Judgment — ECLI:EU:T:2013:474
Date: 2013-09-16
Language of the case: English
Court formation: Eighth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded;Action for annulment - decision unnecessary
Origin: Germany

summary of the pleas in law relied on. 47 It is settled case-law that, although specific points in the text of the application can be supported and completed by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (see Case T‑27/09 Stella Kunststofftechnik v OHIM – Stella Pack (Stella) [2009] ECR II‑4481, paragraph 19; Case T‑460/07 Nokia v OHIM – Medion (LIFE BLOG) [2010] ECR II‑89, paragraph 27; and judgment of 18 September 2012 in Case T‑460/11 Scandic Distilleries v OHIM – Bürgerbräu, Röhm & Söhne (BÜRGER), not published in the ECR, paragraph 17 and the case-law cited). Accordingly, to the extent to which no specific reference is made to particular paragraphs of the written submissions in which the arguments put forward in the proceedings before OHIM are set out, the general references to those written submissions must be declared inadmissible (see judgment of 13 December 2012 in Case T‑136/11 pelicantravel.com v OHIM – Pelikan (Pelikan), not published in the ECR, paragraph 17 and the case-law cited). 48 In the present case, the applicant states that its arguments relating to the comparison of the goods at issue are discussed in the contested decision and in the statement of grounds for the appeal before the Board of Appeal. It adds that, in order to avoid repetition, it refers the Court to all the findings and to all of its arguments relating to the similarity of the goods and services in question. 49 It must be pointed out that, in this regard, the applicant does not identify the specific paragraphs of the contested decision and of its written submissions to OHIM to which it refers. 50 Consequently, it must be held that, in accordance with the case-law referred to in paragraph 47 above, such a reference, by the applicant, to the contested decision and to the arguments which it put forward before OHIM cannot compensate for the failure to set out the essential elements of such arguments in the application. Consequently, those arguments must be declared inadmissible. 51 However, it must be pointed out that, in the application, the applicant elaborates on arguments which seek to dispute the similarity which the Board of Appeal found to exist, in paragraph 31 of the contested decision, between the ‘veterinary preparations’ referred to in the trade mark application and the ‘pharmaceutical preparations’ covered by the earlier figurative mark. It submits that the users of those goods are distinct, since ‘veterinary preparations’ are intended for animals and ‘pharmaceutical preparations’ are intended for human beings. It adds that those goods are designed to cure different diseases and deduces from this that, although they may contain similar ingredients, they have a low degree of similarity at best. 52 Those arguments must be held to constitute, within the meaning of the case-law referred to in paragraph 47 above, the essential elements of the applicant’s legal argument in support of its claim relating to the lack of similarity between the ‘veterinary preparations’ referred to in the trade mark application and the ‘pharmaceutical preparations’ covered by the earlier figurative mark. 53 Those arguments are therefore, contrary to what OHIM submits, admissible and their merits must be examined. 54 According to settled case-law, in order to assess the similarity of goods or services, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (judgment in Case C‑416/04 P Sunrider v OHIM [2006] ECR I‑4237, paragraph 85; see also judgment of 17 December 2009 in Case T‑490/07 Notartel v OHIM – SAT.1 (R.U.N.), not published in the ECR, paragraph 47 and the case-law cited). The fact that the goods or services referred to may have the same distribution channels is also a factor which has to be taken into consideration (Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37). 55 In the present case, the Board of Appeal compared the goods and services referred to in the trade mark application and the goods covered by the earlier figurative mark in paragraphs 26 to 37 of the contested decision. 56 As regards, in particular, the ‘veterinary preparations’ referred to in the trade mark application and the ‘pharmaceutical preparations’ covered by the earlier figurative mark, which are in Class 5, the Board of Appeal found, in paragraph 31 of the contested decision, that they were similar, on the grounds that, in some cases, a pharmaceutical product for human use could have the same composition as a product intended for use on animals and that the manufacturers and distribution channels for such goods could coincide. 57 It must be borne in mind, first, that, in a global assessment of a likelihood of confusion, it is necessary to take into account the average consumer of the category of goods concerned and, secondly, that, as is apparent from paragraphs 36 and 44 above, the Board of Appeal acted correctly in finding, in paragraph 40 of the contested decision, that the public targeted by the goods at issue, other than medicinal products the dispensing of which may require a doctor’s prescription, is the public at large. 