JUDGMENT OF THE GENERAL COURT (Third Chamber)
11 October 2016 (*)
(EU trade mark — Invalidity proceedings — EU figurative mark representing four interlocking Gs — Earlier EU, national and international figurative marks G — Relative ground for refusal — No similarity between the signs — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑461/15,
Guccio Gucci SpA, established in Florence (Italy), represented by P.L. Roncaglia, F. Rossi and N. Parrotta, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by S. Bonne, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Guess? IP Holder LP, established in Los Angeles, California (United States), represented by D. McFarland, Barrister,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 27 May 2015 (Case R 2049/2014-4), relating to invalidity proceedings between Guccio Gucci and Guess? IP Holder,
THE GENERAL COURT (Third Chamber),
composed, at the time of the deliberation, of S. Papasavvas (Rapporteur), President, I.S. Forrester and C. Iliopoulos, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 10 August 2015,
having regard to the responses of EUIPO and the intervener lodged at the Court Registry on 27 October 2015,
having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1        The intervener, Guess? IP Holder LP, is the proprietor of the EU figurative mark which was registered on 13 March 2008 by the European Union Intellectual Property Office (EUIPO), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), under the number 5538012 and is represented below:
2        The goods and services in respect of which the mark was registered are in Classes 3, 9, 14, 16, 18, 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 3: ‘Soaps, perfumes, cosmetics, hair lotions’;
–        Class 9: ‘Eye wear; sunglasses, eyeglass frames, eyeglass cases, eyeglass pouches, eyeglass chains and eyeglass cleaning cloths’;
–        Class 14: ‘Jewelry and watches; bracelets, earrings, rings, necklaces, toe rings, tie clips, lapel pins, cuff links, key rings, watch bands, pocket watches, wrist watches’;
–        Class 16: ‘Paper, cardboard and goods made from these materials; paper and plastic shopping bags, notebooks, notepads, agenda/day planners and general feature magazines; organizers’;
–        Class 18: ‘Purses, wallets, backpacks, attaché cases, briefcases and leather and imitation leather goods; handbags, coin purses, leather key chains, key cases, luggage, athletic bags, carrying bags, shoulder bags, tote bags, traveling bags, beach bags, book bags, billfolds, credit card cases, credit card money folds, duffel bags, shopping bags, business card cases, waist packs, travel kit bags sold empty, cosmetic cases sold empty, key fobs’;
–        Class 25: ‘Men’s, women’s, boys’, girls’, children’s and infant’s apparel; underwear, footwear, swim wear, caps, headwear, pajamas, belts, undershirts, socks, shirts, t-shirts, sweatpants, sweatshirts, knit tops, skirts, pants, trousers, shorts, sweaters, jeans, vests, coats, jackets, blazers, dresses, scarves, blouses, cardigans, gowns, suits and polo shirts, tank tops, crop tops, bustiers, camisoles, tap pants and teddies leather apparel; jackets, blazers, gloves, jeans, pants, vests, camisoles, tops, shirts, hats, skirts, shorts, shoes and boots; tie cases’;
–        Class 35: ‘Retail store services featuring men’s, women’s and children’s apparel and personal accessories’.
3        On 13 March 2013, the applicant, Guccio Gucci SpA, filed an application for a declaration that the contested mark was invalid pursuant to Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) and (5) of that regulation, in respect of the goods and services referred to in paragraph 2 above.
