Judgment — ECLI:EU:T:2009:145
Date: 2009-05-07
Language of the case: English
Court formation: Third Chamber
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Trade marks;Intellectual, industrial and commercial property
Concepts: Figurative marks applied for
Procedure: Action for annulment - successful
Origin: Netherlands

summary form the pleas raised and that no new plea in law may be introduced in the course of proceedings unless it is based on matters of law or of fact which come to light in the course of the procedure. The fact that the applicant became aware of a factual matter during the course of the proceedings before the Court of First Instance does not mean that it constitutes a matter of fact which came to light in the course of the procedure. A further requirement is that the applicant was not in a position to be aware of that matter previously (Case T-139/99 AICS v Parliament [2000] ECR II‑2849, paragraphs 59 and 62, and Case T-340/04 France Télécom v Commission [2007] ECR II-573, paragraph 164). 17 In the present case, the applicant stated that the assignment of the earlier mark of Glory & Pompea to Pompea SPA had taken place on 28 January 2004, that is, in the course of the proceedings before the Board of Appeal and before the action was brought before the Court. The applicant annexed in that connection an extract from a Spanish trade mark register. It has however not been argued or proved that that matter came to light in the course of the procedure before the Court of First Instance. 18 Therefore, the Court holds that that circumstance is not a matter of fact which came to light in the course of the procedure before the Court. The applicant’s request to be allowed to submit a new plea in law alleging the unlawfulness of the contested decision on the ground that the intervener in the proceedings before the Board of Appeal no longer held any kind of right in relation to the earlier mark must therefore be rejected. 2. Infringement of Article 8(1)(b) of Regulation No 40/94 Preliminary observations 19 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, a trade mark shall not 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. 20 In addition, under Article 8(2)(a)(ii) of Regulation No 40/94, ‘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. 21 As acknowledged by settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraph 30, and the case-law cited). 22 As also confirmed by the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and of the goods or services at issue, and taking into account all the factors relevant to the case, including the interdependence between the similarity of the signs and that of the goods or services covered (GIORGIO BEVERLY HILLS, cited at paragraph 21 above, paragraphs 30 to 33, and the case-law cited there). 23 Also, that global assessment of the likelihood of confusion, with regard to the visual, phonetic or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (order of the Court of 28 April 2004 in Case C-3/03 P Matratzen Concord v OHIM [2004] ECR I‑3657, paragraph 29; see, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 23; and Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 25). The identical nature of the goods and the relevant public 24 The parties do not dispute the fact that the goods covered by the marks in question are identical and that the public concerned consists of Spanish consumers. Since each of the marks at issue concerns clothing, footwear and headgear, the identical nature of the goods in question can be confirmed. In addition, since the goods covered by the marks at issue are everyday consumer goods and since the earlier mark was registered in Spain, the parties correctly considered that the relevant public consisted of average Spanish consumers. Comparison of the signs at issue Conceptual similarity – Arguments of the parties 25 The applicant considers that, with regard to the sporting logo in the shape of a shield which forms the mark applied for, the element ‘la’ clearly refers to the city of Los Angeles (United States), a place name of Spanish origin. Even the Spanish consumer with no particular knowledge of English would know that the correct pronunciation of the acronym ‘la’ in English is ‘el-ey’. According to the applicant, the acronym ‘la’ could not be interpreted as the feminine singular, definite article ‘la’ in Spanish, since the word ‘kings’, with which it is linked, was, as the Board of Appeal itself acknowledged, perceived as a masculine English word. 26 Moreover, the applicant considers that the Board of Appeal, without explanation, disregarded its duly substantiated argument that its highly distinctive sports logo, linked with the inscription ‘la kings’, evokes the idea of ‘champions’ or ‘winners’ in the sporting context. 27 Finally, the applicant takes the view that the Board of Appeal completely ignored its argument that, where two marks have analogous semantic content, that analogy can give rise to a likelihood of confusion only where the earlier mark has a particularly distinctive character, either per se or because of the reputation it enjoys with the public. That is not so in the present case, particularly with regard to the word ‘king’ or ‘kings’ which they have in common. 