JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
26 September 2012 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark CITIGATE – Earlier national and Community word and figurative marks containing the element ‘citi’ – Relative grounds for refusal – Likelihood of confusion – Family of trade marks – Article 8(1)(b) of Regulation (EC) No 207/2009 – Unfair advantage taken of the distinctive character or the repute of the earlier trade mark – Article 8(5) of Regulation No 207/2009)
In Case T‑301/09,
IG Communications Ltd, established in London (United Kingdom), represented by M. Edenborough QC, and R. Beard, Solicitor,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other parties to the proceedings before the Board of Appeal of OHIM, interveners in the proceedings before the General Court, being
Citigroup, Inc., established in New York, New York (United States),
Citibank, NA, established in New York,
represented initially by V. von Bomhard, A. Renck, lawyers, and H. O’Neill, Solicitor, and subsequently by V. von Bomhard and A. Renck,
ACTION against the decision of the First Board of Appeal of OHIM of 30 April 2009 (Case R 821/2005‑1) concerning opposition proceedings between Citigroup, Inc. and Citibank, NA, on the one hand, and IG Communications Ltd on the other,
THE GENERAL COURT (Fifth Chamber),
composed of S. Papasavvas, President, V. Vadapalas (Rapporteur) and K. O’Higgins, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 28 July 2009,
having regard to the response of OHIM lodged at the Court Registry on 24 November 2009,
having regard to the response of the interveners lodged at the Court Registry on 24 November 2009,
further to the hearing on 16 May 2012,
gives the following
Judgment
Background to the dispute
1        On 20 January 2001, the applicant, IG Communications Ltd, formerly Incepta Group plc, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2        The mark for which registration was sought is the word sign CITIGATE.
3        The goods and services for which registration was sought are in Classes 9, 16, 35 and 42 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 each of those classes, to the following description:
–        Class 9: ‘CD Roms, electronic publications, information stored on electronic and/or optical means, computer software’;
–        Class 16: ‘Printed publications; books, leaflets, brochures; instructional and teaching materials’;
–        Class 35: ‘Advertising services; marketing services; public relations services; market research, market analysis and strategic marketing services; preparation of publicity material and preparation of business reports; promotional services and public agency services; management consultancy services; consultancy services relating to business operations, consultancy services relating to brand development; information and advisory services relating to all the aforesaid services’;
–        Class 42: ‘Design services; copywriting, art work design, graphic design services, illustrating services, web‑site design services, computer programming services, brand protection services; information, advisory and consultancy services relating to all the aforesaid services’.
4        The trade mark application was published in Community Trade Marks Bulletin No 67/01 on 6 August 2001.
5        On 5 November 2001, the interveners, Citicorp, which subsequently merged with Citigroup Inc. on 1 August 2005 and was absorbed by the latter, and Citibank, NA, separately filed notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.
6        The opposition was based on all the following earlier marks:
–        registration in Germany under number 39847157 of the word mark CITI on 17 March 2000;
–        application for Community registration under number 1084532 on 23 February 1999 of the following figurative mark:
–        Community registration under number 65367 of the word mark CITICORP on 9 December 1998;
–        Community registration under number 867879 of the word mark CITIGROUP on 31 May 2001;
–        Community registration under number 1343367 of word mark CITIBOND on 31 January 2001;
–        Community registration under number 1343466 of the word mark CITIEQUITY on 11 December 2000;
–        Community registration under number 1343540 of word mark CITIGARANT on 25 July 2003;
–        Community registration under number 179531 of word mark CITIBANK on 24 August 1998;
–        Community registration under number 179473 of the word mark CITICARD on 29 March 1999;
–        Community registration under number 179549 of the word mark CITIGOLD on 20 May 1999;
–        registration in Germany under number DD 653659 of the word mark CITIBANK on 20 January 1994;
–        registration in the United Kingdom under number 1283067 of the word mark CITIBANK on 10 March 1989;
–        Community registration under number 112425 of the word mark THE CITI NEVER SLEEPS on 26 May 1998.
7        Each of the earlier Community trade marks designates various goods and services in Classes 9, 16, 35, 36, 38 and 42, as set out at paragraph 3 of the contested decision. With the exception of registration No 867879, they designate, inter alia, the following services in Class 36: ‘insurance; financial affairs; monetary affairs; real estate affairs’. Moreover, registrations Nos 1343367 and 1343466 designate, inter alia, ‘investment information and management services’ in Class 36. Community registration No 867879 relates, inter alia, to ‘a full range of insurance and financial services; banking services; credit card services; securities trading, consulting and underwriting services; [and] investment services’ in Class 36. Furthermore, Community registrations Nos 1343466 and 1343540 also designate ‘computer programming’ services in Class 42. Lastly, the earlier national marks designate, inter alia, banking and financial services in Class 36.
8        By letter of 23 September 2002, OHIM notified the parties that the two sets of opposition proceedings had been joined and were to be dealt with together.
9        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009).
10      On 7 June 2005, the Opposition Division rejected the opposition.
11      On 15 July 2005, the interveners filed a notice of appeal with OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.
