JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
5 February 2016 (*) (1)
(Community trade mark — Opposition proceedings — Application for Community word mark kicktipp — Earlier national word mark KICKERS — Rule 19 of Regulation (EC) No 2868/95 — Rule 98(1) of Regulation No 2868/95 — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑135/14,
Kicktipp GmbH, established in Dusseldorf (Germany), represented by A. Dreyer, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by I. Harrington, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Società Italiana Calzature Srl, established in Milan (Italy), represented by G. Cantaluppi, lawyer,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 12 December 2013 (Case R 1061/2012-2), relating to opposition proceedings between Società Italiana Calzature Srl and Kicktipp GmbH,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich (Rapporteur), President, J. Schwarcz and V. Tomljenović, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 20 February 2014,
having regard to the response of OHIM lodged at the Court Registry on 27 May 2014,
having regard to the response of the intervener lodged at the Court Registry on 24 June 2014,
having regard to the reply lodged at the Court Registry on 7 October 2014,
having regard to the responses of the parties to the written question put by the General Court,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,
gives the following
Judgment
Background to the dispute
1        On 10 February 2010, the applicant, Kicktipp GmbH, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2        Registration as a mark was sought for the word sign kicktipp.
3        The goods and services in respect of which registration was sought are in, inter alia, Class 25 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for that class, to the following description: ‘Clothing’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 53/2010 of 22 March 2010.
5        On 7 June 2010, the intervener, Società Italiana Calzature Srl, formerly Società Italiana Calzature SpA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following earlier trade marks:
–        the Italian word mark KICKERS, registered on 28 March 1985 under No 348 149 and designating, inter alia, goods in Class 25 corresponding to the following description: ‘Clothing, footwear, headgear’;
–        the Italian word mark MISSKICK, registered on 2 August 1990 under No 532 539 and designating goods in Class 25 corresponding to the following description: ‘clothing, footwear, headgear’;
–        the Italian word mark KICK’S, registered on 9 June 1994 under No 621 889 and designating goods in Class 25 corresponding to the following description: ‘clothing, footwear, headgear’.
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.
8        The notice of opposition was accompanied by documents — and English translations of those documents — intended to establish the existence, validity and scope of protection of each of the marks on which the opposition was based.
9        By letter of 13 July 2010, OHIM informed the applicant and the intervener that the period available to the intervener for producing evidence in support of the earlier rights and for submitting additional documents would expire on 14 November 2010.
10      By statement dated 8 November 2010, filed with OHIM on 9 November 2010 (‘the statement of 8 November 2010’), the intervener set out the grounds of the opposition and produced additional documents in support of that opposition.
11      On 5 April 2012, the Opposition Division upheld the opposition as it was based on Article 8(1)(b) of Regulation No 207/2009 and was based on the earlier Italian word mark KICKERS (‘the earlier trade mark’).
12      On 4 June 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
13      By decision of 12 December 2013 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. It held, inter alia, that the documents appended by the intervener to the notice of opposition were sufficient to establish the existence, validity and scope of protection of the marks on which the opposition was based for the purposes of Rule 19(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended.
14      The Board of Appeal assessed the opposition purely on the basis of the earlier trade mark, namely, the Italian word mark KICKERS. In addition, it confined itself to assessing the ground of opposition based on Article 8(1)(b) of Regulation No 207/2009.
15      The Board of Appeal considered that the relevant public was composed of the general public in Italy and that that public had an average level of attention. It observed that the goods covered by the marks at issue were identical. According to the Board of Appeal, it cannot be assumed that the general public in Italy will understand the English words ‘kick’ or ‘kickers’. It held that there was a moderate degree of visual similarity between the marks at issue, that those marks were similar phonetically, and that it was not possible to compare them conceptually. The Board of Appeal concluded that there was a likelihood of confusion.
Forms of order sought
16      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
17      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
18      The intervener contends that the Court should:
–        dismiss the action and uphold both the contested decision and the Opposition Division’s decision of 5 April 2012;
–        order the applicant to pay the costs, including those incurred before the Board of Appeal and the Opposition Division of OHIM.
Law
19      As a preliminary point, it should be noted that, since the Board of Appeal upheld the decision of the Opposition Division of OHIM, the intervener’s claim that the General Court should uphold the Opposition Division’s decision must be understood as already being included in its claim that the Court should uphold the contested decision. Given that upholding the contested decision is tantamount to dismissing the action, the form of order sought by the intervener should be understood, in essence, as a claim that the action be dismissed (see, to that effect, judgment of 23 February 2010 in Özdemir v OHIM — Aktieselskabet af 21. november 2001 (James Jones), T‑11/09, EU:T:2010:47, paragraph 14). The second part of the intervener’s first claim is thus in fact indissociable from the first part of that claim, which seeks the dismissal of the action.
1.     Admissibility of the reference by the intervener to the pleadings submitted before OHIM
20      In its response, the intervener refers in general terms to the arguments which it raised in the pleadings it submitted during the administrative procedure before OHIM, in order to supplement the arguments which it puts forward in the present action.