58 It must be pointed out that, in so far as they make it possible to treat pathologies, pharmaceutical preparations and veterinary preparations are the same in nature and have the same purpose. Furthermore, although veterinary preparations are intended for use on animals, whereas pharmaceutical preparations are intended for human beings, it is in part the same public, namely, inter alia, as is apparent from paragraph 40 of the contested decision, the general public, which will purchase those goods and use them. 59 Furthermore, as the Board of Appeal correctly pointed out in paragraph 31 of the contested decision, without being challenged on this point by the applicant, such products may be manufactured by the same undertakings and be marketed in the same sales outlets (see, to that effect, judgment of 15 March 2012 in Case T‑288/08 Cadila Healthcare v OHIM – Novartis (ZYDUS), not published in the ECR, paragraph 43). 60 The Board of Appeal therefore also acted correctly in finding that the ‘veterinary preparations’ referred to in the trade mark application and the ‘pharmaceutical preparations’ covered by the earlier figurative mark, in Class 5, were similar. 61 Furthermore, in assessing the likelihood of confusion between the sign applied for and the earlier figurative mark, the Board of Appeal found that the goods at issue in Classes 3 and 5 were identical or similar and that the services in Class 44 referred to in the trade mark application, on the one hand, and the goods covered by the earlier figurative mark, on the other, were dissimilar. 62 In paragraphs 46 to 55 of the contested decision, the Board of Appeal compared the goods and services in the trade mark application with those covered by the earlier word mark. It found that, apart from the goods in Class 3, the goods in Class 5 and the services in Class 44 referred to in the trade mark application, on the one hand, and the goods and services covered by the earlier word mark, on the other, were identical or similar. 63 Those findings, which the applicant, as is apparent from paragraph 50 above, challenges by way of arguments which are inadmissible, must also be upheld. – The comparison of the marks 64 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation 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 Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited). 65 According to the case-law, 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). 66 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, cited in paragraph 64 above, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, cited in paragraph 64 above, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, with the result that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43). 67 In the present case, it is necessary to establish whether the Board of Appeal erred in assessing the similarities between, first, the mark applied for and the earlier figurative mark and, secondly, the mark applied for and the earlier word mark. – The comparison of the mark applied for with the earlier figurative mark 68 It must be pointed out that the Board of Appeal’s description of those marks is not disputed by the parties. In paragraph 42 of the contested decision, the Board of Appeal described the earlier figurative mark as containing the word element ‘rovi’, written in upper case, above which a figurative element representing scales is placed, both of those elements being inserted in a double circle. In the same paragraph, the Board of Appeal described the mark applied for as a word mark consisting of the word elements ‘rovi’ and ‘pharmaceuticals’, with all the letters of the first element and the first letter of the second element being in upper case. 69 The applicant also does not dispute the Board of Appeal’s finding, in paragraph 44 of the contested decision, that the marks are conceptually identical, due to the fact that the word element ‘pharmaceuticals’ in the mark applied for and the medical scales represented by the earlier figurative mark refer to concepts which may be perceived as identical by consumers. The applicant disputes only the assessments relating to the degree of visual and phonetic similarity. 70 The applicant submits that, visually, numerous elements, such as, with regard to the earlier figurative mark, the double circle, the scales and the font used and, with regard to the mark applied for, the word element ‘pharmaceuticals’, differentiate the signs at issue. It adds that the word element ‘rovi’ is the smallest element in the earlier figurative mark and not, as the Board of Appeal stated, the dominant element of that mark. Consequently, according to the applicant, only a low degree of similarity, if not a lack of similarity, is to be inferred from the fact that that element is common to the signs at issue and not, as the Board of Appeal found by disregarding the striking differences between those signs, an average degree of similarity. 71 It must be pointed out that the Board of Appeal did not, contrary to what the applicant submits, find that the word element ‘rovi’ dominated the overall impression created by the earlier figurative mark in such a way that the figurative elements of that mark were negligible in the overall impression created by it. 72 In paragraph 42 of the contested decision, the Board of Appeal found that the mark applied for and the earlier figurative mark had the word element ‘rovi’ in common, but that they were differentiated by the other elements of which they consist, from which the Board of Appeal concluded that there was a medium degree of visual similarity between them. 73 It follows that, in assessing their visual similarities, the Board of Appeal took into account all the elements of which those marks consist and that, consequently, it did not take the view that the elements which differentiate them play only a negligible part in the overall impression which they create vis-à-vis consumers. On the contrary, in paragraph 64 of the contested decision, the Board of Appeal even stated that the figurative elements in the earlier figurative mark, although not as distinctive as the word element ‘rovi’, are visually dominant. 