12      By decision of 30 April 2009 (‘the contested decision’), the First Board of Appeal of OHIM allowed the interveners’ appeal, annulling the decision of the Opposition Division and upholding the interveners’ opposition in respect of all the goods and services at issue. In particular, first, it considered, with respect to all the goods referred to in the Community trade mark application in Classes 9 and 16 and the ‘market research, market analysis and strategic marketing services; preparation of business reports; public agency services; management consultancy services; [and] consultancy services relating to business operations’ in Class 35, that the trade marks in question were sufficiently similar to substantiate a finding of a likelihood of confusion, in accordance with Article 8(1)(b) of Regulation No 207/2009. Second, the Board of Appeal found, with respect to the remaining services in Class 35, namely ‘advertising services; marketing services; public relations services; preparation of publicity material; promotional services; consultancy services relating to brand development’, and the services in Class 42, that the conditions laid down in Article 8(5) of Regulation No 207/2009 were satisfied.
Forms of order sought by the parties
13      The applicant claims that the Court should:
–        annul the contested decision;
–        order OHIM to pay the costs.
14      OHIM and the interveners contend that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
15      In support of its action, the applicant relies, in essence, on three pleas, alleging: (i) the non-existence of a family of CITI trade marks; (ii) breach of Article 8(1)(b) of Regulation No 207/2009; and (iii) breach of Article 8(5) of that regulation.
The first plea, alleging the non-existence of a family of CITI trade marks
16      The applicant considers, in substance, that the evidence adduced by the interveners before the Board of Appeal was not sufficient to prove the existence of a family of CITI trade marks.
17      The applicant submits that the conditions laid down under Article 8(1)(b) of Regulation No 207/2009 have not been satisfied, in so far as, in particular, the interveners have been unable to prove use of their earlier marks, with the exception of the CITIBANK mark.
18      Moreover, nor have the conditions been satisfied for the purposes of Article 8(5) of that regulation, since the interveners have been unable to demonstrate the reputation enjoyed by their earlier marks, with the exception of the CITIBANK mark.
19      OHIM and the interveners dispute the applicant’s arguments.
20      It should be noted, first of all, that the concept of a family of trade marks has been recognised by case‑law in the context of the determination as to whether there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 (Case T‑194/03 Il Ponte Finanziaria v OHIM – Marine Enterprise Projects (BAINBRIDGE) [2006] ECR II‑445, paragraph 123), not in the context of the application of Article 8(5) of that regulation.
21      The concept of a family of trade marks simply allows the proprietor of such a family to demonstrate that a likelihood of confusion may be created by the possibility of association between the trade mark applied for and the earlier marks forming part of the family (BAINBRIDGE, paragraph 124).
22      From that point of view, the existence of a family of trade marks may be regarded, for the purpose of the application of Article 8(5) of Regulation No 207/2009, as merely one of the factors to be taken into account in establishing whether there is connection between the mark applied for and one of the earlier marks forming part of that family, in so far as that earlier mark enjoys a reputation (see, in that regard, paragraphs 105 to 107 below).
23      Moreover, the test established by case‑law for determining whether a family of trade marks exists requires the proprietor of such a family to be able to furnish proof of use of all the marks belonging to the family or, at the very least, of a number of marks capable of constituting a family. That test is sufficient to rule out any assessment in the abstract of the likelihood of confusion, based solely on the existence of several registrations covering marks reproducing the same distinctive element, in the absence of any actual use of the marks (see, to that effect, BAINBRIDGE, paragraph 126).
24      Thus, to the extent that the applicant’s arguments seek to demonstrate that there is no family of trade marks in the context of Article 8(5) of Regulation No 207/2009, on the basis that the interveners have been unable to prove the reputation of the earlier marks, with the exception of the CITIBANK mark, those arguments must be rejected as irrelevant.
25      With regard, next, to whether there exists a family of CITI trade marks, the Board of Appeal stated, at paragraph 23 of the contested decision, that ‘[w]hile the other marks owned by the [interveners] are obviously less well known than the CITIBANK mark, it is clear from the evidence filed by the [interveners] that they have used many other trade marks beginning with, or containing, the term CITI’, and concluded from this that ‘CITIBANK is in the nature of a “house mark” or basic brand and that the [interveners] have developed a whole series of sub‑brands based on the CITI concept’.
26      That assessment must be endorsed. Indeed, it is apparent from the various procedural documents before OHIM that the interveners use a number of marks which are capable of constituting, on that basis, a family of trade marks.
27      Accordingly, as is also accepted by the applicant, there can be no doubt as to the use of the CITIBANK mark. Virtually all of the evidence put forward by the interveners contains the CITIBANK mark. Thus, it may be found on websites in various countries of the European Union, namely Belgium, France, Germany, Greece, Italy, Spain and the United Kingdom, on the group’s annual reports and in virtually all the information brochures concerning the services provided by the interveners distributed in the countries referred to above.
28      Moreover, as correctly observed by the Board of Appeal, the evidence put forward by the interveners provides proof of use of other marks. Accordingly, the CITICARD and THE CITY NEVER SLEEPS marks feature many times in brochures giving information on the services provided by the interveners. Those marks are also to be found in numerous documents concerning advertising campaigns conducted in Germany, Greece and the United Kingdom.
29      Similarly, the CITIGOLD mark is referred to repeatedly, mainly on English, French, German and Greek websites and in information brochures distributed in Belgium, Germany, Spain and the United Kingdom. As regards the CITIEQUITY, CITIGARANT and CITIBOND marks, while they are used much less frequently, according to the evidence submitted by the interveners, it is nevertheless noteworthy that they feature on the interveners’ websites and in some information brochures.
30      Lastly, the interveners have provided figures which are very significant in terms of income deriving from the services covered by their trade marks concerning the part of the European Union comprising Benelux, France, Germany, Greece, Hungary, Spain and the United Kingdom and thus, clearly, a substantial part of EU territory.
