Judgment;Judgment (extracts) — ECLI:EU:T:2016:69
Date: 2016-02-05
Language of the case: English
Court formation: Fifth Chamber
Subject matter: Trade marks;Intellectual, industrial and commercial property
Procedure: Action for annulment - unfounded;Action for annulment - successful
Origin: Germany

summary of the facts in paragraphs 1 to 9 of that decision. 52 This shows that the Board of Appeal did not rely on the documents appended by the intervener on 8 November 2010 to the statement setting out the grounds of the opposition in finding that the intervener had established the existence, validity and scope of protection of the earlier trade mark. 53 Similarly, the Opposition Division relied only on the documents appended to the notice of opposition in rejecting the applicant’s argument that the intervener had not established the existence, validity and scope of protection of the marks on which the opposition was based, as is apparent from the first page of the Opposition Division’s decision of 5 April 2012. 54 It is necessary to examine whether the documents produced by the intervener were sufficient to establish the existence, validity and scope of protection of the earlier trade mark for the purposes of Rule 19(2) of Regulation No 2868/95. – Whether the submission of a renewal certificate may be sufficient to establish the existence, validity and scope of protection of a mark on which an opposition is based 55 The applicant observes that, under Rule 19(2)(a)(ii) of Regulation No 2868/95, the opposing party must provide a copy of the registration certificate for the marks on which the opposition is based and, as the case may be, of the latest renewal certificate, whereas the intervener provided only renewal certificates. 56 It must be pointed out that the intervener, in fact, did not produce the registration certificate for the earlier trade mark: it merely appended a certificate concerning the latest application for renewal to the notice of opposition and appended a renewal certificate to the statement of 8 November 2010. 57 It should also be borne in mind that, according to the first sentence of Rule 19(2) of Regulation No 2868/95, the opposing party must provide ‘proof of the existence, validity and scope of protection of his earlier mark’. The second sentence of Rule 19(2) of Regulation No 2868/95 indicates the evidence which the opposing party must provide ‘[i]n particular’. 58 According to the wording of the first part of Rule 19(2)(a)(ii) of Regulation No 2868/95, in the French version thereof, an opposing party is required to provide the registration certificate ‘et’ (and), as the case may be, the latest renewal certificate for an earlier registered trade mark which is not a Community trade mark. On the basis of that wording, the opposing party must therefore, in principle, provide the registration certificate even if he has also provided the renewal certificate. Other language versions of that regulation confirm that, in principle, the registration certificate must also be produced, as they contain the equivalent of the conjunction ‘et’ — for example ‘and’ in the English version, ‘y’ in the Spanish version, ‘ed’ in the Italian version, ‘e’ in the Portuguese version and ‘en’ in the Dutch version. 59 It is true that, in the German version of Rule 19(2)(a)(ii) of Regulation No 2868/95, the conjunction ‘oder’ (or) is used. However, in view of the fact that the French, English, Spanish, Italian, Portuguese and Dutch versions of the provision in question all contain the conjunction ‘and’, or its equivalent in each of those languages, the fact that the conjunction ‘oder’ is used in the German version is not decisive. 60 According to the last part of Rule 19(2)(a)(ii) of Regulation No 2868/95, it is also possible for the opposing party to produce ‘equivalent documents emanating from the administration by which the trade mark was registered’. 61 In that regard, the question arises as to whether the possibility of providing an equivalent document relates only to the obligation to provide the renewal certificate or whether it relates to the obligation to submit both of the items under consideration, that is to say, both the registration certificate and the renewal certificate. From a grammatical point of view, both interpretations are possible: in the phrase ‘if the trade mark is registered, a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered’, the element ‘or equivalent documents’ may relate either to both items — both the registration certificate and the renewal certificate — or to the second item only. 62 It is necessary to interpret that provision as meaning that the possibility of providing an equivalent document does not relate only to the renewal certificate, but to both the registration certificate and the renewal certificate. The requirement to produce the registration certificate is not an end in itself, but is intended to ensure that OHIM has available to it reliable proof of the existence of the mark on which the opposition is based. It should be borne in mind that the first sentence of Rule 19(2) of Regulation No 2868/95 provides that the opposing party must provide ‘proof’ of the existence, validity and scope of protection of his earlier mark and that the second sentence of Rule 19(2) of Regulation No 2868/95 merely specifies the items which must be provided in order to furnish such ‘proof’. A teleological interpretation of Rule 19(2) of Regulation No 2868/95 thus permits the conclusion that, ultimately, what is crucial is that OHIM should have available to it reliable ‘proof’ of the existence, validity and scope of protection of an earlier trade mark on which an opposition is based. 63 The production of a document emanating from the competent authority and containing the same information as that which appears in a registration certificate meets that requirement. An opposing party cannot be required to produce a registration certificate when he is providing a document emanating from the same authority — which is therefore just as reliable as a registration certificate — which contains all the necessary information. 64 It is therefore possible to provide an ‘equivalent’ document which serves just as well as a replacement for the registration certificate as it does for the renewal certificate. It is also possible that the second item mentioned in Rule 19(2)(a)(ii) of Regulation No 2868/95 (the renewal certificate) may at the same time constitute a document ‘equivalent’ to the first item (the registration certificate). Where the renewal certificate contains all the information necessary to assess the existence, validity and scope of protection of the mark on which the opposition is based, the submission of that document constitutes ‘proof of the existence, validity and scope of protection of his earlier mark’ as referred to in the first sentence of Rule 19(2) of Regulation No 2868/95. It should be borne in mind that, according to a teleological interpretation of Rule 19(2) of Regulation No 2868/95, the content of the document is what counts, together with the fact that it emanates from the competent authority. 65 It follows from the foregoing that the submission of a renewal certificate is sufficient to establish the existence, validity and scope of protection of the mark on which the opposition is based, if it contains all the information necessary for that purpose. 