74 However, it must be pointed out that, as regards a composite mark such as the earlier figurative mark, the word elements are, as a rule, more distinctive than the figurative elements, since the consumer will more easily refer to the goods in question by citing the name rather than by describing the figurative element of the mark (see TRUBION, cited in paragraph 40 above, paragraph 45 and the case-law cited, and BÜRGER, cited in paragraph 47 above, paragraph 35 and the case-law cited). 75 It must therefore be held that the word element ‘rovi’ in the earlier figurative mark will be more readily used to designate that mark than its figurative elements since that is the only element capable of being pronounced. 76 As regards the assessment of the visual similarities, it must be held that the mark applied for and the earlier figurative mark are differentiated by the font used to represent the word element ‘rovi’, as well as by the presence, in the mark applied for, of the word element ‘pharmaceuticals’ and, in the earlier figurative mark, of the two figurative elements of the scales and the double circle which surrounds the other elements. 77 However, those marks have in common the word element ‘rovi’, which constitutes the only word element in the earlier figurative mark and comes first in the mark applied for. 78 In that regard, it must be borne in mind that consumers will generally pay greater attention to the beginning of a mark than to the end as the first part of a mark tends to have a greater visual impact on consumers than does the final part (Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 47). 79 The differences between those marks, referred to in paragraph 76 above, are not therefore sufficiently significant to cancel out the similarity created by the presence of the word element ‘rovi’ in both marks. 80 Furthermore, as registration of the sign ROVI Pharmaceuticals as a word mark has been applied for, there is nothing to preclude it from being reproduced, as the case may be, by using different fonts, which would make it possible to represent that sign and, in particular, its word element ‘rovi’, in a form comparable to that of the same element in the earlier figurative mark. 81 It must therefore be held that the Board of Appeal acted correctly in finding, in paragraph 42 of the contested decision, that there is a medium degree of visual similarity between those marks. 82 The applicant submits that, phonetically, since the mark applied for shares 4 of the ‘18’ letters and 2 of the 7 syllables of which it consists with the earlier figurative mark, there is a low degree of similarity between them and not, as the Board of Appeal stated, a medium degree of similarity. 83 In the strict sense, the phonetic reproduction of a complex mark corresponds to that of all its verbal elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the sign on a visual level (see judgment of 5 May 2011 in Case T‑204/09 Olymp Bezner v OHIM – Bellido (OLYMP), not published in the ECR, paragraph 42 and the case-law cited). Consequently, there is no need to take account of the figurative elements of the earlier figurative mark for the purpose of comparing it phonetically with the mark applied for. 84 The word elements ‘rovi pharmaceuticals’ and ‘rovi’ must therefore be compared. 85 It must be borne in mind that the mark applied for contains the only word element in the earlier figurative mark and that that element comes first in the mark applied for. 86 Furthermore, having broken the mark applied for and the earlier figurative mark down into syllables, the Board of Appeal correctly pointed out, in paragraph 43 of the contested decision, that the word element ‘rovi’ is pronounced in the same way in the mark applied for and in the earlier figurative mark. 87 It follows from the foregoing that the Board of Appeal also acted correctly in finding that there is a medium degree of phonetic similarity between those marks, notwithstanding the fact that the mark applied for shares only four of the nineteen letters and two of the seven syllables of which it consists with the earlier figurative mark. 88 It follows from the foregoing that the Board of Appeal did not err when it assessed the similarities between the mark applied for and the earlier figurative mark. – The comparison of the mark applied for with the earlier word mark 89 It must be borne in mind that, as the Board of Appeal stated in paragraph 58 of the contested decision, without this being challenged by the parties, the marks to be compared are the word sign ROVI Pharmaceuticals, on the one hand, and the word sign ROVIFARMA, on the other. 