31      The interveners have also provided significant figures for income, advertising expenditure and the issue of credit cards for some of those countries, such as Belgium, Germany, Greece and the United Kingdom.
32      It follows that, contrary to what is claimed by the applicant, the interveners have provided evidence concerning a significant part of the European Union and, in that regard, they were not required to make a clear distinction between the figures relating to the earlier national marks and those relating to the earlier Community marks because, in any event, those marks are the same and cannot be identified by the German or English public as national or Community marks when they are used to designate the services provided by the interveners.
33      Accordingly, the interveners have succeeded in establishing, as regards a significant part of the European Union, not only very widespread use of their CITIBANK mark, but also use of their CITICARD, THE CITI NEVER SLEEPS and CITIGOLD marks, as well as, to a lesser degree, use of their CITIEQUITY, CITIGARANT and CITIBOND marks.
34      The Board of Appeal therefore correctly found that there is a family of CITI trade marks, the element ‘citi’ being common to all the earlier marks and constituting the distinctive element of those marks, as will be established below.
35      In the light of all of the above, the first plea must be dismissed.
The second plea, alleging breach of Article 8(1)(b) of Regulation No 207/2009
36      As provided in Article 8(1)(b) of Regulation No 207/2009, 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, because of 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. Furthermore, 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.
The relevant public
37      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 products 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 Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and case-law cited).
38      In that regard, the Board of Appeal would appear to have taken the view that the relevant territory is that of the European Union and, at paragraph 32 of the contested decision, it refers to the ‘sophisticated, well-informed business circles to which the services in question are directed’.
39      In the present case, the Court finds that the relevant territory is that of the European Union, in particular Germany and the United Kingdom, given that national registration Nos 39847157, DD 653659 and 1283067 produce their effects in those Member States. As regards the composition of the relevant public, it varies according to the goods or services concerned. Thus, as regards the goods in Classes 9 and 16 and the services in Class 36, the relevant public is composed of both professionals and average consumers. Indeed, those goods and services may be aimed equally at professional circles, in a business context, and average consumers, in the context of their everyday lives.
40      On the other hand, as regards the services in Classes 35 and 42, they must be regarded as being aimed principally at professionals in a business context.
41      Moreover, it should be noted that the earlier marks are composed of English words (see, in that regard, paragraphs 73 and 74 below) and that the use of English is common in the financial, electronics and telecommunications sectors to which the classes referred to above relate. It is therefore necessary to have regard in particular to English‑speaking consumers and professionals and consumers and professionals with an elementary knowledge of English, who, in any event, represent a very large proportion of European consumers and professionals (see, to that effect, the judgment of 25 November 2008 in Case T‑325/07 CFCMCEE v OHIM (SURFCARD), not published in the ECR, paragraph 46).
42      It should be noted that, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 76 and the case-law cited).
43      Consequently, the likelihood of confusion must be evaluated in the light of the English‑speaking public and the public with an elementary knowledge of English.
Comparison of the goods and services
44      According to settled case-law, in assessing the similarity between the goods or services in question, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
45      As regards the goods in Classes 9 and 16, the parties to the proceedings accept that they are the same. That assessment must be endorsed.
46      As regards the services in Class 42 covered by the mark applied for, the parties agree that they are neither identical nor similar to the services covered by the earlier marks. However, that assessment must be rejected in so far as concerns the ‘computer programming’ services covered by the earlier CITIEQUITY and CITIGARANT marks, which are, in fact, very similar to the ‘computer programming services’ covered by the mark applied for. With regard to the other services in Class 42 covered by the mark applied for, it must be held that, as agreed by the parties, they are neither similar nor identical to the services covered by the earlier marks.
47      Moreover, it is necessary to consider whether the services in Class 35 covered by the mark applied for are similar to the services in Class 36 covered by the earlier marks.
48      The Board of Appeal made a distinction, within Class 35, between ‘advertising services; marketing services; public relations services; preparation of publicity material; promotional services; [and] consultancy services relating to brand development’, which are not similar to the services in Class 36 (paragraph 29 of the contested decision), and the other services in Class 35 covered by the mark applied for.
49      As regards those other services, the Board of Appeal pointed out, at paragraphs 26 to 28 of the contested decision, that ‘“market research, market analysis and strategic marketing services” could be concerned with the financial markets’. Furthermore, it stated that ‘“management consultancy services” and “consultancy services relating to business operations” are vague expressions that denote a general link to the world of business and commerce’ (paragraph 26 of the contested decision). ‘[Public agency] services could be provided in the area of banking and finance [and] are therefore similar to the services for which the [interveners’] mark CITIBANK has a reputation’ (paragraph 27 of the contested decision). Lastly, ‘“[p]reparation of business reports” is a service that presents obvious links to the world of finance’ (paragraph 28 of the contested decision).
50      The applicant is of the view that the Board of Appeal erred in its approach to the assessment of the similarity of the services in Classes 35 and 36.
51      As regards the comparison of the services in Classes 35 and 42 on the one hand, and those in Class 36 on the other, OHIM considers that the applicant simply criticises the Board of Appeal’s methodology, as opposed to the substance of its analysis, and it is therefore unable to identify any substantial, concrete point of disagreement which it may address.
52      It should be noted first of all that, contrary to what OHIM suggests, the applicant’s criticism of the Board of Appeal to the effect that it erred in its approach to the comparison of the services at issue in the present case may be construed as challenging the conclusion that part of the services in Class 35 and the services in Class 36 are similar. That is especially true in the present case because the Board of Appeal did not examine the similarity of the services in question independently, but carried out that analysis at the same time as it considered whether there is a likelihood of confusion, so that, on reading the contested decision, it is at times difficult to distinguish the analysis of the similarity of the services from that of the likelihood of confusion.
