JUDGMENT OF THE GENERAL COURT (Third Chamber)
30 November 2015 (*)
(Community trade mark — Opposition proceedings — Application for a Community figurative mark W E — Earlier Community word mark WE — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑718/14,
Hong Kong Group Oy, established in Vantaa (Finland), represented by J.-H. Spåre, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Bonne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being,
WE Brand Sàrl, established in Luxembourg (Luxembourg), represented by R. van Oerle and E. de Groot, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 4 August 2014 (Case R 2305/2013-2), concerning opposition proceedings between WE Brand Sàrl and Hong Kong Group Oy,
THE GENERAL COURT (Third Chamber),
composed of S. Papasavvas, President, I. Wiszniewska-Białecka and E. Bieliūnas (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 10 October 2014,
having regard to the response of OHIM lodged at the Court Registry on 12 February 2015,
having regard to the response of the intervener lodged at the Court Registry on 28 January 2015,
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, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        On 28 March 2012, the applicant, Hong Kong Group Oy, 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 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 following figurative sign:
3        The goods and services in respect of which registration was sought are, inter alia, in Classes 25 and 35 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 25: ‘Clothing, footwear, headgear’;
–        Class 35: ‘Retail sale services, reseller services, wholesale services and sales services provided by means of electronic data media, featuring fishing tackle, clothing, footwear and headgear; Providing of product information relating to consumer goods by means of electronic data media’.
4        The Community trade mark application was published in Community Trade Marks Bulletin No 90/2012 of 15 May 2012.
5        On 14 August 2012, the intervener, WE Brand Sàrl, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the trade mark applied for, in respect of the goods and services referred to in paragraph 3 above, with the exception of the services in Class 35 relating to ‘sales services provided by means of electronic data media, featuring fishing tackle’ and services for the provision ‘of product information relating to consumer goods by means of electronic data media’ in the same class.
6        The opposition was based on the Community word mark WE, registered on 22 June 2010 under number 7209571 and designating, inter alia, goods and services in Classes 25 and 35 and corresponding, for each of those classes, to the following description:
–        Class 25: ‘Clothing, footwear, headgear’;
–        Class 35: ‘Business mediation in the purchase and sale, including within the framework of retailing, of clothing, footwear, headgear, the aforesaid services also offered via electronic channels, including the internet’.
7        The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8        On 30 September 2013, the Opposition Division upheld the opposition in its entirety.
9        On 22 November 2013, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10      By decision of 4 August 2014 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the applicant’s appeal. In particular, it found that the goods in Class 25 and the services in Class 35, limited to those to which the opposition relates, covered by the mark applied for and the goods in Class 25 and the services in Class 35 covered by the earlier mark were identical and similar respectively. Furthermore, it found that the signs at issue were visually and phonetically similar and that it is possible that, for a part of the Spanish-speaking public, they were also conceptually similar. Thus, the Board of Appeal concluded that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
Forms of order sought
11      As a member of the Third Chamber was unable to sit, the President of the General Court designated another Judge to complete the Chamber.
12      The applicant claims that the Court should:
–        annul the contested decision and the decision of the Opposition Division and reject the opposition in its entirety;
–        uphold the application for registration of the mark applied for;
–        order the intervener and OHIM to pay the costs which it incurred at every stage of the opposition and appeal proceedings.
13      OHIM contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
14      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs, including those incurred by the intervener before the Board of Appeal;
–        in the alternative, in the event that the Court annuls the contested decision, order only OHIM to pay the applicant’s costs.
Law
Admissibility of the applicant’s second head of claim
15      By its second head of claim, the applicant asks the Court to uphold the registration of the mark applied for.
16      That application could give rise to two interpretations. First, it could be understood as a request that the Court order OHIM to register the mark applied for. It is apparent from settled case-law that, in actions before the Courts of the European Union against the decision of a Board of Appeal, OHIM is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with judgments of those Courts. It is therefore not for the Court to issue directions to OHIM; rather, it is for OHIM to draw the appropriate inferences from the operative part and grounds of the judgments of the Courts of the European Union (see judgment of 11 July 2007 in El Corte Inglés v OHIM–Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 20 and the case-law cited).
