Judgment of the General Court (Sixth Chamber) of 13 September 2010. Industria de Diseño Textil (Inditex), SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM). Community trade mark

Case T-292/08

Industria de Diseño Textil (Inditex), SA

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for the Community word mark OFTEN – Earlier national word mark OLTEN – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Similarity of the goods – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Proof of genuine use of the earlier mark – Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009) – Subject-matter of the dispute before the Board of Appeal – Articles 61 and 62 of Regulation No 40/94 (now Articles 63 and 64 of Regulation No 207/2009))

Summary of the Judgment

1.      Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – Necessity to decide that issue, once raised by the applicant, before the decision on the opposition – Consequence

(Council Regulation No 40/94, Art. 43(2))

2.      Community trade mark – Observations of third parties and opposition – Examination of the opposition – Proof of use of the earlier mark – No submission of the plea alleging that the proof of genuine use was insufficient

(Council Regulation No 40/94, Art. 43(2))

3.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – One or other of those aspects not expressly disputed

(Council Regulation No 40/94, Art. 8(1)(b))

4.      Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark

(Council Regulation No 40/94, Art. 8(1)(b))

1.      The issue of the genuine use of the earlier trade mark within the meaning of Article 43(2) of Regulation No 40/94 on the Community trade mark is a preliminary issue which, once raised by the applicant for the trade mark, must be decided before the opposition proper is examined. The request for proof of genuine use by the trade mark applicant adds that preliminary issue to the opposition proceedings and in that sense changes their content, in so far as it constitutes a new, specific claim linked to factual and legal considerations which are separate from those which gave rise to the opposition to the registration of a Community trade mark.

It follows that the issue of genuine use is specific and preliminary in character, since it leads to a determination whether, for the purposes of the examination of the opposition, the earlier trade mark can be deemed to be registered in respect of the goods or services in question, that issue thus not falling within the context of the examination of the opposition proper, alleging the existence of a likelihood of confusion with that mark.

(see paras 31-33)

2.      Where the plea alleging that the proof of genuine use of the earlier mark was insufficient for the purpose of Article 43(2) of Regulation No 40/94 on the Community trade mark is not specifically raised before the Board of Appeal, and therefore also does not constitute a relevant matter for the purposes of the examination of the appeal, that being limited to the examination of the opposition proper, alleging the existence of a likelihood of confusion, that plea does not form part of the subject‑matter of the dispute before the Board of Appeal.

(see paras 39-40)

3.      Opposition based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark requires the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to adjudicate on whether the goods and services covered by the marks in question are identical or similar and whether those marks themselves are identical or similar. The fact that one or other of those aspects is not expressly disputed before the Board of Appeal does not divest the Office of the power to adjudicate on that issue. Those considerations are supported by the principle of the interdependence of the factors taken into account in the global assessment of the likelihood of confusion, in particular the assessment of the similarity of the trade marks and that of the goods and services covered.

Therefore, the Board of Appeal, ruling on the appeal which followed the opposition based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, is required to adjudicate on the issue of the similarity of the goods in question, even though that issue has not been expressly raised before it.

(see paras 41-44)

4.      There is, for the relevant public consisting of average Spanish consumers, although showing a level of attention higher than the usual, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark between the word sign OFTEN, registration of which as a Community trade mark is sought for, inter alia, ‘Goods in [precious metals and their alloys] or coated therewith, not included in other classes; jewellery; horological and chronometric instruments; ornamental pins; tie-pins; novelty key rings; medals; badges of precious metal; shoe and hat ornaments of precious metal; cuff links’ falling within Class 14 of the Nice Agreement, and the word mark OLTEN, registered earlier in Spain for, inter alia, ‘watches’, falling within the same class.

