JUDGMENT OF THE GENERAL COURT (Third Chamber)
20 September 2016 (*)
(EU trade mark — Opposition proceedings — Application for registration of an EU figurative mark MERLIN’S KINDERWELT — Earlier national word mark KINDER — Relative ground for refusal — No similarity between the signs — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑566/15,
Excalibur City s.r.o., established in Znojmo (Czech Republic), represented by E. Engin-Deniz, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by M. Simandlova and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Ferrero SpA, established in Alba (Italy), represented by L. Ghedina and F. Jacobacci, lawyers,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 16 July 2015 (Case R 1617/2014-1), relating to opposition proceedings between Ferrero and Excalibur City,
THE GENERAL COURT (Third Chamber),
composed of S. Papasavvas (Rapporteur), President, E. Bieliūnas and I.S. Forrester, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 28 September 2015,
having regard to the response of EUIPO lodged at the Court Registry on 3 December 2015,
having regard to the response of the intervener lodged at the Court Registry on 5 February 2016,
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, pursuant to Article 106(3) of the Rules of Procedure of the General Court, to rule on the action without an oral part of the procedure,
gives the following
Judgment
Background to the dispute
1        On 20 September 2012, the applicant, Excalibur City s.r.o., lodged an application for registration of an EU trade mark with 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).
2        Registration as a mark was sought for the following figurative sign:
3        The services for which registration was sought fall within, inter alia, Class 41 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 to the following description: ‘education and providing of training, entertainment and amusement games, sporting and cultural activities, providing children’s playgrounds and amusement parks, theatre productions, providing information on entertainment and education, entertainment or education club services, publication of books and text, other than publicity texts, correspondence courses, arranging and conducting conferences and seminars, organisation of exhibitions for cultural or educational purposes, organisation of shows, organisation of games and competitions (education or entertainment)’.
4        The EU trade mark application was published in Community Trade Marks Bulletin No 236/2012 of 12 December 2012.
5        On 11 March 2013, the intervener, Ferrero SpA, filed a notice of opposition to registration of the mark applied for in respect of the services referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009.
6        The opposition was based on the following two earlier Italian word marks:
–        the Italian word mark KINDER, filed on 19 June 2012 and registered under number 1536452, in respect of services in Class 41 and corresponding to the following description: ‘Education; providing of training; entertainment; sporting and cultural activities’;
–        the Italian word mark KINDER, filed on 28 January 1965 and registered under number 168843, in respect of goods in Class 30 and corresponding to the following description: ‘Cakes, pastry, confectionery, cocoa products and chocolate’.
7        The grounds relied on in support of the opposition were those referred to, respectively, in Article 8(1)(b) of Regulation No 207/2009, in relation to the earlier mark registered under number 1536452, and in Article 8(5) of Regulation No 207/2009, in relation to the earlier mark registered under number 168843.
8        On 26 May 2014, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009.
9        On 26 June 2014 the applicant filed an appeal with EUIPO, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10      By decision of 16 July 2015 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal. In particular, after having observed that the dominant element of the mark applied for was the word element ‘kinderwelt’, it found that, in view of the presence in the signs at issue of the common word element ‘kinder’, and the degree of visual similarity and phonetic similarity between the signs at issue resulting from that element, and the fact that the services at issue were identical, there was a likelihood of confusion between the signs at issue for the purposes of Article 8(1)(b) of Regulation No 207/2009, which included a likelihood of association on the part of the relevant Italian-speaking public.
Forms of order sought
11      The applicant claims that the Court should:
–        primarily, alter the contested decision so as to reject the opposition filed by the intervener;
–        in the alternative, annul the contested decision and the decision of the Opposition Division of 26 May 2014;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action in its entirety;
–        order the applicant to pay the costs.
13      The intervener contends that the Court should:
–        primarily, uphold the contested decision;
–        in the alternative, refer the case back to the Board of Appeal of EUIPO for examination of the grounds of opposition on the basis of Article 8(5) of Regulation No 207/2009;
–        order the applicant to pay the costs.
Law
14      In support of its action, the applicant puts forward two pleas in law alleging, respectively, infringement of Article 8(1)(b) of Regulation No 207/2009 and infringement of Article 8(5) of that regulation.
15      As regards the first plea, the applicant claims, in essence, that, as there are no similarities between the signs at issue, there is no likelihood of confusion between the mark applied for and the earlier mark. In order to illustrate its various claims, the applicant relies mainly on the judgment of 14 October 2009, Ferrero v OHIM — Tirol Milch (TiMi KiNDERJOGHURT) (T‑140/08, EU:T:2009:400), in which the Court held that the signs TiMi KiNDERJOGHURT and Kinder were not similar.