17      Secondly, the applicant’s second head of claim may be understood as a request that the Court alter the contested decision pursuant to Article 65(3) of Regulation No 207/2009 by adopting the decision which the Board of Appeal should have taken in accordance with the provisions of Regulation No 207/2009. The OHIM bodies with jurisdiction in the matter do not adopt a formal decision declaring the registration of a Community mark which might be the subject of an appeal. Accordingly, the Board of Appeal does not have power to take cognisance of an application that it register a Community trade mark. In those circumstances, it is similarly not for the Court to take cognisance of an application for alteration requesting that it amend the decision of a Board of Appeal to that effect (order of 30 June 2009 in Securvita v OHIM (Natur-Aktien-Index), T‑285/08, ECR, EU:T:2009:230, paragraphs 14 and 17 to 23).
18      Therefore, the applicant’s second head of claim is inadmissible.
Documents presented for the first time before the Court
19      In the annex to the application, the applicant produced images of different types of weather vanes.
20      Those documents, which are 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 abovementioned documents must be excluded, without it being necessary to assess their 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).
Substance
21      In support of its action, the applicant raises, in essence, a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
22      First, the applicant submits that the Board of Appeal erred in concluding that the services in Class 35 covered by the mark applied for and the services in Class 35 covered by the earlier mark were similar. Secondly, the Board of Appeal erred in concluding that the signs at issue were similar. Thirdly, the applicant submits that, in the present case, there is no likelihood of confusion.
23      OHIM and the intervener claim, in essence, that the Board of Appeal correctly concluded that there was a likelihood of confusion.
24      Under 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 an 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.
25      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, as the case may be, economically linked undertakings constitutes a likelihood of confusion. According to that same 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 account being taken of 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 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).
26      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two 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 judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).
Relevant public
27      According to the 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).
28      Furthermore, it must be recalled that, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks at issue by the consumer of the goods or services in question in that territory. However, in order for registration of a Community mark to be refused, it suffices that a relative ground for refusal, within the meaning of Article 8(1)(b) of Regulation No 207/2009, exists in part of the European Union (see, to that effect, judgment of 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 76 and the case-law cited).
29      The Board of Appeal found, first of all, that, since the earlier mark is a Community trade mark, the relevant territory for the assessment of the likelihood of confusion was the entire European Union (paragraph 17 of the contested decision). However, following the approach adopted by the Opposition Division for reasons of procedural economy, the Board of Appeal concentrated on the relevant public in Spain (paragraph 6, 12th indent, and paragraph 33 of the contested decision). Next, it found that the goods in Class 25 were aimed at the public at large and that the services in Class 35 were aimed both at the public at large and business customers with professional knowledge or expertise (paragraph 24 of the contested decision). Finally, it added that it was clear from the case-law that, where the relevant public was made up of consumers who are part of the public at large and professionals, the group with the lowest level of attention must be taken into account (see judgment of 19 April 2013 in Hultafors Group v OHIM — Società Italiana Calzature (Snickers), T‑537/11, EU:T:2013:207, paragraph 27 and the case-law cited). Therefore, it concluded that the level of attention of the relevant public in the present case was neither particularly low nor particularly high (paragraph 25 of the contested decision).
30      It must be noted that those findings have not been called into question by the parties. In any event, since those findings contain no errors, they must be upheld.
Comparison of the signs
31      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant elements. The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In this 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).
32      The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, cited in paragraph 31 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments in OHIM v Shaker, cited in paragraph 31 above, EU:C:2007:333, paragraph 42, and of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).
33      With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (judgments of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 35, and of 8 February 2007 in Quelle v OHIM-Nars Cosmetics (NARS), T‑88/05, EU:T:2007:45, paragraph 57).
34      Finally, the Court of Justice has stated that it was quite possible that an earlier mark, used by a third party in a composite sign containing the name of the company of that third party could still have an independent distinctive role in the composite sign. Therefore, in order to establish the likelihood of confusion, it suffices that, because the earlier mark still has an independent distinctive role, the origin of the goods or services covered by the composite sign is attributed by the public also to the owner of that mark (see judgment of 8 May 2014 in Bimbo v OHIM, C‑591/12 P, ECR, EU:C:2014:305, paragraph 24 and the case-law cited). There may also be a likelihood of confusion where the earlier mark is not reproduced identically in the subsequent mark (see, to that effect, judgment of 25 March 2010 in Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, ECR, EU:T:2010:123, paragraph 60).
35      However, an element of a composite sign does not retain such an independent distinctive role if, together with the other element or elements of the sign, that element forms a unit having a different meaning as compared with the meaning of those elements taken separately (see judgment in Bimbo v OHIM, cited in paragraph 35 above, EU:C:2014:305, paragraph 25 and the case-law cited).