(see paras 73-74, 104)

JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

13 September 2010 (*)

(Community trade mark – Opposition proceedings – Application for the Community word mark OFTEN – Earlier national word mark OLTEN – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Similarity of the goods – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Proof of genuine use of the earlier mark – Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009) – Subject-matter of the dispute before the Board of Appeal – Articles 61 and 62 of Regulation No 40/94 (now Articles 63 and 64 of Regulation No 207/2009)) 

In Case T‑292/08,

Industria de Diseño Textil (Inditex), SA, established in Arteixo (Spain), represented by E. Armijo Chávarri and A. Castán Pérez‑Gómez, lawyers,

applicant,

v

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

defendant,

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

Roberto Fernando Marín Díaz de Cerio, residing in Logroño (Spain),

ACTION brought against the decision of the Second Board of Appeal of OHIM of 24 April 2008 (Case R 484/2007‑2), relating to opposition proceedings between Roberto Fernando Marín Díaz de Cerio and Industria de Diseño Textil (Inditex), SA,

THE GENERAL COURT (Sixth Chamber),

composed of A.W.H. Meij, President, V. Vadapalas (Rapporteur) and L. Truchot, Judges,

Registrar: J. Palacio González, Principal Administrator,

having regard to the application lodged at the Registry of the General Court on 23 July 2008,

having regard to the response lodged at the Court Registry on 7 November 2008,

further to the hearing on 12 February 2010,

gives the following

Judgment

 Background to the dispute

1        On 5 August 2002, the applicant, Industria de Diseño Textil (Inditex), SA, 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 (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 mark OFTEN.

3        The goods for which registration was sought fall within, inter alia, Class 14 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 description: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; ornamental pins; tie-pins; needle cases of precious metal; napkin rings of precious metal; works of art of precious metal; novelty key rings; medals; coins; gold and silver ware (other than cutlery, forks and spoons); badges of precious metal; shoe and hat ornaments of precious metal; ashtrays of precious metal; cuff links’.

4        The application for registration of the Community trade mark was published in Community Trade Marks Bulletin No 31/2004 of 2 August 2004.

5        On 26 October 2004, Mr Roberto Fernando Marín Díaz de Cerio filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the following three Spanish marks:

–        the word mark OLTEN, registered on 5 September 1988 (No 1182270) in respect of goods falling within Class 14;

–        the figurative mark, registered on 5 March 1990 (No 1293560) in respect of goods falling within Class 14, reproduced below: 

 

–        the figurative mark, registered on 20 November 2002 (No 2460666) in respect of goods falling within Class 14, reproduced below:

7        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8        By letter of 2 September 2005, the applicant requested that Mr Marín Díaz de Cerio furnish proof of genuine use of the earlier marks, in accordance with Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009).

9        On 2 February 2007, the Opposition Division upheld the opposition in part, as regards the following goods falling within Class 14: ‘Goods in [precious metals and their alloys] or coated therewith, not included in other classes; jewellery; horological and chronometric instruments; ornamental pins; tie-pins; novelty key rings; medals; badges of precious metal; shoe and hat ornaments of precious metal; cuff links’. It held, inter alia, that the genuine use of the earlier mark OLTEN had been proven as regards ‘watches’ falling within Class 14 and that there was a likelihood of confusion, as regards the goods at issue, between the trade mark applied for and that earlier mark.

10      On 28 March 2007, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision. In that appeal, it challenged the Opposition Division’s assessment as regards the similarity of the trade marks at issue and the existence of a likelihood of confusion.

11      By decision of 24 April 2008 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. Specifically, it held that, given the similarity of the goods at issue and the high degree of visual and phonetic similarity between the trade mark applied for and the earlier mark OLTEN, there could be a likelihood of confusion between those marks on the part of the Spanish public concerned.

 Procedure and forms of order sought

12      The applicant claims that the Court should annul the contested decision in respect of all or part of the goods for which registration was refused.

13      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

14      Since Judge Tchipev was prevented from sitting after the oral procedure was closed, Judge Truchot was designated to complete the Chamber, in accordance with Article 32(3) of the Court’s Rules of Procedure.

15      By order of 5 July 2010, the Court (Sixth Chamber), in its new composition, reopened the oral procedure and the parties were informed that they could present oral argument at a further hearing on 6 September 2010.

16      By letters of 9 and 15 July 2010 respectively, the applicant and OHIM notified the Court that they waived their right to present again oral argument. The other party to the proceedings before the Board of Appeal of OHIM did not reply to the Court’s invitation to appear before it.