53      However, the applicant challenges only the Board of Appeal’s finding that the services in Class 35 identified at paragraph 49 above and the services in Class 36 are similar, since, in any event, the Board of Appeal found there was no similarity between the services in Class 35 identified in paragraph 48 above and the services in Class 36.
54      Thus, as regards the services in Class 35 identified in paragraph 49 above, it should be noted that, by their nature and intended purpose, they are different from the services in Class 36. First, those services are directed at professionals in a business context, whereas the services in Class 36 may be aimed equally at both professional circles and final consumers. Second, according to the explanatory notes to the list of classes of goods and services of the Nice Agreement, the services in Class 35 relate inter alia to help in the working or management of a commercial undertaking or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, whereas the services in Class 36 relate to services rendered in financial and monetary affairs, which include, in particular, the services of all banking establishments, or institutions connected with them.
55      The fact nevertheless remains that the services in Class 35 identified in paragraph 49 above are necessarily connected with the banking and financial sector.
56      Accordingly, as regards, first, ‘market research, market analysis and strategic marketing services’, ‘management consultancy services’ and ‘consultancy services relating to business operations’, such services will necessarily have financial implications for undertakings which intend, for example, to enter a new market and, in order to do so, would like to be apprised of the investments they will be required to make and the benefits which may be accrued. To that extent, there is a certain connection, or even a degree of complementarity, between those services and, in particular, ‘investment information and management services’ in Class 36.
57      With regard, second, to ‘public agency services’, it should be noted that, as observed by the Board of Appeal, that is a ‘vague expression’. In view of the broad wording of that expression and in the absence of any clarification in the Community trade mark application, it must be concluded that those services may relate to any kind of services that can be provided by a public agency, which might include services closely connected with the banking and financial sectors.
58      As regards, third, ‘preparation of business reports’ services, it should be noted that, as is the case with ‘market research, market analysis and strategic marketing services’, a section of a business report will necessarily be devoted to the financial implications which the business activity contemplated may have.
59      Thus, while the services referred to above covered by the mark applied for are different, on account of their nature and intended use, from the services in Class 36 covered by the earlier marks, there is nevertheless a connection between them. The services in Class 35 identified at paragraph 49 above are mainly directed, having regard to their nature, at professional circles, in particular undertakings which, after having recourse to the services in Class 35, may need the services in Class 36. For example, if the market analysis is positive, the undertaking may wish to put its plan into practice, and, to that end, will need to have recourse to investment services. That connection is sufficiently close that it cannot be ruled out that consumers may think that the services are provided by one and the same undertaking. There is therefore a low degree of similarity between those services.
60      Consequently, in view of all the foregoing, the Court finds that the goods in Classes 9 and 16 are identical, that there is a strong similarity between the ‘computer programming’ services in Class 42, and a low degree of similarity between the ‘market research, market analysis and strategic marketing services; preparation of business reports; public agency services; management consultancy services; [and] services relating to business operations’ in Class 35 and the services in Class 36. With regard to the other services in Classes 35 and 42, it must be held that they are neither identical nor similar to the services covered by the earlier marks.
Comparison of the signs at issue
61      The global assessment of the likelihood of confusion in relation to the visual, aural or conceptual similarity of the signs at issue must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and case‑law cited).
62      The Board of Appeal compared the signs at issue at paragraph 24 of the contested decision. In its view, the similarities between the CITIGATE mark, on the one hand, and the CITIBANK mark and the other members of the CITI family of trade marks on the other are evident. Thus, the Board of Appeal considers that the fact that five of the eight letters are identical and occur in the same place is significant, though hardly decisive. On the other hand, the identical structure of the marks is of greater importance, since most of the marks consist of the element ‘citi’, plus one short word, which, in most cases, is descriptive or at least suggestive of the services concerned, except in the case of the word ‘gate’. Conceptually, however, the word ‘gate’ has connotations that are not without relevance, since it implies ‘giving access to someone or something’. Lastly, the reproduction of the unusual and distinctive spelling of the element ‘citi’ is a decisive factor.
63      The applicant is of the view, first, that the interveners can rely neither on the Community figurative trade mark CITI, since it has not acquired a reputation and is not used within the European Union, nor on the German word mark CITI, which covers services that are too removed from those for which registration is sought for the ground of refusal in Article 8(1)(b) of Regulation No 207/2009 to be applicable and, second, that the word ‘gate’ in the mark applied for, CITIGATE, distinguishes it from the earlier marks.
64      OHIM and the interveners dispute the applicant’s arguments.
65      It should be borne in mind, first, that the purpose of actions before the General Court under Article 65(2) of Regulation No 207/2009 is to obtain a review of the legality of decisions of the Boards of Appeal. In the context of that regulation, Article 76 thereof requires that that review be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (judgment of 7 November 2007 in Case T‑57/06 NV Marly v OHIM – Erdal (Top iX), not published in the ECR, paragraph 15).
66      Second, it is clear from Article 135(4) of the Rules of Procedure of the General Court that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal (Top iX, paragraph 16).
67      The applicant’s argument that the interveners cannot rely on the application for Community registration of the figurative mark CITI or on the German word mark CITI amounts to a new plea which was not raised before the Board of Appeal and must therefore be rejected as inadmissible.