90 Nor does the applicant dispute the Board of Appeal’s findings in paragraphs 59 to 61 of the contested decision as to the existence of similarities between the mark applied for and the earlier word mark. In particular, the applicant does not dispute the existence of a conceptual similarity between those marks, due to consumers understanding the last part ‘farma’ of the earlier word mark as an abbreviation relating to the pharmaceutical industry and the element ‘pharmaceuticals’ in the mark applied for as relating to pharmacy, by reason of the existence of a Spanish equivalent, namely ‘farmacéuticos’. By contrast, although it concedes that those marks show a ‘noticeable’ degree of similarity, the applicant disputes the Board of Appeal’s assessments as to the degree of visual and phonetic similarity between those marks. 91 The applicant submits that those marks have a low degree of visual similarity on account of the fact that, of the ‘18’ letters of which the mark applied for consists, only ‘7’ letters are common to both marks. 92 The Board of Appeal assessed the existence of visual similarities between the mark applied for and the earlier word mark in paragraph 59 of the contested decision. 93 In the course of that examination, the Board of Appeal found that the word element ‘rovi’, which is common to those marks, would attract the attention of consumers on account of its position at the beginning of the signs and of the fact that it is written in capital letters. That finding, which the applicant does not dispute, must be upheld. It is also necessary to uphold the finding, likewise undisputed by the applicant, that the word element ‘pharmaceuticals’ in the mark applied for and the end of the earlier word mark, ‘farma’, will both be noticed by consumers, the former by reason of its length and the latter because it is part of the sole element in the earlier work mark. 94 It follows that, notwithstanding the fact that, as the applicant submits, the mark applied for, consisting of nineteen letters, has only eight letters in common with the earlier word mark, the Board of Appeal was right to find that there was an above-average degree of visual similarity between those marks. 95 The applicant submits that those marks exhibit a medium degree of phonetic similarity since three of the seven syllables of which the mark applied for consists differ from the four syllables of the earlier word mark. 96 The Board of Appeal assessed the existence of phonetic similarities between the mark applied for and the earlier word mark in paragraph 60 of the contested decision. 97 As has been held in paragraph 86 above, the Board of Appeal was right to point out that the word element ‘rovi’ is pronounced identically in the two marks. It is also necessary to uphold the findings, not disputed by the applicant, that, first, the first four syllables of those marks are identical and, secondly, the fact that the mark applied for contains two word elements and the earlier word mark contains a single word element is of little relevance since both marks have the same sequence of letters. 98 It follows that the Board of Appeal acted correctly in finding that there is an above-average degree of phonetic similarity between the marks. 99 It follows from the foregoing that the Board of Appeal did not err when it assessed the similarities between the mark applied for and the earlier word mark. – The likelihood of confusion 100 A likelihood of confusion exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (MATRATZEN, cited in paragraph 65 above, paragraph 45). 101 Furthermore, as is apparent from recital 8 in the preamble to Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than do marks with less distinctive character (see, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 24; Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 18; and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 20). 102 It must be pointed out that the Board of Appeal was right to state, in paragraphs 27 and 47 of the contested decision, that the goods in Class 3 referred to in the trade mark application and the goods in the same class covered by the earlier figurative mark were similar and that the former were different from the goods and services covered by the earlier word mark. It was also right to find, in paragraphs 36 and 48 of the contested decision, that the goods in Class 5 designated in the trade mark application, on the one hand, and the goods in the same class covered by the earlier figurative mark and the earlier word mark, on the other hand, were either identical or similar. The Board of Appeal also acted correctly in stating, in paragraphs 37 and 55 of the contested decision, that the services in Class 44 covered by the mark applied for and the services covered by the earlier word mark were either identical or similar, and that the former were dissimilar to the goods designated by the earlier figurative mark. 103 Moreover, as the earlier word mark, the earlier figurative mark and the mark applied for are similar, as has been held in paragraphs 88 and 99 above, the effect of the cumulative nature of the conditions relating to the similarity between the goods and services and to the similarity between the marks is that there is a likelihood of confusion between, first, the mark applied for and the earlier figurative mark as regards the goods in Classes 3 and 5 and, secondly, the mark applied for and the earlier word mark as regards the goods and services in Classes 5 and 44. 104 As has been stated in paragraph 31 above, it is apparent from Article 8(1)(b) of Regulation No 207/2009 that a trade mark cannot be registered if there is a likelihood of confusion with an earlier mark on the part of the relevant public. 