17      Consequently, the President of the Sixth Chamber decided to close the oral procedure.

 Law

18      In support of its action, the applicant puts forward three pleas alleging, first, infringement of Articles 61 and 62 of Regulation No 40/94 (now Articles 63 and 64 of Regulation No 207/2009), secondly, infringement of Article 43(2) of that regulation and, thirdly, infringement of Article 8(1)(b) of that regulation.

 The first plea, alleging infringement of Articles 61 and 62 of Regulation No 40/94

 Arguments of the parties

19      The applicant claims that the Board of Appeal infringed Articles 61 and 62 of Regulation No 40/94 by failing to examine the issues, first, of the proof of genuine use of the earlier mark OLTEN and, secondly, of the similarity of the goods at issue. Those two issues were debated before the Opposition Division, the applicant having maintained, first, that the use of the earlier mark OLTEN had not been proven and, secondly, that the goods at issue, with the exception of horological instruments, were different.

20      According to the applicant, pursuant to the principle of continuity of functions between the various departments of OHIM, the Board of Appeal was required to examine those issues, even though they were not raised before it. The grounds set out in paragraph 26 of the contested decision are insufficient in this respect.

21      OHIM disputes the applicant’s arguments.

 Findings of the Court

22      Under Article 61(1) of Regulation No 40/94 (now Article 63(1) of Regulation No 207/2009), if an appeal is admissible, the Board of Appeal is to examine whether it is allowable.

23      Under Article 62(1) of that regulation (Article 62(1) having become Article 64(1) of Regulation No 207/2009), following the examination as to its allowability, the Board of Appeal is to decide on the appeal and it may either exercise any power within the competence of the department which was responsible for the decision appealed or remit the case to that department for further prosecution.

24      It must be observed, as a preliminary point, that while the applicant refers, in its application, to Article 62(2) of Regulation No 40/94, it is apparent from its arguments, and from information provided at the hearing, that it is in fact relying on paragraph 1 of that article.

25      It follows from that provision that, through the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (Case C-29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 57).

26      In addition, under Article 74(1) of Regulation No 40/94 (now Article 76(1) of Regulation No 207/2009), in proceedings relating to relative grounds for refusal of registration, such as those at issue in the present case, the examination of the facts carried out by OHIM of its own motion is restricted to the facts, evidence and arguments provided by the parties and the relief sought.

27      In the context of opposition proceedings, the criteria for applying a relative ground for refusal of registration or any other provision relied on in support of claims put forward by the parties naturally form part of the matters of law submitted for examination by OHIM. An issue 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 issue in order to ensure the correct application of Regulation No 40/94 having regard to the facts, evidence and arguments provided by the parties. Thus the matters of law put forward before the Board 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 (Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II‑287, paragraph 21, and judgment of 13 June 2007 in Case T-167/05 Grether v OHIM – Crisgo (Thailand) (FENNEL), not published in the ECR, paragraph 104).

28      In the present case, the applicant claims, essentially, that the Board of Appeal has not performed a full examination of the opposition, having failed to assess, first, the proof of genuine use of the earlier mark OLTEN and, secondly, the similarity of the goods at issue. It states that it did not raise those two issues in its appeal before the Board of Appeal, but submits that they formed part of the context of the dispute before the Opposition Division and, consequently, of that before the Board of Appeal.

29      It must be determined whether those issues were in fact within the context of the dispute brought before the Board of Appeal.

30      As regards, first, the proof of genuine use of the earlier mark OLTEN, opposition based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 does not necessarily bring the issue of genuine use before OHIM.

31      It is in fact a preliminary issue which, once raised by the applicant for the trade mark, must be decided before the opposition proper is examined (see, to that effect, Case T-112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II-949, paragraph 26).

32      The request for proof of genuine use by the trade mark applicant adds that preliminary issue to the opposition proceedings and in that sense changes their content, in so far as it constitutes a new, specific claim linked to factual and legal considerations which are separate from those which gave rise to the opposition to the registration of a Community trade mark (see, to that effect, Case T-425/03 AMS v OHIM – American Medical Systems (AMS Advanced Medical Services) [2007] ECR II‑4265, paragraph 112).