68      Next, as regards the comparison of the signs at issue, it should be noted, first, that, visually, with the exception of THE CITI NEVER SLEEPS, those signs are words consisting of eight letters, in the case of the mark applied for, and a number of between four and ten letters, in the case of the earlier marks, although a majority of the earlier marks consist of eight letters. With the exception of the CITI NEVER SLEEPS, the first four letters of the signs at issue, that is ‘c’, ‘i’, ‘t’, and ‘i’, are the same and follow the same order. They thus form the element ‘citi’, which also occupies the second position in THE CITI NEVER SLEEPS. As regards the other letters of which the signs at issue are composed, the letters ‘g’, ‘a’, ‘t’ and ‘e’, which form the ‘gate’ element of the mark applied for, are also to be found in some of the earlier marks, though rarely in the same order and never in their entirety. Only the earlier mark CITIGARANT reproduces the letters ‘g’ and ‘a’ in the same order as the mark applied for.
69      Second, as regards the comparison of the signs at issue from an aural perspective, the mark applied for and a majority of the earlier marks have the same number of syllables, namely three, since, in the CITIGATE mark the final letter ‘e’ is not pronounced separately by the relevant public. Furthermore, the ‘citi’ element, common to the signs at issue, is pronounced in the same way and is at the beginning of the mark applied for and of the majority of the earlier marks. On the other hand, although short in most cases, the second part of the signs at issue is not pronounced in the same way.
70      It is established case‑law that the consumer generally pays greater attention to the beginning of a mark than to the end (Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 51, and Case T‑109/07 L’Oréal v OHIM – Spa Monopole (SPA THERAPY) [2009] ECR II‑675, paragraph 30). Accordingly, in the light of the foregoing, it must be held that there is at least an average degree of visual and aural similarity between the signs at issue.
71      Third, with regard to the conceptual comparison of the signs at issue, it should be borne in mind that the average consumer, perceiving a verbal sign, will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (see Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 51, and RESPICUR, paragraph 57).
72      In the present case, the signs at issue are structured in such a way that the relevant public will perceive them as being composed of, first, the element ‘citi’ and, second, the word ‘gate’ – as regards the mark applied for – and the elements ‘bank’, ‘corp’, ‘group’, ‘card’, ‘bond’, ‘garant’, ‘gold’ and ‘equity’ – as regards some of the earlier marks.
73      As the Board of Appeal was correct to point out at paragraph 32 of the contested decision, the element ‘citi’ and the English word ‘city’ are homophones and the element ‘citi’ may be perceived by the relevant public as alluding to the word ‘city’ as a generic place name, the financial district of London, or to New York City (United States), which is not only where the interveners are still based but also the place to which THE CITI NEVER SLEEPS mark refers.
74      As regards the earlier marks, ‘bank’, ‘corp’ – short form for the English word ‘corporation’ – ‘group’, ‘card’, ‘bond’, ‘garant’ (guarantee), ‘gold’ and ‘equity’ are English words which have a clear meaning for the English‑speaking public. With regard in particular to ‘bank’, ‘corp’, ‘group’, ‘card’ and ‘garant’, their meaning relates directly to the financial and monetary services which may be provided by the interveners and they are therefore descriptive of such services. With regard to the other elements, namely ‘bond’, ‘gold’ and ‘equity’, it should be noted that, while they do not relate directly to financial and monetary services, they may nevertheless be connected to such services. Thus, for example, the word ‘equity’ may refer to a particular way of devising how such services are to be provided.
75      Since the earlier marks consist of, first, an element that is more or less descriptive of the services provided by the interveners and, second, the element ‘citi’, not spelled in the usual manner and common to all the earlier marks, it must be concluded that the element ‘citi’ has a highly distinctive character.
76      Moreover, in Case T‑181/05 Citigroup and Citibank v OHIM – Citi (CITI) [2008] ECR II‑669, the General Court established, at paragraphs 71 and 72 of that judgment, that the element ‘citi’ does have a distinctive character.
77      The mark applied for, CITIGATE, is also composed of the element ‘citi’, spelled in an unusual manner, identical to the spelling used in the earlier marks, while the element ‘gate’, though not alluding directly to the services covered by the mark applied for or to financial or monetary services, nevertheless has a clear meaning for the relevant public and may be perceived by that public in the same way as the elements ‘bond’, ‘gold’ or ‘equity’ in the earlier marks, that is, as referring in any event to a characteristic of the services provided.
78      Therefore, since the structure of the signs at issue is highly similar, there are grounds for inferring that there is a high degree of conceptual similarity between them.
79      It follows from all the foregoing that the signs at issue are, overall, highly similar, in view of the fact that they are visually and aurally similar to at least an average degree and conceptually highly similar.
The likelihood of confusion
80      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. Under that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned 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 designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
81      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
82      The Board of Appeal stated, at paragraph 24 of the contested decision, that ‘it is likely that consumers who encounter the trade mark CITIGATE in the context of any goods or services closely connected with banking or finance will assume that it is another member of the CITIBANK family of trade marks[, which] constitutes a likelihood of confusion within the meaning of Article 8(1)(b) [of Regulation No 207/2009]’.
83      As regards the goods in Classes 9 and 16 and ‘market research, market analysis and strategic marketing services; preparation of business reports; public agency services; management consultancy services; [and] consultancy services relating to business operations’ in Class 35, the Board of Appeal was of the view that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
84      The applicant considers that there is no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. In that regard, in particular, the documents originating from persons with a professional relationship with the interveners who state that they might have believed that the CITIGATE mark was part of the CITI family of trade marks are, it submits, insufficient to prove that there is an actual risk of confusion on the market.