66 In the present case, the renewal certificate was submitted only with the statement of 8 November 2010. 67 Given that the Board of Appeal relied only on the documents appended by the intervener to the notice of opposition, it is appropriate to examine, in the first place, whether those documents were sufficient to establish the existence, validity and scope of protection of the earlier trade mark. – Whether the documents appended to the notice of opposition are sufficient 68 The only document appended to the notice of opposition in order to establish the existence, validity and scope of protection of the earlier trade mark is the document providing evidence of an application for renewal of that trade mark (see paragraph 43 above). 69 It is apparent from that document that that renewal application was filed by the intervener on 23 February 2007. In addition, that document contains relevant information pertaining to the earlier trade mark, such as would be included in a registration certificate. Thus, it contains a description of the mark, the name of the proprietor of that mark, the goods covered, the date of the first application for registration and the date of the first registration, as well as the date of the first application for renewal and the date of the first renewal. 70 The intervener also produced a full translation of that document (see paragraph 44 above). 71 The applicant observes in that regard that, under Rule 98(1) of Regulation No 2868/95, when a translation of a document is to be filed, the translation is to identify the document to which it refers and reproduce the structure and contents of the original document. 72 In the present case, the translation provided by the intervener does not contain any explicit reference indicating the original document which has been translated. However, when the original document and the translation are produced together, there is no need for an explicit reference of that kind in order to identify the document to which the translation refers. In the present case, it is apparent from the documents produced before OHIM that the translation appears directly after the original document. In those circumstances, there is no doubt as regards the original document to which the translation refers. 73 However, the question arises as to whether that document also establishes the validity of the earlier trade mark. It is not apparent from that document whether or not the earlier trade mark was in fact renewed. 74 It should be noted that, where the application for renewal has been made in good time but the competent authority has not yet reached a decision regarding that application, it is sufficient to produce a certificate providing evidence of the application, if that certificate emanates from the competent authority and contains all the necessary information relating to the registration of the mark, such as would be included in a registration certificate. As long as the mark on which the opposition is based has not been renewed, it is impossible for the proprietor of the mark to produce a renewal certificate, and he cannot be penalised for the time taken by a competent authority to reach a decision regarding his application. The same idea is also expressed in Rule 19(2)(a)(i) of Regulation No 2868/95, pursuant to which, if the trade mark is not yet registered, it is sufficient to produce a copy of the filing certificate. 75 By contrast, where the mark on which an opposition is based is registered, it is no longer sufficient under Rule 19(2)(a)(ii) of Regulation No 2868/95 to submit the filing certificate. It is thus necessary to produce the registration certificate or an equivalent document. Following that same line of thought, it is not sufficient to produce a certificate providing evidence of an application for renewal where the renewal has taken place. 76 In the present case, it is apparent from the document provided as Annex No 21 to the statement of 8 November 2010 that the certificate was renewed on 9 April 2010 and thus before the expiry of the period during which the intervener was required to prove the existence, validity and scope of protection of the earlier trade mark and even before the filing of the notice of opposition. 77 The intervener maintains that, at the time of filing of the notice of opposition, the renewal certificate was not yet available. Even assuming that the renewal certificate — which, however, is dated 30 April 2010 — was not available to the intervener on 7 June 2010, the date on which the notice of opposition was filed, the fact remains, in any event, that what counts is whether the certificate was available on the date when the period fixed by OHIM for substantiating the opposition expired. 78 In those circumstances, the filing of the certificate appended to the notice of opposition and providing evidence of the application for renewal cannot be regarded as sufficient to establish the validity of the earlier trade mark. – Whether the documents appended to the statement of 8 November 2010 are sufficient 79 It is necessary to examine whether the renewal certificate appended to the statement of 8 November 2010 was sufficient to establish the validity of the earlier trade mark. 80 In that regard, it should be borne in mind that the translation appended by the intervener to the statement of 8 November 2010 covers only the first two pages of the renewal certificate (see paragraph 49 above). 81 It should first of all be noted that that translation complies with Rule 98(1) of Regulation No 2868/95: it reproduces the structure and contents of the original document, even if it goes no further than the second page of that document. Given that the intervener produced the original document and the translation in a single annex, namely, Annex No 21 to the statement of 8 November 2010, there is no doubt as to the original document to which the translation refers. 82 Next, it should be noted that the mere fact that the certificate in question was not translated in its entirety does not mean that it was not duly translated: according to Rule 19(4) of Regulation No 2868/95, OHIM is not to take into account ‘documents, or parts thereof, that have not been ... translated into the language of the proceedings, within the time limit set by [OHIM]’. 83 Therefore, the consequence of an incomplete translation being submitted is not that it is possible to reject the document in its entirety, but simply that only the parts which have been translated into the language of the proceedings may be taken into account. 84 An opposition is to be rejected on the ground that the opposing party has not proven the existence, validity and scope of protection of the mark on which the opposition is based only if the parts of the evidence provided by the opposing party not translated into the language of the proceedings are essential in order to furnish such proof (see, to that effect, judgment of 29 September 2011 in adidas v OHIM — Patrick Holding (Representation of a shoe with two stripes), T‑479/08, EU:T:2011:549, paragraph 33). 