105 It follows, in the present case, that the existence of a likelihood of confusion with the earlier figurative mark precludes the mark applied for from being registered for the goods in Classes 3 and 5 which it covers and that the existence of such a likelihood of confusion as regards the earlier word mark precludes registration of the mark applied for in respect of the goods and services in Classes 5 and 44 referred to in the trade mark application filed by the applicant. 106 As has been stated in paragraph 3 above, the goods and services referred to in that application are in Classes 3, 5 and 44. 107 It follows that, for each of those goods or services, there is a likelihood of confusion between the mark applied for and either the earlier figurative mark or the earlier word mark. Consequently, the mark applied for cannot be registered for any of the goods or services which it designates. 108 The Board of Appeal was therefore right to find, in paragraphs 71 and 72 of the contested decision, that there was a likelihood of confusion between the mark applied for and the earlier marks, with the result that registration of the mark applied for had to be refused. 109 That assessment cannot be called into question by the arguments put forward by the applicant. 110 First, the applicant criticises the Board of Appeal on the ground that it incorrectly assessed the distinctive character of the word element ‘rovi’. It claims to have shown, with the help of the results of searches on the internet and in the Community trade marks register, that that word element, which is common to the signs at issue, is of weak distinctive character, on account of its presence in many marks. It submits that the Board of Appeal did not ‘pay due account to’ those search results. 111 It must be borne in mind that, in paragraph 19 of the contested decision, the Board of Appeal stated that the applicant, for the purpose of showing the alleged weak distinctive character of the word element ‘rovi’, had referred to searches in the Community trade marks register and on the internet. It added that the applicant had not, however, submitted any evidence of those searches or specified whether they were limited to marks beginning with ‘rovi’ or to marks only containing that element. It follows that the Board of Appeal took account of the applicant’s claims relating to internet evidence and that it assessed whether they were well founded, contrary to what the applicant maintains. 112 The applicant adds that the widespread exposure of the public to the word element ‘rovi’, which is apparent from the extensive use of that element as a mark or as a component of a mark, may lead the public to deny it distinctive character. 113 It must be pointed out that the applicant submits, in essence, that the relevant public is accustomed to the use of the word element ‘rovi’ in trade marks, with the result that the distinctive character of that word element is weakened. It follows that the applicant is submitting, in support of its claim that the word element ‘rovi’ has weak distinctive character, that the relevant public recognises that element. 114 It is apparent, however, from the case-law referred to in paragraph 101 above that the relevant public’s recognition of a mark is liable to confer a high distinctive character on that mark, and not to weaken its distinctive character. It must be held that this also applies to the elements which make up a mark. 115 It follows that the applicant’s argument relating to the public’s recognition of the word element ‘rovi’ is irrelevant for the purpose of demonstrating that that element is of weak distinctive character. 116 Furthermore, the applicant criticises the Board of Appeal on the ground that it assessed the distinctive character of the word element ‘rovi’ by examining whether earlier marks identical to the signs at issue coexisted on the market in such a way that the distinctive character of that element and, therefore, the likelihood of confusion between the signs at issue could be regarded as reduced. According to the applicant, the examination of the distinctive character of that element ought to have been based on the finding that it is present in a large number of marks. The applicant adds that the Board of Appeal erred in finding that it was for the applicant to establish that marks identical to the signs at issue coexisted on the market. 117 It must be borne in mind that the coexistence of earlier marks on the market may reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during proceedings before OHIM concerning relative grounds for refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based on the absence of any likelihood of confusion on the part of the relevant public between the earlier mark on which it relies and the intervener’s mark on which the opposition is based, and provided that the earlier mark concerned and the marks at issue are identical (see, by analogy, Case T‑31/03 Grupo Sada v OHIM – Sadia (GRUPO SADA) [2005] ECR II‑1667, paragraph 86, and judgment of 14 November 2007 in Case T‑101/06 Castell del Remei v OHIM – Bodegas Roda (CASTELL DEL REMEI ODA), not published in the ECR, paragraph 76). 118 It is apparent from the case-law referred to in paragraph 117 above that, contrary to what the applicant submits, it is for the applicant for a Community trade mark, that is to say, in the present case, for the applicant, to establish that the coexistence of the marks on which it is relying is based on the absence of any risk of conflict between them and is therefore capable of reducing the likelihood of confusion between the signs at issue. 