85      OHIM and the interveners dispute the applicant’s arguments.
86      With regard to the likelihood of confusion linked to the existence of a family of CITI trade marks, two conditions have been laid down by case-law which must be fulfilled in order to prove that a likelihood exists. First, the proprietor of the purported family of trade marks must furnish proof of use of all the marks belonging to the family or, at the very least, of a number of marks capable of constituting a family and, second, the mark applied for must not only be similar to the marks belonging to the family but also display characteristics capable of associating it with the family (BAINBRIDGE, paragraphs 126 and 127).
87      In the present case, as was established in connection with the first plea, there is a family of CITI trade marks. The question thus arises as to whether the mark applied for is similar to the marks belonging to that family of trade marks and is capable of being associated with that family.
88      It must be borne in mind that, as established at paragraph 79 above, the signs at issue are visually and aurally similar to at least an average degree and conceptually highly similar. In the circumstances, it is the fact that the marks at issue are conceptually highly similar that is decisive for the purpose of determining whether there is a likelihood of confusion.
89      It is highly likely that the average consumer encountering the trade mark applied for, CITIGATE, whose structure is very similar to that of the earlier marks – that is, consisting of the element ‘citi’, with its unusual spelling, to which is attached a second element, being in this case ‘gate’, the meaning of which is clear – will think that it is a new mark belonging to the CITI family of trade marks.
90      Consequently, it must be found, as regards the identical or similar goods and services referred to in paragraph 60 above, that there is a likelihood of confusion, without there being any need in any event to rule on the evidential value of the documents produced by the interveners originating from persons with whom they have a professional relationship, the purpose of which is to show that there is such a likelihood.
91      In the light of all the foregoing, the second plea must be dismissed.
The third plea, alleging breach of Article 8(5) of Regulation No 207/2009
92      Article 8(5) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2), the trade mark applied for must not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark, the trade mark has a reputation in the European Union and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
93      For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, a number of conditions must, therefore, be satisfied. First, the earlier trade mark which is claimed to have a reputation must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a repute in the European Union, in the case of an earlier Community trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (Case T-215/03 Sigla v OHIM – Elleni Holding (VIPS) [2007] ECR II-711, paragraphs 34 and 35, and Case T-150/04 Mülhens v OHIM – Minoronzoni (TOSCA BLU) [2007] ECR II-2353, paragraphs 54 and 55).
94      It should be pointed out that the types of damage referred to in Article 8(5) of Regulation No 207/2009, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, as a result of which the relevant section of the public makes a connection between the two marks, that is to say, it establishes a link between them, even though it does not confuse them (see the order of the Court of Justice of 30 April 2009 in Case C‑136/08 P Japan Tobacco v OHIM, not published in the ECR, paragraph 25 and the case-law cited).
95      There must be a global assessment as to whether there is such a link, taking into account all factors relevant to the circumstances of the case, including the degree of similarity between the marks at issue, the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public, the strength of the earlier mark’s reputation, the degree of the earlier mark’s distinctive character, whether inherent or acquired through use, and the existence of a likelihood of confusion on the part of the public (order in Japan Tobacco v OHIM, paragraph 26).
96      While, in the absence of such a link in the mind of the public, use of the later mark is unlikely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark (judgment of 10 May 2007 in Case T‑47/06 Antartica v OHIM – Nasdaq Stock Market (nasdaq), not published in the ECR, paragraph 44; see, by analogy, Case C‑252/07 Intel Corporation [2008] ECR II‑8823, paragraph 31), the existence of such a link is not sufficient, in itself, for it to be established that there may be one of the forms of damage referred to in Article 8(5) of Regulation No 207/2009, which constitute the specific condition for the protection of trade marks with a reputation laid down by that provision (order in Japan Tobacco v OHIM, paragraph 27).
97      In order to benefit from the protection introduced by Article 8(5) of Regulation No 207/2009, the proprietor of the earlier mark must adduce evidence that the use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. The proprietor of the earlier trade mark is not required, for that purpose, to demonstrate that the type of damage to its mark that is referred to in that provision is actual and present. When it is foreseeable that such damage will ensue from the use which the proprietor of the later mark may be led to make of its mark, the proprietor of the earlier mark cannot be required to wait for this actually to occur in order to be able to prohibit that use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such damage will occur in the future (order in Japan Tobacco v OHIM, paragraph 42 and the case‑law cited).
98      First, it should be noted that, for the purposes of applying Article 8(5) of Regulation No 207/2009, it is not necessary to examine whether all the earlier marks satisfy the conditions set out at paragraph 93 above; it is sufficient for one of those marks to satisfy the conditions. In the present case, it is necessary to examine the application of that provision only in relation to the earlier mark CITIBANK.
99      With regard, next, to the applicant’s argument that ‘advertising services; marketing services; public relations services; preparation of publicity material; promotional services; [and] services relating to brand development’ in Class 35 and the services in Class 42, with the exception of ‘computer programming services’, differ too widely from the services covered by the earlier marks for Article 8(5) of Regulation No 207/2009 to be applicable, it should be recalled that the similarity of the goods or services is not a condition for the application of that provision.
100    Nevertheless, it is apparent from the case‑law cited at paragraph 95 above that the nature of the goods or services concerned and the degree of closeness between them are factors which may be taken into account in the global assessment as to whether there is a link between the marks at issue (see, to that effect, the judgment of 25 January 2012 in Case T‑332/10 Viaguara v OHIM – Pfizer (VIAGUARA), not published in the ECR, paragraph 45).