85 In the present case, the applicant stated, in its response to the written question put by the Court, that the translation provided by the intervener was incomplete. OHIM and the intervener argued, in their answers to that question, that the translated parts of the renewal certificate were sufficient to establish the existence, validity and scope of protection of the earlier trade mark. 86 It must be found that the information contained in the first two pages of the document in question, as described in paragraphs 47 and 48 above, is sufficient to establish the existence, validity and scope of protection of the earlier trade mark. 87 The information appearing on the third and fourth pages of the original certificate is, for the most part, a repetition of the information appearing on the first and second pages. The fifth page contains only a representation of the earlier trade mark. However, given that it is apparent from the second page of the original document, which has been translated, that the earlier trade mark is the word mark KICKERS, the graphical representation of that mark does not convey any additional information. 88 In addition, it must be pointed out that the applicant did not indicate what important information had, in its view, been omitted from the translations produced. 89 It follows that the documents appended by the intervener to the statement of 8 November 2010 were sufficient to establish the existence, validity and scope of protection of the earlier trade mark. 90 It should, however, be noted that, as is apparent from paragraphs 68 to 78 above, the Board of Appeal was wrong to find that the documents appended to the notice of opposition were sufficient to establish the existence, validity and scope of protection of the earlier trade mark. 91 Nevertheless, that error on the part of the Board of Appeal cannot justify the Court’s annulling the contested decision. As can be seen from paragraphs 79 to 89 above, the documents produced by the intervener within the prescribed period, namely, the documents appended to the statement of 8 November 2010, were sufficient to establish the existence, validity and scope of protection of the earlier trade mark. 92 It is true that the General Court may not carry out an assessment on which the Board of Appeal has not yet adopted a position (judgment of 5 July 2011 in Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraph 72). It should, however, be noted that, in the present case, the Board of Appeal did in fact examine whether the documents provided by the intervener were sufficient to establish the existence, validity and scope of protection of the earlier trade mark. Accordingly, the Court is not examining an issue which was never assessed by the Board of Appeal, but simply modifying its reasoning, by relying on a piece of evidence provided by the intervener not mentioned by the Board of Appeal in its reasoning, the Court having obtained the parties’ comments on that piece of evidence by means of a written question. 93 It follows from all of the foregoing that the first plea in law must be rejected. Second plea in law: infringement of Article 8(1)(b) of Regulation No 207/2009 94 The applicant considers that the Board of Appeal was wrong to conclude that there was a likelihood of confusion. According to the applicant, the marks at issue are dissimilar. 95 On the other hand, OHIM and the intervener contend that the Board of Appeal was right to conclude that the signs at issue were similar and that there was a likelihood of confusion. 96 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. In addition, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered 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. 97 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and 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 covered (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited). The relevant public and its level of attention 98 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited). 99 In the present case, the Board of Appeal rightly found, without being contradicted on that point by the parties, that the relevant public was the general public in Italy. The goods in question are everyday consumer goods which are intended for the general public. In addition, as the earlier trade mark is an Italian national mark, the existence of a likelihood of confusion must be examined having regard to the Italian public. 100 The Board of Appeal also rightly observed, without being contradicted on that point by the parties, that the average consumer’s level of attention at the time of purchasing the goods in question was average. On the one hand, clothes are mass consumption goods, frequently purchased and used by the average consumer, with the result that the degree of attention of that consumer at the time of purchasing those goods will not be higher than average. On the other hand, the public’s degree of attention is not lower than average, because clothes are fashion items and consumers therefore pay a certain amount of attention when choosing them (see, to that effect, judgment of 10 November 2011 in Esprit International v OHIM — Marc O’Polo International (Representation of a letter on a pocket), T‑22/10, EU:T:2011:651, paragraphs 45 to 47). Comparison of the goods 101 As the Board of Appeal rightly found, without being contradicted on that point by the parties, the goods covered by the mark applied for, namely, ‘clothing’, are identical to the goods covered by the earlier trade mark. Comparison of the signs 102 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by those signs, bearing in mind, in particular, 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 the likelihood of confusion. In that 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). – Distinctive and dominant elements of the mark applied for 103 The applicant argues that the element ‘kick’ of the mark applied for is not distinctive. In its view, as that element is descriptive, the Italian public will focus its attention on the ending ‘tipp’ when it sees the mark applied for. 104 Although those arguments have been put forward by the applicant as part of its reasoning regarding the global assessment of the likelihood of confusion, it is appropriate to examine them first, as the fact that an element of a trade mark lacks distinctiveness may influence the assessment of the similarity between two marks, in so far as less weight will be attributed to that element in the comparison of those marks. 105 In addition, the applicant argues that the word ‘kickers’, which constitutes the earlier trade mark, is not distinctive either. 106 Although the distinctive character of the earlier trade mark, viewed as a whole, is an element which plays a role in the global assessment of the likelihood of confusion, in the present case it is also appropriate to examine it at this stage, as the parties’ arguments as regards the distinctive character of the words ‘kick’ and ‘kickers’ are almost identical. 107 In the contested decision, the Board of Appeal considered that there was no reason to assume that the general public in Italy would understand the word ‘kick’ or the word ‘kickers’, given that they are English words which, it cannot simply be presumed, will be understood in Italy. It observed that the applicant had not provided any evidence that those words would be understood throughout Italy and concluded that the words ‘kick’ and ‘kickers’ were devoid of meaning from the perspective of the relevant Italian public. 