4        The application for a declaration of invalidity was based on the following earlier rights:
–        International registration No 644636, with effect in Benelux, Germany, Spain, France, Austria, Poland, Portugal and the United Kingdom, of the figurative mark in black and white, which was registered on 22 September 1995 and renewed until 22 September 2015 (‘trade mark No 644636’), and Italian figurative mark No 657053 in black and white, which was registered on 22 September 1995 and renewed on 23 February 2009 (‘trade mark No 657053’), both of which were registered in respect of goods in, inter alia, Classes 3, 9, 16, 18 and 25 and are represented below:
–        EU figurative mark No 122093 in black and white, which was registered on 24 October 2000 and renewed until 1 April 2016 in respect of goods in, inter alia, Classes 14, 18 and 25 (‘trade mark No 122093’) and is reproduced below:
–        EU figurative mark No 4472081 in black and white, which was registered on 24 April 2006 in respect of goods in Class 3 (‘trade mark No 4472081’), EU figurative mark No 4517827 in black and white, which was registered on 14 June 2006 in respect of goods in, inter alia, Class 9 (‘trade mark No 4517827’), and EU figurative mark No 2751535 in black and white, which was registered on 12 September 2003 and renewed until 21 June 2022 in respect of goods in, inter alia, Classes 18 and 25 (‘trade mark No 2751535’), which marks are reproduced below:
–        EU figurative mark No 122051 in black and white, which was registered on 24 October 2000 and renewed until 1 April 2016 for goods in, inter alia, Classes 3, 9, 14, 16, 18 and 25 (‘trade mark No 122051’) and is reproduced below:
5        The grounds relied on in support of the application for a declaration of invalidity were those set out in Article 8(1)(b) and (5) of Regulation No 207/2009.
6        On 31 July 2014, the Cancellation Division rejected the application for a declaration of invalidity.
7        On 6 August 2014, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.
8        By decision of 27 May 2015 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. In particular, as regards the ground set out in Article 8(1)(b) of Regulation No 207/2009, it found, in essence, that, having regard to the representation, positioning and stylisation of their components and to their completely different structure, the signs at issue gave a completely different overall impression, with the result that they could not be regarded as similar. It therefore rejected the application for a declaration of invalidity in so far as it was based on that ground, without examining whether the goods and services covered by the marks at issue were similar, as it took the view that one of the necessary conditions for the application of that provision was not satisfied. As regards the ground set out in Article 8(5) of Regulation No 207/2009, the Board of Appeal found that, since the signs at issue were dissimilar, the first condition necessary for the application of that provision was not satisfied, with the result that the application for a declaration of invalidity also had to be rejected on that basis.
Forms of order sought
9        The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs of the present proceedings;
–        order the intervener to pay the costs incurred in the proceedings before the Cancellation Division and the Board of Appeal of EUIPO.
10      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
11      The intervener contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs, including those incurred during the invalidity proceedings before EUIPO.
Law
12      In support of its action, the applicant puts forward three pleas in law, alleging (i) infringement of Article 75 of Regulation No 207/2009; (ii) infringement of Article 8(1)(b) of that regulation; and (iii) infringement of Article 8(5) of that regulation.
13      It is appropriate to examine the second plea first.
The second plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
14      The applicant claims, in essence, that the Board of Appeal made errors of law and errors of assessment of the facts in concluding that there was no similarity between the contested mark and the earlier marks.
15      EUIPO and the intervener dispute the applicant’s arguments.
16      In that regard, it must be observed that it is apparent from Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) of that regulation, that, upon application by the proprietor of an earlier trade mark, an EU trade mark is to be declared invalid 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. Furthermore, under Article 8(2)(a)(ii) and (iii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State and trade marks registered under international arrangements which have effect in a Member State with a date of application for registration which is earlier than the date of application for registration of the EU trade mark.
17      According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
18      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
19      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 judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).
20      In the present case, it must be pointed out, in the first place, that the applicant does not dispute the definition of the relevant public as set out in the Cancellation Division’s decision. According to that decision, the relevant territory is that of the European Union and the relevant public consists of the general public, the level of attention of which is average. Furthermore, it is apparent from the contested decision that the Board of Appeal did not call that definition into question. In any event, it is important to state that, having regard to the marks at issue and the goods and services in question, the definition of the relevant public which the Board of Appeal adopted is correct and must therefore be accepted.