28 OHIM is of the opinion that in Spain the element ‘la’ is unlikely to be associated with Los Angeles. Moreover, the impression given by the mark applied for is dominated by the element ‘kings’, which is reinforced by the shield. In those circumstances, OHIM considers that consumers will not differentiate the term ‘king’ from ‘kings’, by associating the latter with the idea of ‘champions’ and ‘winners’, but will link both terms to the concept of ‘kings, kingdom and royalty’, as stated by the Board of Appeal in the contested decision. – Findings of the Court 29 With regard to the conceptual comparison of the marks at issue, the Board of Appeal considered that, even if the relevant public was not very well versed in English, it would most probably understand the meaning of the English word ‘king’ and would recognise the word ‘kings’ as the plural. The Board of Appeal therefore considered that there was a high level of conceptual similarity between those elements. 30 The parties agree on the fact that the relevant public has some knowledge of English which permits it to understand the meaning of the terms ‘king’ and ‘kings’ in English, but their views diverge with regard to the understanding by the relevant public of the element ‘la’. 31 In that regard, the Court holds that the relevant public, which consists of average Spanish consumers, will understand that element at least as describing the Spanish feminine definite article ‘la’. However, it must be held that, taking into account the fact that the relevant public has some knowledge of English, it cannot be excluded that that element could also be perceived by part of that public as the abbreviation of the American city Los Angeles. Consequently, that element will not, in any event, be devoid of meaning for the relevant public. 32 Moreover, the mark applied for also consists of a shield decorated by a crown, a lion, a sun and hockey sticks which cross over each other on the shield. Those images are also part of the conceptual dimension of the mark applied for. The perception of that coat of arms decorated by that crown, lion and sun is conceptually of equal importance to that of the term ‘kings’. Given the size of the coat of arms and of those components, it is their conceptual significance which will be remembered by the relevant public. By contrast, the hockey sticks are not represented in a way enabling them to be clearly recognised as such, particularly because they do not appear frequently on a coat of arms. The shield or the coat of arms of the mark applied for will be perceived as such and will have, along with its figurative elements – crown, lion and sun – a clear conceptual significance for the relevant public. 33 However, in so far as the applicant considers that its highly distinctive sporting logo linked with the inscription ‘la kings’ would evoke the idea of champions or winners in a sporting context, it must be held that, even if the hockey sticks cannot easily be recognised by the relevant public, it cannot be excluded that a part of the relevant public with particular sporting knowledge might perceive the inscription ‘la kings’ as referring to champions or winners, and not the ‘kings of Los Angeles’. However, it has not been proved that such an understanding is shared by all the average Spanish consumers constituting the relevant public. 34 With regard to the earlier mark, it includes only the concept ‘king’. The graphic representation of the dot on the letter i will not be perceived by the relevant public as referring to a specific concept. 35 The comparison of the marks at issue thus reveals to the relevant public a very strong conceptual similarity between the elements ‘king’ and ‘kings’. The marks however differ in that the mark applied for contains the element ‘la’ and a shield or coat of arms decorated with a crown, lion and sun. It follows that, overall, the marks at issue display a slight degree of conceptual similarity. Visual similarity – Arguments of the parties 36 First, the applicant contests the Board of Appeal’s statement, in the contested decision, that the word element ‘kings’ of the mark applied for is imperfectly remembered by the relevant public. It considers that that statement contradicts the Board’s assessment that the shield device of the mark applied for allows the relevant public to distinguish the signs ‘without any problems, even if the word elements are nearly identical’, with the result that the global visual assessment results in an impression of dissimilarity. 37 According to the applicant, the shield device is the dominant element of the mark applied for. Given its dominant character, that element is of major importance and would be kept in mind by the average consumer when looking at the logo for sports clothing featuring the mark applied for, in particular as the average consumer would have only an imperfect image of the mark. 38 Second, the applicant contests the Board of Appeal’s assertion in the contested decision that the average consumer will not associate the element ‘la’ with the element ‘kings’ of the mark applied for. 39 The applicant states that that assertion is not supported by any evidence. In addition, the applicant considers that the Board of Appeal failed to take any account in the contested decision of its arguments that the acronym ‘la’, although visually less significant than the element ‘kings’, cannot be regarded as an irrelevant element. According to the applicant, unless associated with the word ‘kings’, the acronym ‘la’ has no visual, phonetic or conceptual meaning for the Spanish consumer. The applicant refers in that regard to the arguments contained in paragraph 25 above. 