33      It follows that the issue of genuine use is specific and preliminary in character, since it leads to a determination whether, for the purposes of the examination of the opposition, the earlier trade mark can be deemed to be registered in respect of the goods or services in question, that issue thus not falling within the context of the examination of the opposition proper, alleging the existence of a likelihood of confusion with that mark.

34      In the present case it is common ground, first, that the issue of genuine use was raised by the applicant before the Opposition Division, which examined it before it made an assessment of the merits of the opposition and, secondly, that that issue was not brought before the Board of Appeal, the applicant merely disputing the Opposition Division’s assessment relating to the existence of a likelihood of confusion.

35      Therefore, contrary to what the applicant claims, the issue of genuine use does not constitute a matter of law which must necessarily be examined by the Board of Appeal in order to rule on the dispute before it.

36      That finding is not invalidated by the submissions, put forward by the applicant, relating to the principle of continuity of functions between the various departments of OHIM.

37      Admittedly, having regard to that continuity, the extent of the examination which the Board of Appeal must conduct with regard to the decision which is the subject-matter of the appeal is not, in principle, determined by the grounds relied on by the party who has brought the appeal. Even if the party who has brought the appeal has not raised a specific ground of appeal, the Board of Appeal is none the less bound to examine the appeal in the light of all the relevant matters of fact and of law (Case T-308/01 Henkel v OHIM – LHS (UK) (KLEENCARE) [2003] ECR II-3253, paragraph 29, and HOOLIGAN, paragraph 18).

38      Thus, the Board of Appeal is required to base its decision on all matters contained in the decision contested before it which any party concerned introduced either in the proceedings before the OHIM department which heard the application at first instance or, apart from matters which have not been submitted in due time, on the appeal (see Case T‑323/03 La Baronia de Turis v OHIM – Baron Philippe de Rothschild (LA BARONNIE) [2006] ECR II-2085, paragraph 58 and the case-law cited).

39      The fact remains that, in the present case, the plea alleging that the proof of genuine use was insufficient not only was not specifically raised before the Board of Appeal, but also did not constitute a relevant matter for the purposes of the examination of the appeal, which was limited to the examination of the opposition proper, alleging the existence of a likelihood of confusion.

40      Consequently, since the issue of genuine use was not part of the subject‑matter of the dispute before the Board of Appeal, the applicant cannot criticise the Board for having failed to examine it.

41      As regards, secondly, the issue of the similarity of the goods, opposition based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 requires OHIM to adjudicate on whether the goods and services covered by the marks in question are identical or similar and whether those marks themselves are identical or similar.

42      The fact that one or other of those aspects was not expressly disputed before the Board of Appeal does not divest OHIM of the power to adjudicate on that issue (see, to that effect, Case T-172/05 Armacell v OHIM – nmc (ARMAFOAM) [2006] ECR II-4061, paragraphs 41 and 42, and AMS Advanced Medical Services, paragraphs 28 and 29).

43      Those considerations are supported by the principle of the interdependence of the factors taken into account in the global assessment of the likelihood of confusion, in particular the assessment of the similarity of the trade marks and that of the goods and services covered (see, to that effect, Case C-16/06 P Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 47).

44      Therefore, in the present case, the Board of Appeal, ruling on the appeal which followed the opposition based on the existence of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, was required to adjudicate on the issue of the similarity of the goods in question, even though that issue was not expressly raised before it.

45      Furthermore, contrary to what the applicant maintains, it is apparent from the contested decision that the Board of Appeal did in fact examine that issue.

46      Indeed, it stated in paragraph 26 of the contested decision, that ‘the goods in Class 14, in respect of which the trade mark applied for was refused [by the Opposition Division’s decision], were found to be similar to watches, in respect of which the use of the earlier mark was proved, and sufficient reasons were stated for that finding’.

47      It follows from that paragraph that the Board of Appeal confirmed in their entirety, by adopting them as its own, the findings of the Opposition Division as regards the similarity of the goods, which were, moreover, not disputed by the applicant in its appeal before that Board.