108 The applicant challenges that assessment and argues that the words ‘kick’ and ‘kickers’ are not distinctive. Concerning the element ‘kick’, it argues that the meaning of that element will be understood by at least a part of the relevant public in Italy. It considers that the Italian public will perceive the word ‘kick’ as referring to the English verb ‘to kick’ and will establish a connection with football, rugby, American football or kickboxing. 109 It should first of all be noted that, in English, the word ‘kick’ means either ‘a kick’ or, when used as a verb, ‘to kick’. The word ‘kickers’ is the plural form of the word ‘kicker’, meaning ‘football player’. 110 The applicant states that, according to an official survey carried out by the Commission, appended by the applicant to the application, more than a third — 34% — of Italians claim to speak English. That means that over 20 million Italians have a good command of English and understand the word ‘kick’, the word ‘kicker’ and its plural form ‘kickers’. In addition, the verb ‘to kick’ is part of basic English vocabulary. 111 Furthermore, the applicant argues that, as the words ‘kick’ and ‘kickers’ appear in the German dictionary Der Duden and have the same meaning in German as in English, they will be understood by the inhabitants of South Tyrol. 112 OHIM contends the Commission study mentioned in paragraph 110 above is inadmissible, on the ground that it was not submitted during the administrative procedure. In addition, it calls in question the probative value of that study. 113 It should first of all be borne in mind that a document produced for the first time before the Court cannot be taken into consideration. The purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the document in question must be excluded, without it being necessary to assess its probative value (see, to that effect, judgment of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, ECR, EU:T:2005:420, paragraph 19 and the case-law cited). The study provided by the applicant for the first time before the General Court cannot therefore be taken into consideration. 114 Nevertheless, it is a well-known fact that some Italian consumers have a thorough knowledge of the English language and the rest do not. Neither of those groups of Italian consumers is negligible. 115 Next, it should be noted that, in order to find that there exists a likelihood of confusion as referred to in Article 8(1)(b) of Regulation No 207/2009, it is not necessary to find that that likelihood exists for the whole of the relevant public (see judgment of 10 October 2012 in Bimbo v OHIM — Panrico (BIMBO DOUGHNUTS), T‑569/10, EU:T:2012:535, paragraph 69 and the case-law cited). 116 Even assuming that there is no likelihood of confusion for the part of the public in Italy which has a thorough knowledge of English and understands the meaning of the word ‘kick’, it is not possible to reject the opposition on the basis of that fact alone. 117 The applicant’s argument that the word ‘kick’ will be understood ‘at least by a part of the relevant public in Italy’ is therefore ineffective. 118 Concerning the applicant’s argument that the word ‘kick’ is part of basic English vocabulary, the following points should be noted. While it is true that a large proportion of consumers in the European Union has some knowledge of basic English vocabulary (see, to that effect, regarding the English words ‘star’, ‘snack’ and ‘food’, judgment of 11 May 2010 in Wessang v OHIM — Greinwald (star foods), T‑492/08, EU:T:2010:186, paragraph 52), the words ‘kick’ and ‘kickers’ cannot be regarded as part of that basic vocabulary (see, to that effect, regarding the word ‘kickers’, judgment of 19 April 2013 in Hultafors Group v OHIM — Società Italiana Calzature (Snickers), T‑537/11, EU:T:2013:207, paragraph 50). The applicant’s argument that the Italian public is sports-oriented is not in itself sufficient to establish that the English words ‘kick’ and ‘kicker’ will be generally understood by Italian consumers. 119 Regarding the applicant’s argument that the words ‘kick’ and ‘kickers’ will be understood in South Tyrol, it is sufficient to point out that only a small part of the Italian population is German speaking (see, to that effect, judgment of 16 May 2012 in Wohlfahrt v OHIM — Ferrero (Kindertraum), T‑580/10, EU:T:2012:240, paragraph 49). 120 It should also be noted that the English words ‘kick’, ‘to kick’, ‘kicker’ and ‘kickers’ bear no resemblance to their Italian counterparts (‘calcio’, ‘dare un calcio’, ‘calciatore’ and ‘calciatori’). 121 It is true that the Board of Appeal’s statement in paragraphs 33 and 36 of the contested decision that the words ‘kick’ and ‘kickers’ ‘are meaningless from the perspective of the relevant Italian public’ is something of an overgeneralisation. Indeed, it is necessary to divide the relevant public into two groups of persons: the group of persons who speak sufficient English or German to understand the words ‘kick’ and ‘kickers’, and the group of persons who do not understand those words (see, to that effect, judgment in Snickers, cited in paragraph 118 above, EU:T:2013:207, paragraph 50). 122 In any event, if the Board of Appeal’s conclusion as to the likelihood of confusion were to be found to be correct as regards the part of the relevant public which does not understand the words ‘kick’ and ‘kickers’, it would be necessary to reject the second plea in law because, in that case, the Board of Appeal would have established the existence of a likelihood of confusion for a not-inconsiderable part of the relevant public. In order for an opposition to be upheld, it is sufficient that there is a likelihood of confusion for a not-inconsiderable part of the relevant public (see, to that effect, judgment in Representation of a letter on a pocket, cited in paragraph 100 above, EU:T:2011:651, paragraphs 118 to 120). 123 Lastly, concerning the earlier trade mark, it must be found that the applicant’s reasoning is not consistent in so far as it argues, on the one hand, that the mark has no distinctive character and, on the other hand, that it has weak distinctive character. 124 The argument based on the claim that the earlier trade mark lacks distinctive character must in any event be rejected, since, if Article 8(1)(b) of Regulation No 207/2009 is not to be infringed, it is necessary to acknowledge that an earlier national mark on which an opposition to the registration of a Community trade mark is based has a certain degree of distinctiveness (judgment of 24 May 2012 in Formula One Licensing v OHIM, C‑196/11 P, ECR, EU:C:2012:314, paragraphs 44 to 47). 125 In any event, it should be noted that the Board of Appeal, in essence, assessed whether there was a likelihood of confusion having regard only to the part of the relevant public which does not speak sufficient English or German to be able to understand the meaning of the words ‘kick’ and ‘kickers’. In those circumstances, it is not necessary to ascertain whether, for the part of the relevant public which understands those words, there is no likelihood of confusion because of their weak distinctive character. 