40 OHIM considers that the Board of Appeal’s assessment, in the contested decision, that the average Spanish consumer will not couple the element ‘la’ with the elements ‘kings’ of the mark applied for must be confirmed. It disputes the existence of an obligation on the Board of Appeal to prove its findings in that regard and bases its arguments on the understanding of the element ‘la’ by the relevant public and on its position in the mark applied for. OHIM denies that the contested decision is contradictory. According to OHIM, the fact that the consumers are likely to remember the shield device of the mark applied for would not prevent them from remembering the word ‘kings’ in it, given that it is by an oral reference to the mark applied for, using the word ‘kings’, that consumers will ask for and comment on the goods or services in question. – Findings of the Court 41 As to whether the Board of Appeal wrongly held that the relevant consumer will not visually associate the element ‘la’ with the element ‘kings’ contained in the mark applied for, it must be pointed out, first, that the association or lack of association, by the relevant public, of two elements appearing in one mark depends on its understanding of those elements and on their position in relation to the other visual elements of the mark concerned. 42 In the light of paragraph 29 et seq. above, it must be held that the elements ‘la’ and ‘kings’ are both important for the relevant public. The word ‘kings’ will be understood as referring to monarchs and the element ‘la’ will, at least, be perceived as referring to the Spanish feminine definite article ‘la’. While it cannot be excluded that the element ‘la’ might also be understood by a part of the relevant public as the abbreviation of ‘Los Angeles’, it has not been established that that perception can be applied generally to the whole of the relevant public, that is average Spanish consumers. 43 It must be stated, in that context, that, in the light of the fact that the relevant public consists of average Spanish consumers, the Board of Appeal was entitled to regard as a well-known fact which does not have to be proved (Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraphs 27 to 32) the understanding of the element ‘la’ as the Spanish feminine article. On the other hand, while it is not disputed that the same public has some knowledge of English which enables it to understand the English words ‘king’ and ‘kings’, it is not established that the Board of Appeal had to regard as well-known the fact that the element ‘la’ would be regarded by the relevant public as the abbreviation of ‘Los Angeles’. In addition, given that the applicant submitted no evidence in that regard, the Board of Appeal was entitled to consider that the element ‘la’ was not understood by the relevant public taken as a whole as the abbreviation of ‘Los Angeles’. 44 It follows from the above that, if it does not perceive the element ‘la’ to be the abbreviation of Los Angeles, the relevant public will not link it with the word ‘kings’. Since the element ‘la’ is understood as the Spanish feminine singular article ‘la’, it cannot easily be associated with the word ‘kings’, which is a word in the masculine plural in English. That lack of association is reinforced by the fact that, visually, those two terms do not appear consecutively in the mark applied for. 45 With regard, next, to the visual assessment of the mark applied for as a whole and its comparison with the earlier mark, it is necessary to examine the position and the general importance of the elements ‘la’ and ‘kings’ in the mark applied for. In that regard, it must be held that, however the element ‘la’ is understood by the relevant public, in association with or independently of the word ‘kings’, that element has, as stated by the applicant itself, less visual significance than the element ‘kings’, although it is not irrelevant. 46 In that context, it should be recalled that the mark applied for consists of a shield or a coat of arms featuring a crown, a lion holding a hockey stick and a sun. Two hockey sticks are superimposed on that coat of arms. The element ‘la’ appears in a quadrilateral at the top of the shield and at the bottom in another quadrilateral is the word ‘kings’. 47 With regard to the overall appearance of the mark, the attention of the relevant consumer is drawn, first, to the shield with its figurative attributes and, second, to the word ‘kings’. The particular size of the shield and its decoration of crown, lion and sun, and the size of the word ‘kings’ and the unusual nature of that word for the relevant public, especially attract its attention. By contrast, the element ‘la’, while not negligible, is, by virtue of its position on the shield and its smaller size, and irrespective of how it is understood by the relevant public, of lesser importance. 