakings. The Board of Appeal concluded that the goods at issue were similar.

23      First, the applicant complains that the Board of Appeal considered only a part of the goods covered by the earlier mark, namely chemical preparations for the sealing of the surface of stone, thus excluding goods intended for the maintenance of such surfaces. Indeed, in principle, it is for the Board of Appeal to compare all the goods covered by the mark applied for with all the goods in respect of which the earlier mark was registered (see, to that effect, judgment of 22 April 2008 in Casa Editorial el Tiempo v OHIM — Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, EU:T:2008:121, paragraph 27). In addition, according to the case-law of the Court of Justice, an examination of the grounds for refusal must be carried out in relation to each of the goods and services for which the trade mark registration is sought (judgments of 15 February 2007 in BVBA Management, Training en Consultancy, C‑239/05, ECR, EU:C:2007:99, paragraph 34, and 17 October 2013 in Isdin v Bial-Portela, C‑597/12 P, ECR, EU:C:2013:672, paragraph 25).

24      Nevertheless, that case-law does not necessarily require an examination of the grounds for refusal to be carried out in relation to each of the goods and services covered by the earlier mark. As OHIM contends, where two marks are similar, it is sufficient for there to be a likelihood of confusion between the goods covered by the contested mark and part of the goods covered by the earlier mark in order for registration of the contested mark to be refused (see, by analogy, judgments of 7 September 2006 in Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, ECR, EU:T:2006:247, paragraph 29, and 15 September 2009 in Wella v OHIM (TAME IT), T‑471/07, ECR, EU:T:2009:328, paragraph 26). Thus, in the present case, even supposing that only the chemical preparations for the sealing of the surface of stone, and not the chemical preparations intended for the maintenance of such surfaces, were similar to the goods covered by the contested mark, the Board of Appeal, which held that the two marks were similar, would have been required to grant the application for a declaration of invalidity of the contested mark in relation to ‘building materials (non-metallic)’, a category in respect of which the contested mark was registered.

25      Secondly, the applicant claims that the goods covered by the earlier mark and the goods sold under the contested mark serve different purposes since the latter are intended only to fill joints in pavements or between tiles and are not enriched with chemical additives. In particular, the applicant objects to the Board of Appeal’s statement, in paragraph 19 of the contested decision, that some of the goods of the contested mark might be enriched by chemical additives having similar sealing effects to the chemical preparations covered by the earlier mark.

26      However, it should be noted that the Board of Appeal was required, as it stated in paragraph 16 of the contested decision, to compare the goods at issue on the basis of the list of goods in respect of which registration of the contested mark had been sought, namely ‘building materials (non-metallic)’, and not only on the basis of goods actually marketed by the applicant, namely cement and mortar products having sealing and insulating effects (see, by analogy, judgment of 13 December 2012 in Natura Selection v OHIM — Ménard (natura), T‑461/11, EU:T:2012:693, paragraph 59 and the case-law cited).

27      According to Article 26(1)(c) of Regulation No 207/2009, an application for a Community trade mark must contain a list of the goods in respect of which the registration is requested and, under Rule 2(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 (OJ 1995 L 303, p. 1), the list of goods must be worded in such a way as to indicate clearly the nature of the goods. Consequently, it is for the person requesting registration of a sign as a Community trade mark to give, in the application, a list of the goods in respect of which the registration is requested and to provide, for each of those goods, a description clearly indicating their nature (judgment of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T‑304/06, ECR, EU:T:2008:268, paragraph 23). While those provisions require the goods for which the protection of the Community trade mark is sought to be identified by the applicant with sufficient clarity and precision, that is in order to enable OHIM and economic operators, on that basis alone, to determine the extent of the protection sought (judgment of 27 February 2014 in Advance Magazine Publishers v OHIM — López Cabré (VOGUE), T‑229/12, EU:T:2014:95, paragraph 36).

28      Accordingly, in the present case, since the applicant sought to register its mark in respect of ‘building materials (non-metallic)’ and not only in respect of cement and mortar products serving to fill joints between stones, the mere fact, if proved, that the Board of Appeal was wrong to consider that some of the goods of the contested mark might be enriched by chemical additives, would not be sufficient to warrant the conclusion that the Board of Appeal erred in holding that the goods at issue were similar.

29      Thirdly, the applicant claims that the goods covered by the earlier mark and the goods of the contested mark are not in competition with each other since they are used for different purposes, the former being intended for the maintenance or treatment of stone, while the latter are building materials.

30      However, it is apparent from the case-law cited in paragraph 19 above that the factors which must be taken into account when assessing the similarity of the goods includes, inter alia, whether they are in competition with each other or whether they are complementary.