36      In the present case, the Board of Appeal first examined the distinctive dominant elements of the mark applied for and concluded that the elements ‘w’ and ‘e’ of that mark played an independent distinctive role (paragraph 47 of the contested decision). Secondly, it compared the signs at issue and concluded that they were visually and phonetically similar and that it was quite possible that, for part of the Spanish-speaking public, they were also conceptually similar (paragraphs 53 and 54 of the contested decision).
37      The applicant submits that the Board of Appeal was wrong in finding that the dominant element of the mark applied for was made up of the elements ‘w’ and ‘e’. The dominant element is its figurative element consisting of a stylised fish depicting a weather vane. Therefore that figurative element attracts attention because of its size and its original appearance. Therefore, it follows that the signs at issue are visually dissimilar.
38      Furthermore, the applicant claims that the signs at issue are also phonetically different in that the consumer will perceive the earlier mark as a personal pronoun, while the elements ‘w’ and ‘e’ of the mark applied for form neither a personal pronoun nor any other word, so that the consumer will refer to the mark applied for as the ‘weather vane mark’ or, at best, will pronounce those letters separately.
39      Finally, the applicant claims that the signs at issue also differ conceptually in that the earlier mark refers to the English personal pronoun of the first person plural, while the mark applied for depicts a weather vane and, in that context, the letters ‘w’ and ‘e’ refer to the cardinal points ‘west’ and ‘east’.
40      OHIM and the intervener contend, in essence, that the Board of Appeal was correct in finding that the elements ‘w’ and ‘e’ of the mark applied for had an independent distinctive role in that mark and that the signs at issue were visually, phonetically and conceptually similar.
41      First of all, as the Board of Appeal found, the figurative element of the mark applied for is larger and is represented above the verbal elements (paragraph 43 of the contested decision). Despite that finding, the Board of Appeal did not consider it necessary to attach greater weight to the figurative element of the mark applied for (paragraph 43 of the contested decision).
42      As the applicant maintains, the figurative element, made up of a stylised fish represented above an arrow from which a vertical line points downwards, thus depicting a weather vane, constitutes the largest part of that mark and is, therefore, likely to dominate the image of the mark applied for which the relevant public will keep in mind. With regard to the verbal elements ‘w’ and ‘e’, which are of a smaller size than the figurative element, they are situated on a horizontal line below the arrow and on either side of the axis forming the base of the weather vane which the figurative element represents. Thus, they have a more ancillary role in the sign than the figurative element.
43      In addition the elements ‘w’ and ‘e’, together with the figurative element, form a unit having a different meaning as compared with the meaning of those elements taken separately. In the mark applied for, those verbal elements represent cardinal points, while they form a word in the earlier mark. Therefore, they cannot be regarded as having an independent distinctive position in the sign and consequently cannot have at least an independent distinctive role, as the Board of Appeal wrongly found in paragraph 47 of the contested decision.
44      Furthermore, if it is appropriate to acknowledge, as the Board of Appeal did in paragraph 46 of the contested decision, that the combination of the letters ‘w’ and ‘e’ is neither descriptive nor devoid of distinctive character in relation to the goods and services covered by the mark applied for, the same conclusion applies in relation to its figurative element.
45      Thus, even though the verbal elements of the mark applied for cannot be regarded as negligible in the overall impression created by the mark applied for, it is the figurative element which constitutes the dominant element of the mark applied for.
46      That conclusion cannot be called into question by the intervener’s arguments based on a mere assertion that the relevant public could not recognise a weather vane in the figurative element of the mark applied for and would therefore remember the letters ‘w’ and ‘e’ separately from the figurative element.
47      In any event, the intervener’s argument that the average consumer is not accustomed to seeing a mark depicting a weather vane in relation to goods in Class 25 and services in Class 35, even if that were the case, does not mean that the consumer, when confronted with the mark applied for, will not recognise a weather vane. Furthermore, the intervener’s arguments that the animal usually depicted on a weather vane is a rooster, and not a fish, and that a weather vane is usually characterised by a three-dimensional design containing all the cardinal points must be rejected since those are not the only existing configurations for weather vanes. In fact, there are many kinds of weather vanes, some of which have a stylised plate in the shape of an animal which does not necessarily represent a rooster, and a single horizontal rod indicating two of the four cardinal points, so that it must be accepted that weather vanes may be depicted in various ways.