48 With regard to the earlier mark, consisting of the word ‘king’ which is represented graphically in a particular way and decorated by a crown on the letter ‘i’, it must be held that the Board of Appeal was entitled to consider that the word ‘king’ dominated that mark. 49 On a visual comparison of the two marks at issue, it must be held that the Board of Appeal correctly found the overall impression to be one of dissimilarity, since the figurative elements of the earlier mark had no counterparts in the mark applied for, and that, in addition, the shield of the mark applied for enabled it to be differentiated without difficulty, even if the word elements of the marks at issue are almost identical. That assessment is, furthermore, reinforced by the visual difference between the marks at issue created by the figurative elements on the shield of the mark applied for, that is, the crown, lion and sun. 50 That assessment by the Board of Appeal does not contradict its assessment that the dominant word ‘king’ of the earlier mark and the word element ‘kings’ on the shield of the mark applied for will be imperfectly remembered by consumers. In the light of the other considerations set out in the contested decision and, in particular, the fact that the word element ‘kings’ appears on a shield, that assessment cannot be interpreted as indicating that solely the word element ‘kings’ in the mark applied for will be recalled by the relevant consumer. Such an interpretation would furthermore be contrary to the case-law according to which the likelihood of confusion must be assessed by examining each of the marks in question as a whole. It is only if all the other components of the mark are negligible that the assessment of the similarity of two marks can be carried out solely on the basis of the dominant element (Case C-334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraphs 41 and 42). In the present case, the importance of the word elements ‘king’ and ‘kings’ of the marks in question is not such as to render the other elements of those marks negligible. Therefore, it was for the Board of Appeal to compare the various visual elements of the marks at issue with a view to assessing their similarity, which it did in paragraphs 19 and 20 of the contested decision. 51 In the light of the foregoing, the Court rejects the applicant’s complaints alleging contradictory reasoning by the Board of Appeal in the contested decision and the failure to take into account the association made by the relevant public between the elements ‘la’ and ‘kings’ of the mark applied for when visually comparing the marks at issue. Furthermore, it must be held that the Board of Appeal was entitled to hold that the marks at issue were visually different. That visual difference between the marks stems not only from the shield as such, as stated by the Board of Appeal, but also from the decoration on the shield of the mark applied for, that is the crown, lion and sun, which do not have any counterparts in the earlier mark. Phonetic similarity – Arguments of the parties 52 The applicant claims that the element ‘la’ of the mark applied for would be pronounced ‘el-ey’ (or ‘el-ay’, according to English phonetics) by a reasonably well-informed and reasonably observant and circumspect Spanish consumer, because to pronounce that combination of letters as the Spanish feminine definite article ‘la’ would not make any sense in English or Spanish for the reasons given in paragraph 25 above. 53 The applicant also submits that the Board of Appeal disregarded the fact that young Spaniards, who are the usual purchasers of sports clothing, have a knowledge of English superior to that of previous generations (Case T-104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 42). 54 OHIM disputes the fact that the average Spanish consumer would pronounce the element ‘la’ of the mark applied for, by using, additionally, an English pronunciation. It believes that the average Spanish consumer would not notice or recall the word element ‘la’ nor perceive it as a reference to the American city of Los Angeles. 55 When considering the overall impression made by the marks at issue, taking into account, in particular, their distinctive and dominant elements, OHIM maintains that they would be pronounced ‘king’ and ‘kings’ respectively. – Findings of the Court 56 In the contested decision, the Board of Appeal found that there was a high degree of phonetic similarity between the marks at issue as only their dominant verbal elements would be used when they are pronounced. The Board of Appeal found that the earlier mark would be pronounced ‘king’ whereas the dominant verbal element of the mark applied for would be pronounced ‘kings’. Taking into consideration the fact that the relevant public, consisting of Spanish consumers, would probably pronounce those words according to the rules of Spanish, the Board of Appeal found that the only difference would be that the final sound differed because of the plural form of the word ‘king’. 57 The Court considers that while, from a phonetic perspective, the marks in question consist of ‘king’ and ‘la kings’ respectively, the element ‘la’, whether understood by the relevant public as the Spanish feminine definite article or as the abbreviation of Los Angeles, is less phonetically significant since it could be shortened by the relevant public from LA KINGS to KINGS. 