48      In this connection, a Board of Appeal may lawfully adopt the grounds of a decision taken by the Opposition Division, which thus make up an integral part of the reasons for the Board’s own decision (see, to that effect, Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-1927, paragraph 50, and judgment of 24 September 2008 in Case T-248/05 HUP Uslugi Polska v OHIM – Manpower (I.T.@MANPOWER), not published in the ECR, paragraph 49).

49      Thus, when, as in the present case, the Board of Appeal confirms a lower-level decision of OHIM in its entirety, that decision, together with its statement of reasons, forms part of the context in which the Board of Appeal’s decision was adopted, which is known to the parties and enables the Court to carry out fully its judicial review as to whether the Board of Appeal’s assessment was well founded (see Mozart, paragraph 47 and the case-law cited).

50      Therefore, it cannot be held that the Board of Appeal failed to examine the issue of the similarity of the goods or to give reasons for its decision on that issue.

51      In the light of all the foregoing, the applicant has not demonstrated that the Board of Appeal did not carry out a complete examination of the appeal or that it did not state, to the requisite legal standard, the reasons for its decision.

52      Consequently, the first plea is unfounded.

 The second plea, alleging infringement of Article 43(2) of Regulation No 40/94

 Arguments of the parties

53      The applicant claims that the proof of use of the earlier mark OLTEN was insufficient. The proof of use adduced by Mr Marín Díaz de Cerio before the Board of Appeal does not refer to his earlier mark OLTEN, but refers rather to his figurative marks. Therefore, genuine use was established only in respect of those figurative marks. The Board of Appeal thus, in the applicant’s submission, wrongly confirmed the findings of the Opposition Division relating to genuine use of the earlier mark OLTEN.

54      OHIM disputes the applicant’s arguments.

 Findings of the Court

55      The Court’s review of the legality of a decision by a Board of Appeal of OHIM must be carried out with regard to the issues of law raised before the Board of Appeal (see Case T-373/03 Solo Italia v OHIM – Nuova Sala (PARMITALIA) [2005] ECR II‑1881, paragraphs 24 and 25 and the case-law cited).

56      Furthermore, it follows from Article 135(4) of the Rules of Procedure that the parties may not change the subject-matter of the proceedings before the Board of Appeal.

57      In the present case, the applicant claims that the genuine use of the earlier mark OLTEN has not been proved for watches.

58      As is apparent from paragraphs 30 to 40 above, the issue of genuine use of the earlier mark was not part of the subject-matter of the proceedings before the Board of Appeal.

59      Consequently, this plea changes the subject-matter of the proceedings before the Board of Appeal and is therefore inadmissible.

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

 Arguments of the parties

60      The applicant claims that the Board of Appeal incorrectly assessed the similarity of the goods and signs at issue, and the existence of a likelihood of confusion.

61      As regards the goods at issue, the applicant accepts that the ‘watches’ covered by the earlier mark OLTEN are similar or identical to ‘chronometric instruments’ and ‘watches’ covered by the trade mark applied for. It concedes that the ‘jewellery’ referred to by the trade mark applied for may also include watches, the similarity between those goods being nevertheless average or weak. It disputes, on the other hand, the similarity between, first, ‘goods in precious metals [or their alloys] or coated therewith, not included in other classes’ and ‘ornamental pins; tie pins; novelty key rings; medals; badges of precious metal; shoe and hat ornaments of precious metal; [and] cuff links’ covered by the trade mark applied for and, secondly, ‘watches’ covered by the earlier mark OLTEN.

62      Those goods have a different nature, origin, purpose and form of use and are not in competition or complementary. Their aesthetic function is not sufficient to make them similar to watches. Other objects, such as clothing or spectacles, also fulfil that function and could also be sold in jewellery or clock and watch shops, without for that reason being similar to watches. The fact that watches can be manufactured in precious metals does not mean either that other goods manufactured in those materials and falling within Class 14, such as shoe and hat ornaments, are, for that reason, similar to watches.

63      Concerning the signs at issue, OFTEN and OLTEN, the applicant claims that the difference resulting from the second letter of each of the signs is of particular importance from a visual point of view. It follows from the case-law of the General Court and from earlier decisions of the Boards of Appeal of OHIM that, for short signs, the difference of a single consonant can minimise the effect of similarity.