21      It should be noted that, under Article 21 of the Statute of the Court of Justice of the European Union and Article 44(1)(c) of the Rules of Procedure of the General Court of 2 May 1991, which apply to intellectual property matters by virtue of Article 130(1) of those rules, applications must include a brief statement of the grounds relied on. According to established case-law, although specific points in the text of the application can be supported and supplemented by references to specific passages in the documents attached, a general reference to other documents cannot compensate for the failure to set out the essential elements of the legal argument which must, under those provisions, appear in the application itself (see judgment of 11 December 2014 in Oracle America v OHIM — Aava Mobile (AAVA CORE), T‑618/13, EU:T:2014:1053, paragraph 14 and the case-law cited).
22      That case-law can be transposed to the response of the other party to opposition proceedings before a Board of Appeal, which has intervened before the General Court. It is not for the Court to take on the role of the parties by seeking to identify the relevant pleas and arguments in the documents to which they refer (see judgment of 17 April 2008 in Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican), T‑389/03, EU:T:2008:114, paragraph 19 and the case-law cited).
23      Accordingly, the general reference in the intervener’s response to the pleadings submitted by that party before OHIM is inadmissible.
2.     Substance
24      In support of its action, the applicant raises, in essence, two pleas in law, the first alleging infringement of Rule 19(1) and (2) of Regulation No 2868/95 and the second alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
First plea in law: infringement of Rule 19(1) and (2) of Regulation No 2868/95
25      By its first plea, the applicant claims that the Board of Appeal was wrong to consider that the intervener had established the existence, validity and scope of protection of the marks on which the opposition was based.
26      In that plea, the applicant raises, in essence, two arguments.
27      By its first argument, the applicant claims that the documents which the intervener supplied in order to establish the existence, validity and scope of protection of the marks on which the opposition was based were not duly translated.
28      By its second argument, the applicant asserts that the certificates filed in order to establish the existence, validity and scope of protection of the marks on which the opposition was based were incomplete. In that connection, it states that the intervener produced only renewal certificates for those marks, whereas, under Rule 19(2)(a)(ii) of Regulation No 2868/95, it was required to provide a copy of the registration certificate and a copy of the latest renewal certificate.
29      According to the applicant, the Board of Appeal was wrong to consider that the translations of the documents establishing the existence, validity and scope of protection of the marks on which the opposition was based complied with Rules 98(1) and 19 of Regulation No 2868/95.
30      OHIM and the intervener contest the applicant’s arguments. OHIM argues, in particular, that the plea is inadmissible owing to its lack of precision and that, in any event, it is manifestly unfounded.
31      It should first of all be borne in mind that Rule 19 of Regulation No 2868/95 provides as follows:
‘(1) [OHIM] shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time limit specified by it and which shall be at least 2 months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1).
(2) Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:
(a) if the opposition is based on a trade mark which is not a Community trade mark, evidence of its filing or registration, by submitting:
(i) if the trade mark is not yet registered, a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed; or
(ii) 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;
...
(3) The information and evidence referred to in paragraphs 1 and 2 shall be in the language of the proceedings or accompanied by a translation. The translation shall be submitted within the time limit specified for submitting the original document.
(4) [OHIM] shall not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by [OHIM].’
32      Next, according to Rule 20(1) of Regulation No 2868/95, ‘[i]f until expiry of the period referred to in Rule 19(1) the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well his entitlement to file the opposition, the opposition shall be rejected as unfounded’.
33      In addition, the first sentence of Rule 98(1) of Regulation No 2868/95 provides that, ‘[w]hen a translation of a document is to be filed, the translation shall identify the document to which it refers and reproduce the structure and contents of the original document’.
Admissibility of the first plea in law
34      Under Article 21 of the Statute of the Court of Justice and Article 44(1)(c) of the Rules of Procedure of 2 May 1991, which apply to intellectual property matters by virtue of Article 130(1) of those rules, applications must include a brief statement of the grounds relied on (see paragraph 21 above). That information must be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action (see judgment of 27 September 2005 in Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, ECR, EU:T:2005:340, paragraph 26 and the case-law cited).
35      In order to ensure legal certainty and the sound administration of justice, if an action is to be admissible, the essential facts and law on which it is based must be apparent from the text of the application itself, at the very least summarily, provided that the statement is coherent and comprehensible (see judgment in CARGO PARTNER, cited in paragraph 34 above, EU:T:2005:340, paragraph 27 and the case-law cited).
36      It must be found that, contrary to OHIM’s assertions, the first plea in law is admissible.
37      It is apparent from the application that the applicant is arguing that the documents provided by the intervener for the purposes of establishing the existence, validity and scope of protection of the marks on which the opposition was based were not sufficient, in the light of Rule 19(1) and (2) of Regulation No 2868/95, to establish the existence, validity and scope of protection of those marks. In that connection, it argues that those documents were not duly translated within the meaning of Rule 98 of Regulation No 2868/95.