21      It must be pointed out, in the second place, that the applicant disputes the Board of Appeal’s assessment relating to the absence of similarity between the signs at issue by claiming that that assessment is based, in essence, on their alleged dissimilarities, which will hardly leave any impression on the relevant public. In that regard, it maintains, in particular, that those signs are highly similar, inasmuch as each of them consists of a combination of capital ‘G’ letters, with the result that they will convey the same overall impression to the relevant public, the attention of which will be attracted more by the element ‘g’, which they have in common, than by their minor differences. Furthermore, it submits that the earlier marks have an exceptionally high level of distinctiveness, both inherent distinctiveness and distinctiveness acquired through use, and that they have an indisputable reputation. In addition, the applicant maintains that the likelihood of confusion is further increased by the fact that the application for a declaration of invalidity was based on the earlier marks’ membership of a family of marks, which all consist of a combination of capital ‘G’ letters.
22      EUIPO, supported by the intervener, disputes the applicant’s arguments.
23      In that regard, it must be borne in mind that, in respect of the comparison of the signs at issue, first of all, the Board of Appeal observed that the contested mark consisted of ‘a complex symmetrical bold black lined pattern of four opposed and criss-crossed elements, each one formed from an irregular half circle with short perpendicular lines at the edges, pointing in different directions’. In addition, it found, in response to the applicant’s arguments that that mark would be perceived as a combination of capital ‘G’ letters, that, ‘if that were to be the case, [it] will be perceived as a combination of four, highly stylised letters each of them taking a different position, none of them positioned in a normal upright position and together forming a very specific and complex graphic design’.
24      Secondly, as regards the earlier marks, the Board of Appeal observed that trade marks No 644636, No 657053, No 122051 and No 122093 all consisted of two elements formed by a thin black outline, as regards the first three of those trade marks, or a bold black line, as regards the last of those trade marks, and that those elements were either interconnected or placed closely together. It took the view that, in each of those marks, the element on the left could be perceived as the capital letter ‘G’ positioned in a normal way and that that on the right, which was inverted, mirrored it. Furthermore, it observed that the elements in trade mark No 122093 were surrounded by ‘four small black squares symmetrically positioned as forming the corners of a large square’. As for trade marks No 4472081, No 4517827 and No 2751535, the Board of Appeal pointed out that they consisted of five small elements, which together formed a cross pattern, and that four of those elements, which were positioned at the extremities, were connected to the central element by two small dots. Furthermore, according to the Board of Appeal, each of those elements was formed by a thin black outline and consisted of two connected parts and it took the view that the part on the left could be perceived as the capital letter ‘G’ and that the part on the right, which was inverted, mirrored it.
25      In addition, the Board of Appeal found that the fact that the marks at issue had possibly been developed by taking the capital letter ‘G’ as the basis for the respective graphic designs was not, in itself, a ground for establishing any relevant similarity, whether from a visual, phonetic or conceptual standpoint. According to the Board of Appeal, there is no such concept as the capital letter ‘G’ and it is just a graphic feature which can be represented, positioned and stylised in many different ways. Lastly, it found that the representation, positioning, stylisation and number of elements in the signs at issue were completely different, with the result that those signs had a completely different structure and thus gave a completely different impression.
26      On the basis of those findings, the Board of Appeal concluded that none of the earlier marks was similar to the contested mark and rejected the application for a declaration of invalidity on the basis of Article 8(1)(b) of Regulation No 207/2009, without examining the degree of similarity of the goods and services at issue, or even whether those goods and services were identical, and without examining whether the earlier marks had a reputation or enhanced distinctiveness.
27      It must be assessed whether the Board of Appeal was right in finding that the signs at issue were dissimilar and in rejecting the application for a declaration of invalidity on that ground alone, without examining whether there was a likelihood of confusion between those signs.