126 It follows from the foregoing that it is necessary to reject the applicant’s arguments concerning the allegedly weak distinctive character of the words ‘kick’ and ‘kickers’. 127 It should also be noted that the part of the relevant public which does not have a certain level of knowledge of English or German will not understand the element ‘tipp’ of the mark applied for either. From the point of view of the German-speaking public, the word ‘tipp’ will be understood, when it is used together with the word ‘kick’, as a reference to betting on football. Owing to the similarity between the English word ‘tip’ and the German word ‘tipp’, it must also be concluded that an English-speaking public will understand it to have that meaning. However, the word ‘tip’ is not part of basic English vocabulary. Accordingly, the part of the public which does not have a thorough knowledge of English or German will not understand the meaning of the element ‘tipp’ of the mark applied for either. 128 For the part of the relevant public which does not have a thorough knowledge of English or German, neither of the elements of the mark applied for will have a more distinctive character than the other. 129 Given that the part of the relevant public which does not understand the meaning of the elements constituting the marks at issue is a not-inconsiderable part of the relevant public and that the Board of Appeal assessed the likelihood of confusion solely in relation to that part of the relevant public, it is necessary to examine, solely in relation to that part of the relevant public, whether the Board of Appeal was right to conclude that there was a likelihood of confusion. – Visual similarity 130 The Board of Appeal held that there was a moderate degree of visual similarity between the marks at issue. It considered that those marks were of a similar length. It also observed that the letter ‘k’ was rather unusual in Italian and that it would attract the attention of the relevant public, especially when placed at the beginning of a sign, as was the case in the marks at issue. 131 The applicant submits that there is no visual similarity between the marks at issue. It claims, in particular, that the presence of a double ‘p’ at the end of the mark applied for creates a different visual appearance for the public. A word ending in the double consonant ‘pp’ is highly unusual, if not non-existent in Italian. The visual appearance of the mark applied for is thus dominated by its last syllable, ‘tipp’. 132 The applicant also argues that, even if the relevant public were to pay more attention to the first syllable than to the rest of a mark, the marks at issue would differ significantly, given that the first syllable of the word ‘kickers’ is ‘ki’ and the first syllable of the word ‘kicktipp’ is ‘kick’. 133 OHIM and the intervener contend that the Board of Appeal was right to conclude that the marks at issue were visually similar. 134 It should be pointed out that the mark applied for, kicktipp, consists of eight letters, the first four of which are identical to the first four letters of the earlier trade mark, KICKERS, which, for its part, consists of seven letters. 135 The Board of Appeal also rightly observed that the letter ‘k’ was unusual in Italian, with the result that it would attract the relevant public’s attention. 136 The applicant’s argument that ‘the Board of Appeal remarks that the Italian public will be attracted by the “K” and will therefore be more attentive’ and that a consumer with a higher-than-average degree of attention will notice more differences in a word is based on a misunderstanding of the contested decision. 137 The fact that — as was rightly noted in paragraph 34 of the contested decision — the letter ‘k’ is unusual in Italian and will thus attract the relevant public’s attention concerns only the relative weight to be attributed to the various elements in the marks at issue and does not mean that the relevant public’s degree of attention at the time of purchasing clothing is above average. The Board of Appeal explicitly stated in paragraph 26 of the contested decision that the relevant public’s level of attention was average. 138 The applicant rightly observes that the double consonant ‘pp’ at the end of a word is also unusual in Italian. Therefore, it is not only the letter ‘k’, but also the double consonant ‘pp’ that will attract the relevant public’s attention. 139 The applicant’s argument that the last syllable of the mark applied for dominates the visual impression given by that mark because of the double consonant ‘pp’ must, however, be rejected. The mere presence at the end of the mark applied for of a double consonant, which is perceived as unusual at the end of a word by the relevant public, does not mean that the last syllable dominates the visual perception of that mark, especially in the present case, in which the letter ‘k’, which appears at the beginning of the mark applied for, is also unusual in Italian. 140 It should also be borne in mind that, according to case-law, the public generally pays greater attention to the beginning of a mark than to the end (judgment of 25 March 2009 in L’Oréal v OHIM — Spa Monopole (SPA THERAPY), T‑109/07, ECR, EU:T:2009:81, paragraph 30). 141 The applicant claims in that regard that that principle is not of general application and that each case must be examined individually. 142 It is true that, according to case-law, the fact that the public generally pays greater attention to the beginning of a mark than to the end does not apply in all cases and may not, in any circumstances, call into question the principle that the examination of the similarity of the marks must take account of the overall impression given by those marks, since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 10 December 2008 in Giorgio Beverly Hills v OHIM — WHG (GIORGIO BEVERLY HILLS), T‑228/06, EU:T:2008:558, paragraph 28 and the case-law cited). 143 The applicant states that, in the judgment of 20 November 2007 in Castellani v OHIM — Markant Handels und Service (CASTELLANI) (T‑149/06, ECR, EU:T:2007:350), the General Court found that there was no similarity between the marks CASTELLANI and CASTELLUCA. 144 However, it is apparent from paragraphs 54 and 55 of that judgment that that finding was supported, in particular, by the fact that the General Court considered that the use of words such as ‘château’, ‘castello’, or ‘castel’ was very common for the goods in question. In that case, that fact was liable to affect the distinctiveness of the shared element, ‘castell’, of the marks in question. 145 By contrast, in the present case, it cannot be said that the shared element, ‘kick’, has weak distinctive character, at least for the part of the relevant public which does not understand what it means. 146 Next, the applicant states that, in the judgment in Snickers, cited in paragraph 118 above (EU:T:2013:207, paragraph 41), the General Court found, when comparing the marks KICKERS and Snickers, that ‘the consumer will not stop at the first letter, but will consider at least the first syllable’. The applicant claims that, in the present case, the first syllable of the earlier trade mark is ‘ki’, whereas the first syllable of the mark applied for is ‘kick’. 