48      Next, with regard to the visual comparison of the signs at issue, first, the structures of the signs at issue are very different in that the mark applied for is a figurative mark in which the figurative element is the dominant element, while the earlier mark is a verbal mark consisting only of the word ‘we’. Secondly, although the marks at issue coincide in the letters ‘w’ and ‘e’, which they have in common, they are nevertheless different, since the letters ‘w’ and ‘e’ form a word in the earlier mark, while the letters in the mark applied for are clearly separated by the axis which forms the base of the weather vane depicted by the figurative element and cannot therefore be regarded as forming a word by the relevant public.
49      In any event, the fact that the earlier mark and the mark applied for contain the letters ‘w’ and ‘e’ is of little consequence in the context of a global comparison and is not in itself sufficient to justify the conclusion that the conflicting signs are visually similar. It must be observed that the visual impression given by two marks which share a common element may be different, in particular where the comparison concerns, on the one hand, a word mark, such as the earlier mark, and, on the other hand, a composite mark, such as the mark applied for, composed of a strong figurative element and the letters ‘w’ and ‘e’ which create a visual impression that is distinct from the impression created by the single element ‘we’. It must also be made clear that, because of the existence of the figurative element, which has an individual and original configuration in the mark applied for while the earlier mark is composed only of the element ‘we’, the overall impressions created by the signs are different.
50      In addition, even if, as OHIM and the intervener maintain, the verbal elements of a mark are, in principle, more distinctive than its figurative elements, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark, the fact remains that, in view of the considerations set out in paragraphs 41 and 42 above, that is not the case here. The fact that the figurative element visually dominates the overall impression made by that mark weakens yet further the visual similarity of the signs at issue.
51      Therefore, the Court finds that the signs at issue are visually dissimilar overall.
52      With regard to the phonetic comparison of the signs at issue, it must be observed that the earlier mark is made up of a word composed of a single syllable.
53      As regards the mark applied for, it is clear from the case-law that, if a figurative mark contains a verbal element, in general it will be through the use of that word element that the relevant public will refer to the mark (judgment of 7 May 2015 in Cosmowell v OHIM — Haw Par (GELENKGOLD), T‑599/13, ECR, EU:T:2015:262, paragraph 53). In that regard, the Court finds that the letters ‘w’ and ‘e’ will be pronounced separately (see, to that effect, judgment of 13 April 2011 in United States Polo Association v OHIM — Textiles CMG (U.S. POLO ASSN.), T‑228/09, EU:T:2011:170, paragraph 40).
54      As has been established in paragraph 48 above and contrary to what OHIM and the intervener maintain, the letters ‘w’ and ‘e’ of the mark applied for will not be perceived by the relevant public as composing a word, but as two individual letters, separated by the axis of the weather vane.
55      Although, as the intervener maintains, the letter ‘e’ will have the same sound in the signs at issue, the fact remains that the letter ‘w’, placed at the start of the signs, is pronounced differently depending on whether or not it is part of a syllable. In that regard, although the Board of Appeal also found that difference in the pronunciation of the letter ‘w’ (paragraph 51 of the contested decision), it wrongly concluded that the signs were similar. The fact that (i) the mark applied for is pronounced as two letters, while the earlier mark is made up of a single verbal element, and (ii) the first letters of the signs are pronounced differently means that the signs do not create the same impression in the mind of the relevant public.
56      It is also possible that the relevant public may refer to the mark applied for as ‘west’ and ‘east’, in reference to the cardinal points which the letters ‘w’ and ‘e’ represent. In those circumstances, although the pronunciations of the letters ‘w’ and ‘e’ in the mark applied for and in the earlier mark are similar, the differences, due to the length of the words ‘west’ and ‘east’ and the pronunciation of their ending ‘st’, outweigh the similarities of the marks at issue.
57      Therefore, the signs at issue are phonetically dissimilar overall.
58      With regard to the conceptual comparison of the signs at issue, first it must be observed that the Board of Appeal essentially limited itself to comparing the meaning of the element ‘we’ of the earlier mark with that of the verbal elements of the mark applied for, without having regard to the concept to which the figurative element of the mark applied for refers (paragraph 54 of the contested decision). Consequently, it did not examine the meaning of the mark applied for taken as a whole and did not therefore carry out a comparison of the signs taking into account the overall impression created by the mark applied for.