58 That assessment is not called in question by the applicant’s claim that young Spaniards have a superior understanding of English. For the reasons given in paragraph 24 above, the relevant public, in the present case, consists of the average Spanish consumers as a whole. Global assessment of the likelihood of confusion – Arguments of the parties 59 The applicant submits that the Board of Appeal, when assessing the semantic elements of its mark, failed to consider the particular conditions under which the goods covered by its mark were marketed. In particular, it contests the Board of Appeal’s claim that it had not established that the Spanish consumer was aware of the special circumstances of sale which it put forward, that is, online sales, inter alia, of items of sports clothing promoting a Los Angeles hockey team. 60 The applicant notes in that connection that it stated that the mark applied for by it refers to the National Hockey League of the United States and Canada and that the goods manufactured and sold under those marks were exclusively items of sporting apparel. Those items always bear a label which shows the NHL mark or a design including the NHL logo. In addition, it states that it produced an extract of the hockey rules and a sample of the officially licensed products. It states that it submitted, and it submits again, the following items of evidence: first, printouts from the official online store of NHL Enterprises showing different T-shirts and the descriptions of the goods concerned, all bearing the words ‘hockey fans’; second, proof of regular use of the mark applied for on the items of sporting clothing in association with other well-known marks; and, third, a reference to a market analysis stating that the average consumer of its goods is male and aged between 18 and 30. 61 The applicant considers that the the Board of Appeal’s interpretation of the general conditions applying to the clothes sector does not mirror the interpretation given in the case-law. Thus, contrary to the Board of Appeal’s assertion, the Court accepted the ‘sub-brands’ argument only in cases where the marks at issue were visually similar owing to a visually dominant letter combination, in cases where the contested sign includes other dominant word elements describing the goods covered in the clothing sector (Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II‑3471, paragraphs 30 to 35) or in cases where the word element was identical and dominant in the signs at issue (Fifties, cited at paragraph 53 above, and Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335). The applicant claims that, by contrast, if, as in the present case, the marks at issue differ visually and only part of the word element of the earlier mark appears in the sign for which registration has been sought, the Court held that the visual differences played a major role in the buying process (Case T-301/03 Canali Ireland v OHIM – Canal Jean (CANAL JEAN CO. NEW YORK) [2005] ECR II‑2479, paragraphs 49 and 54, and Case T-423/04 Bunker & BKR v OHIM – Marine Stock (B.K.R.) [2005] ECR II‑4035, paragraph 67). 62 The applicant submits that, notwithstanding the identical nature of the goods, there is not, on a global assessment, a sufficient degree of similarity between the marks at issue for a finding that the relevant public might believe that the goods in question come from the same undertaking or from economically linked undertakings. 63 OHIM contends that the Board of Appeal examined the evidence concerning the circumstances in which the goods covered by the mark applied for were marketed, but that the evidence was irrelevant because it failed to establish any of the facts referred to in the grounds of appeal. 64 Furthermore, OHIM submits that the applicant has not explained how the alleged particular circumstances could influence the manner in which the average Spanish consumer of clothing, footwear and headgear is likely to perceive the sign applied for from a conceptual viewpoint. With the exception of the assessment of distinctive character acquired by use – a question not raised in the present case – the particular methods of marketing or distribution by one of the parties in question are irrelevant for the purposes of recognition of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94. Therefore, the applicant’s own selling arrangements are not relevant in the present case and the Board of Appeal did not err in law in that regard. 65 OHIM submits that the global assessment by the Board of Appeal that the marks, while visually distinguishable, are nevertheless similar, giving rise to a likelihood of confusion in respect of all the goods falling within Class 25, is correct. It draws attention, in that regard, to the almost identical nature of the words ‘kings’ in the mark applied for and ‘king’ in the earlier mark, the visual prominence of those words in the marks at issue, the fact that they are not descriptive of the goods covered by the marks and, consequently, the high phonetic and conceptual similarity between them. The fact that the dominant element of the mark applied for and the earlier mark are identical, phonetically and visually, cancels out the visual differences deriving from the specific graphic features of the mark applied for; those differences cannot therefore exclude the likelihood of confusion. The identical nature of the goods covered by the marks at issue enhances the likelihood