147 It should, however, be noted that the case-law according to which the consumer generally pays greater attention to the beginning of a mark concerns the beginning of a mark and not necessarily the first syllable thereof. The fact that, in the present case, the first four letters of the marks at issue are identical, which gives rise to a certain degree of visual similarity, is not called in question by the fact that, in the earlier trade mark, the first four letters may belong to different syllables. 148 As OHIM observes, the judgment in Snickers, cited in paragraph 118 above (EU:T:2013:207), does not support the applicant’s argument. In paragraph 41 of that judgment, the General Court found that the difference between the letter ‘k’ and the letter combination ‘sn’ appearing at the beginning of the signs at issue in that case did not alter the fact that those signs are similar, since consonants were involved in both instances and the consumer would not stop at the first letter, but would consider at least the first syllable. 149 In that judgment, the General Court found, in essence, that a difference between the initial consonants of two marks at issue does not mean there may not be an average degree of visual similarity between them, especially where their first syllables contain the same vowel. It cannot be inferred from that judgment that, when examining the visual similarity of two marks at issue, it is necessarily appropriate to carry out a syllable-by-syllable examination. It should be borne in mind in that context that a consumer normally perceives a mark as a whole. 150 It should also be noted that it is not obvious how the earlier trade mark should be divided into syllables (see paragraph 166 below). 151 Therefore, the arguments put forward by the applicant to establish that, in the present case, the consumer will not attribute greater importance to the beginning of the marks at issue are unconvincing. 152 Next, it should be noted that, as the applicant observes, the visual appearance of the letter groups constituting the end of the marks at issue — ‘ers’ and ‘tipp’ respectively — is completely different. 153 Having regard to the fact that the first four letters of the marks at issue (marks which contain, respectively, seven and eight letters in total) are identical, it is not possible — contrary to the applicant’s assertions — to find that there is no visual similarity between those marks. 154 However, in view of the fact that the last part of the marks at issue — ‘ers’ and ‘tipp’, respectively — is completely different and that the double consonant ‘pp’ appears at the end of the mark applied for, which is unusual in Italian, the visual similarity of those marks must be described as low. 155 That finding is not undermined by the arguments put forward by OHIM and the intervener. 156 Concerning the intervener’s argument that the letter sequence of the element ‘kick’ is highly unusual in Italian, it must be pointed out that the same is true of the letter sequence of the element ‘tipp’. 157 OHIM states that, in other cases concerning two word marks where the first elements are identical and the last elements are very different visually, the General Court held that the visual and phonetic similarity of those marks could not be described as low. OHIM relies, in that regard, on the judgments of 22 May 2012 in Asa v OHIM — Merck (FEMIFERAL) (T‑110/11, EU:T:2012:253), concerning the comparison of the signs FEMIFERAL and Feminatal, and 30 April 2014 in Beyond Retro v OHIM — S&K Garments (BEYOND VINTAGE) (T‑170/12, EU:T:2014:238), concerning the comparison of the signs BEYOND RETRO and BEYOND VINTAGE. 158 It should, however, be noted that the comparison of two signs must be carried out having regard to the particular circumstances of each case, with the result that a comparison with the specific degree of similarity found to exist between other signs in other cases is of only limited value. In the judgments cited by OHIM, the General Court did not establish a general principle that, when the first elements of two word marks are identical and the last elements are very different visually, there is a visual and phonetic similarity between those marks which cannot be described as low. Concerning the comparison of the signs FEMIFERAL and Feminatal, it should also be noted that not only are the first elements of those signs identical, but so are their last two letters. – Phonetic similarity 159 The Board of Appeal stated that, phonetically, the earlier trade mark is pronounced ‘kik-ers’ and the mark applied for ‘kik-tip’. Each of the marks at issue consists of two syllables, the first of which is identical. The Board of Appeal considered that, in view of the fact that the public generally pays greater attention to the beginning of a mark than to the end, the marks at issue were phonetically similar overall. 160 The applicant argues that the marks at issue are phonetically dissimilar. The earlier trade mark is pronounced as a single word, whereas the mark applied for is pronounced as two separate words. 161 The Italian public will not pronounce the earlier trade mark ‘kik-ers’ but ‘ki-kers’. The public will stress the syllable ‘ki’ and murmur the syllable ‘kers’. 162 On the other hand, the mark applied for is pronounced ‘kik-tipp’. The double consonant ‘pp’ is pronounced much more strongly than the single consonant ‘p’. Double consonants are pronounced more forcefully and for longer than single consonants. In the mark applied for, the stress falls on both of its syllables. The last syllable is the most significant part. 163 OHIM and the intervener contend that the Board of Appeal was right to conclude that there was a phonetic similarity. 164 OHIM argues, in particular, that the syllabic analysis of the earlier trade mark is not clear cut. The attempt to divide the earlier trade mark into syllabic units is more a matter of theoretical interest than one of practical effect. Since the word ‘kickers’ is relatively short and the average consumer will probably pronounce it quickly without paying it any particular attention, the hard consonant ‘k’ will merge with the initial sound ‘ki’ and the final sound ‘ers’, with the result that any difference in terms of syllabic structure between ‘kik-ers’ and ‘ki-kers’ will in any event be virtually unnoticeable. 165 The intervener argues that the earlier trade mark is pronounced ‘kik-ers’, as can be seen from several OHIM decisions. 166 It should be noted that it is not obvious how the earlier trade mark should be divided into syllables. However, as observed by OHIM, the question whether the earlier trade mark will be pronounced ‘kik-ers’ or ‘ki-kers’ has little or no impact on the phonetic comparison of the marks at issue. It is possible that the division of a word into syllables may have a significant effect on the pronunciation of that word, in particular, where the result of a different division is that the stress is placed on a different syllable. However, that is not the situation in the present case. 167 The pronunciation of the earlier trade mark begins with the sound ‘ki’, followed by the consonant ‘k’ and the sound ‘ers’. As observed by OHIM, when the earlier trade mark is pronounced, the consonant ‘k’ will merge with the initial sound ‘ki’ and the final sound ‘ers’, with the result that any difference in terms of syllabic structure between ‘kik-ers’ and ‘ki-kers’ will in any event be virtually unnoticeable. It is therefore unnecessary to settle the question whether the first syllable of the earlier trade mark consists of the element ‘ki’ or the element ‘kick’. In any event, the relevant public will not carry out a detailed analysis of the earlier trade mark in order to establish how it is divided into syllables. 