16      EUIPO and the intervener dispute the applicant’s arguments, relying mainly on the similarities between the present case and that which resulted in the judgment of 16 May 2012, Wohlfahrt v OHIM — Ferrero (Kindertraum) (T‑580/10, not published, EU:T:2012:240), in which the Court found that, in view of the presence, in the conflicting signs Kindertraum and Kinder, of the common word element ‘kinder’, the average degree of visual similarity and phonetic similarity between the signs at issue resulting from that element and the fact that the goods at issue were identical, there was a likelihood of confusion between those signs.
17      Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, 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) of Regulation No 207/2009, the term ‘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 EU trade mark.
18      It is settled case-law that the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to 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 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 designated (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).
19      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the signs at issue are identical or similar and that the goods or services covered by the marks at issue are identical or similar. Those conditions are cumulative (see, to that effect, 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      It is in the light of those considerations that the examination must be carried out as to whether the Board of Appeal acted correctly in finding that there was a likelihood of confusion for the purposes of Article 8(1)(b) of Regulation No 207/2009.
The relevant public
21      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 or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
22      In the present case, in view of the nature of the services concerned and the fact that the earlier marks relied on in support of the opposition are protected in Italy, the Court upholds the Board of Appeal’s finding in paragraphs 22 to 27 of the contested decision that, in essence, the likelihood of confusion must be examined from the point of view of the relevant public, comprising the general public, that is to say, the average Italian consumer.
Comparison of the signs
23      According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30). 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 created by those signs, bearing in mind, in particular, their distinctive and dominant components. 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 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).
The distinctive and dominant elements
24      For the purposes of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, account should be taken, in particular, of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (see judgments of 13 June 2006, Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, EU:T:2006:157, paragraph 35, and of 13 December 2007, Cabrera Sánchez v OHIM — Industrias Cárnicas Valle (el charcutero artesano), T‑242/06, not published, EU:T:2007:391, paragraph 51).
25      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 composite mark (judgments of 23 October 2002, MATRATZEN, T‑6/01, EU:T:2002:261, paragraph 35, and of 8 February 2007, Quelle v OHIM — Nars Cosmetics (NARS), T‑88/05, not published, EU:T:2007:45, paragraph 58).
26      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 of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 41 and the case-law cited).
27      It is only if all of 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 of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, 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 of the other components are negligible in the overall impression created by that mark. In addition, the fact that an element is not negligible does not mean that it is dominant, and by the same token the fact that an element is not dominant in no way means that it is negligible (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraphs 43 and 44).
28      It should also be noted that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or of the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character (see, to that effect, judgments of 12 September 2007, Koipe v OHIM — Aceites del Sur (La Española), T‑363/04, EU:T:2007:264, paragraph 92, and of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 52 and the case-law cited). Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 13 December 2007, el charcutero artesano, T‑242/06, not published, EU:T:2007:391, paragraph 53 and the case-law cited). That does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression created by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark.
29      In the present case, the Board of Appeal found, first, that the element ‘kinderwelt’ constituted the dominant and distinctive element of the mark applied for and, secondly, that the element ‘merlin’s’ was incapable of playing a distinctive role in relation to the services in Class 41 covered by the mark applied for, on the ground that it referred directly to the content of those services, and so was devoid of inherent distinctive character as regards the services at issue in Class 41.
30      The applicant disputes this analysis. First, it claims that the mark applied for does not contain any element which has greater importance, with the result that no element may be qualified as dominant. It nevertheless submits that the element ‘merlin’s’ is highly distinctive. Thus, according to the applicant, the mark applied for, taken as a whole and throughout the relevant territory, is of high distinctive character. Secondly, the applicant claims that, for at least part of the relevant public, the earlier mark, which will be understood as being a German word meaning ‘children’, has only a weak distinctive character.
31      EUIPO and the intervener submit that the element ‘merlin’s’ in the mark applied for is incapable of playing a distinctive role, in that it merely describes the subject matter of the services covered by the application for registration by providing information on the core theme of those services. EUIPO adds that the element ‘kinderwelt’, classified by the Board of Appeal as a dominant element, has in fact an average degree of distinctiveness.
32      It is therefore necessary to examine whether, in view of the characteristics of the elements making up the signs at issue, the Board of Appeal correctly made a proper assessment of the distinctive and dominant elements.