38      That line of argument is sufficiently clear and precise to enable OHIM and the intervener to prepare their defence and the Court to rule on that plea: Rule 19(1) and (2) of Regulation No 2868/95 sets out specific rules concerning the documents which must be provided by an opposing party for the purposes of establishing the existence, validity and scope of protection of an earlier mark or an earlier right, and Rule 98(1) of that regulation sets out specific rules as regards the content of the translations which must be produced. OHIM and the intervener were thus in a position to explain why they considered that the documents provided by the intervener were sufficient in the light of those rules.
39      It should also be noted that, under Rule 20(1) of Regulation No 2868/95, it is for OHIM to examine of its own motion whether an opposing party has established the existence, validity and scope of protection of the earlier mark or earlier right on which he has based his opposition and, if that is not the case until expiry of the period referred to in Rule 19(1) of that regulation, to reject the opposition. As this is a matter which must be examined by OHIM of its own motion during the administrative procedure in any event, even if no comments have been made in that regard by the trade mark applicant, OHIM is in a position to explain to the General Court that the rules have indeed been complied with, even if no detailed explanations have been provided by an applicant as regards the information which, in its view, is missing. Similarly, the intervener is in a position to explain why the documents which it provided were, in its view, compliant with Rules 19 and 98(1) of Regulation No 2868/95. The Court is also in a position to verify the merits of such a plea even where an applicant has failed to put forward detailed arguments as regards the specific information which is missing from the documents provided.
40      In addition, it should be observed that, in paragraph 16 of the application, the applicant raises a specific argument by stating, in essence, that, under Rule 19(2)(a)(ii) of Regulation No 2868/95, the opposing party must (cumulatively) provide copies of the registration certificate for the mark on which the opposition is based and, as the case may be, of the latest renewal certificate, whereas the intervener provided only renewal certificates. The General Court is thus required to give a ruling on whether the submission of a renewal certificate may, in itself, be sufficient to establish the existence, validity and scope of protection of a mark on which an opposition is based.
Merits of the first plea in law
41      In the present case, pursuant to Rule 19(2)(a) of Regulation No 2868/95, the intervener was required to establish, by 14 November 2010, that is to say, by the date indicated in OHIM’s letter of 13 July 2010 as mentioned in paragraph 9 above, the existence, validity and scope of protection of the marks on which the opposition was based.
42      It is necessary to present the documents provided by the intervener concerning the earlier trade mark, namely, the Italian word mark KICKERS, which is the only mark in respect of which the Board of Appeal carried out an assessment of whether there was a likelihood of confusion, and then to examine whether those documents were sufficient to establish the existence, validity and scope of protection of the earlier trade mark.
–       Presentation of the documents produced by the intervener before OHIM
43      It should be noted that the intervener appended a document to the notice of opposition providing evidence of an application for renewal of the earlier trade mark. However, it is not apparent from that document that the renewal was granted.
44      The intervener also provided an English translation of that document. It is apparent from comparing the English version and the original Italian version of the document in question that that document was translated in its entirety.
45      Next, with the statement of 8 November 2010, the intervener produced an annex (Annex No 21) named ‘Trademark KICKERS’. It is apparent from the original version of the annexes supplied to OHIM that that annex consists of a document emanating from the Ufficio Italiano Brevetti e Marchi (Italian Patents and Trademarks Office), comprising five pages and dated 30 April 2010, and a partial translation of that document.
46      It is apparent from the document emanating from the Ufficio Italiano Brevetti e Marchi that the Italian word mark KICKERS was renewed on 9 April 2010.
47      The second page of that document, headed ‘Domanda di Registrazione per Marchio d’Impresa’ (application for registration of a mark), contains, inter alia, the following elements: the name of the trade mark applicant; a description of the mark, that is to say, an indication that the mark in question is the word mark KICKERS; the information that no colour has been claimed; a list of the goods claimed; the date of the first application for registration and the date of the first registration; the date of the first application for renewal and the date of the first renewal; and the date of the latest application for renewal, namely, 23 February 2007.
48      The first page of that document gives the date of renewal of the mark in question, namely, 9 April 2010.
49      It is apparent from the original version of the annexes supplied to OHIM that, in the translation appended by the intervener to the statement of 8 November 2010, only the first two pages of the document in question were translated.
50      It is also apparent from the original version of the documents supplied to OHIM that the intervener appended an English translation of the last three pages of the renewal certificate of 30 April 2010 to its memorandum of 18 July 2011, that is, after the expiry of the time-limit imposed by OHIM for producing evidence in support of the earlier trade marks.
–       The documents relied on by the Board of Appeal
51      In paragraph 16 of the contested decision, in its examination of the evidence provided by the intervener for the purposes of establishing the existence, validity and scope of protection of the marks on which the opposition was based, the Board of Appeal mentioned only the documents produced by the intervener with the notice of opposition on 7 June 2010. The statement of 8 November 2010 and the annexes thereto were not mentioned by the Board of Appeal either in paragraph 16 of the contested decision or in the 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.