31      With regard to whether the goods at issue are complementary in nature, it must be recognised that, as the Board of Appeal found, chemical preparations for the sealing of the surface of stone, which are covered by the earlier mark and classified in Class 1, serve to improve the longevity, attractive appearance and structural stability of stone building materials covered by the contested mark and classified in Class 19. Moreover, ‘building materials (non-metallic)’ covered by Class 19 include cement and mortar products which may have similar sealing effects to the goods covered by the earlier mark. Thus, the goods at issue are closely connected since the goods in one class are important for the maintenance of the goods in the other and, accordingly, there is a complementary relationship between the goods at issue which may result in customers thinking that the same undertaking is responsible for their production.

32      Fourthly, the applicant claims that the goods covered by the earlier mark and non-metallic building materials are sold in different sections of DIY shops, with goods covered by the earlier mark being sold in the cleaning products section, while the applicant’s goods are sold in the building materials section. However, the applicant has failed to support that allegation with any evidence. Besides, the applicant acknowledges that the goods at issue are sold in DIY shops. Lastly, it should be noted that the goods covered by the earlier mark consist not only of cleaning products, but also of preparations intended to seal stone surfaces and improve the longevity, attractive appearance and structural stability of stone building materials.

33      It follows from all the foregoing that there is nothing to call into question the Board of Appeal’s assessment that goods covered by the earlier German mark in Class 1 and goods covered by the contested mark in Class 19 are similar.

 Comparison of the marks at issue

34      The global assessment of the likelihood of confusion, as far as concerns the visual, aural or conceptual similarity of the marks at issue, must be based on the overall impression of the marks, bearing in mind, inter alia, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

35      The Board of Appeal found, in paragraph 22 of the contested decision, that the marks at issue were visually and aurally highly similar since they were both made up of eight letters, the first seven of which were identical and placed in the same order. Conceptually, after noting that neither of the two marks had any meaning as such for German consumers, the Board of Appeal took the view that some of the professional consumers may be aware of the meaning of the prefix ‘litho’, which refers to ‘stone’, but that those consumers would perceive the descriptive nature of the marks and would thus not give so much weight to that semantic coincidence (paragraph 23 of the contested decision).

36      First of all, the applicant disputes the Board of Appeal’s statement, in paragraph 24 of the contested decision, that the applicant did not put forward any arguments aimed at contesting the similarity of the marks during the administrative proceedings.

37      In that regard, it should be noted that it follows from the principle of continuity of functions between the different bodies of OHIM that, in matters within the scope of Article 76 of Regulation No 207/2009, the Board of Appeal is required to base its decision on all the matters of fact and of law contained in the decision contested before it which the party concerned introduced either in the proceedings before the department which heard the application at first instance or, subject only to Article 76(2), in the appeal (see, by analogy, judgment of 1 February 2005 in SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, ECR, EU:T:2005:29, paragraph 18).

38      With regard to the factual context, it follows from Article 76(2) of Regulation No 207/2009 that it is for the parties to supply in due time the evidence upon which they intend to rely. It follows that OHIM may not be accused of any illegality with regard to factual evidence that was not submitted to it (see, by analogy, judgment in HOOLIGAN, cited in paragraph 37 above, EU:T:2005:29, paragraphs 19 and 20 and the case-law cited).

39      As regards the legal framework, it should be noted that, in proceedings relating to relative grounds for refusal, the very wording of Article 76(1), in fine, of Regulation No 207/2009 requires that the examination carried out by OHIM be restricted to the facts, evidence and arguments provided by the parties and the relief sought. Thus, the Board of Appeal, when hearing an appeal against a decision terminating invalidity proceedings, may base its decision only on the relative grounds for refusal on which the party concerned has relied and the related facts and evidence presented by the parties. The criteria for applying a relative ground for refusal or any other provision relied on in support of arguments put forward by the parties are naturally part of the matters of law submitted for examination by OHIM. It should be stated, in that regard, that a matter of law may have to be ruled on by OHIM even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of Regulation No 207/2009 having regard to the facts, evidence and arguments provided by the parties. Thus the matters of law put forward before the Boards of Appeal also include any issue of law which must necessarily be examined for the purpose of assessing the facts and evidence relied on by the parties and for the purpose of allowing or dismissing the claims, even if the parties have not put forward a view on those matters and even if OHIM has omitted to rule on that aspect (judgment of 11 September 2014 in Continental Wind Partners v OHIM — Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, EU:T:2014:769, paragraph 35).

40      An assessment of the similarity of the marks at issue is one of the conditions required to establish that there is a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009.

41      Consequently, in the present case, whether or not the applicant’s arguments regarding the visual, aural and conceptual similarity of the marks at issue have previously been raised before OHIM is irrelevant for the purposes of determining whether those arguments are admissible before the General Court.