33      In the first place, as regards the distinctive elements of the mark applied for, it must be noted that, although the relevant public may understand that the element ‘merlin’s’ refers to an emblematic character of Arthurian legend (‘Merlino’ in Italian), that element will nevertheless not be perceived by the relevant public as being capable of designating the services covered by the mark applied for or a characteristic of those services. Thus, as the applicant claims, the fact that the element ‘merlin’s’ has a meaning for the relevant public does not necessarily lead to the conclusion that that term is descriptive of the services at issue. According to settled case-law, a term with a clear meaning is considered to be descriptive only if there is a sufficiently direct and specific relationship between that term and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of the goods and services in question or one of their characteristics (see judgment of 22 June 2005, Metso Paper Automation v OHIM (PAPERLAB), T‑19/04, EU:T:2005:247, paragraphs 24 and 25 and the case-law cited). In the present case, however, there is not a sufficiently direct and specific relationship between the meaning of the term ‘merlin’s’ and the services covered by the mark to enable the relevant public immediately to perceive, without further thought, a description of those services or, as EUIPO and the intervener claim, one of their characteristics. The term ‘merlin’s’ cannot be regarded as being descriptive of the services covered by the mark applied for, that is to say, services intended to entertain, referred to in paragraph 3 above, where it has not been established that it is used in business to designate a characteristic of those services. The fact that a term such as ‘merlin’s’ may be evocative, in some circumstances, of the specific theme of Arthurian legend does not mean that it is descriptive of the services covered by the mark applied for or of one of their characteristics.
34      The Court therefore finds, contrary to the assessment made by the Board of Appeal in that regard, that the word element ‘merlin’s’ in the mark applied for has an average degree of distinctiveness.
35      The same conclusion must, a fortiori, be drawn concerning the word element ‘kinderwelt’, which, as the parties acknowledge, has no meaning for the relevant public and which, therefore, also has an average degree of distinctiveness.
36      In the second place, with regard to the dominant character of the elements comprising the marks at issue, the Court rejects the assessment of the Board of Appeal that, in essence, the word element ‘merlin’s’ in the mark applied for cannot be intrinsically dominant, given that it is descriptive and therefore not distinctive. It has been established in paragraph 34 above that that word element had an average degree of distinctiveness.
37      Even if it is assumed that the element ‘merlin’s’ is not the dominant element of the mark applied for, that does not in any way mean that it is negligible. In view of its size, the use of large capitals and the fact that it is centrally placed above the element ‘kinderwelt’, the Court finds that the element ‘merlin’s’ is sufficiently distinctive in order for it not to be negligible or banal.
38      Thus, on the basis of the overall impression conveyed by the mark applied for, the Court finds that the element ‘kinderwelt’ does not have a dominant character, no more than the element ‘merlin’s’ or the figurative elements which it contains. The view must therefore be taken that none of those elements dominates the overall impression created by the mark applied for.
39      In the light of all those considerations, it must be concluded that the Board of Appeal erred in finding, first, that the element ‘merlin’s’ of the mark applied for did not have a distinctive character, with the result that, secondly, the dominant element of the mark applied for is necessarily the element ‘kinderwelt’.
40      Consequently, in the light of the case-law referred to in paragraph 27 above, a comparison between the signs cannot be made solely on the basis of the dominant element of the signs at issue, but will have to be made having regard to the signs at issue, each considered as a whole.
Visual similarity
41      The Board of Appeal stated, in paragraph 57 of the contested decision, that the overall impression produced by the signs at issue led to the finding that they had a certain visual similarity on account of their common dominant element ‘kinder’.
42      The applicant submits that, visually, the signs at issue cannot be regarded as similar. According to the applicant, the element ‘kinder’ is only part of the mark applied for, which also differs from the earlier mark KINDER both in its length, since it is composed of figurative elements in addition to the word elements ‘merlin’s’ and ‘kinderwelt’, with the second word element, moreover, having to be perceived as an indivisible unit, and by its first element, to which consumers generally attach more importance. Beyond that, the mark applied for is stylised, whereas the earlier mark KINDER is a word mark only. The mark applied for contains several figurative elements, such as a frame around the word elements, stylised fonts and above all a graphical depiction of a magician.
43      EUIPO and the intervener contend in essence that the graphic depiction of the element ‘kinderwelt’ leaves no doubt as to the fact that it will be perceived as a combination of two words, so that the presence of the element ‘kinder’ will be clearly identifiable. EUIPO adds that the element ‘merlin’s’ is visually the least important, that the graphic depiction of a magician is not very striking and that the most striking element is the element ‘kinderwelt’.