119 Furthermore, it must be pointed out that it has been held in paragraph 111 above that the Board of Appeal did address the soundness of the applicant’s claims, based on internet evidence, relating to the weak distinctive character of the word element ‘rovi’. 120 In that regard, it must be stated that the applicant’s challenge to the Board of Appeal’s assessment of that evidence has not been substantiated. In particular, the applicant did not attach as an annex to the present action any of the evidence produced before the Board of Appeal or make any specific reference to that evidence. 121 Furthermore, the applicant does not dispute the Board of Appeal’s finding, in paragraph 21 of the contested decision, that the applicant had not demonstrated the coexistence of earlier marks identical to the signs at issue. 122 It follows that the Board of Appeal acted correctly in finding, in paragraph 21 of the contested decision, that the word element ‘rovi’ did not have a weak distinctive character. 123 Secondly, the applicant submits that the Board of Appeal did not take account of the absence of similarity between certain goods referred to in the application for registration and the goods and services covered by the earlier word mark, with the result that it assessed the existence of a likelihood of confusion between the mark applied for and the earlier word mark solely on the basis of the similarity of the signs. 124 It must be stated that, in paragraph 68 of the contested decision, the Board of Appeal reiterates the findings of the comparison of the goods and services covered by the mark applied for with those for which the earlier word mark was registered. It must be pointed out that the content of paragraph 68 is consistent with the assessments, referred to in paragraph 62 above, which the Board of Appeal rightly made in the course of that examination. 125 Furthermore, as is apparent from paragraphs 102 to 105 above, the Board of Appeal was right to find that there is no likelihood of confusion between the mark applied for and the earlier word mark as regards the goods in Class 3 covered by the mark applied for on account of the absence of similarity between, on the one hand, those goods and, on the other, the goods and services covered by the earlier word mark. 126 The applicant cannot therefore argue that the Board of Appeal did not take account of the absence of similarity between certain of the goods and services designated in the trade mark application and those covered by the earlier word mark when it examined whether there was a likelihood of confusion between those signs. 127 It follows from all of the foregoing that the second plea and, consequently, the action in its entirety must be dismissed without there being any need to rule on the admissibility of the applicant’s second head of claim asking the Court to reject the intervener’s opposition and to annul the order as to costs made by OHIM (see, to that effect, judgment of 22 May 2008 in Case T‑205/06 NewSoft Technology v OHIM – Soft (Presto! Bizcard Reader), not published in the ECR, paragraph 70, and LIFE BLOG, cited in paragraph 47 above, paragraph 74). 128 Accordingly, there is no need to rule on the intervener’s third head of claim, contending that the Court should, in the event that the contested decision is annulled, order the applicant to pay the costs of the present proceedings and remit the opposition to OHIM for a decision on the distinctive character of the earlier figurative mark and the earlier word mark in Spain and Portugal and on the existence of a likelihood of confusion between the mark applied for and the other marks relied on in support of the opposition. Costs 129 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. 130 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener. 131 In addition, the intervener has contended that the applicant should be ordered to pay the costs which it incurred in the proceedings before OHIM. 132 In this regard, it must be pointed out that, under Article 136(2) of the Rules of Procedure, ‘[c]osts necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal … shall be regarded as recoverable costs’. It follows that the costs incurred in relation to the opposition proceedings before the Opposition Division may not be regarded as recoverable costs (see, to that effect, Case T‑147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II‑11, paragraph 115, and judgment of 16 January 2008 in Case T‑112/06 Inter-Ikea v OHIM – Waibel (idea), not published in the ECR, paragraph 88). 133 Consequently, the intervener’s head of claim to the effect that the applicant should be ordered to pay the costs incurred before the Opposition Division must be rejected. 134 In those circumstances, the applicant must be ordered, in addition to bearing its own costs and paying those of OHIM, to pay the costs of the intervener, with the exception of the costs incurred by the latter in the proceedings before the Opposition Division. On those grounds, THE GENERAL COURT (Eighth Chamber) hereby: 1. Dismisses the action; 2. Orders Rovi Pharmaceuticals GmbH to pay the costs, including those incurred by Laboratorios Farmacéuticos Rovi, SA in the proceedings before the Board of Appeal. Truchot Martins Ribeiro Popescu Delivered in open court in Luxembourg on 16 September 2013. [Signatures] * Language of the case: English.