101    It is therefore necessary to consider whether the Board of Appeal, in its assessment as to whether a link may be established between the marks, took account of factors other than the similarity of the signs, such as the factors referred to in the case‑law cited at paragraph 95 above.
102    At paragraph 32 of the contested decision, the Board of Appeal concluded that there was a link between the mark applied for and the CITIBANK mark, because: first, the CITIBANK mark is very well established and is bound to be known to the sophisticated, well‑informed business circles to which the services in question are directed; second, the interveners own a family of CITI trade marks; third, the reproduction of the unusual spelling of ‘citi’ in the mark applied for increases the likelihood that consumers of the relevant services will associate CITIGATE with the interveners’ family of trade marks; and, fourth, the services are not so dissimilar that consumers would be unlikely to make a connection between the marks.
103    In the present case, CITIBANK was registered as a national and Community trade mark (see paragraph 6 above) and the parties agree that it enjoys a reputation within the European Union.
104    Furthermore, it has been established at paragraph 89 above that the signs at issue are similar to a degree that the relevant public might believe that the mark applied for is part of the CITI family of trade marks. That therefore means that a link will be established between the mark applied for and the marks forming part of that family and, in fact, with the earlier mark CITIBANK.
105    In its application and at the hearing, the applicant argued, in essence, that, in the present case, the concept of a family of trade marks cannot be relied on for the purpose of the application of Article 8(5) of Regulation No 207/2009, since the interveners have been able to establish the reputation only of the earlier mark CITIBANK. According to the applicant, for the purposes of the application of Article 8(5), given that the effect of establishing the existence of a family of trade marks is to extend the scope of protection to goods or services which would otherwise be too dissimilar, or to otherwise not sufficiently similar marks, it must be shown that all the marks forming part of the family thus invoked enjoy a reputation.
106    That argument must be rejected. The Board of Appeal analysed the application of Article 8(5) of Regulation No 207/2009 only in relation to the earlier mark with a reputation, namely CITIBANK. It is only in carrying out its global assessment as to whether there is a link between the earlier mark with a reputation and the mark applied for that, in accordance with the case‑law cited at paragraph 95 above and taking into account all factors relevant to the circumstances of the case, the Board of Appeal found that the existence of a family of CITI trade marks was one among other relevant factors from which it may be concluded, correctly, that there is such a link.
107    Moreover, to the extent that the applicant’s arguments seek to criticise the Board of Appeal for finding that the CITI family of trade marks has a reputation and for having used that finding, incorrectly, for the purposes of the application of Article 8(5) of Regulation No 207/2009, those arguments must be rejected. In the contested decision, the Board of Appeal did not take a view on the reputation of the CITI family of trade marks or on that of the earlier marks, with the exception of CITIBANK, whose reputation is not disputed by the parties.
108    Furthermore, contrary to the applicant’s claims, even if it is not possible to establish a direct link between the services in Class 35 other than those identified at paragraph 49 above and the services in Class 42 other than ‘computer programming services’, on the one hand and, on the other, the services in Class 36, which are dissimilar, association with the earlier mark nevertheless remains possible, in the light of the high degree of similarity between the signs, the repute acquired by the earlier mark CITIBANK and the existence of a family of CITI trade marks. Accordingly, even though the relevant sections of the public at whom the marks at issue are directed do not overlap completely, because the services concerned are different, it is possible to establish that a connection might be made between the marks (see, to that effect, VIAGUARA, paragraph 52 and the case‑law cited).
109    Lastly, it is necessary to establish whether the use of the mark applied for is likely to lead to the risk that unfair advantage might be taken, without due cause, of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of that mark.
110    The concept of the unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous trade mark or an attempt to trade upon its reputation. In other words, this concerns the risk that the image of the mark with a reputation or the characteristics which it projects will be transferred to the services covered by the mark applied for, with the result that the marketing of those services can be made easier by that association with the earlier mark with a reputation (see VIPS, paragraph 40 and the case-law cited).
111    Accordingly, the risk that the use without due cause of the mark applied for will take unfair advantage of the distinctive character or the repute of the earlier trade mark continues to exist where the consumer, without necessarily confusing the commercial origin of the product or service in question, is attracted by the mark applied for itself and buys the product or service covered by it on the ground that it bears that mark, which is identical or similar to an earlier mark with a repute (VIPS, paragraph 42).
112    Moreover, in order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of a mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of the mark’s distinctive character, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the mark’s reputation and the degree of its distinctive character, the Court of Justice has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (Case C‑487/07 L’Oréal and Others [2009] ECR I‑5185, paragraph 44).
113    In that regard, the Board of Appeal stated, at paragraph 34 of the contested decision, that ‘it is likely that the applicant’s use of the mark CITIGATE in relation to the aforesaid services would take unfair advantage of the CITIBANK mark … [i]n view of the undoubted reputation of the mark CITIBANK, and bearing in mind that it is one of a family of marks composed of the word CITI plus a short, monosyllabic noun’ and that ‘in view of the reproduction of the unusual and distinctive spelling of the word CITI and the similar structure of the marks, some of the aura of the CITIBANK mark is likely to rub off on the applicant’.
114    The Board of Appeal also stated, for the sake of completeness, that it is likely that the distinctive character of the CITIBANK trade mark will suffer detriment as a result of the use of the CITIGATE mark. Indeed, it considered that ‘[t]he capacity of the CITI marks to arouse immediate association with the [interveners’] organisation will be diminished[, which] will lead to dispersion of their identity and their hold on the public mind[; t]he risk seems all the greater because the services in question are provided to business clients, that is to say the segment of the population with which a major financial institution has the greatest need to communicate through its trade marks’ (paragraph 37 of the contested decision).