44      First, it must be stated that it cannot be disputed that the presence of figurative elements in the mark applied for, that is to say, the graphic depiction of a magician which has an intrinsic semantic content and the use of stylised fonts for the elements ‘merlin’s’ and ‘kinderwelt’, support the conclusion that there is a significant difference vis-à-vis the depiction of the earlier word mark KINDER, which does not contain specific graphic or stylistic aspects.
45      Secondly, it should be noted that the word elements of the signs at issue are very clearly distinguishable by their length. Whereas the word element of the mark applied for contains 17 letters and an apostrophe, the word element of the earlier mark contains only six letters. Therefore, it is irrelevant that the six letters making up the earlier mark are to be found in the same order in the mark applied for, that is to say, from the eighth and to the thirteenth letter.
46      Thirdly, the element ‘kinder’ in the mark applied for is merged with the element ‘welt’, which means that they have no specific, independent existence. Not only do the elements ‘kinder’ and ‘welt’ have the same visual significance, but the stylised unevenness of the font used for the element ‘kinderwelt’, notwithstanding the use of small and large capitals, turns them into a harmonious unit in which the two constituent elements have become barely perceptible, especially for the relevant Italian-speaking public. Those special features show that, contrary to what is claimed by EUIPO and the intervener, the element ‘kinder’ is not simply attached to the element ‘welt’, nor is it the dominant element. As a result of the stylised font of the element ‘kinder’ used in the mark applied for, including in particular the ideogram of a five-pointed star in the place of the dot over the letter ‘i’, but also the presence of a frame with rounded edges, the mark applied for does not visually resemble the earlier word mark, which is depicted in a traditional font.
47      Fourthly, it is clear that the element ‘kinder’ in the mark applied for is merely part of the element ‘kinderwelt’, and is of no greater importance compared with the element ‘merlin’s’. Visually, the element ‘merlin’s’ is the focus point of the sign since it is prominently and centrally placed above the element ‘kinderwelt’, and, accordingly, attention is drawn to it first. This central positioning largely offsets the fact that the element ‘merlin’s’ is depicted in a font of a size smaller than that used for the element ‘kinderwelt’ and the fact that it is inserted between the large capitals ‘K’ and ‘W’ of the element ‘kinderwelt’ placed in the lower part of the sign. In addition, the graphic depiction of a magician on the left side of the sign applied for, from which it may easily be deduced that this is Merlin the magician, a character from mediaeval literature, emblematic of Arthurian legend, supports the conclusion that the element ‘kinder’ is somewhat neutralised by the element ‘merlin’s’, which doubtless strikes the consumers first (see, by analogy, judgment of 14 October 2009, TiMi KiNDERJOGHURT, T‑140/08, EU:T:2009:400, paragraph 57).
48      Fifthly, by contrast to its position in the earlier word mark, the element ‘kinder’ is found in the mark applied for between two other elements, namely ‘merlin’s’ and ‘welt’.
49      It follows from the foregoing that, notwithstanding the fact that the element ‘kinder’ is present in both the signs at issue, those signs, on the basis of an overall impression, are not visually similar.
Phonetic similarity
50      The Board of Appeal took the view, in paragraph 57 of the contested decision, that the overall impression created by the signs at issue led to the finding that they had a certain phonetic similarity on account of their common dominant element ‘kinder’.
51      The applicant disputes the Board of Appeal’s assessment and claims that, phonetically, the degree of similarity between the signs at issue is negligible, if not non-existent. In its view, the pronunciation of the signs at issue differs in their letters, in the length of the words and in the presence of other word elements in the contested sign, that is to say, ‘merlin’s’ and ‘welt’, which have no equivalents in the earlier mark.
52      EUIPO’s response, in essence, is that, since the signs at issue are partially identical, in that the earlier mark is contained within the mark applied for, the signs at issue necessarily have a certain degree of phonetic similarity.
53      In that regard, first, it must be stated at the outset that, although the signs at issue share the sequence of letters ‘k’, ‘i’, ‘n’, ‘d’, ‘e’, ‘r’, the fact remains that they are not pronounced with the same rhythm and the same intonation. The earlier mark contains only two syllables, whereas the mark applied for, which admittedly does share those two syllables with the earlier mark, contains five syllables.
54      Secondly, it must be held that the element ‘merlin’s’ in the mark applied for is pronounced first, with the result that consumers attach most importance to it (see, to that effect, judgment of 14 October 2009, TiMi KiNDERJOGHURT, T‑140/08, EU:T:2009:400, paragraph 57). The element ‘kinder’ is therefore somewhat neutralised by the element ‘merlin’s’, which, phonetically, undoubtedly catches the attention of consumers first (see, by analogy, judgment of 14 October 2009, TiMi KiNDERJOGHURT, T‑140/08, EU:T:2009:400, paragraph 57).