28      First, as regards the visual comparison, as has been pointed out in paragraph 18 above, it must be borne in mind that the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details. That consumer only rarely has a chance to compare the various marks directly, so he must rely on his imperfect recollection of them. 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 (judgment of 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
29      In the present case, as the Board of Appeal correctly found, in the light of the stylisation and positioning of the elements in the contested mark, that mark will be perceived, assessed as a whole, as a purely figurative and abstract sign, which is perfectly symmetrical from a vertical and horizontal point of view. In line with its description by the Board of Appeal in the contested decision, it must be pointed out that the contested mark consists of four bold black elements in the form of irregular semi-circles of the same size, which have short perpendicular lines pointing in different directions at their edges. Each of those elements is tilted slightly upwards or downwards and turns towards a different direction. The two elements in the upper part of the sign intersect and mirror each other, whereas they are merely joined to those in the lower part. Furthermore, the elements in the upper part of the sign mirror those in the lower part.
30      Consequently, contrary to the applicant’s arguments, the relevant public, which will not break down the contested mark into its various elements, but will retain the image of the sign as a whole, will not perceive in that mark the capital letter ‘G’, represented by the earlier marks, but rather an abstract ornamental motif. Moreover, having regard to the stylisation of the sign and to the fact that its elements are interlocking or joined together, it could be perceived both as reproducing stylised letters, such as the capital letter ‘X’ or the letter ‘e’, and as a combination of figures and letters, such as the figure ‘3’ and the letter ‘e’.
31      As regards earlier trade marks No 644636, No 657053 and No 122051, it must be pointed out that they consist solely of two elements and that they have a relatively compact and regular shape, inasmuch as those elements, which are perfectly symmetrical, are circular, interlock or overlap in part and are placed opposite each other. In addition, the element on the left is positioned in the same way as the capital letter ‘G’ which it is supposed to represent and the element on the right is the vertically inverted reflection of the element on the left, as regards trade mark No 122051, and the vertically and horizontally inverted reflection of the element on the left, as regards trade marks No 644636 and 657053. Assessed as a whole, those marks are more like rings or the links in a chain. Furthermore, unlike the elements in the contested mark, only the outline of the components of those earlier marks is black whereas the inside of those marks is white.
32      In addition, the two components of trade mark No 122093, which are formed by a bold black line, do not touch each other and are surrounded by four black squares. In that mark, the capital letter ‘G’ may easily be perceived. Lastly, earlier trade marks No 4472081, No 4517827 and No 2751535 consist of five small elements each of which represents the capital letter ‘G’ and its vertically and horizontally inverted reflection. Inasmuch as four of those elements are placed at the extremities of the sign and are connected to the central element by two small dots, so that together they form two diagonal lines, those marks are capable of being perceived, assessed as a whole, more as a cross pattern, as was pointed out by the Board of Appeal, than as a representation of motifs formed by the capital letter ‘G’.
33      It follows that the marks at issue create a different visual impression.
34      Secondly, as regards the phonetic comparison, it is important to point out that, since, in line with the Board of Appeal’s assessment and the arguments of EUIPO, the contested mark will be perceived as a purely figurative sign without word elements, it will not be pronounced. It follows that no phonetic comparison of the marks at issue can be carried out (see, to that effect, judgment of 7 February 2012, Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, EU:T:2012:58, paragraphs 45 to 47).
35      Thirdly, the conceptual comparison can also not be carried out since the contested mark, as an abstract ornamental motif, has no meaning and the earlier marks, which refer, at the very most, to the capital letter ‘G’, do not have any semantic content of their own (see, to that effect, judgments of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 42, and 27 June 2013, Repsol YPF v OHIM — Ajuntament de Roses (R), T‑89/12, not published, EU:T:2013:335, paragraph 42).
36      In view of the foregoing, it must be held that the Board of Appeal’s finding that, assessed as a whole, the marks at issue are completely different is correct.
37      It follows that the second plea must be rejected, without it being necessary to examine the other arguments of the applicant relating to the allegedly exceptionally high level of distinctiveness of the earlier marks, their reputation or their membership of a family of marks and to the existence of a likelihood of confusion between the marks at issue, arguments on which the Board of Appeal did not, moreover, rule.