168 The applicant rightly states that, in the earlier trade mark, the stress is placed on the first syllable. However, contrary to its assertions, it cannot be argued that the relevant public will ‘murmur’ the second syllable. The mere fact that the stress is not placed on a syllable does not mean that that syllable will be murmured. 169 Concerning the pronunciation of the mark applied for, it should be noted that the division of that mark into the syllables ‘kick’ and ‘tipp’ is quite clear and is not disputed by the parties. 170 Next, the applicant is right to state, in essence, that the Italian consumer will pronounce the mark applied for as two separate elements and that he will stress each of those elements. 171 However, it is necessary to reject the applicant’s argument that the double consonant ‘pp’, which is situated at the end of the mark applied for, will be pronounced more forcefully and for longer than a single consonant ‘p’. In Italian, the pronunciation of the word ‘kicktipp’ is identical to the pronunciation of the word ‘kicktip’. Moreover, it is unclear how the sound ‘p’ at the end of a word might be pronounced ‘for longer’. 172 It is also necessary to reject the applicant’s argument that the last syllable of the mark applied for is the most significant part of that mark. 173 It should be borne in mind that the first element of the mark applied for — ‘kick’ — does not have weak distinctive character, at least for the part of the relevant public which does not understand its meaning. 174 Moreover, when perceiving the mark applied for phonetically, the public will not be in a position to notice the double consonant ‘pp’ which is visually striking but which, in the mark applied for, is pronounced in the same way as a single consonant ‘p’ would be. 175 Regarding the applicant’s argument that the earlier trade mark is pronounced as a single word, whereas the mark applied for is pronounced as two separate words, the following points should be noted. 176 It is true that the earlier trade mark will be perceived as a unit. It does not contain two clearly separate elements, as is moreover demonstrated by the difficulty in dividing it into syllables. 177 By contrast, the mark applied for consists of two elements which can be clearly separated. Even from the point of view of the part of the public which does not understand the meaning of the element ‘kick’ or the meaning of the element ‘tipp’, both are clearly separate elements of the mark kicktipp. Unlike the element ‘ers’ of the earlier trade mark, the element ‘tipp’ of the mark applied for will not be perceived as a mere ending. 178 In the present case, contrary to the applicant’s assertions, it cannot be found that there is no similarity between the marks at issue: their initial sound, ‘kik’, is identical and they contain the same number of syllables. 179 However, the fact that the earlier trade mark contains only one stress, placed on the first syllable, whereas, in the mark applied for, both of the elements constituting that mark are stressed is readily apparent when the marks at issue are perceived phonetically. As a result of the difference in the rhythm of pronunciation of the marks at issue, their phonetic similarity must be described as very low, even if account is taken of the fact that the public generally pays greater attention to the beginning of a mark. – Conceptual similarity 180 Concerning the conceptual similarity, it is sufficient to point out that, for the part of the relevant public which does not understand the meaning of the words ‘kick’, ‘kickers’ and ‘tipp’, no element of the marks at issue has any meaning. So far as that part of the relevant public is concerned, it is therefore necessary to uphold the finding of the Board of Appeal that it is not possible to carry out a conceptual comparison. Likelihood of confusion 181 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 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). 182 The Board of Appeal held that the inherent distinctive character of the earlier trade mark in respect of the goods in question was normal. It concluded that there was a likelihood of confusion, having regard to the identity of the goods in question, the visual and phonetic similarities between the marks at issue and the average degree of attention of the relevant public. 183 The applicant submits that there is no likelihood of confusion. It argues, in particular, that the marks at issue are dissimilar and that the mark applied for consists of two words, whereas the earlier trade mark consists of a single word. 184 OHIM and the intervener contend that the Board of Appeal was right to conclude that there was a likelihood of confusion. 185 OHIM argues that the relevant public could be led to believe that the mark applied for is derived from the earlier trade mark, as is often the case in the clothing sector. 186 The intervener asserts that the Opposition Division found that the earlier trade mark had a highly distinctive character and that that finding was neither called in question nor contradicted in the contested decision. It emphasises that the earlier trade mark’s reputation has been acknowledged in numerous OHIM decisions. 187 It should first of all be pointed out that, at least for the part of the relevant public which does not understand the meaning of the word ‘kickers’, the inherent distinctive character of the earlier trade mark is normal. The applicant’s arguments regarding the lack of distinctive character or weak distinctive character of the earlier trade mark all presuppose that the relevant public understands the meaning of that word and must be rejected (see paragraphs 123 to 126 above). 188 The Board of Appeal based its assessment on the inherent distinctive character of the earlier trade mark — as is apparent from paragraph 39 of the contested decision — and did not proceed to examine whether that mark had an enhanced distinctive character acquired through use. The intervener’s assertion that the Opposition Division found that the earlier trade mark had a highly distinctive character and that that finding was neither called in question nor contradicted in the contested decision has no basis in fact. Contrary to what is asserted by the intervener, the Opposition Division in no way found that the earlier trade mark had a highly distinctive character. The Opposition Division clearly indicated, on page 6 of its decision, that there was no need to examine the intervener’s assertion that the earlier trade mark had an enhanced distinctive character because of its reputation, since it was necessary to uphold the opposition in any event on the basis of that mark’s inherent distinctive character. 