64      From a phonetic point of view, the letters ‘f’ and ‘l’ are distinct, this factor being particularly important because of the fact that the tonic stress falls, in respect of both signs, on the first syllable, ‘of’ and ‘ol’ respectively.

65      From a conceptual point of view, the Board of Appeal held, incorrectly, that the signs at issue have no meaning for the Spanish consumer. In respect of the trade mark applied for, the Spanish public, in general, has some knowledge of the English language and could establish an immediate link with the English adverb ‘often’. That point is confirmed by the judgments of the Spanish courts relied upon by the applicant before OHIM. As regards the earlier mark OLTEN, it is possible that part of the relevant public, namely better informed consumers, would associate it with the Swiss town of Olten, which has a strong tradition in the watchmaking industry. The conceptual element might thus have a certain distinguishing function.

66      Those visual, phonetic and conceptual differences between the signs at issue lead to a weak, or averagely weak degree of similarity between them.

67      As regards the global assessment of the likelihood of confusion, first, the applicant criticises the Board of Appeal for not having qualified its assessment on the basis of the greater or lesser degree of similarity between the goods at issue. Secondly, the Board of Appeal failed to take into account the high level of attention of the relevant consumer. Thirdly, the Board of Appeal failed to take into account the fact that the goods at issue are sold in specialist establishments, with the help and assistance of specialist staff, which makes the likelihood of confusion less probable.

68      The Board of Appeal should have taken into account those three considerations, which to a large extent neutralise the weak or averagely weak visual and phonetic similarities between the signs at issue, and should have ‘moderated or qualified’ its findings as regards the likelihood of confusion.

69      OHIM disputes the applicant’s arguments.

 Findings of the Court

70      It must be observed, as a preliminary point, that the Board of Appeal reached its decision on the basis of the earlier mark OLTEN, without finding it necessary to carry out an assessment of the likelihood of confusion with regard to the other earlier rights.

71      In the context of this action, it is necessary to review the lawfulness of the assessment made by the Board of Appeal as regards the existence of a likelihood of confusion between the trade mark applied for and that earlier mark.

72      According to established case-law, the risk that the public might believe that the goods or services at issue come from the same undertaking or, as the case may be, 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 at issue, taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity between the signs and between the goods or services (Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS) [2003] ECR II-2821, paragraphs 30 to 33 and the case-law cited).

73      In the present case, the earlier mark OLTEN being a Spanish trade mark and the goods covered by the marks at issue being intended for the general public, the relevant public consists of average Spanish consumers.

74      As regards horological goods and jewellery, which are not purchased regularly and are generally bought through a salesperson, the average consumer’s level of attention, as the Board of Appeal rightly found in paragraph 25 of the contested decision, must be taken to be higher than usual (see, to that effect, Case T-147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II‑11, paragraph 63).

75      So far as the comparison of the signs at issue is concerned, the applicant claims, in essence, that the Board of Appeal did not take into account certain visual, phonetic and conceptual differences.

76      As regards visual comparison, the signs at issue, OFTEN and OLTEN, are word signs of the same length. They share four of their five letters, present in the same order, the first letter being moreover identical.

77      As regards phonetic comparison, the two signs share a first identical vowel, ‘o’, and contain a second identical syllable ‘ten’, which renders their pronunciation similar, in spite of the fact that the first syllables of the signs, which are accentuated, end in different consonants, namely ‘f’ and ‘l’.

78      Taking account of those elements, the Board of Appeal was entitled to hold, correctly, that the signs at issue were similar to a significant degree both from the visual and from the phonetic point of view.

79      Admittedly, as the applicant points out, the General Court has held that a difference consisting in a single consonant could prevent the finding of a high degree of visual similarity between two relatively short word signs (see, to that effect, Case T-185/02 Ruiz Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-1739, paragraph 54, and judgment of 16 January 2008 in Case T-112/06 Inter-Ikea v OHIM – Waibel (idea), not published in the ECR, paragraph 54).