The first plea, alleging infringement of Article 75 of Regulation No 207/2009
38      The applicant submits that the Board of Appeal did not state the reasons for its assessment that the fact that the element ‘g’ might be perceived as a letter in the signs at issue would not give rise to any similarity between those signs, with the result that it is impossible for the applicant to understand the reasons why its appeal was dismissed. In addition, it maintains that the contested decision is not consistent with EUIPO’s previous decision-making practice, which makes it even more difficult to understand the reasons for that decision.
39      EUIPO and the intervener dispute those arguments.
40      It must be borne in mind that, in accordance with the first sentence of Article 75 of Regulation No 207/2009, decisions of EUIPO must state the reasons on which they are based. The obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the court having jurisdiction to exercise its power of review (see judgment of 15 November 2011, Abbott Laboratories v OHIM (RESTORE), T‑363/10, not published, EU:T:2011:662, paragraph 73 and the case-law cited).
41      However, in stating the reasons for the decisions which they are called upon to make, the Boards of Appeal are not obliged to express a view on every argument which the parties have submitted to them. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see judgment of 3 March 2016, Ugly v OHIM — Group Lottuss (COYOTE UGLY), T‑778/14, not published, EU:T:2016:122, paragraph 67 and the case-law cited).
42      In the present case, contrary to the applicant’s arguments, it suffices to state that the contested decision contains an adequate statement of reasons. As has been pointed out in the context of the second plea, after describing the marks at issue, the Board of Appeal rightly found that the relevant public would perceive the contested mark as a complex graphic design the constituent elements of which were stylised, represented and positioned in a completely different way compared with the earlier marks, with the result that the signs at issue had a completely different structure and thus gave a completely different overall impression. Although the Board of Appeal referred to the possibility that the signs at issue may have been developed by taking the capital letter ‘G’ as the basis or that the components of those signs might be perceived as such by the relevant public, it nevertheless found that there was no similarity between those signs. In those circumstances, it cannot be held that the contested decision is not sufficiently reasoned, since the conclusion that the signs at issue are completely different is not based on that reason.
43      As regards the alleged lack of consistency between the contested decision and the previous decisions of the Cancellation and Opposition Divisions of EUIPO relied on by the applicant, in which increased importance was allegedly attributed to the element ‘g’, which is common to the signs at issue, it must be pointed out that, even if it were possible for such a claim to come within the scope of an infringement of the obligation to state reasons, the Boards of Appeal are not bound by the decisions of lower adjudicating bodies of EUIPO (judgments of 22 May 2014, NIIT Insurance Technologies v OHIM (EXACT), T‑228/13, not published, EU:T:2014:272, paragraph 48, and 26 November 2015, Nürburgring v OHIM — Biedermann (Nordschleife), T‑181/14, not published, EU:T:2015:889, paragraph 44). Moreover, it must be borne in mind that it is apparent from settled case-law that the decisions concerning the registration of a sign as an EU trade mark which the Boards of Appeal of EUIPO take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (see judgment of 26 April 2007, Alcon v OHIM, C‑412/05 P, EU:C:2007:252, paragraph 65 and the case-law cited; judgment of 11 December 2014, Monster Energy v OHIM (REHABILITATE), T‑712/13, not published, EU:T:2014:1066, paragraph 31).
44      Furthermore, the case-law confirms that, although, in the light of the principles of equal treatment and of sound administration, EUIPO must take into account the decisions already taken and consider with especial care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality (see, by analogy, judgment of 10 March 2011, Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, EU:C:2011:139, paragraphs 73 to 75). In the present case, it has been held that the Board of Appeal did not infringe Article 8(1)(b) of Regulation No 207/2009 in concluding that there was no similarity between the marks at issue.