59      Secondly, it must be observed that, for that part of the Spanish-speaking public which has no knowledge of English, the term ‘we’ will have no meaning, but that, for the part of that public which has some understanding of English, that term will refer to the personal pronoun of the first person plural.
60      With regard to the mark applied for taken as a whole, it will be understood by the Spanish-speaking public as referring to a weather vane. In that context, it is highly probable that even the part of the Spanish-speaking public with no knowledge of English will understand the elements ‘w’ and ‘e’ as referring to the cardinal points ‘west’ and ‘east’. In that regard, the fact that the letters are placed on either side of the axis of the weather vane and the fact that, as the applicant states, the cardinal point designating the east is written as ‘este’ in Spanish, so that on a weather vane it will also be symbolised by the letter ‘e’, bear out that assessment. In any event, that part of the public will not perceive the verbal elements of the mark applied for as constituting a word, as will be the case for the earlier mark, which means that the signs are conceptually different. With regard to that part of the Spanish speaking public with knowledge of English, it will understand that the letters ‘w’ and ‘e’ refer to the cardinal points ‘west’ and ‘east’, which means that the signs are also conceptually dissimilar for that part of the public.
61      Therefore, the signs at issue are conceptually dissimilar.
62      It follows from all the foregoing that, contrary to the Board of Appeal’s findings, the signs at issue are dissimilar overall.
The likelihood of confusion
63      It must be borne in mind that, under Article 8(1)(b) of Regulation No 207/2009, the trade mark applied for must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the relevant public.
64      However, one of the necessary conditions, that is to say, the similarity of the signs at issue, is not fulfilled in the present case. Thus, contrary to what the Board of Appeal concluded in the contested decision, it must be held that there is no likelihood of confusion in accordance with the case-law cited in paragraph 26 above, and it is therefore not necessary to examine the similarity of the goods and services at issue.
The application for alteration
65      With regard to the applicant’s head of claim that the Court should annul the Opposition Division’s decision and dismiss the opposition, it must be recalled that the power of the Court to alter decisions under Article 65(3) of Regulation No 207/2009 does not have the effect of conferring on that Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011 in Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraph 72).
66      In the present case, the conditions for the exercise of the Court’s power to alter decisions as set out in the judgment in Edwin v OHIM (EU:C:2011:452) are satisfied. It follows from the considerations set out in paragraphs 31 to 64 above that the Board of Appeal was required to find, contrary to what the Opposition Division considered, that the signs were dissimilar overall, so that, since one of the conditions laid down by Article 8(1)(b) of Regulation No 207/2009 was not fulfilled, the opposition had to be rejected. Consequently, it is necessary, by way of alteration of the contested decision, to annul the Opposition Division’s decision and to reject the opposition.
Costs
67      The applicant has applied to the Court for an order that OHIM and the intervener pay the costs of every stage of the opposition and appeal proceedings.
68      It should be recalled that, under Article 190(2) of the Rules of Procedure of the General Court, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Therefore, the applicant’s application is inadmissible in so far as it relates to the costs arising from the administrative proceedings before the Opposition Division, which do not constitute recoverable costs.
69      With regard to the costs arising from the proceedings before the Board of Appeal and those arising from the proceedings before the Court, it must be noted that, by its third head of claim, the intervener submits that the Court should order only OHIM to pay the costs in the event that the contested decision is annulled.
70      However, under Article 134(1) 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. The applicant claimed that OHIM and the intervener should be ordered to pay the costs, and OHIM and the intervener have both been unsuccessful. Therefore, OHIM and the intervener must be ordered to pay the applicant’s costs in addition to their own costs, in accordance with the form of order sought by the applicant and the intervener’s claim in its third head of claim must be dismissed.
On those grounds,
THE GENERAL COURT (Third 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 4 August 2014 (Case R 2305/2013-2) concerning opposition proceedings between WE Brand Sàrl and Hong Kong Group Oy and the decision of the Opposition Division of OHIM of 30 September 2013;
2.      Rejects the opposition;
3.      Orders OHIM and WE Brand to bear their own costs and to pay those incurred by Hong Kong Group, including those necessarily incurred by Hong Kong Group for the purposes of the proceedings before the Board of Appeal of OHIM.
Papasavvas
Wiszniewska-Białecka
Bieliūnas
Delivered in open court in Luxembourg on 30 November 2015.
[Signatures]
* Language of the case: English.