80      Nevertheless, that finding, made in the context of the specific assessment of the signs concerned by those judgments, does not amount to the statement of a general rule which could be applicable in the present case.

81      Moreover, the Court has also held, in the context of the assessment of short word signs, that the fact that three out of four letters were identical meant that the difference resulting from one letter was a visual difference of little significance (see, to that effect, Case T-13/05 Castell del Remei v OHIM – Bodegas Roda (ODA) [2006] ECR II-85, paragraph 52) and that word signs differing by a single letter could be considered to be similar to a high degree both from the visual and from the phonetic point of view (see, to that effect, judgment of 13 April 2005 in Case T-353/02 Duarte y Beltrán v OHIM – Mirato (INTEA), not published in the ECR, paragraphs 27 and 28).

82      With regard to OHIM’s earlier practice to which the applicant refers, it is sufficient to observe that the legality of the decisions of Boards of Appeal concerning registration of a sign as a Community mark must be assessed solely on the basis of Regulation No 40/94, as interpreted by the European Union judicature, and not on the basis of a previous decision-making practice (Case T‑106/00 Streamserve v OHIM(STREAMSERVE) [2002] ECR II-723, paragraph 66).

83      As regards conceptual comparison, it must be held that the Board of Appeal was entitled to observe that the average Spanish-speaking consumer would not necessarily attribute a semantic content to the English word ‘often’, a word which does not exist in Spanish (see, to that effect, the judgment of 25 June 2008 in Case T-36/07 Zipcar v OHIM – Canary Islands Car (ZIPCAR), not published in the ECR, paragraph 45). As OHIM observes, in the case of an average consumer, knowledge of a foreign language cannot in general be assumed. Concerning the sign OLTEN, the applicant itself admits that it refers to a Swiss locality known, at most, by professionals in the watchmaking sector.

84      In support of its argument the applicant relies on case-law of the Spanish courts according to which an average member of the Spanish public has some knowledge of English. It must be pointed out in this connection that the Community trade mark regime is an autonomous system which applies independently of any national system (Case T‑32/00 Messe München v OHIM (Electronica) [2000] ECR II-3829, paragraph 47).

85      Moreover, in the present case, the applicant has not put forward any factual or legal consideration, deriving from the national case-law relied upon, which is capable of providing helpful guidance for the determination of the case (see, to that effect, Case T-40/03 Murúa Entrena v OHIM – Bodegas Murúa (Julián Murúa Entrena) [2005] ECR II‑2831, paragraph 69). The mere finding that certain English words are known to the Spanish consumer, namely the words ‘master’, ‘easy’ and ‘food’, even if that is clear from the national case-law in question, cannot lead to the same conclusion as regards the word ‘often’.

86      The Board of Appeal therefore did not err in holding that there is, for the Spanish public, no relevant conceptual difference between the signs at issue, such as to counterbalance their visual and phonetic similarity.

87      So far as the goods at issue are concerned, it is settled case-law that, in assessing their similarity, all the relevant factors relating to those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).

88      In the present case, as is apparent from paragraphs 26 and 30 of the contested decision, the Board of Appeal confirmed and adopted as its own the comparison of the goods carried out by the Opposition Division. Consequently, the grounds of that comparison, reproduced in paragraph 9 of the contested decision, form an integral part of that latter decision.

89      It is apparent from those grounds that the goods covered by the earlier mark OLTEN, namely ‘watches’, were considered to be, first, identical to ‘horological and chronometric instruments’ covered by the trade mark applied for, secondly, identical or at least very similar to ‘jewellery’, thirdly, ‘very similar’ to ‘goods in precious metals [and their alloys] or coated therewith, not included in other classes’, fourthly, averagely similar to ‘ornamental pins; tie-pins; novelty key rings; medals, badges of precious metal; shoe and hat ornaments of precious metal; [and] cuff links’.  

90      In this connection, first, the applicant does not dispute the fact that ‘watches’ and ‘horological and chronometric instruments’ are identical.

91      Secondly, concerning jewellery, the applicant does not criticise the analysis, approved by the Board of Appeal, according to which the category ‘watches’ includes items which could be regarded as items of jewellery. In the light of that analysis, those goods were correctly found to be identical or very similar.