of confusion between them. 66 OHIM contends that there is a likelihood of confusion not only where the public confuses the sign and the mark in question (likelihood of direct confusion), but also where the public makes a connection between the proprietor of the sign and that of the mark and attributes a common commercial origin to the goods covered by the respective signs (likelihood of indirect confusion or association). In the first case, the consumer confuses the signs and does not recognise the existence of two different trade marks. In the second case, the consumer is conscious of the differences between the signs, and therefore able to differentiate between them, but because of their similarities, tends to assume that they derive from the same undertaking or from economically linked undertakings. 67 In the present case, the difference between ‘king’ singular and ‘kings’ plural is not very significant, in particular where it is taken into account that the average consumer only rarely has the opportunity to make a direct comparison between the different marks at issue and has to place his trust in the imperfect image of them that he has kept in his mind. That risk of association is enhanced by the fact that the goods covered by the marks at issue belong to a field of trade where the use of sub-brands is very common, as has been acknowledged on several occasions in the case-law. – Findings of the Court 68 In its global assessment, the Board of Appeal found, inter alia, that the applicant had not established that the Spanish consumer was aware of the special circumstances in which its products are marketed, that is, as items of sporting clothing promoting a Los Angeles hockey team. In the absence of those particular conditions, the Board of Appeal considered that the perception of the marks on the Spanish market had to be evaluated on the basis of the general conditions applicable to the clothing sector. 69 In that regard, the Board of Appeal considered that, generally, in clothes shops, consumers themselves may choose the clothes they wish to buy, or request assistance from the sales staff. While oral communication concerning the product and the trade mark is not excluded, the choice of the item of clothing is generally made on a visual basis. Therefore, the visual perception of the marks in question generally occurs before purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion. Nevertheless, according to the Board of Appeal, it is common in the clothes sector for the same mark to be configured in various ways according to the type of product which it designates. It is also common in that sector for one and the same 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 differentiate between its various lines of production. 70 The Board of Appeal concluded from the above that the consumer might perceive the marks at issue as designating special lines of clothing. It considered that, even if the visual differences in the marks at issue makes it possible to distinguish between them, there is a risk that the Spanish consumer, whose imperfect recollection is based on the words ‘king’ and ‘kings’, will make an association between the marks at issue and might believe that the earlier mark designates a line of clothing for children, and the mark applied for one for adults, perhaps for a line of elegant sports apparel, originating from the same undertaking. Thus, according to the Board of Appeal, when all relevant factors are considered, the overall similarity between the signs in question is sufficient to create a likelihood of confusion, since the average Spanish consumer might believe that the goods come from the same undertaking or from economically-linked undertakings in the light of the identical nature of the goods in question. The visual differences could not cancel out the phonetic and conceptual similarities between the marks at issue. On those grounds, the Board of Appeal confirmed the decision of the Opposition Division. 71 The Court considers, first, that that assessment by the Board of Appeal is not called in question by the particular conditions in which the applicant’s goods are marketed, since only the objective marketing conditions of the goods in question are to be taken into account when determining the respective importance to be given to visual, phonetic or conceptual aspects of the marks at issue. Since the particular circumstances in which the goods covered by the marks at issue are marketed may vary in time and depending on the wishes of the proprietors of those marks, the prospective analysis of the likelihood of confusion between two marks, which pursues an aim in the general interest, namely that the relevant public may not be exposed to the risk of being misled as to the commercial origin of the goods in question, cannot be dependent on the commercial intentions of the trade mark proprietors – whether carried out or not – which are naturally subjective (see, to that effect, NLSPORT, NLJEANS, NLACTIVE and NLCollection, cited at paragraph 61 above, paragraph 49, and Case T-147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II-11, paragraphs 103 to 105, upheld on appeal by the Court by judgment of 15 March 2007 in Case C-171/06 P TIME ART v OHIM, not published in the ECR, paragraph 59). 