115    Lastly, the Board of Appeal considered that the applicant had been unable to show that it had due cause to use the trade mark CITIGATE (paragraph 40 of the contested decision).
116    The applicant submits that it has due cause for registering the trade mark CITIGATE because, first, it has used a variety of marks consisting of or containing CITIGATE in relation to the goods and services for which registration is sought and, second, the interveners have acquiesced to the use of CITIGATE in relation to the goods and services covered by the application for registration.
117    Furthermore, the applicant states that use of the new mark would not take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. The Board of Appeal failed to indicate with sufficient clarity in what way the applicant’s services might take advantage of the repute of the earlier marks and, on the contrary, it is the interveners’ financial services which, in view of the banking sector’s fall from grace, may benefit from the more positive image projected by the applicant’s services.
118    OHIM and the interveners dispute the applicant’s arguments.
119    In the present case, the similarity of the signs at issue is such that the relevant public will think, on encountering the CITIGATE mark, that it is a new mark belonging to the CITI family of trade marks. Recognition of the existence of a family of trade marks increases the distinctive character of the marks belonging to that family.
120    Accordingly, not only does the CITIBANK mark enjoy a reputation within the European Union but its distinctive character is further enhanced as a result of the fact that it belongs to a family of trade marks, the distinctive element of which is ‘citi’.
121    Moreover, contrary to what is claimed by the applicant, the services covered by the mark applied for are not so very different from the services covered by the earlier mark for it to be possible to dismiss the application of Article 8(5) of Regulation No 207/2009. Indeed, the services in Class 35 other than those identified at paragraph 49 above and the services in Class 32 other than ‘computer programming services’ are, in any event, services connected with the business sector, which itself necessarily has links with the banking and financial sector. They are services to which professionals will have recourse in the course of their business activities, in the same way as they will have recourse to the services in Class 36 in the course of those activities. There is therefore a degree of proximity between those different services.
122    Therefore, as observed correctly by the Board of Appeal, there is a risk that the mark applied for will take advantage of the aura attaching to the CITIBANK mark on account of its reputation and that, lastly, the relevant section of the public might decide to use the applicant’s services in the belief that the mark in question is linked to the well-known mark CITIBANK. That risk is, moreover, increased because there is a family of CITI trade marks (see, to that effect, CITI, paragraph 83).
123    The applicant’s argument that the context has changed in so far as it is the interveners’ services which, on account of the banking sector’s fall from grace, might take advantage of the positive image projected by its services cannot succeed because it is a vague, unsubstantiated claim, which does not, contrary to the applicant’s assertions, constitute a new fact or evidence to be taken into account by the Court.
124    However, it remains to be established whether there is due cause for the use of the mark applied for in this case (see, to that effect, Case T‑59/08 Nute Partecipazioni and La Perla v OHIM – Worldgem Brands (NIMEI LA PERLA MODERN CLASSIC) [2010] ECR II‑5595, paragraphs 58 and 59).
125    As regards the applicant’s argument that it has due cause to use the mark applied for, CITIGATE, it should be noted that the documents produced by the applicant simply show that there are various companies whose business name contains the word CITIGATE and a number of domain names which also contain that word.
126    That evidence is not sufficient to establish due cause, because it does not demonstrate actual use of the CITIGATE mark. It should be noted in that regard that the purpose of a company name is not, in itself, to distinguish goods or services. The purpose of a company name is to identify a company. Accordingly, where the use of a company name is limited to identifying a company, it cannot be regarded as being used ‘in relation to goods or services’ (see, to that effect, the judgment of 13 May 2009 in Case T‑183/08 Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK), not published in the ECR, paragraph 21 and the case‑law cited).
127    Lastly, the applicant’s argument that the interveners acquiesced in the use of the mark CITIGATE cannot succeed.
128    Admittedly, according to case‑law, the possibility cannot be excluded that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two marks at issue or, in the present case, the likelihood of a connection being made between two marks in accordance with Article 8(5) of Regulation No 207/2009. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before OHIM concerning relative grounds for refusal, the applicant for the Community trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion or the absence of any likelihood of a connection being made on the part of the relevant public between the earlier mark upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (see, to that effect, the judgment of 25 October 2006 in Case T‑13/05 Castell del Remei v OHIM – Bodegas Roda (ODA), not published in the ECR, paragraph 67 and the case‑law cited).
129    However, the only evidence produced by the applicant is a document showing that it and the interveners jointly sponsored a conference in Sweden, ‘The 8th International Investor Relations Conference’, which was held on 15 and 16 September 1997. That evidence, which simply shows that the parties were present at a conference, cannot suffice to demonstrate that the interveners in fact consented to the use of the mark CITIGATE.
130    Consequently, without there being any need to consider the risk that the mark applied for might be detrimental to the distinctive character of the earlier mark, since a risk of unfair advantage has been established and is sufficient for the purposes of the application of Article 8(5) of Regulation No 207/2009, it is necessary to reject the third plea and, therefore, the action in its entirety.
Costs
131    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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with form of order sought by OHIM and the interveners.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1.      Dismisses the action;
2.      Orders IG Communications Ltd to pay the costs.
Papasavvas
Vadapalas
O’Higgins
Delivered in open court in Luxembourg on 26 September 2012.
[Signatures]
* Language of the case: English.