55      It follows from the foregoing that, notwithstanding the fact that the element ‘kinder’ is present in both signs, those signs, on the basis of an overall impression, are not phonetically similar.
Conceptual similarity
56      The Board of Appeal stated in paragraph 61 of the contested decision that the element ‘kinderwelt’ in the mark applied for and the element ‘kinder’ in the earlier mark had no meaning for the relevant Italian-speaking public. Therefore, the Board of Appeal took the view that a conceptual comparison of the signs at issue was not possible or, in any event, relevant, and that, conceptually, the overall impression given by the signs at issue was neutral for the relevant public.
57      The applicant, whilst acknowledging that the signs at issue have no meaning for the relevant public, claims that they cannot be qualified as conceptually similar in that, with the addition of the element ‘merlin’s’, the concept conveyed by the mark applied for becomes obvious for the consumers. In that regard, the applicant claims that the element ‘merlin’s’ refers to an imaginary world connected with Arthurian legend, which is not the case with the earlier mark.
58      EUIPO contends, in essence, that the signs at issue, taken as a whole, do not convey two clear and different concepts, with the result that any conceptual comparison is irrelevant. EUIPO adds that the reference to Merlin the magician, which admittedly is an element of conceptual differentiation, is not decisive due to the weakness of that element.
59      In that regard, it must be stated that the signs at issue are, as regards their word elements, composed, in particular, of terms which have no ordinary or known meaning for the relevant Italian-speaking public.
60      The word elements ‘kinder’ and ‘kinderwelt’ are German terms which have no meaning for the Italian general public (see, by analogy, judgment of 16 May 2012, Kindertraum, T‑580/10, not published, EU:T:2012:240, paragraphs 47 to 49).
61      Even if the element ‘merlin’s’ in the mark applied for may have a certain evocative force and refer to the character of ‘Merlin’, ‘Merlin the magician’, and ‘Merlin the wizard’ (the character being known as ‘Merlino’ in Italian), to Arthurian legend and to mediaeval literature, it must be pointed out that, in the mark applied for, the element ‘merlin’s’ is accompanied by the element ‘kinderwelt’ to form the expression ‘merlin’s kinderwelt’, an expression which has no meaning in Italian, with the result that that sign ultimately has no clear meaning for the relevant public.
62      In any event, whatever the evocative force of the element ‘merlin’s’ may be for the relevant public, it must be held that that element is not present in the earlier mark and that the signs at issue are therefore conceptually different in that regard.
63      The Board of Appeal was therefore right to conclude that a conceptual comparison of the signs at issue was, on the basis of an overall impression, irrelevant.
64      It follows from all of the foregoing that, on the basis of an overall impression, the signs at issue are not visually or phonetically similar and that a conceptual comparison is, in the present case, irrelevant, with the result that those signs are not identical or similar for the purposes of Article 8(1)(b) of Regulation No 207/2009.
65      Since one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 is not met, it must be concluded that the Board of Appeal erred in finding that there was a likelihood of confusion within the meaning of that provision.
66      In addition, since it has been established that the signs at issue are not identical or similar for the purposes of Article 8(1)(b) of Regulation No 207/2009, it must be held that they are likewise not identical or similar for the purposes of Article 8(5) of that regulation. Thus, one of the cumulative conditions for the application of Article 8(5) of Regulation No 207/2009 has also not been met, with the result that, in any event, that provision cannot apply in the present case.
67      Consequently, bearing in mind that, in the present case, the Court is in a position to ascertain which decision the Board of Appeal was required to take, without it being necessary to examine the second plea in law, it is necessary, in accordance with Article 65(3) of Regulation No 207/2009, to alter the contested decision so as to hold that the action is well founded and, consequently, that the opposition must be rejected.
Costs
68      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.
69      In the present case, EUIPO and the intervener have been unsuccessful. Consequently, first, EUIPO must be ordered to bear its own costs and also to pay the costs of the applicant, in accordance with the form of order sought by the latter. Secondly, since the intervener has been unsuccessful, it must bear its own costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1.      Alters the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 16 July 2015 (Case R 1617/2014-1) in such a way as to hold that the appeal brought by Excalibur City s.r.o. before the Board of Appeal is well founded and, consequently, that the opposition must be rejected;
2.      Orders EUIPO to bear its own costs and to pay those incurred by Excalibur City;
3.      Orders Ferrero SpA to bear its own costs.
Papasavvas
Bieliūnas
Forrester
Delivered in open court in Luxembourg on 20 September 2016.
[Signatures]
* Language of the case: English.