72 With regard, second, to the disputed assessment of the Board of Appeal that the marks at issue could designate various lines of clothing, it must be recalled that, according to settled case-law, 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 also 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 various lines of production (Fifties, cited at paragraph 53 above, paragraph 49; T-129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II‑2251, paragraph 57; NLSPORT, NLJEANS, NLACTIVEand NLCollection, cited at paragraph 61 above, paragraph 51; and judgment of 14 December 2006 in Case T-392/04 Gagliardi v OHIM – Norma Lebensmittelfilialbetrieb(MANŪ MANU MANU), not published in the ECR, paragraph 122). In such circumstances, it is conceivable that the relevant public may regard the goods designated by the opposing marks as belonging to two distinct ranges of products but as coming, none the less, from the same manufacturer (see Fifties, cited at paragraph 53 above, paragraph 49; Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE), paragraph 68; and Case T-133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 76). 73 In the present case, as the Board of Appeal has stated, it is true that, generally, in clothes shops, consumers themselves may choose the clothes they wish to buy, or request assistance from the sales staff. While oral communication concerning the product and the trade mark is not excluded, the choice of the item of clothing is generally made on a visual basis. Therefore, the visual perception of the marks in question generally occurs before purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (NLSPORT, NLJEANS, NLACTIVE and NLCollection, cited at paragraph 61 above, paragraph 50). 74 The Board of Appeal nevertheless took the view, based on the case-law cited in paragraph 72 above, that, notwithstanding the visual differences between the marks at issue, the consumer might perceive them as designating special lines of clothing, so that there was a likelihood of confusion between the goods at issue (see paragraph 70 above). Furthermore, the Board of Appeal found that the visual differences could not cancel out the conceptual and phonetic similarities between the marks at issue. The Board of Appeal concluded, on those grounds, that, assessing the matter globally, there was a likelihood of confusion between the marks at issue. 75 In that regard, the Court considers that the Board of Appeal erred in its global assessment of the likelihood of confusion. First, the Court confirms the particular importance of the visual aspect of the marks when the relevant consumer purchases clothing (see paragraph 73 above). That being so, the Court notes the principally visual, but also conceptual, differences between the marks at issue (see above, respectively, paragraph 41 et seq. and paragraph 29 et seq.). Thus, in the light of the particular importance of the visual aspect, the Court finds that the relevant consumer would not be able to perceive the marks at issue as designating two lines of clothing. That assessment also applies to the headgear and footwear covered by the marks at issue. 76 The assessment of all the relevant elements of the marks at issue, notwithstanding the identical nature of the goods and certain visual, phonetic and conceptual similarities owing to the words ‘king’ and ‘kings’, do not allow the conclusion that there is a likelihood of confusion, on the part of the relevant consumer, between the marks at issue. The visual and conceptual differences between the marks at issue on account in particular of the shield decorated by the crown, lion and sun which appear on the mark applied for, and the fact that the marks at issue designate clothing, footwear and headgear – goods generally chosen on a visual basis – are such that the average Spanish consumer would not be able to associate the marks in such a way that he might believe that they come from the same manufacturer. 77 Therefore, the applicant’s first plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94 must be allowed and it is not necessary to rule on the applicant’s other claims. Costs 78 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has been unsuccessful, in so far as the contested measure or decision has been annulled, it must be ordered to pay the applicant’s costs, as applied for by the latter. On those grounds, THE COURT OF FIRST INSTANCE (Third Chamber) hereby: 1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 July 2005 (Case R 371/2003-4); 2. Orders OHIM to bear its own costs and to pay those incurred by NHL Enterprises BV. Delivered in open court in Luxembourg on 7 May 2009. Azizi Cremona Frimodt Nielsen Table of contents Background to the case Forms of order sought by the parties Substance 1. Introduction of a new plea in law Arguments of the parties Findings of the Court 2. Infringement of Article 8(1)(b) of Regulation No 40/94 Preliminary observations The identical nature of the goods and the relevant public Comparison of the signs at issue Conceptual similarity – Arguments of the parties – Findings of the Court Visual similarity – Arguments of the parties – Findings of the Court Phonetic similarity – Arguments of the parties – Findings of the Court Global assessment of the likelihood of confusion – Arguments of the parties – Findings of the Court Costs * Language of the case: English.