189 Next, it should be borne in mind that the goods in question are identical and that, for the part of the relevant public which does not understand the meaning of the words ‘kickers’, ‘kick’ and ‘tipp’, the marks at issue have weak visual similarity, very weak phonetic similarity, and cannot be compared conceptually. 190 It should also be noted that, as a general rule, in clothes shops customers can either choose the clothes they wish to buy themselves or be assisted by the sales staff. Whilst it cannot be ruled out that there may be some oral communication in respect of the product and the brand, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks in question will generally take place prior to purchase. Accordingly, according to case-law, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (judgment of 6 October 2004 in New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, ECR, EU:T:2004:293, paragraph 50). 191 In the light of those considerations, it is necessary to examine whether the Board of Appeal was right to conclude, taking only the inherent distinctive character of the earlier trade mark into consideration, that there was a likelihood of confusion. 192 In that context, it should be borne in mind that, by virtue of the principle of interdependence between the factors taken into account, a lesser degree of similarity between the goods or services covered may be offset by a greater degree of similarity between the marks, and vice versa (see paragraph 181 above). However, there is nothing to preclude a finding that, in view of the circumstances of a particular case, there is no likelihood of confusion, even where the goods are identical and there is a certain degree of similarity between the marks at issue (see, to that effect, judgments of 12 July 2006 in Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, ECR, EU:T:2006:202, paragraphs 67 and 68, and 17 February 2011 in Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, ECR, EU:T:2011:49, paragraphs 44 and 48). 193 In the present case, the earlier trade mark will be perceived as a unit, whereas the mark applied for consists of two elements which can be clearly separated (see paragraphs 176 and 177 above). 194 It should also be borne in mind that the double consonant ‘pp’ at the end of the mark applied for will be perceived as highly unusual by the relevant public. When the mark applied for is perceived visually, the presence of that double consonant will not escape the relevant public’s attention. 195 Phonetically, it should be borne in mind that the pronunciation of each of the marks at issue follows a different rhythm (see paragraph 179 above). 196 The differences between the marks at issue will not escape the relevant public’s attention, even when account is taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (see, by analogy, judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 26). 197 It should be borne in mind in that context that the public’s degree of attention is not low, as clothes are fashion items and consumers therefore pay a certain amount of attention when choosing them (see paragraph 100 above). 198 It cannot be found that consumers with an average level of attention might believe that clothes come from the same undertaking or from economically-linked undertakings when they are sold under the marks at issue because: (i) the earlier trade mark will be perceived as a unit and the mark applied for consists of two elements which can be clearly separated; and (ii) the marks at issue are pronounced following a different rhythm. While it is true that the first four letters of the marks at issue are identical, the overall impression given by those marks is sufficiently dissimilar to rule out a likelihood of confusion, even with regard to identical goods. 199 Concerning OHIM’s argument that the relevant public could be led to believe that the mark applied for is derived from the earlier trade mark, as is often the case in the clothing sector, the following points should be noted. 200 It is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates. It is indeed common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various clothing lines from one another (see judgment in NLSPORT, NLJEANS, NLACTIVE and NLCollection, cited in paragraph 190 above, EU:T:2004:293, paragraph 51 and the case-law cited, and judgment in ANN TAYLOR LOFT, cited in paragraph 192 above, EU:T:2011:49, paragraph 45). 201 However, in the present case, the mark applied for will not be perceived as a mere configuration of the earlier trade mark. The mere fact that the marks at issue share their first four letters is not sufficient in that regard, as the way in which those marks are structured is very different: in the earlier trade mark, the letter sequence ‘k’, ‘i’, ‘c’ and ‘k’ will be perceived as the first four letters of a single seven-letter word, and the last three letters, ‘e’, ‘r’ and ‘s’, which follow will be perceived as a mere ending, whereas, in the mark applied for, the letter sequence ‘k’, ‘i’, ‘c’ and ‘k’ will be perceived as constituting the first element of the mark, to which the second element ‘tipp’ is added. 202 It must therefore be found that the Board of Appeal was wrong to conclude that there was a likelihood of confusion, as referred to in Article 8(1)(b) of Regulation No 207/2009, on the basis of the inherent distinctive character of the earlier trade mark. 203 Concerning the intervener’s argument that the earlier trade mark and its marks MISSKICK and KICK’s constitute a series of trade marks, it should be noted that the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. For there to be a likelihood of the public’s being mistaken as to whether the trade mark applied for belongs to the series, the earlier marks forming part of that series must necessarily be present on the market (judgment of 23 February 2006 in Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, ECR, EU:T:2006:65, paragraph 126). 204 In the present case, the Board of Appeal did not examine whether the intervener had furnished proof of use of the marks MISSKICK and KICK’S and the Court may not examine that question for the first time, as it may not carry out an assessment on which the Board of Appeal has not yet adopted a position (see paragraph 92 above). For the same reason, the Court cannot examine the intervener’s argument that the earlier trade mark has an enhanced distinctive character acquired through use and that it is a trade mark with a reputation. 205 It is therefore necessary to uphold the second plea in law and to annul the contested decision. Costs 206 Under Article 134(1) 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 OHIM has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by the applicant. 207 Since the intervener has been unsuccessful, it must be ordered to bear its own costs. On those grounds, THE GENERAL COURT (Fifth Chamber) hereby: 1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 12 December 2013 (Case R 1061/2012-2); 2. Orders OHIM to bear its own costs and to pay those incurred by Kicktipp GmbH; 3. Orders Società Italiana Calzature Srl to bear its own costs. Dittrich Schwarcz Tomljenović Delivered in open court in Luxembourg on 5 February 2016. [Signatures] * Language of the case: English. 1 ‑ This judgment is published in extract form.