45      The first plea must therefore be rejected in its entirety.
The third plea, alleging infringement of Article 8(5) of Regulation No 207/2009
46      The applicant submits that the Board of Appeal limited itself to referring to the assessment concerning the similarity of the signs which it had carried out on the basis of Article 8(1)(b) of Regulation No 207/2009, whereas it should have independently assessed whether the signs at issue could be regarded as similar for the purposes of the application of Article 8(5) of Regulation No 207/2009. In that regard, it maintains that the latter provision requires a finding of a lower degree of similarity between the marks at issue than that required by Article 8(1)(b) of Regulation No 207/2009. Furthermore, it takes the view that, contrary to the findings of the Board of Appeal, all the requirements set out in Article 8(5) of Regulation No 207/2009 are met.
47      In that regard, it must be pointed out that it is apparent from the wording of Article 8(5) of Regulation No 207/2009 that its application is subject to three conditions: first, that the signs at issue are identical or similar, secondly, that the earlier mark cited in opposition has a reputation and, thirdly, that there is a risk that the use by someone, without due cause, of the sign in respect of which registration as a trade mark is applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. Furthermore, it is apparent from that wording that the three conditions referred to previously must be regarded as cumulative. Lastly, it must be pointed out that the condition that the signs at issue must be identical or similar is common to Article 8(1)(b) and Article 8(5) of that regulation (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 38).
48      Given that it is not apparent either from the wording of Article 8(1)(b) and (5) of Regulation No 207/2009 or from the case-law that the concept of similarity has a different meaning in each of those paragraphs, it follows, inter alia, that, if, in examining the conditions for the application of Article 8(1)(b) of that regulation, it is held that there is no similarity between the signs at issue, paragraph 5 of Article 8 also necessarily does not apply to the case in point (judgment of 10 December 2015, El Corte Inglés v OHIM, C‑603/14 P, EU:C:2015:807, paragraph 39).
49      Since the Board of Appeal found, in the context of the assessment of the ground set out in Article 8(1)(b) of Regulation No 207/2009, that the signs were different and the Court has held that that assessment was correct, the Board of Appeal was right in finding that one of the conditions for the application of Article 8(5) of Regulation No 207/2009 had not been satisfied. Although, as the applicant maintains, the types of harm referred to in Article 8(5) of Regulation No 207/2009 may be the consequence of a lower degree of similarity between the earlier and later marks, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them, that provision, like Article 8(1)(b), is manifestly inapplicable where the General Court rules out any similarity between the marks at issue. It is only if there is some similarity, even faint, between the marks at issue that the General Court must carry out an overall assessment in order to ascertain whether, notwithstanding the low degree of similarity between them, there is, on account of the presence of other relevant factors such as the renown or reputation enjoyed by the earlier mark, a likelihood of confusion or a link made between those marks on the part of the relevant public (judgments of 24 March 2011, Ferrero v OHIM, C‑552/09 P, EU:C:2011:177, paragraphs 53 and 66, and 20 November 2014, Intra-Presse v OHIM, C‑581/13 P and C‑582/13 P, not published, EU:C:2014:2387, paragraphs 72 and 73).
50      In the light of all of the foregoing, the third plea must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
51      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
52      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.
53      Furthermore, the intervener has claimed that the applicant should be ordered to pay the costs that the intervener incurred in the invalidity proceedings before EUIPO. In that regard, it must be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Cancellation Division. Accordingly, the intervener’s request that the applicant, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before EUIPO can be allowed only as regards the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal (see to that effect, judgment of 12 January 2006, Devinlec v OHIM — TIME ART (QUANTUM), T‑147/03, EU:T:2006:10, paragraph 115).
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Guccio Gucci SpA to pay the costs, including the costs incurred by Guess? IP Holder LP before the Board of Appeal of the European Union Intellectual Property Office (EUIPO).
Papasavvas
Forrester
Iliopoulos
Delivered in open court in Luxembourg on 11 October 2016.
[Signatures]
* Language of the case: English.