92      Thirdly, as regards ‘goods in precious metals [and their alloys] or coated therewith, not included in other classes’, it must be observed that, as is apparent from the analysis of the two OHIM departments, which has not been put in issue by the applicant, that broad category includes goods which are, from a functional point of view, complementary to watches, such as bracelets and watch chains. That category being defined in general terms, those goods were thus correctly found to be similar to watches.

93      Thus, contrary to the applicant’s submission, the similarity of the goods in that category with watches does not result from the mere fact that they are manufactured from the same raw material, namely precious metals and their alloys, but from the fact that they are complementary with regard to their method of use.

94      Fourthly, as regards ‘ornamental pins; tie-pins; novelty key rings; medals, badges of precious metal; shoe and hat ornaments of precious metal; [and] cuff links’, these are accessories often manufactured in precious metals, with an aesthetic or decorative function, which may also be considered, to a certain extent, to be one of the functions of watches. Those goods nevertheless cannot be regarded as complementary.

95      In addition, according to the Opposition Division, whose analysis was approved by the Board of Appeal and not disputed by the applicant, those goods covered by the trade mark applied for are frequently sold in the same shops, or the same specialist counters of shops, as watches.

96      In that regard, the fact that the goods compared are often sold in the same 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 (PiraÑAM diseño original Juan Bolaños, paragraph 50).

97      ‘Ornamental pins; tie-pins; novelty key rings; medals, badges of precious metal; shoe and hat ornaments of precious metal; [and] cuff links’ could therefore, correctly, be considered to be similar to watches, taking account, first, of the fact that they are often manufactured from the same raw material and have a similar aesthetic function and, secondly, of the fact that they have the same distribution channels.

98      In that context, the analogy made by the applicant with other accessories which are not at issue in the present case, namely spectacles or certain categories of clothing, is irrelevant.

99      It follows from all those considerations that the applicant has failed to demonstrate that the Opposition Division’s conclusion, approved and reiterated in the contested decision, that the goods at issue are either identical or similar, is incorrect.

100    As regards the global assessment of the likelihood of confusion, the applicant criticises the Board of Appeal, in essence, for failing to have ‘moderated and qualified’ its assessment, on the basis of the greater or lesser degree of similarity between the goods at issue, and on the basis of the high level of attention of the relevant consumer.

101    In this connection, the Board of Appeal, in paragraph 30 of the contested decision, held that there could be a likelihood of confusion ‘as set forth in the [Opposition Divison’s] decision’. It follows from the grounds of that decision, reproduced in paragraph 9 of the contested decision, that OHIM made a global assessment of the likelihood of confusion with regard to the various groups of goods at issue, essentially concluding that, by virtue of the principle of the interdependence of factors, the existence of such a likelihood could be established only for goods with at least an average degree of similarity.

102    The applicant’s argument alleging failure to take into account the differences between the categories of goods at issue is therefore unfounded.

103    Moreover, contrary to what the applicant claims, it is apparent from paragraph 25 of the contested decision that the Board of Appeal, while approving, for the most part, the assessment of the likelihood of confusion made by the Opposition Division, also took into account the fact that, when purchasing the goods at issue, the relevant consumer showed a higher level of attention than when purchasing goods for everyday consumption.

104    In the light of all those findings, the applicant has failed to demonstrate that the Board of Appeal, having regard, first, to the similarity of the signs concerned and, secondly, to the fact that the goods at issue are identical and similar, erred in finding that there was a likelihood that the relevant Spanish public, although showing a level of attention higher than the usual, might believe that those goods came from the same undertaking or, as the case may be, from economically‑linked undertakings.

105    Consequently, this plea must be rejected as unfounded and, accordingly, the action must be dismissed in its entirety.

 Costs

106    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.

107    Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by OHIM.

On those grounds,

THE GENERAL COURT (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Industria de Diseño Textil (Inditex), SA to pay the costs.

Meij

Vadapalas

Truchot

Delivered in open court in Luxembourg on 13 September 2010.

[Signatures]

* Language of the case: Spanish.

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