42      In any case, it appears from the documents before the Court that, during the administrative proceedings, the applicant merely alleged, without further specification, that the marks at issue were not identical and that the prefix ‘litho’ was used very frequently (as were the suffixes ‘fin’ and ‘fix’) and was descriptive of the uses served by the different goods. Accordingly, the applicant cannot take issue with the Board of Appeal for finding that, during the administrative proceedings, it had not put forward any arguments challenging the similarity of the marks.

43      The applicant’s primary claim is that, visually and aurally, the marks at issue do not present a high degree of similarity on account of the different pronunciation of the syllables ‘fix’ and ‘fin’, a factor which it maintains is decisive since the words are short.

44      However, it must be noted that what matters in the assessment of the visual and aural similarity of two word marks is the presence, in each of them, of several letters in the same order (judgment of 25 March 2009 in Kaul v OHIM — Bayer (ARCOL), T‑402/07, ECR, EU:T:2009:85, paragraph 83). In the present case, it is common ground that the marks at issue, which are not short words, are both composed of eight letters, the first seven of which are identical and placed in the same order at the beginning of each of the marks. Consequently, the beginning of both marks will be perceived and pronounced identically by the relevant public. The marks only differ in their last letter. It follows that, regardless of whether the last letter of each mark is pronounced in a hard or soft manner, on the basis of an overall impression, the marks can be considered visually and aurally similar to a very high degree.

45      Conceptually, the applicant maintains that the relevant public will automatically associate the earlier mark with a stone-finishing product. However, it is reasonable to conclude, as the Board of Appeal stated in paragraph 23 of the contested decision, that the majority of the relevant public, which is German-speaking, will not perceive the meaning of the prefix ‘litho’ and, therefore, it is not possible to carry out a conceptual comparison between the marks at issue. In any event, since both marks include that prefix, the part of the public who will understand the meaning of that prefix will conclude that there is a conceptual similarity between the marks at issue.

 Likelihood of confusion

46      The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgment in Canon, cited in paragraph 19 above, EU:C:1998:442, paragraph 17, and judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

47      The Board of Appeal found that, despite the relevant public’s level of attention being higher than average, there was a likelihood of confusion between the marks at issue with regard to goods in Class 19, in view of the similarity of the goods in question, the strong visual and aural similarity of the marks at issue and the average distinctiveness of the earlier mark.

48      The applicant submits that the differences between the marks at issue are particularly important given that the earlier mark has weak distinctive character as a result of the presence of the prefix ‘litho’, which refers to ‘stone’. At the hearing, the applicant also argued that the suffix ‘fix’ in the earlier mark will be perceived as an allusion to the English verb ‘to fix’.

49      In that regard, it must first be pointed out that (as is apparent from paragraph 45 above and contrary to what the applicant claims) a significant part of the relevant public will not understand the meaning of the term ‘litho’ and, therefore, that part of the relevant public will not perceive that term as having a meaning which is connected to the goods in question. Secondly, and in any event, the relevant public, which is German-speaking, will not necessarily understand the suffix ‘fix’ as being a reference to the English verb ‘to fix’. It follows that the distinctiveness of the earlier mark must be seen as average, as the Board of Appeal correctly observed in paragraph 25 of the contested decision.

50      In any event, it should be noted that the finding that the earlier mark has a weak distinctive character does not preclude, in itself, a finding that there is a likelihood of confusion (see, to that effect, order of 27 April 2006 in L’Oréal v OHIM, C‑235/05 P, EU:C:2006:271, paragraphs 42 to 45). Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgments of 16 March 2005 in L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, ECR, EU:T:2005:102, paragraph 61 and the case-law cited, and of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 70 and the case-law cited).

51      In the present case, in the light of the similarity of the goods in question and the strong similarity of the marks in question, it must be held, given the average distinctiveness of the earlier mark, that there is a likelihood of confusion between the marks at issue.

52      Having regard to all those considerations, the Board of Appeal did not fail correctly to apply Article 8(1)(b) of Regulation No 207/2009 in finding that there was a likelihood of confusion between the signs at issue.

53      For all those reasons, the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the second head of claim of the applicant, requesting the Court to dismiss the action brought against the decision of the Cancellation Division (see, to that effect, judgments of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, EU:T:2008:163, paragraph 70, and easyHotel, cited in paragraph 15 above, EU:T:2009:14, paragraphs 35 and 67).

 Costs

54      Under Article 87(2) of the Rules of Procedure of the General Court, 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 GENERAL COURT (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Lithomex ApS to pay the costs.

Delivered in open court in Luxembourg on 3 June 2015.

[Signatures]

* Language of the case: English.

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